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 .
Election/Restrictions and Claim Amendments
Applicant’s election without traverse of Group I, claims 1-17 in the reply filed on 18 March 2026 is acknowledged.
Claims 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the aforementioned reply.
On 5 August 2026, claim 6 was cancelled and claims 20-21 were added.
Information Disclosure Statement
The information disclosure statement filed 2 September 2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the lined-through information referred to therein has not been considered.
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: claim 14 first cleaning gas supply system which has been interpreted as a gas supply pipe, a mass flow controller (MFC) and a valve, and equivalents thereto, as set forth, e.g., in para. 25 of the specification.
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 1 source gas supply; claim 1 inert gas supply system; claims 10 and 14 reactant gas supply system; claims 11 first cleaning gas supply system; claims 12 and 14 additive gas supply system; and claim 13 second cleaning gas supply system are no longer being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph as the claims now include sufficient structure to carry out the associated claimed functions.
Additional Claim Interpretation
Claim 1 “controller configured to” has been interpreted in accordance with the specification (paras. 34-38) as a controller with memory and a control program (or similar) for executing the features associated therewith.
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 10 and 20-21 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 10 recites “a controller configured to be capable of … “. According to a first grounds, claim 1 is unclear because a controller is already recited in claim 1. In order to expedite examination, Examiner has assumed the claim was meant to the controller previously recited in claim 1. According to a second grounds, claim 10 remains unclear because Applicant continues to use language that does not provided a structural distinction that is necessary to attribute programming of processing steps to the controller. Although, Applicant argues differently. Until the claimed feature at issue are clearly set forth, the claim will be examined as written, wherein the phrase “configured to be capable of” is not considered commensurate to “a controller configured to
With respect to claim 20, the claim depends on features of a substrate that may or may not be provided with respect to the apparatus, and is not a structural component of the apparatus. Dependence on a substrate renders the limitations and the boundaries of the claim unclear. In order to expedite examination, Examiner has related the claim to a substrate that might be exemplary positioned as illustrated in relied upon prior art. The use of a specific substrate provided in a particular position in the apparatus is considered to be an intended use of the claimed apparatus. Clarification and/or correction is requested.
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.
(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) 1-4, 7-8, 10-14 and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2014/0287594 to Terasaki et al.
Regarding claim 1: Terasaki et al. disclose a substrate processing apparatus, comprising: a process container (see, e.g. Figs. 1-3 and 11; inside volume of 16, 18 and 100) accommodating a substrate; a first nozzle (40a) including a side surface in which a first discharge opening (any one of 48a) is formed, the first discharge opening directed toward a substrate arrangement region (region capable of accommodating array of 24) where the substrate is arranged in the process container; a second nozzle (340b) including a side surface in which a second discharge opening (e.g., 342b and 344b) directed toward at least one of a portion of the side surface of the first nozzle in a range different from a range where the first discharge opening is formed (see, e.g., 342b or 344b) and a space between the portion in the range different from the range wherein the first discharge opening is formed and an inner wall surface of the process container (see, e.g., any one of 344b); a source gas supply system (a gas supply pipe 42a and 52a, a mass flow controller (MFC) 44a and 54a, and a valve 46a and 56b) configured to supply a source gas into the process container via the first nozzle; and an inert gas supply system (a gas supply pipe 52b and 62b, a mass flow controller (MFC) 54b and 64b, and a valve 56b and 66b) configured to supply an inert gas into the process container via the second nozzle; and a controller (200; also see, e.g., paras. 98-106) configured to control the source gas supply system and the inert gas supply system so as to supply the inert gas into the process container while the source gas is supplied into the process container. Regarding the timing of the supply of the source gas and the inert gas, see, e.g. paras. 121-130, esp. para. 125, which describes the inert gas and the source gas supplied at the same time, wherein the controller is configured to control introduction of the source gas and the inert gas, see, esp. para. 103.
With respect to claim 2, Terasaki et al. disclose the apparatus capable of supporting a plurality of substrates including the substrate in the substrate arrangement at a predetermined interval in a direction perpendicular to surface of the substrate (using boat 28); and wherein the first nozzle and the second nozzle are provided along an arrangement direction of the plurality of substrates at positions adjacent to each other along a circumferential direction of the substrate.
With respect to claim 3, in Terasaki et al., the second discharge opening is formed so as to discharge the inert gas toward a portion of the side surface of the first nozzle being opposite, in a radial direction of the first nozzle, to the range where the first discharge opening is formed. See aforementioned second discharge openings 344b in Fig. 11.
