DETAILED ACTION
Status of Claims
Claims 1-9 and 11-20 are pending.
Claim 10 is cancelled.
Claims 14-20 are withdrawn from consideration.
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 .
Status of Objections and Rejections
The previous grounds of rejection stand.
New grounds of rejection under 35 U.S.C. 112a are necessitated by amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9 and 11-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 9 and 11-13 now depend directly or indirectly on claim 1. Claims 1, 9 and 11-13 are directed towards a seal (in the preamble). Claims 9 and 11-13 recite the monolithic electroplating seal…further comprising…an annular busbar (claim 9), a backing plate (claim 12), wherein the annular busbar (claim 13), however, the seal comprising the busbar and/or backing plate contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is a lack of support for the seal comprising the busbar or backing plate. These elements appear to be separate and the busbar and backing plate are not further limiting to the claimed seal.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hanson et al. (US 2019/0323141), in view of Davis et al. (US 2003/0085119) and in view of Victor et al. (US 5,092,612).
Regarding claim 1, Hanson discloses an electroplating seal (title) (= a monolithic electroplating seal) comprising:
An external seal member (230) (Figure 2) [0029] comprising an inner sidewall (237), and outer sidewall (239) and an external seal member body having an interior surface (240) and an exterior surface (242) which oppose each other, wherein the external seal member (230) includes a thermoplastic polymer and a glass filler [0007], [0030]-[0031] (= an external seal member comprising an inner annular radius, an outer annular radius, and an external seal member body defined between an exterior surface and an interior surface opposite the exterior surface, the exterior surface being formed from at least one polymer layer, and wherein the external seal member body comprises a filler), and
An internal seal member (235) extending along an interior surface (24) of the external seal member (230) from the inner sidewall (237) along a first distance, wherein the internal seal member (235) includes thermoplastic vulcanizate or styrene ethylene butylene styrene [0007], [0029] (= an internal seal member formed integrally with and extending along at least a portion of the interior surface of the external seal member from the inner annular radius toward the outer annular radius, wherein the internal seal member comprises a deformable thermoplastic elastomer).
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Figures 2-3 of Hanson et al.
Regarding the claimed “monolithic” electroplating seal of the preamble, there does not appear to be any structural requirement within the body of the claim to further limit the structure according to the term. The seal of Hanson appears to be the same or similar two member including an external and an internal seal member as claimed and within the instant specification therefore the seal members of Hanson read on the claimed monolithic of the preamble and the claimed formed integrally with.
Hanson differs from the instant claim in that Hanson fails to disclose the at least one polymer layer comprising a porosity of less than or about 10 vol%.
In the same or similar field of wafer electroplating [0003], Davis discloses an apparatus comprising a low-profile seal (abstract) having a preferred polymer coating which is relatively soft and highly hydrophobic so that it tends to flatten in contact with a wafer surface and repel plating solution to form a very effective seal [0014]. Davis discloses that the polymer is provided to attain a desired property including low porosity [0028].
Davis is silent in regards to a vol % which equates to low porosity therefore in order to produce the seal of Hanson in view of Davis one of ordinary skilled in the art would look to the related art for vol % to produce a seal with low porosity. Victor discloses producing a seal having a pore volume of less than 1% to provide low porosity (Col. 4 lines 36-48). Victor discloses that the low pore volume and low surface roughness contribute to a reduction in leakage rate (Col. 7 lines 3-8).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to produce a seal comprising low porosity including a porosity of less than or about 10 vol % because Davis discloses that it is preferred to have a polymer coating with low porosity and Victor discloses that a seal with low porosity is on the scale of less than 1 % pore volume to provide a reduction in leakage.
Regarding claim 2, Hanson discloses wherein a portion of the exterior surface (242) of the external seal member (230) defines one or more sloped features (Figures 2-3).
Regarding claim 3, the slope of the external surface appears to fall within the claimed range of 1-45 ̊ (Figure 2) having a relative angle to a second portion of the exterior surface.
Regarding claim 4, the instant claim is presented as product by process claim language which determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Moreover, Hanson discloses the seal member being formed by molding [0038]. Davis discloses forming the polymer material through liquid spraying or powder coating [0029]. There does not appear to be any structural difference between the claimed seal and the seal of Hanson in view of Davis and Victor.
Regarding claims 5-6 and 8, Hanson discloses wherein at least one polymer layer forming the exterior surface comprises thermoplastic polymer including polypropylene and glass filled polypropylene [0007]. Hanson discloses the glass filling in an amount of 10-70 % [0041]. Hanson discloses the internal seal member comprising thermoplastic vulcanizate or styrene ethylene butylene styrene [0007].
Regarding claim 7, the term “generally” free of adhesives is relative and does not explicitly disclose an amount of adhesives and/or metal support present. Hanson discloses the seal is formed of glass filled polypropylene or thermoplastic vulcanizate or styrene ethylene butylene styrene and therefore does appear to be generally free of adhesives and/or metal support members.
Response to Arguments
Applicant's arguments filed 9 February 2026 have been fully considered but they are not persuasive. On page 6 the argument states that the combination of prior art does not disclose the claimed monolithic and the claimed formed integrally with. The Examiner respectfully disagrees with this analysis. The claimed monolithic is recited in the preamble. The exterior seal member (230) and the interior seal member (235) of Hanson et al. are formed integrally since they are connected with each other in an abutting, direct relationship (Figures 2-3). Hanson explicitly states that the internal seal member and the exterior seal member may be bonded or coupled together to form seal member (210) [0029]. A teaching of Hanson that the two seals are separable or removably coupled is not a teaching away of the seals being integrally formed. In response, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP § 2123(11)). A reference is not limited to the working examples, see In re Fracalossi, 215 USPQ569 (CCPA 1982).
On pages 6-7 the argument is directed towards the combination of Davis and Victor and the argument states that one of ordinary skill in the art would not combine the teachings to arrive at the claimed invention because for example Davis teaches a soft seal and Victor discloses a hard seal. The Examiner respectfully disagrees with this analysis. Davis discloses that the polymer is provided to attain a desired property including low porosity [0028]. Victor discloses low pore volume and low surface roughness in the regions of end faces of the sealing rings in which the recesses are not provided, appear to contribute substantially to a reduction in the leakage rate (Col. 7 lines 3-8). The terms ‘hard’ and ‘soft’ of the prior art are relative terms and not limiting to particular parameters of the seal. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Seals intrinsically are utilized for the purpose of sealing against fluids, liquids, gas, etc. and therefore combining characteristics of different seals is an obvious engineering design choice since they produce the same or similar predictable result of sealing.
Conclusion
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 STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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/Stefanie S Wittenberg/Primary Examiner, Art Unit 1795
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