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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification does not provide antecedent basis for the term “top height part” or “second top height part” (Claim 3).
Claim Rejections - 35 USC § 112
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.
Claims 1-9 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.
Claims 1 and 9 recite the limitation “the top part is a portion.” The limitation has ambiguous antecedent basis, because Claims 1 and 9 previously recite two top parts (“a first top part” and “a second top part”) not “a top part.” Therefore, it is not clear whether limitation “the top part” is meant to refer to “first top part,” “second top part,” or a combination of the two. Examiner considers the limitation to include any of “first top part,” “second top part,” or a combination of the two.
Claims 1 and 9 recite the limitation “the height has a local maximum value on a plane.” The limitation is indefinite as ambiguous, because it is not clear whether the limitation is meant to be interpreted as a height having a local value, which is also on a plane or as a height, measured at a local maximum value of a plane. Moreover, it is not clear what would be meant by “a maximum value on a plane,” since a plane is a flat surface without any local maxima or minima. Examiner considers the limitation met by any point, since a point is on an infinite number of planes.
Claim 3 recites the limitation “second top height parts.” The limitation is indefinite, because it is not clear what a “second top height part” is, and the specification does not use the term.
Claim 3 recites the limitation "a plurality of second top height parts each having a height H2, and the height H2 of a second top height part close to the peripheral region is greater than the height H2 of a second top height part close to the effective region on an identical straight line.” The limitation is not clear, because Claim 3 requires BOTH that the “second top height parts” have a single height H2 and also that they have different heights H2. It is not clear how top height parts can have both a height H2 and also different heights H2; it is not clear how a single variable (H2) can have simultaneously different values, such that H2 ≠ H2. Examiner considers the limitation to require that one feature have a different height of another feature.
Claims 2-8 are rejected as depending from rejected claims.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1,3, and 8-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada (JP2015-163734A).
Regarding Claim 1, Yamada (JP’734) teaches a metal mask including an effective region (a central region of at least one through-hole 25), a peripheral region (edge region of an adjacent through-hole or through holes farther away) (e.g. peripheral region 23 [0074]), and a dummy region (any geometry or combination of through-holes 25, first recesses 30, wall surface 31, apices 33a, and other structures or surfaces of the mask located between the “effective” central region and the peripheral/ more outward region), wherein the effective region includes a first through-hole and a first top part (e.g. a top of a ridge), the first top part has a height H1 (e.g. a minimum height of a ridge or height of tip edge 32), the peripheral region is positioned around the effective region, the dummy region is positioned between the effective region and the peripheral region, the dummy region includes a second top part (e.g. 33a or any part of a ridge with a top part higher than a lower point of the ridge), the second top part has a height H2, and the height H2 is greater than the height H1 (Figs. 3(a),(b);[0028,0053]). A top part (which can be considered to include any feature of the mask) can be considered to have a local maximum value on some plane chosen from an infinite number of planes, and 20a, 33, and 33a are local maximum values (Figs. 3(a), 5,6).
Regarding Claim 3, because JP’734 shows a mask with periodically-repeating features with varying heights, as shown particularly in Figs. 1, 3, 4, and 5, there is necessarily a region with a feature at a given height (“H2”) in between a central region with a first through-hole and a feature at another given height (“H1”) and a peripheral region, and the feature in the in-between region (what the present application calls a “dummy region”) and the feature in the more central region (i.e. “effective region”) can be chosen such that H2 is greater than H1 (e.g. measure the height of 33a in the in-between “dummy region” and measure the height of surface 35 in the more centrally located “effective region.” What is more, because the claim does not assign an orientation of the mask for measurement, H2 can be considered greater than H1 in one orientation while H1 can be considered greater than H2 in a different orientation of the mask (compare Figs. 5 and 14, for example). “H1” and “H2” are used to compare two different values, since it does not make sense to compare different values of the same variable H2, representing two different points in space.
Regarding Claim 8, JP’734 teaches that recesses are made by etching from a surface (e.g. 21a or 21b) of a metal plate [0090], and JP’734 teaches that at least part of the original surface 21a,65a or 21b, 65b is conserved via photolithography (Figures;[0068]). Therefore, JP’734 clearly envisions that the through-holes, including in a region intermediate (i.e. the “dummy region”) between a center region and a peripheral region (see Fig. 1), include a top part remaining unetched.
