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 .
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
Applicant has argued that Ikenaga fails to disclose the claimed H1 greater than H2, arguing that the claimed first top part and second top part are surrounded by four sides. The examiner notes the prior art discloses the claimed first top part and second top part are surrounded by four sides as noted by e.g. Figure 29. While the examiner does not disagree that the prior art fails to disclose the difference in H1 and H2 as claimed in Figure 29, the applicant has failed to appreciate the rejection and the level of one of ordinary skill in the art at the time of the invention. Specifically, as noted in the rejection, the claimed height is taught by Ikenada as having a specific and attributable results and the relationship of the variously H1 and H2 heights. However, Ikenaga in different embodiments include a mask with height H1 of a first top part greater than H2 of a second top part, see Figure 4-7 and accompanying text, where H1 is 43 and 37 and H2 is 36 at Figure 6). Ikenaga also discloses the H1 and H2 height variation, where H2 is smaller than H1 at 0223. Ikenaga discloses the adjustment of the heights to achieve the desired effective area of the deposition layer (increase the effective area) while taking into consideration the strength of the mask (0223, Figure 36 and accompanying text) and therefore taking the reference for its entire teaching and all that is known to one of ordinary skill in the art, it would have been obvious to have determined the optimum H1 and H2 as suggested by Ikenaga through routine experimentation to achieve the desired mask utilization while maintaining the mask strength. This would include H2 between the short sides of the openings being smaller than H1 between the long sides of the openings as evidenced by Figure 8-10 and accompanying text, 0223.
The applicant has failed to provide any evidence or rebuttable arguments that Ikenaga does not suggest or makes obvious the height adjustment and its effect on the mask and deposition (i.e. desired mask utilization while maintaining the mask strength). The mere argument that such is not explicitly taught is not persuasive, as the totality of the reference disclose the height adjustment as outlined herein and the effects of such a height adjustment. Here, the examiner as set forth a prima facie case of obviousness as it relates the height variation as claimed and the burden shifts ot the applicant to provide evidence in the prior art or beyond or arguments to rebut the examiner’s position. Here, the applicant’s spurious arguments do not rebut the examiner’s prima facie case of obviousness, that is adjustment of the height of the first and second top part would have been within the skill of one of ordinary skill in the art at the time of the invention as such directly affects the desired mask utilization while maintaining mask strength. If the applicant’s can provide a commensurate showing of secondary considerations as to the unpredictability or unexpected nature of the claimed height relationship, the examiner will reconsider this position. "During patent examination and reexamination, the concept of prima facie obviousness establishes the framework for the obviousness determination and the burdens the parties face. Under this framework, the patent examiner must first set forth a prima facie case, supported by evidence, showing why the claims at issue would have been obvious in light of the prior art. Once the examiner sets out this prima facie case, the burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner's evidence. The examiner then reaches the final determination on obviousness by weighing the evidence establishing the prima facie case with the rebuttal evidence." ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365–66, 117 USPQ2d 1951, 1553-54. In other words, the applicant’s have not addresses the examiner’s position, that is the adjustment of height of the mask first and second part would have been obvious in view of the disclosure of Ikenaga.
Applicant’s arguments that the shape and arrangement of the holes of Figure 29 is completely different from that of Figures 4-7 is noted, but not persuasive as Figure 29 will necessarily have a height along the long sides and height along the short sides and the reference as a whole would suggest the adjustment of the heights would lead to predictable results and Figure 4-7 establishes the non-uniformity of the height between the through holes.
Applicant argues that the height between two sides would recognizes that such is unrelated to the asserted top parts of Ikenaga; however, this is mere attorney speculation unsupported by any factual evidence.
The Applicant has failed to appreciate the totality of the teachings of the reference and the set forth prima facie case of obviousness. Here, the prior art disclose the height between the openings, i.e. the claimed height of the first part and second part, directly affects the mask strength and mask utilization and thus taking the level of one of ordinary skill in the art, absent a rebuttal showing of factual evidence, the determination of the height between the openings, including where the height is as claimed, would have been well within the skill of one ordinary in the art taking into consideration desired mask utilization while maintaining the mask strength.
The remaining arguments are not persuasive as they are either mere attorney speculation not supported by factual evidence or are deemed not commensurate in scope with the drafted claims.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 20200308688 by Ikenaga et al., hereinafter Ikenaga.
Claim 1: Ikenaga discloses a metal mask including a first surface, and a second surface positioned opposite to the first surface, wherein the first surface has through-holes, a first top part, and a second top part, the through-holes have a first through-hole, a second through-hole, a third through-hole, a fourth through-hole, a fifth through-hole, and a sixth through-hole, the first through-hole has a first short axis and a first long axis, the second through-hole has a second short axis and a second long axis, the third through-hole has a third short axis and a third long axis, the fourth through-hole has a fourth short axis and a fourth long axis, the fifth through-hole has a fifth short axis and a fifth long axis, the sixth through-hole has a sixth short axis and a sixth long axis, the first long axis is parallel to the second long axis and positioned next to the second long axis in a direction D2 crossing the first long axis, the first short axis is parallel to the fifth short axis and positioned next to the fifth short axis in a direction D1 parallel to the first long axis, the third long axis is parallel to the fourth long axis and positioned next to the fourth long axis in the direction D1 parallel to the first long axis, the third short axis is parallel to the sixth short axis and positioned next to the sixth short axis in the direction D2 crossing the first long axis, 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, 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 (see Figure 29 and accompanying text, Figure 32).