With respect to claim 4, in Terasaki et al., the second nizzle does not include a discharge opening at a position facing the substrate arrangement region. See, e.g., Fig. 11.
With respect to claim 7, Terasaki et al. disclose the apparatus capable of supporting a plurality of substrates including the substrate in the substrate arrangement at a predetermined interval in a direction perpendicular to surface of the substrate (using boat 28); and wherein the second nozzle includes an upper discharge opening (342b) that is opened to be directed toward a space above the substrate arrangement direction.
With respect to claim 8, in Terasaki et al, the upper discharge opening is formed in distal end of the second nozzle. See, e.g., Fig. 11.
With respect to claim 10, in Terasaki et al., the apparatus may further comprise a third nozzle (e.g. 40c) including a side surface in which a third discharge opening (e.g., one of 48c) is formed; a reactant gas supply system (a gas supply pipe 42d, a mass flow controller (MFC) 44d, and a valve 46d) configured to supply a reactant gas into the process container via the third nozzle; and the aforementioned controller (200; also see, e.g., paras. 98-106) configured to be capable of controlling the source gas supply system, the reactant gas supply system, and the inert gas supply system so as to perform processing of forming a film on the substrate to be accommodated in the process container by performing a cycle a predetermined number of times. Examiner notes that language “controller to be capable of” is not interpreted as the controller being programmed to control any specific method limitations and/or results, rather limitations which the controller is capable of performing are considered intended use, wherein the courts have ruled a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Also see above rejection with respect to 35 USC 112b.
With respect to claim 11, Terasaki et al., further disclose a first cleaning gas system (a first cleaning gas supply pipe 42a, a mass flow controller (MFC) 44a, and a valve 46a OR a first cleaning gas supply pipe 62b, a mass flow controller (MFC) 64B, and a valve 66b) configured to supply a first cleaning gas to one of the first nozzle and the second nozzle.
With respect to claim 12, Terasaki et al., further disclose an additive gas supply system (an additive gas supply pipe 62a, a mass flow controller (MFC) 64, and a valve 66a) to supply an additive gas that is capable of reacting with the first cleaning gas to another nozzle (40c) different from the one of the first nizzle and the second nozzle.
With respect to claim 13, Terasaki et al., further disclose second cleaning gas supply system (a second cleaning gas supply pipe 62a, a mass flow controller (MFC) 64, and a valve 66a) to supply a second cleaning gas to another nozzle (40c) different from the one of the first nozzle and the second nozzle. Regarding intended use, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); and expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
With respect to claim 14, Terasaki et al., may further comprise a third nozzle (e.g. 40c) including a side surface in which a third discharge opening (e.g., one of 48c) is formed; a reactant gas supply system (a reactant gas supply pipe 42d, a mass flow controller (MFC) 44d, and a valve 46d) configured to supply a reactant gas into the process container via the third nozzle; a first cleaning gas supply system (a gas supply pipe 62b, a mass flow controller (MFC) 64b, and a valve 66b) configured to supply a first cleaning gas to any one of the first nozzle, the second nozzle and the third nozzle (in this case the second nozzle); and an additive gas supply system (an additive gas supply pipe 42c, a mass flow controller (MFC) 44c, and a valve 46c) configured to supply an additive gas that is capable of reacting with the first cleaning gas to another nozzle (in this case the third nozzle) different from the second nozzle. Regarding intended use, Examiner notes that the courts have ruled a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); and expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969).
With respect to claim 16, in Terasaki et al., the apparatus may further comprise a sixth nozzle (e.g. 40c) including a side surface in which a sixth discharge opening (e.g., one of 48c) is formed, the sixth discharge opening directed toward the substrate arrangement region; wherein in the side surface of the second nozzle a seventh discharge opening (see aforementioned second discharge openings 344b in Fig. 11.) is further formed, the seventh discharge opening directed toward at least one of a portion of the side surface of the sixth nozzle in a range different from where the sixth discharge opening is formed and a space between the portion in the range different from the range where the sixth discharge opening is formed and the inner wall surface of the process container; and the source gas supply system further comprises (a gas supply pipe 42d, a mass flow controller (MFC) 44d, and a valve 46d) such that it is configured to supply a source gas into the process container via the first nozzle and the sixth nozzle. Regarding the identity of the gases, the courts have ruled a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Also see above rejection with respect to 35 USC 112b.
With respect to claim 17, in Terasaki et al., the apparatus may further comprise in the side surface of the second nozzle, an eighth discharge opening (e.g., a lower one of 344b in Fig. 11) is formed, the eighth discharge opening directed in a portion of the side surface in a range different from a range facing the substrate arrangement different from a range where the second discharge opening is formed.