Regarding Claim 9, JP’734 teaches a method for manufacturing a metal mask, comprising: a step of preparing a metal plate including a first surface and a second surface positioned opposite to the first surface; and an etching step of etching the metal plate to form the metal mask (Figs. 11-14; [0005,0068-0077-0086], wherein the metal mask includes an effective region, a peripheral region, and a dummy region, the effective region includes a first through-hole and a first top part, the first top part has a height H1,the peripheral region is positioned around the effective region, the dummy region is positioned between the effective region and the peripheral region, the dummy region includes a second top part, the second top part has a height H2, and the height H2 is greater than the height H1 (see rejection of Claim 1 above for a discussion of the features taught). A top part (which can be considered to include any feature of the mask) can be considered to have a local maximum value on some plane chosen from an infinite number of planes, and 20a, 33, and 33a are local maximum values (Figs. 3(a), 5,6).
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.
Claim(s) 2 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (JP2015-163734A).
Regarding Claim 2, JP’734 teaches a metal mask with “a large number of through-holes 25” (Figs. 1-4; [0028]) and show examples with an array of rectangles, including a perforated region 22 with through-holes 22 and a peripheral region 23, which can also have through-holes (Figs. 1-4; [0030]). Fig. 1 shows a 5x5 array; Fig. 3(b) shows a portion of a mask with a 3x3 array; and Fig. 4 shows an array of at least 5x6. The size of an array of through-holes is not particularly limited. JP’734 does not specifically teach a region equal to a range having between two and five rows of second top parts which is between a more central region and a peripheral region. If one considers the central through-hole (row 3, column 3 of the array) shown in Fig. 1 an “effective region,” and an outermost region, possibly also including a through-hole, of the array (e.g. in “peripheral region” 23), the 5x5 array of Fig. 1 would permit at most a region of less than one through-hole between a “peripheral region” and an “effective region” as defined in the claims. However, clearly this is simply a question of the size of an array, including, for example, number of desired features of a pattern to be deposited and/ or resolution (fineness) of a desired pattern. It would have been obvious to a person of ordinary skill to modify the metal mask of JP’734 to have a region equal to a range having between two and five rows including a second top part between a central region of through-holes (what the present application calls “an effective region”) and a peripheral region by increasing the size of the array in a number of ways, including increasing the size of the mask for a larger substrate, increasing detail of a pattern by adding more through-holes, or increasing the resolution of detail with more and smaller through-holes closer together. The limitation amounts to a prima facie obvious change in size/shape. MPEP 2144.04.IV.A.
Regarding Claim 4, JP’734 teaches that the position in the normal direction of the deposition mask of the leading edge 32 of the wall surface 31 of the first recess 30 that joins with the leading edge 32 of the wall surface 31 of another first recess 30 is not constant but fluctuates and that the height of these ridge lines 33 is highest near the tops 33a and gradually decreases as the distance from the tops 33a increases (Figs. 3-6). JP’734 fails to teach a ratio of H2:H1 of 1.05-4.00. However, JP’734 also provides evidence that the ratio is a result-effective variable, known in the prior art to affect utilization efficiency of the deposition material and the precision and stability of deposition [0054]. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the mask with a ratio of H2:H1 within the recited range through routine optimization.
Regarding Claim 5, JP’734 teaches that the metal mask includes a first surface and a second surface positioned opposite to the first surface (surfaces 21a,21b, Fig. 6), the dummy region includes a second through-hole (e.g. through-hole next to center through-hole at row 3, column 3 of array in Fig. 1), the first through-hole has a first recess on the first surface side (e.g. 30, Figs. 5-6) and a second recess (e.g. 35, Figs. 5-6), a first connection part 41, and a first angle theta1 on the second surface side, the first connection part is a ridge part where the first recess and the second recess are connected to each other, the first angle theta1 is an angle made by a straight line L1 (Applications “K1”) with respect to a thickness direction N of the metal mask, the straight line l1 passing through a portion P1a of the first connection part closest to the first top part and a portion P2a of the first top part closest to the first connection part (Fig. 5; [0043]), the second through-hole has a third recess on the first surface side, and a fourth recess, a second connection part, and a second angle theta2 on the second surface side, the second connection part is a ridge part where the third recess and the fourth recess are connected to each other (since every through-hole in a large number of through-holes has these features), the second angle theta2 is an angle made by a straight line L2 with respect to the thickness direction N of the metal mask, the straight line L2 passing through a portion P1b of the second connection part closest to the second top part and a portion P2b of the second top part closest to the second connection part, since every through-hole in an array of through-holes has all of these features, including central through-holes and any through-holes between the central through-holes and a peripheral region 23 (Figs.1, 3(a)-(b),4-6, 11-14; [0042-0043]). The measure of the angles are dependent on where a “first top part” and a “second top part” are located, which are not defined by the claims precisely. The angles vary depending on which surfaces are considered to be a top part or a second top part. However, from Fig. 5, it is clear that some “top parts” of through-holes, both central ones and ones between central through-holes and a peripheral zone have a height which is less than other “top parts” (e.g. “top part” 33 is lower than “top part” 33a” in Fig. 5), and clearly an inclination angle is related to the relative heights of the lowest and highest points of a recess of any given through-hole, with a greater height decreasing the inclination angle and a lesser height increasing the inclination angle [0047,0054]. Finally, JP’734 provides evidence that inclination angle is a result-effective variable, known in the prior art to affect utilization efficiency of the deposition material and the precision and stability of deposition [0054]. Therefore, it would have been obvious to a person of ordinary skill in the art to modify the metal mask to have the recited relationship between inclination angles of different features of the metal mask (including through-holes and their recesses) by modifying the geometry of each recess with accompanying through-hole to have inclination angles in different areas of an array of through-holes through routine optimization, to provide optimal utilization efficiency for deposition material, and precision and stability of patterning for each through-hole.