Ikenaga discloses a mask that will include a height H1 of the first top part and a height H2 of the second top part; however, fails to explicitly disclose the H1 is greater than the H2 as claimed. However, Ikenaga in different embodiments include a mask with height H1 of a first top part greater than H2 of a second top part, see Figure 4-7 and accompanying text, where H1 is 43 and 37 and H2 is 36 at Figure 6). Ikenaga also discloses the H1 and H2 height variation, where H2 is smaller than H1 at 0223. Ikenaga discloses the adjustment of the heights to achieve the desired effective area of the deposition layer (increase the effective area) while taking into consideration the strength of the mask (0223, Figure 36 and accompanying text) and therefore taking the reference for its entire teaching and all that is known to one of ordinary skill in the art, it would have been obvious to have determined the optimum H1 and H2 as suggested by Ikenaga through routine experimentation to achieve the desired mask utilization while maintaining the mask strength. This would include H2 between the short sides of the openings being smaller than H1 between the long sides of the openings as evidenced by Figure 8-10 and accompanying text, 0223.
Claim 2-3: Ikenaga discloses embodiments that the metal mask includes the first top part and the second top part are alternately present in a direction D3 passing through the first top part and the second top part (see e.g. Figure 8 and accompanying text, Figure 29) and such would include D1 and D3 making an acute angle as claimed (see e.g. Figure 29).
Claim 4-6: Ikenaga discloses H1 and H2 relative to each other that overlaps the range as claimed (0223-0224) relative to the T, the thickness of the mask, and thus makes obvious the ranges as claimed.
Claim 7: Ikenaga discloses the through-holes each have a first recess on the first surface side, and a second recess, a connection part, a first angle θ1, and a second angle θ2 on the second surface side, the connection part is a ridge part where the first recess and the second recess are connected to each other, the first angle θ1 is an angle made by a straight line K1 with respect to a thickness direction N of the metal mask, the straight line K1 passing through a portion P1a of the connection part closest to the first top part and a portion P2a of the first top part closest to the connection part, the second angle θ2 is an angle made by a straight line K2 with respect to the thickness direction N of the metal mask, the straight line K2 passing through a portion P1b of the connection part closest to the second top part and a portion P2b of the second top part closest to the connection part, and the first angle θ1 and the second angle θ2 have a relation in which θ2≥θ1 holds (see Figure 5-7). Ikenaga also discloses the angle as claimed will have a direct result of reducing the adhesion onto the mask surface (0130) and thus taking the level of one of ordinary skill in the art at the time of invention would have found it obvious to adjust the angles as claimed to arrive at a mask that results in reduced adhesion onto the mask surface while maintaining the mask utilization.
Claim 8: Ikenaga discloses the second top part has an edge curvature radius (see e.g. Figure 6, Figure 9-10); however, fails to explicitly disclose the edge curvature radius between 2 and 18 microns. However, Ikenaga discloses thicknesses of the metal mask that would result in curvature as claimed (see mask thickness 0133-0134).
Claim 9: Ikenaga discloses the through-holes each have a substantially rectangular or substantially elliptical opening shape (Figure 32, Figure 35) and using the known shapes for the mask would have been obvious as predictable.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent Publication 20230313360 with Ikenaga. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent Publication 20230313360 fully encompass the instant claims; however, fails to disclose the H1 and H2 as claimed. However, Ikenaga also in the art of making metal mask for deposition makes obvious such for the reasons set forth above and therefore taking the references collectively it would have been obvious to have modified U.S. Patent Publication 201230313360 to achieve the H1 and H2 relative values as claimed to achieve the optimization of strength and mask ulization. Ikenaga discloses the adjustment of the heights to achieve the desired effective area of the deposition layer (increase the effective area) while taking into consideration the strength of the mask (0223, Figure 36 and accompanying text) and therefore taking the reference for its entire teaching and all that is known to one of ordinary skill in the art, it would have been obvious to have determined the optimum H1 and H2 as suggested by Ikenaga through routine experimentation to achieve the desired mask utilization while maintaining the mask strength. This would include H2 between the short sides of the openings being smaller than H1 between the long sides of the openings as evidenced by Figure 8-10 and accompanying text, 0223.
Claims 2-9 are taught and made obvious by Claims 3-5 of U.S. Patent Publication 201230313360 and as addressed above with respect to Ikenaga.
Claims of U.S. Patent Publication 201230313360 have been allowed but have yet to issue a patent and therefore are provisional; however, upon issuing as a patent, this rejection will not be provisional.
Conclusion
THIS ACTION IS MADE FINAL. 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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718