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.
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terasaki as applied to claims 1-4, 7-8, 10-14 and 16-17 above in view of JP Patent Pub. No. 2016-122691 to Murata et al.
Terasaki et al. disclose the apparatus substantially as claimed and as described above.
However, Terasaki et al. fails disclose the second nozzle is configured to be detachable with respect to the process container.
Murata et al. disclose by making a nozzle detachable so that can be detached and maintained and particle generated from the nozzle may be suppressed (see translation).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided the second nozzle is detachable for the purpose of maintaining the same and suppressing particle generation as taught by Murata et al.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terasaki as applied to claims 1-4, 7-8, 10-14 and 16-17 above in view of U.S. Patent Pub. No. 2019/0186014 to Kikama et al.
Terasaki et al. disclose the apparatus substantially as claimed and as described above.
However, Terasaki et al. fail to disclose an opening area of the upper discharge opening of the second nozzle is larger than an opening area of the second discharge opening of the second nozzle.
Kikama et al. disclose a nozzle (e.g., 76, 78, 80) having an opening area of an upper discharge opening (e.g. 76C) of the nozzle is larger than an opening area of a second discharge opening (e.g., 76B) of the second nozzle for the purpose of preventing a film from residing on a process container (44B) (see, e.g., paras. 40-51 and 63-65, wherein the following relative opening area relationships are disclosed: 76B<76A; 76C>76A resulting in 76C>76A). Examiner also notes that the courts have ruled that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided in Terasaki et al. the upper discharge opening of the second nozzle is larger than an opening area of the second discharge opening of the second nozzle in order to prevent a film from residing on the process container as taught by Kikama et al.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terasaki as applied to claims 1-4, 7-8, 10-14 and 16-17 above in view of JP Pub. No. 2000-058530 to Nishida et al. in view of U.S. Patent Pub. No. 2009/0087964 to Maeda et al.
Terasaki et al. disclose the apparatus substantially as claimed and as described above.
However, Terasaki et al. fail to disclose a fourth nozzle including a side surface in which a fourth discharge opening is formed, the fourth discharge opening directed toward the substrate arrangement region; and a fifth nozzle including a side surface in which a fifth discharge opening is formed, the fifth discharge opening directed toward at least one of a portion of the side surface of the fourth nozzle in a range different from a range where the fourth discharge opening is formed and a space between the portion in the range different from the range where the fourth discharge opening is formed and the inner wall surface of the process container; wherein, the source gas supply system is configured to supply the source gas into the process container via the first nozzle and the fourth nozzle; and the inert gas supply system is configured to supply the inert gas into the process container via the second nozzle and the fifth nozzle.
The fourth nozzle and the fifth nozzle as described above, essentially describe a duplication of the first nozzle and the second nozzle, wherein the courts have ruled that 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).
Additionally, Nishida et al. disclose providing one or two or more nozzles for supplying an inert purge gas and/or a self-cleaning gas to a process container for the purpose of performing a pressure-control operation in the process container and/or a self-cleaning operation of the process container and/or supplying process gases to the process container (see translation).
Maeda et al. disclose what would be obvious to one of ordinary skill in the art exercising ordinary creativity, common sense and logic, but is not explicitly disclosed in Teraski et al. or Maeda et al., gas supply systems including single sources of gases each provided to supply a plurality of nozzles with gases (e.g., processing/deposition/inert/cleaning gases) to a plurality of nozzles (e.g., 41-51) that are capable of and intended to provide more than one gas (as an alternative to providing individual gas sources for each of the nozzles) for the purpose of providing a streamlined gas supply system connected to a plurality of nozzles intend to supply appropriate deposition gases, inert gases and cleaning gases to a process container (202) (see, e.g., Figs. 1-3 and paras. 34-57).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have duplicated the first and second nozzles to provide fourth and fifth nozzles as claimed connected to the source gas supply system and the inert gas supply system, respectively, in order to provide a streamlined gas supply system connected the first, second, third and fourth nozzles to supply appropriate deposition gases, inert gases and cleaning gases to the process container as taught by Nishida et al. and Maeda et al.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terasaki et al. as applied to claims 1-4, 7-8, 10-14 and 16-17 above and as further applied below.
Terasaki et al. disclose the apparatus substantially as claimed and as described above. Additionally, Terasaki et al. disclose the first nozzle and the second nozzle are provided at positions adjacent each other (see, e.g., Fig. 3).
