DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“processing mechanism” in claim 1-11 interpreted as processing liquid discharge nozzles (51F) arranged on the upper surface side of the substrate, processing liquid discharge nozzles (51B) arranged on the lower surface side of the substrate and processing liquid suppliers (52) for supplying the processing liquid to the processing liquid discharge nozzles (para. 1 of p22); and equivalents thereof.
“rotating mechanism” in claim 1-9 interpreted as (i) spin chuck (21), a hollow cylindrical rotary shaft (22) coupled to the spin chuck (21), a rotation driver (23) is connected to the rotary shaft (22), and a power transmitter (27) (see p12-13); (ii) a spin chuck (21), a rotation driver (23A) for driving the spin chuck, a second rotation driver (23B) for driving the cup (para. 2 of p48); (iii) a common rotation driver and a power transmitter (claim 10); (iv) a first rotation driver and a second rotation driver (claim 11); and equivalents thereof.
“exhaust mechanism” in claim 8-9 (note “mechanism” is a generic placeholder and “exhaust” and/or “configured to exhaust the fixed cup” is the functional limitation) for which no corresponding structure has been identified.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8-9 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As indicated above, the term “exhaust mechanism” in claim 8 invokes an interpretation under 35 U.S.C. 112(f). No corresponding structure was identified because the specification merely refers to “exhaust mechanism 38” without clarifying the structure of the exhaust mechanism and the drawings merely show a box labeled “exhaust mechanism” (see Fig 2 inter alia) and therefore cannot be relied upon to show the structure of the exhaust mechanism. Because there is not corresponding structure disclosed, the claims fail to comply with the written description requirement. See MPEP 2181 IV. For purpose of compact prosecution on the merits, the claim will be examined over the prior art using an interpretation as explained in the rejection of claim 8 over 35 U.S.C. 112(b) below.
Claim 9 is included for its dependence from claim 8.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 limitation “exhaust mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. No corresponding structure was identified because the specification merely refers to “exhaust mechanism 38” without clarifying the structure of the exhaust mechanism and the drawings merely show a box labeled “exhaust mechanism” (see Fig 2 inter alia) and therefore cannot be relied upon to show the structure of the exhaust mechanism. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
For purpose of compact prosecution on the merits, any prior art structure that performs an exhausting (i.e. pumping) function will be interpreted as meeting the claimed “exhaust mechanism” or being a functional equivalent thereof.
Claim 9 is included for its dependence from claim 8 above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-5 and 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,688,322 of Motoda et al., hereinafter Motoda, in view of US Patent Application Publication 2016/0329220 of Nakai, hereinafter Nakai.
Regarding claim 1, Motoda teaches a substrate processing apparatus (abstract, Fig 1-2), comprising: a substrate holder (spin chuck 6 Fig 2 and col 5, ln 1-15) configured to hold a substrate (substrate S in Fig 2 and col 5, ln 1-15) and provided rotatably about an axis of rotation extending in a vertical direction (col 5, ln 1-15); an upper nozzle (nozzle 36 Fig 2, col 5, ln 34-40) configured to process the substrate by supplying a processing liquid to the substrate held by the substrate holder (col 5, ln 34-40); a rotating cup (2 Fig 2, col 4, ln 65 to col 5, ln 5, col 5 ln 40-67) configured to form a collection space for collecting liquid droplets of the processing liquid scattered from the substrate by surrounding an outer periphery of the rotating substrate and provided rotatably about the axis of rotation (col 4, ln 65 to col 5, ln 5, col 5 ln 40-67); a fixed cup (50 Fig 2, col 5, ln 57-65) configured to form a discharge space for discharging the liquid droplets collected by the rotating cup by being fixedly arranged to surround the rotating cup(col 5, ln 57-65); and a rotating mechanism (spin motor 24, pulleys 22 and 30,driving belts 20 and 28, follower pulleys 18 and 26, and spline shaft 16 Fig 2 and col 5, ln 40-50) configured to rotate the substrate holder and the rotating cup (col 5, ln 40-67), wherein the rotating cup includes a lower cup (portion 2C,2D Fig 2) to be rotated about the axis of rotation by receiving a cup driving force applied from the rotating mechanism (col 5, ln 40-67) and an upper cup (vertical sidewall portion of 2 above 2D having holes 52A and 52B Fig 2, col 5, ln 58 to col 6 ln 15) configured to collect the liquid droplets scattered through the collection space while