Prosecution Insights
Last updated: April 19, 2026
Application No. 18/259,885

SURFACE TREATMENT APPARATUS AND SURFACE TREATMENT METHOD

Non-Final OA §103§112
Filed
Jun 29, 2023
Examiner
BRAYTON, JOHN JOSEPH
Art Unit
1794
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Shibaura Machine Co. Ltd.
OA Round
5 (Non-Final)
48%
Grant Probability
Moderate
5-6
OA Rounds
3y 11m
To Grant
70%
With Interview

Examiner Intelligence

Grants 48% of resolved cases
48%
Career Allow Rate
338 granted / 707 resolved
-17.2% vs TC avg
Strong +22% interview lift
Without
With
+22.3%
Interview Lift
resolved cases with interview
Typical timeline
3y 11m
Avg Prosecution
28 currently pending
Career history
735
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
55.8%
+15.8% vs TC avg
§102
20.8%
-19.2% vs TC avg
§112
18.6%
-21.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 707 resolved cases

Office Action

§103 §112
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 . Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 17, 2026 has been entered. 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 and 12 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 12 recite the limitation "uniquely determined" in line 11. The Examiner cannot determine the metes and bounds of “uniquely determined” and suggests deleting “uniquely” to traverse the rejection. Claim Rejections - 35 USC § 103 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. Claims 1-3, 9, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2012/0067279) in view of Hiraga (JP 52-59078) and Teer (US 6,423,419). Regarding claim 1, Wang teaches a surface treatment apparatus comprising: a mounting device (30, 34) on which a workpiece which has a planar portion is mounted; a housing unit (310, chamber) that houses the workpiece mounted on the mounting device; a conveyance device (10) that conveys the workpiece mounted on the mounting device (30, 34); a surface treatment device (320, [0023], Fig. 5), which is installed to face both surfaces of the workpiece (Fig. 5), performs a surface treatment on the workpiece housed in the housing unit; and a first adjustment device (37) that adjusts an orientation (39, 33, 34, fig. 3) of the direction of workpiece in a direction uniquely determined according to a conveyance position by the conveyance device (10) and a position of the surface treatment device (320, [0019-0021]). Wang teaches its conveyance device rotates the workpiece by movement of wheels 13, drive unit 50, and a rod 15 that drive gears 17 and 19 to move other associated gears. See figures 3 and 4. As the conveyance device moves through the chamber the orientation of the workpiece is adjusted according to its position, as conveyed by device 10, within the chamber and the position of the surface treatment device. Wang is directed to forming thin films uniformly on electronic devices [0003]. Wang teaches depositing [0002] but does not teach a system capable of performing a plurality of surfaces treatments. Wang does not teach a surface treatment device moving in direction orthogonal to the conveyance device to adjust the distance to the workpiece. Hiraga teaches a surface treatment device (sputtering target 6) moving in direction orthogonal to the substrate (5, Fig. 1) to adjust the distance to the workpiece (substrate 5). Therefore Hiraga teaches it is well known in the art to move a target towards or away from a substrate orthogonally. Because Hiraga teaches this movement is operable it would have been obvious to one of ordinary skill in the art at the time of invention to move the surface treatment device in orthogonal direction to the substrate to adjust the distance between the target and substrate with a reasonable expectation of success, namely to optimize sputtering under various different conditions. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combinations yielded nothing more than predictable results to one of ordinary skill in the art. MPEP 2143. A. Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the conveyance device of Wang by providing a surface treatment device moving in direction orthogonal to the conveyance device to adjust the distance to the workpiece, as taught by Hiraga, because it would optimize sputtering for various different conditions (see translation). Teer directed to a sputtering apparatus teaches sputtering targets are inherently capable of performing plurality of surface treatments such as sputtering and ion cleaning (col. 9-10). Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the surface treatment of Wang by providing a plurality of surfaces treatments, as taught by Teer, because cleaning of the substrate allowing for very good adhesion between coating and substrate and also reduce contamination during deposition (col. 5, ln. 1-20). Regarding claim 2, Wang teaches wherein the first adjustment device (37) adjusts the orientation of the workpiece around an axis (vertical axis) orthogonal to both a conveyance direction (direction of 330 fig. 5) of the conveyance device and a normal direction of an electrode (320, horizontal axis) included in the surface treatment device. Regarding claim 3, Wang teaches the first adjustment device (37) adjusts the orientation of the workpiece around a normal direction of the workpiece (Fig. 1). Regarding claim 9, Wang does not teach the surface treatment device is a plasma generation apparatus that performs surface treatment of the workpiece by irradiating the workpiece with plasma. Teer teaches the surface treatment device is a plasma generation apparatus that performs surface treatment of the workpiece by irradiating the workpiece with plasma (ion cleaning, col. 5, ln. 1-20). Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the surface treatment device of Wang by providing the surface treatment device is a plasma generation apparatus that performs surface treatment of the workpiece by irradiating the workpiece with plasma, as taught by Teer, cause cleaning of the substrate allowing for very good adhesion between coating and substrate and also reduce contamination during deposition (col. 5, ln. 1-20). Regarding claim 10, Wang does not teach the surface treatment device is a sputtering apparatus that performs sputtering on the workpiece. Teer teach the surface treatment device is a sputtering apparatus that performs sputtering on the workpiece (col. 9 -10). Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the surface treatment device of Wang by providing he surface treatment device is a sputtering apparatus that performs sputtering on the workpiece, as taught by Teer, because it would allow the work to receive a variety of thin coatings deposited by sputtering that are well adhered to the substrate (col 10, ln. 40-65). Regarding claim 12, Wang teaches a surface treatment method comprising: performing surface treatment while conveying a mounting device (30, 34) on which a workpiece is mounted, along a surface treatment device (320, fig. 5 [0023]) in a housing unit (310, fig. 5) which is installed to face both surfaces of the workpiece ([0023], fig. 5), and adjusting an orientation of the direction of the workpiece in a direction uniquely determined according to a conveyance position of the workpiece and a position of the surface treatment device (320). Wang teaches its conveyance device rotates the workpiece by movement of wheels 13, drive unit 50, and a rod 15 that drive gears 17 and 19 to move other associated gears [0019-0021]. See figures 3 and 4. As the conveyance device moves through the chamber the orientation of the workpiece is adjusted according to its position, as conveyed by device 10, within the chamber and the position of the surface treatment device. Wang is directed to forming thin films uniformly on electronic devices [0003]. Wang teaches depositing [0002] but does not teach a surface treatment device that performs a plurality of kinds of surface treatments treatment on the workpiece. Wang does not teach a surface treatment device moving in direction orthogonal to the conveyance device to adjust the distance to the workpiece. Hiraga teaches a surface treatment device (sputtering target 6) moving in direction orthogonal to the substrate (5, Fig. 1) to adjust the distance to the workpiece (substrate 5). Therefore Hiraga teaches it is well known in the art to move a target towards or away from a substrate orthogonally. Because Hiraga teaches this movement is operable it would have been obvious to one of ordinary skill in the art at the time of invention to move the surface treatment device in orthogonal direction to the substrate to adjust the distance between the target and substrate with a reasonable expectation of success, namely to optimize sputtering under various different conditions. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combinations yielded nothing more than predictable results to one of ordinary skill in the art. MPEP 2143. A. Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the conveyance device of Wang by providing a surface treatment device moving in direction orthogonal to the conveyance device to adjust the distance to the workpiece, as taught by Hiraga, because it would optimize sputtering for various different conditions (see translation). Teer directed to a sputtering apparatus teaches sputtering targets performing plurality of surface treatments such as sputtering and ion cleaning (col. 9-10). Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the surface treatment of Wang by providing a plurality of surfaces treatments, as taught by Teer, because cleaning the substrate allows for very good adhesion between coating and substrate and also reduces contamination during deposition (col. 5, ln. 1-20). Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Wang, Hiraga and Teer as applied to claim 1 above in view of (JP 65-48856) Regarding claim 4, Wang does not teach a measurement device that measures distortion in a height direction of the workpiece before the surface treatment device performs surface treatment; and a second adjustment device that adjusts an inclination in the height direction of the workpiece to a predetermined value based on the distortion measured by the measurement device. ‘856 teaches a measurement device (position sensor top of pg. 7) that measures distortion in a height direction of the workpiece before the surface treatment device performs surface treatment (D, Fig. 2); and a second adjustment device (14b) that adjusts an inclination in the height direction of the workpiece (S) to a predetermined value based on the distortion measured by the measurement device (pg. 8, top 2 paragraphs). Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the apparatus of Wang by providing a measurement device that measures distortion in a height direction of the workpiece before the surface treatment device performs surface treatment, and a second adjustment device that adjusts an inclination in the height direction of the workpiece to a predetermined value based on the distortion measured by the measurement device, as taught by ‘856, because it would compensate for the difference in deposition efficiency based on the inclination of the substrate and reducing the variation in the thickness of the deposition film (bottom of page 5). Regarding claim 5, Wang does not teach the measurement device measures the distortion in the height direction of the workpiece based on distances between the measurement device and the workpiece measured at a plurality of different positions in the height direction of the workpiece. ‘856 teaches the measurement device (position sensor, top of page 7) measures the distortion in the height direction of the workpiece based on distances between the measurement device and the workpiece measured at a plurality of different positions in the height direction of the workpiece (D, Fig. 2). Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the apparatus of Wang by providing the measurement device measures the distortion in the height direction of the workpiece based on distances between the measurement device and the workpiece measured at a plurality of different positions in the height direction of the workpiece, as taught by ‘856 because it would compensate for the difference in deposition efficiency based on the inclination of the substrate and reducing the variation in the thickness of the deposition film (bottom of page 5). Claims 6, 7, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wang, Hiraga and Teer as applied to claim 1 above, and further in view of Schrauwen (NL 1010531). Regarding claim 6, Wang teaches the mounting device includes a pedestal member (33) that is conveyed by the conveyance device; a base member(34) that is installed on the pedestal member (33) and fixes the workpiece. Wang does not teach a support member that supports the workpiece on the base member. Schrauwen teach a support member (34 extension shaft) that supports the workpiece on the base member (19, fig. 10). Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the base member of Wang by providing a support member that supports the workpiece on the base member, as taught by Schrauwen, because it would allow the height of the objects to be processed on the carrier (bottom of page 5). Regarding claim 7, Wang does not teach a width of an electrode included in the surface treatment device along a conveyance direction of the conveyance device is smaller than a width of the workpiece along the conveyance direction of the conveyance device. Schrauwen teaches a width of an electrode (58) included in the surface treatment device (2) along a conveyance direction of the conveyance device is smaller than a width of the workpiece 24 along the conveyance direction of the conveyance device (See Fig. 9 and 10; pg. 6). Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the a width of an electrode of Wang by providing the electrode is included in the surface treatment device along a conveyance direction of the conveyance device is smaller than a width of the workpiece along the conveyance direction of the conveyance device because simple substitution of one known element for another yields predictable results to one of ordinary skill in the art. Regarding claim 11, Wang does not teach a shielding member that blocks a surface treatment device other than one of a plurality of surface treatment devices when it performs surface treatment on the workpiece. Schrauwen teaches a shielding member (59, Fig. 9) that blocks a surface treatment device other than one of a plurality of surface treatment devices when it performs surface treatment on the workpiece (24, pg. 6). Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the apparatus of Wang by providing a shielding member that blocks a surface treatment device other than one of a plurality of surface treatment devices when it performs surface treatment on the workpiece, as taught by Schrauwen, because it would divide the chamber into two halves allowing one side for active sputtering and another inactive side (pg. 7). Response to Arguments Applicant’s arguments with respect to claims have been considered but are moot in light of the new grounds of rejection. Regarding claims 1 and 12, Applicant argues that Wang does not adjust the orientation of the workpiece to be treated according to the conveying position. The Examiner does not agree because the orientation of the workpiece is controlled by movement of the conveying device and therefore as its position changes through the treatment chamber the orientation of the workpiece is also adjusted. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN J BRAYTON whose telephone number is (571)270-3084. The examiner can normally be reached 9AM-5PM EST M-F. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 571 272 8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOHN J BRAYTON/Primary Examiner, Art Unit 1794
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Prosecution Timeline

Jun 29, 2023
Application Filed
Aug 28, 2024
Non-Final Rejection — §103, §112
Dec 03, 2024
Response Filed
Jan 16, 2025
Final Rejection — §103, §112
Apr 22, 2025
Response after Non-Final Action
Jun 23, 2025
Request for Continued Examination
Jun 27, 2025
Response after Non-Final Action
Jul 30, 2025
Non-Final Rejection — §103, §112
Nov 03, 2025
Response Filed
Nov 13, 2025
Final Rejection — §103, §112
Feb 17, 2026
Response after Non-Final Action
Mar 17, 2026
Request for Continued Examination
Mar 21, 2026
Response after Non-Final Action
Mar 25, 2026
Non-Final Rejection — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

5-6
Expected OA Rounds
48%
Grant Probability
70%
With Interview (+22.3%)
3y 11m
Median Time to Grant
High
PTA Risk
Based on 707 resolved cases by this examiner. Grant probability derived from career allow rate.

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