However, Terasaki et al. fail to explicitly disclose the first nozzle and the second nozzle are disposed at positions where a center angle formed by a first straight line connecting the center of the substrate and the center of the first nozzle and the second straight line connecting the center of the substrate and the center of the second angle is an acute angle in a range of 10 degrees to 30 degrees. As detailed above, providing a specific substrate at a specific position in the apparatus and with respect to other structural features of the apparatus is considered a claim recitation drawn to intended use. The courts have ruled that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); and the inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
Nevertheless, in order to expedite examination, it is also noted that as illustrated in Fig. 3 of Terasaki et al., this arrangement appears to be provided, such that one of ordinary skill in the art exercising ordinary creativity, common sense and logic would also find it obvious to mimic the illustration of Terasaki et al. to actually perform the claimed intended use. Additionally, the courts have ruled that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided in Terasaki et al. the first nozzle and the second nozzle are disposed at positions where a center angle formed by a first straight line connecting the center of the substrate and the center of the first nozzle and the second straight line connecting the center of the substrate and the center of the second angle is an acute angle in a range of 10 degrees to 30 degrees in order to provide the apparatus as illustrated.
Response to Arguments
Applicant’s amendments and accompanying arguments with respect to claim(s) 1-5 and 20-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument, except where addressed below.
With respect to claim 1, Applicant has amended the claim language to recite “a controller configured to” such that the claim interpretation now requires a controller specifically programmed to address the method steps attributed thereto. A rejection is set forth above based on this new interpretation. Also, regarding claim 1, contrary to Applicant’s assertion, Terasaka et al. does in fact disclose steps associated with the controller. See above rejection.
With respect to claim 10, see rejections above. The controller of claim 10 has issues with respect to 35 USC 112b. Additionally, the claim does not require “a/the controller configured to” as in claim 1. is not claimed. Thus, the features attributed thereto considered intended use. Similarly, the features of claims 12-13 and 16 that Applicant argues are missing from the teachings of Terasaki et al. are also drawn to an intended use of the claimed apparatus. The courts have ruled that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
With respect to claim 5, Applicant has argued that the rejection is deficient because features of claim 1 are not addressed. Examiner disagrees as claim 1 is addressed as set forth above. Applicant also argues that one of ordinary skill in the art in possession of the teachings of Murata would not find it obvious to detach the second nozzle, specifically or only. Examiner disagrees and notes that the teachings of Murata would render obvious making any of the claimed nozzle or nozzles of Terasaki et al. detachable in order to maintain the apparatus in which it is located and nozzle itselft with suppressed particle generation, reduced costs and time loss required for maintenance. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
With respect to claim 9, Applicant has argued that the rejection is deficient because features of claim 1 are not addressed. Examiner disagrees as claim 1 is addressed as set forth above. Applicant also the claimed nozzle has a different function from the claimed nozzle disagrees. In the relied upon portions of Kikama et al., Kikama et al. teach that any of the nozzles 76, 78 and 80 may have the disclosed configuration, including nozzle 80 intended for an inert purge gas. Furthermore, regarding Applicant’s arguments with respect to optimization, Examiner notes that optimization of hole size is based on optimizing flow through the nozzle and is not particularly related to the specific type of gas, wherein in a linear elongated nozzle with holes along the length thereof and also at a top thereof, the pressure and flow of gas through the nozzle will be affected by the position and size of each of the holes in the nozzle. Kikama et al. teach that the sizes can be optimized to achieve desired pressure and flow. Again, see relied upon portions of Kikama et al., esp. para. 65. Examiner also notes that the courts have ruled that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
With respect to claim 15, Applicant argues that the relied upon prior art fails to render the claimed invention obvious. Examiner disagrees and emphasizes again that the claim is drawn to a duplication of the first nozzle and the second nozzle of claim 1, with the exception of using a single gas supply system for each of the duplicated parts. Terasaki et al. teaches the paired arrangement of the first nozzle and the second nozzle, or the fourth nozzle and a fifth nozzle, as it were. Nishida and Maeda are relied upon to provide additional supporting teachings as to how structurally this duplication could be carried out based on what is known in the prior art, wherein Nishida teaches that more than one purge gas nozzle may be provided in a single apparatus and Maeda teaches how to connect more than one nozzle to a single gas supply source. Again, Examiner also notes that the courts have ruled that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Pubs. No. 2005/0045102; 2020/0211866; 2021/0062335 and JP Pub. Nos. 2000021795 and 3423254 disclose elongated nozzles configurations with various discharge opening configurations.
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.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716
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