rotating about the axis of rotation integrally with the lower cup by being coupled to the lower cup (col 5, ln 58 to col 6 ln 15), and the upper cup includes: allowing communication between the collection space and the discharge space by being located above the lower cup (lower part is located above 2D in Fig 2) and forming a gap between the lower cup and the first coupling part (a gap is present vertically and with holes 52B); and an inclined part provided obliquely upward of a peripheral edge part of the substrate from where the upper cup connects to the lower cup (upper portion of vertical portion of 2,which is inclined and has hole 52A), the inclined part collecting the liquid droplets by an inclined surface facing the collection space (col 5, ln 60 to col 6 ln 10). Motoda fails to explicitly teach the processing mechanism includes a lower nozzle to provide liquid to the lower surface and fails to teach the coupling part connecting the upper cup to the lower cup of the rotating cup because Motoda teaches a unibody structure. Regarding the lower nozzle, in the same field of endeavor of substrate processing apparatuses including cups for colleting liquid discharged from the substrate (abstract, Fig 1), Nakai teaches a lower nozzle (52 Fig 1 [0071]) to provide liquid to the lower surface [0071]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Motoda to include the lower nozzle of Nakai because this represents a simple substitution of one known element (supply nozzles of liquid to upper and lower surfaces) for another (supply nozzle of liquid to only upper surface) to achieve predictable results (supply of liquid to the substrate). Regarding the coupling part connecting the upper cup to the lower cup of the rotating cup, Nakai teaches a first coupling part (second engagement part 226 Fig 1 [0069]) as part of the upper cup (22, 225 Fig 1) located above the lower cup (311 Fig 1) forming a gap between the lower cup and the first coupling part (Fig 1). The upper cup of Nakai (22, 225 Fig 1) include an inclined part (Fig 1) provided obliquely upward of a peripheral edge part of the substrate from the first coupling part (Fig 1), the inclined part collecting the liquid droplets by an inclined surface facing the collection space [0081-0082]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the cup arrangement of Motoda to include the first coupling part as taught by Nakai because Nakai teaches this arrangement allows the upper cup to be rotated with the lower cup or not rotated [0070] and because this represents a simple substitution of one known element (upper cup and coupling arrangement of Nakai) for another (upper cup and coupling arrangement of Motoda) to achieve predictable results (rotation of the upper cup with the lower cup and collection of liquid scattered from the substrate).
Regarding claim 2, the combination remains as applied to claim 1 above. The gap as demonstrated by Nakai extends in a horizontal direction (Fig 1, 9).
Regarding claim 3, the combination remains as applied to claim 1 above. The upper cup of the combination (cup 22, 225 Fig 1of Nakai) is engageable with and disengagable from the lower cup (Nakai Fig 1, 2).
Regarding claim 4, the combination remains as applied to claim 3 above. Nakai as part of teaching the upper cup further teaches a cup elevator (23 Fig 2) configured to move up and down the upper cup between a cup coupled position where the upper cup is coupled to the lower cup by being engaged with the lower cup and a cup retracted position where the upper cup is retracted upward from the lower cup (Fig 1, 2 [0060]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination to include the cup elevator of Nakai because Nakai teaches this enables raising and lowering the upper cup to separate it from the lower cup [0060].
Regarding claim 5, the combination remains as applied to claim 1. Nakai as applied in the combination teaches the lower cup (311 Fig 1) includes a second coupling part (314 Fig 1) facing the first coupling part (Fig 1), one of the first and second coupling parts is provided with a plurality of engaging pins (second coupling part 314 of Fig 1 which is referred to in Nakai as “first engagement part” [0068-0069]) and the other is provided with a plurality of recesses (first coupling part 226 of Nakai which is the “second engagement part” of Nakai, see [0069] which discloses recesses), the plurality of engaging pins being insertable into and withdrawable from the plurality of recesses [0069], and the upper and lower cups are engaged with each other by inserting each of the plurality of engaging pins into the corresponding one of the plurality of recesses [0069-0070]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination to include the second coupling part and the engagement arrangement as claimed because Nakai teaches this arrangement allows for the coupling of the upper and lower cups during processing [0069-0070].