Regarding Claims 6-7, JP’734 teaches an array with a large number of through-holes (see rejection of Claim 1 above), and each feature (i.e. combination of recess, through-hole, connecting part, ridge, and any “top parts”) has associated heights (See Figs. 1, 3-6). JP’734 fails to specifically teach the recited relationships among all the heights. However, the further recited features amount to a prima facie obvious duplication of parts, and it would have been obvious to optimize the relative heights in order to change inclination angles for the reasons provided in the rejections of Claims 4-5 above.
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 1-7 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/187849 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both Claims 1 require a metal mask including an effective region, a peripheral region, and a dummy region, wherein the effective region includes a first through-hole and a first top part, the first top part has a height H1,the peripheral region is positioned around the effective region, the dummy region is positioned between the effective region and the peripheral region, the dummy region includes a second top part, the second top part has a height H2, and the height H2 is greater than the height H1. Although Claim 1 of ‘849 fails to use the terminology of “effective region, “peripheral region,” and “dummy region,” the limitation “a first through-hole, a second through-hole, . . . sixth through-hole” in combination with the limitations “the first through-hole has a first short axis and a first long axis, the second through-hole has a first short axis and a second long axis, . . . the sixth through-hole has a sixth short axis and a sixth long axis” and “the first top part is positioned between the first long axis and the second long axis and between the third long axis and the fourth long axis” and “the second top part is positioned between the first short axis and the fifth short axis and between the third short axis and the sixth short axis” define the same or obviously similar regions geometrically, and require the same height constraints (height of the first top part is greater than a height H2 of the second top part). Claim 2 of ‘849 corresponds to present Claim 3. Claims 4-6 of ‘849 recite overlapping relative ranges of H1 and H2 as in present Claim 4 in terms of a height T. Claim 7 of ‘849 recites a configuration of through-holes and connection parts in terms of angles, including the constraint angle theta1<angle theta2, which correspond to the configuration in present Claim 5, with theta1 and theta2 notation reversed. Claim 6 recites additional through-holes, connection parts, and heights, which represent a prima facie obvious duplication of parts, which would also be obvious from the geometry of Claims 1 and 7 of ‘849, with its multiple through-holes, and connection parts.
Present Claim 9 and Claim 10 of ‘849 claim a method for manufacturing a metal mask, comprising: a step of preparing a metal plate including a first surface and a second surface positioned opposite to the first surface; and an etching step of etching the metal plate to form the metal mask, wherein the metal mask includes an effective region, a peripheral region, and a dummy region, the effective region includes a first through-hole and a first top part, the first top part has a height H1,the peripheral region is positioned around the effective region, the dummy region is positioned between the effective region and the peripheral region, the dummy region includes a second top part, the second top part has a height H2, and the height H2 is greater than the height H1. As explained above regarding Claim 1, although different terminology is used, both claims recite the same or obviously similar structures, configurations, and constraints, whether by terminology or by geometry.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 14 November 2025 have been fully considered but they are not persuasive.
With regard to rejections under 35 USC 112(b), Applicant’s amendment to the claims does not resolve the previous issues, and Applicant’s remarks (Remarks, p. 6) does not address the rejections.
In response to Applicant’s argument that the amendment to the claims overcome the previous rejections under 35 USC 102 and 103 over Yamada (JP’734) (Remarks, pp. 6-9), the argument is not commensurate in scope with the amendment. Applicant’s amendment to Claims 1 and 9 recites that “the top part is a portion where the height has a local maximum value on a plane.” Unfortunately, the amendment includes both ambiguous antecedent basis and a confusing description of geometry. Since Claims 1 and 9 require “a first top part” and “a second top part,” but no broad or unordered “top part,” it is not clear what feature the limitation “the top part” is meant to refer and can thus refer broadly to any feature on the mask. Additionally, it is not clear what is meant by a local maximum value on a plane. Neither “a plane” nor a local maximum value on such “a plane” is sufficiently defined, and since “a top part” is not sufficiently defined, it is not clear how the added limitation fits in with the rest of the claim.
Conclusion
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712