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 .
Election/Restrictions
Applicant’s election without traverse of Invention II, Species C and Species E (corresponding to claims 8, 10-12 and 14-16) in the reply filed on 10 November 2025 was previously acknowledged.
Claims 1-7, 9, 13 and 17-20 were previously withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the aforementioned reply. Claims 9 and 13 remain withdrawn. Claims 1-7, 10, 12 and 17-20 have been cancelled.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the plurality of support sticks comprise a second flow path connected to the negative pressure generating part to adhere the mask to the support sticks, the second flow path comprising a second redirection portion in a cross-section perpendicular to the first surface facing the mask, the second shape being selected from bent, curved, cornered and angled” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 8 negative pressure generating part which has been interpreted as a vacuum pump and equivalents thereto, as set forth, e.g., in para. 95; claim 8 bonding portion (i.e. portion for bonding) has been interpreted as a welding protrusion and equivalents thereto, as set forth, e.g., in the specification at para. 154.
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 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.
Claim 16 is 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 16 is 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. Any claim specifically mentioned is rejected based on its dependence.
As presently claimed, Examiner is unable to find original support for how the claimed first flow path, second flow path, and negative pressure generating part function and are arranged with respect to one another to adhere the mask to the support sticks (as illustrated, e.g., in Figs. 12-13) and the mask to the mask frame (as illustrated, e.g., in Figs 1-2, 5A). In order to expedite examination, the claims have been examined as written to Examiner’s best ability, regardless of overall clarity or original support.
Clarification and/or correction is requested.
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 16 is 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. Any claim specifically mentioned is rejected based on its dependence.
As presently claimed, it is not clear how the claimed the claimed first flow path, second flow path, and negative pressure generating part function and are arranged with respect to one another to adhere the mask to the support sticks (as illustrated, e.g., in Figs. 12-13) and the mask to the mask frame (as illustrated, e.g., in Figs 1-2, 5A). In order to expedite examination, the claims have been examined as written to Examiner’s best ability, regardless of overall clarity or original support.
Clarification and/or correction is requested.
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) 8, 11 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2003/0179354 to Araki et al. in view of KR Patent Pub. No. 10-2020-0093487 to Lee.
Regarding claim 8: In Fig. 14 and the accompanying text (also see annotated figure below), Araki et al. disclose a mask assembly substantially as claimed and comprising: a mask frame (262) comprising a top surface, a bottom surface opposite the top surface, an inside surface, an outside surface opposite the inside surface, a frame opening defined by the inside surface, a frame opening (267) defined by the inside surface, and a first flow path (264), the first flow path extending through the mask frame; a mask (212) disposed on the top surface of the mask frame; and a negative pressure generating part (266), the first flow path connected to the negative pressure generating part to allow the mask to be adhered to the mask frame, wherein the first flow path comprises a redirection portion (see corner/angle of path 264) having a first shape in a cross-section perpendicular to the top surface facing the mask, the first shape being selected from bent, curved, cornered, and angled; wherein the first flow path further comprises: a first opening extending in a first direction from the top surface of the mask frame that faces the mask; and a second opening extending in a second direction different from the first direction from the outside surface of the mask frame that face the negative pressure generating part. .
However, Araki et al. fail to disclose the mask frame further comprises a bonding portion bonded to the mask the bonding portion being spaced apart from the first flow path by a predetermined distance.
In Figs. 12-14 thereof, e.g., Lee discloses providing a mask frame (200) further comprising a bonding portion (WB bonded to a mask (100, the bonding portion being spaced apart from a first flow path (229) by a predetermined distance for the purpose of integrally connecting the mask and mask frame (also 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 in Araki et al. a bonding portion (WB) bonded to a mask (100), the bonding portion being spaced apart from a first flow path (229) by a predetermined distance for the purpose of integrally connecting the mask and mask frame as taught by Lee.
With respect to claim 11, in modified Araki et al., Araki et al. disclose an angle between the first opening and the second opening is greater than about zero (0) degrees and equal to or less than about ninety (90) degrees. See, e.g., Fig. 14.
With respect to claim 14, in modified Araki et al., as set forth above, Lee teaches the mask and themask frame bonding arrangement, wherein the mask frame comprises a plurality of rows of first flow paths, the bonding portion being disposed between ones of the plurality of rows of the first flow paths. See, e.g., Figs. 13 and 14. It is also noted that 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).
With respect to claim 15, in modified Araki et al., Lee disclose a configuration wherein a plurality masks/support sticks (e.g. 223 and 225, rather than peripheral area 221) are disposed on the mask frame. With reference to Araki et al., which discloses a single mask/support stick) disposed on the mask frame, it is noted that 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).
Response to Arguments
Applicant’s arguments with respect to claim(s) 8, 11 and 14-16 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.
In response to Applicant’s remarks, Examiner does note that the fact that a claim not previously presented (e.g. amended claim 8, which notably is not now exactly commensurate to previous claim 8 and/or previous claim 12), was not previously rejected by a prior art reference does not mean that one may safely assume that the newly presented claims will be allowable over that particular prior art reference. Examiner also notes that the previous office action found all presented claims to be anticipated by single prior art references. However, these same prior art references can also be used in obviousness rejections, similar, but not limited to, the rejections presented above according to normal US patent examination procedures.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent No. 4,963,921 discloses a mask with a bent flow path and a negative pressure generating part. USP Pubs. 2015/0007767; 2016/0296966; and 2023/0062020 disclose mask assemblies including various configurations of frames, masks, and sticks.
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 KARLA MOORE whose telephone number is (571)272-1440. The examiner can normally be reached Monday-Friday, 9am-6pm EST.
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, PARVIZ HASSANZADEH can be reached at (571) 272-1435. 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.
/KARLA A MOORE/Primary Examiner, Art Unit 1716
Prosecution Insights