Regarding claim 7, the combination remains as applied to claim 1 above. The upper cup of each of Motoda and Nakai is capable of being used with a substrate that is larger such that an upper end of the inclined part covers a peripheral edge part of the substrate with the upper cup coupled to the lower cup. Further Nakai (Fig 1) demonstrates this arrangement.
Regarding claim 8, the combination remains as applied to claim 1 above. Motoda teaches an exhaust portion (97 Fig 2 and col 4, ln 59-65) configured to exhaust the fixed cup (col 4, ln 59-65). Motoda further teaches an exhaust controller (95 Fig 2 and col 4, ln 50-60) configured to control the exhaust mechanism to promote movements of the liquid droplets from the collection space into the discharge space by way of the gap by adjusting a pressure in the discharge space (taught as controlling the discharge unit which will affect the pressure col 4, ln 50-60). Nakai further teaches an exhaust controller (controller 10) configured to control the exhaust mechanism (inclusive of the exhaust port 461) to promote movements of the liquid droplets from the collection space into the discharge space by way of the gap by adjusting a pressure in the discharge space [0151], [0164], [0202]. Therefore it additionally would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Motoda to include the exhaust controller of Nakai to control the pressure in the discharge space because Nakai teaches this allows for improved control of the discharge [0151], [0164], [0202].
Regarding claim 9, the combination remains as applied to claim 8 above. Motoda teaches the fixed cup includes a liquid receiving part (45 Fig 5-7) configured to receive the processing liquid (col 6, ln 1-25), an exhaust part (exhaust passage 58 Fig 5-7 and col 6, ln 35-45) connected to the exhaust mechanism (Fig 2) to exhaust gas components flowing by way of the liquid receiving part (Fig 5-7 and col 6, ln 1-45), a partition wall (60C and 60D Fig 7, col 7, ln 5-15) configured to partition between the liquid receiving part and the exhaust part (col 7, ln 5-15) and a gas guiding part (55 Fig 5-7) configured to form a flow passage for the gas components having a labyrinth structure by covering the partition wall from above (Fig 7).
Regarding claim 10, the combination remains as applied to claim 1. Motoda teaches a common rotation driver (24 Fig 2 and col 5, ln 40-50) configured to rotate the substrate holder by applying a rotational driving force (col 5, ln 40-50); and a power transmitter (26, 28, and/or 30 Fig 2 and col 5, ln 40-50) configured to transmit a part of the rotational driving force output from the common rotation driver as the cup driving force to the lower cup (col 5, ln 40-50).
Regarding claim 11, the combination remains as applied to claim 1 above. As indicated in the rejection of claim 10 above, Motoda teaches one rotational driver to drive the cup and the substrate holder. It is noted that driving pulleys 22 and 30 are separate and may each be considered a rotation driver. If applicant is able to persuasively present that motor 24 must be the driver, it is noted that claim 11 represents a mere duplication of parts of the spin motor 24 of Motoda such that one spin motor is provided for each of the cup and the substrate support. The mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Such an arrangement is an obvious modification that allows for individual speed control of each rotational structure and allows for additional processing modes in which is may be desirable to have one of the two structures stationary or rotating at a different speed. This increases the number of processes that may be performed on the same apparatus and therefore the market value of the apparatus.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Motoda in view of Nakai as applied to claim 5 above, and further in view of US Patent 5,626,675 of Sakamoto et al., hereinafter Sakamoto.
Regarding claim 6, the combination remains as applied to claim 5 above. The combination as applied to claim 5 fails to teach an upper magnet attached to the first coupling part; and a lower magnet attached to the second coupling part, wherein: an attraction force is generated between the upper and lower magnets by bringing the upper and lower magnets into contact or proximity in the vertical direction when the upper and lower cups are engaged with each other. In the same field of endeavor of an upper portion (23 Fig 9) engaging with a lower rotating cup (22 Fig 9) to rotate therewith, Sakamoto teaches that magnets (57 Fig 9) may be used to bring the structures into contact in the vertical direction (col 7, ln 5-10) as an additional and/or alternative embodiment to a protrusion and recess (Fig 6-7). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Motoda in view of Nakai to include magnets for magnetic attraction between the first and second coupling parts because Sakamoto demonstrates magnets are a functional alternative (see Fig 9 and 6-7). Regarding specifically magnets in each coupling part, Sakamoto appears to rely on a material to which the magnet is attracted which may be considered a magnet and further a person of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized that the magnetic attraction may be obtained by magnets positioned in each structure.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 7-11 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of U.S. Patent No. 12431369, hereinafter ‘369 in view of Motoda and Nakai.
Claim 1 of ‘369 contains all the limitations of claim 1 except for the limitations regarding the lower cup and the upper cup. It is noted that the figures of ‘369 appear to demonstrate the lower and upper cups as claimed which suggest that the rotating cup of claim 1 of ‘369 was intended to have the upper and lower cup structures as claimed in claim 1 of the instant application. Further, Motoda in view of Nakai remains as applied to the remaining limitations of instant claim 1. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify claim 1 of ‘369 to include the upper and lower cups and coupling part as recited because Motoda in view of Nakai demonstrate these as structures for a rotating cup to collect the liquid that is sprayed from the substrate edge. Regarding claims 2-5, Motoda in view of Nakai remains as applied above to teach and render obvious the additional limitations recited in claims 2-5 regarding the arrangement of the upper and lower cups and coupling. These limitations provide additional structural detail of the upper and lower cups and remain obvious for the same reason of providing structure of the cups to collect the liquid sprayed. Regarding claim 8-9, claims 1 and 2 of ‘369 fail to teach the exhaust mechanism and associated structure thereof. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include the exhaust mechanism and associated structure thereof as taught by Motoda in view of Nakai (see above for specific limitation mapping) because the exhaust structure as taught by Motoda allows for exhausting gas from the processing space (col 4, ln 55-65, col 7, ln 10-55). This avoids the build up of potentially toxic gas from the processing space. Regarding claim 10-11, claim 1 of ‘369 refers to a power transmitter and Motoda as applied above has demonstrated the obviousness of two drivers.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of ‘369 in view of Motoda, Nakai and Sakamoto.
The analysis of claim 1-5 remains as applied above over ‘369 in view of Motoda and Nakai. Sakamoto further renders obvious that magnets (57 Fig 9) may be used to bring the structures into contact in the vertical direction (col 7, ln 5-10) as an additional and/or alternative embodiment to a protrusion and recess (Fig 6-7). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify claim 1 of ‘369 in view of Motoda and Nakai to include magnets for magnetic attraction between the first and second coupling parts because Sakamoto demonstrates magnets are a functional alternative (see Fig 9 and 6-7). Regarding specifically magnets in each coupling part, Sakamoto appears to rely on a material to which the magnet is attracted which may be considered a magnet and further a person of ordinary skill in the art before the effective filing date of the claimed invention would have readily recognized that the magnetic attraction may be obtained by magnets positioned in each structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2007/0239528 teaches an upper cup fixed to a lower cup with screws (40) and including horizontally extending space between the upper and lower cups (space 36 and 37 Fig 3). US 2007/0215178 teaches lower supply nozzles 7a and 7B (Fig 4). US 2015/0343484 teaches coupling between a lid and cup using magnets (201, 203 Fig 5). US 2003/00389697 teaches magnetic rotational coupling (Fig 3). US 6,222,991 teaches magnetic rotational coupling (magnets 62 and 46 Fig 1). US 6,159,288 demonstrates a rotating cup and substrate support (Fig 3). US 5,591,262 demonstrates a central lower supply nozzle (121 Fig 2) with a rotationally driven lower cup (5 Fig 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET D KLUNK whose telephone number is (571)270-5513. The examiner can normally be reached Mon - Fri 9:30-5:30.
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/MARGARET KLUNK/Examiner, Art Unit 1716
/KEATH T CHEN/Primary Examiner, Art Unit 1716