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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/10/2025 has been entered.
Claims 1 and 3-12 are pending. Claims 5 and 10 are withdrawn. Claim 2 is cancelled. Claims 11 and 12 are new.
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: cleaning member in claims 1 and 6, supply mechanism in claims 1 and 6, cleaning liquid supply part in claims 1 and 6, a drying unit in claim 1, and rotation part in claim 8.
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.
Based on a review of the specification, a cleaning member is interpreted to include a roll cleaner, a pencil cleaner, or equivalents thereof; a supply mechanism is interpreted to include an ejector, a nozzle, or equivalents thereof; a cleaning liquid supply part is interpreted to include an ejector, a nozzle, or equivalents thereof; a drying unit is interpreted to include a rotator, or equivalents thereof; and a rotation part is interpreted to include a spindle or 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 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.
Claim 12 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.
Regarding claim 12, the phrase “wherein a cover or an air curtain is provided” renders the claim indefinite because the recited cover and air curtain are not positively claimed and it is not clear whether or not they are required structural features of the claimed apparatus. It appears the intended meaning may be that they are not required structural features, and this meaning will be used for purposes of examination.
Claim Rejections - 35 USC § 102 / 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
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, 7-9, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2017/0053816 to Takagi et al. (“Takagi”).
Regarding claim 1, Takagi teaches a substrate cleaning apparatus (abstract) comprising: a cleaning liquid supply part (Fig. 2, ref. 112, 122, para [0034], [0041]) configured to be useful for supplying a cleaning liquid to a substrate; a cleaning member (Fig. 2, ref. 111, para [0034]) configured to contact with the substrate (note ref. SB) to clean the substrate; a supply mechanism (Fig. 2, ref. 112, para [0034]) configured to be useful for supplying an organic solvent including an isopropyl alcohol (para [0039]) for dissolution to the substrate; and a drying unit (Fig. 2, ref. 130, para [0032], [0044]) configured to be useful for drying a cleaning substrate cleaned with isopropyl alcohol (isopropyl alcohol may be added by, e.g., ref. 112 or by hand).
Takagi does not explicitly teach the apparatus being operated in a manner wherein the organic solvent is supplied after the substrate is cleaned by the cleaning member, the organic solvent for dissolution being to dissolve a foreign substance generation factor caused by the cleaning member, or wherein the organic solvent for dissolution is a different type of liquid than the cleaning liquid.
Nor does Takagi explicitly teach the apparatus wherein the cleaning member is configured to be separable from the substrate, and wherein the supply mechanism provides the organic solvent to the substrate while the cleaning member is apart from the substrate.
Initially, it is noted that the recited substrate and fluids are not positively claimed and are not interpreted as required structural features of the claimed apparatus. Further, the Takagi disclosure suggests the cleaning member is configured to be separable from the substrate in at least three ways. First, Takagai suggests a substrate may be placed into and out of contact with the cleaning member (see, e.g., para [0032], [0038]). Second, Takaga Fig. 2, appears to suggest that the cleaning member would be separable from a substrate that isn’t sufficiently thick enough to fill a gap between the cleaning member and a chuck (Fig. 2). Third, Takagi discloses that the cleaning member can be moved in any direction (para [0032], [0043], note, e.g., Fig. 2, X direction).
Since, Takaga discloses the other claimed structural features the Takaga apparatus appears to be fully capable of being operated in the manner recited.
Rejection under 35 U.S.C. 102/103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. MPEP 2112(III)(A).
Once a reference teaching a product appearing to be substantially identical is made the basis of rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden of production shifts to the applicant. MPEP 2112(V).
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP 2112.01(I).
Regarding claim 3, Takagi discloses an apparatus wherein the supply mechanism (Fig. 2, ref. 112, para [0034]) is an ejection part that is fully capable of being operated in a manner wherein it ejects the organic solvent for dissolution to the substrate (para [0039]).
Regarding claim 7, Takagi discloses an apparatus wherein the cleaning member includes a roll cleaning member and a pencil cleaning member (para [0029], [0034]), and appears to be fully capable of being operated in a manner wherein the supply mechanism provides the organic solvent for dissolution to the substrate, after the substrate is cleaned by the roll cleaning member and the pencil cleaning member (note Fig. 2).
Regarding claim 8, Takagi discloses a rotation part (Fig. 2, ref. 132, para [0044]) that rotates the substrate, and the Takagi apparatus appears to be fully capable of being operated in a manner wherein a rotation of the substrate is slower than the rotation of the substrate at a time of cleaning the substrate with a chemical liquid or a rinse liquid, or the rotation of the substrate is stopped, while the organic solvent for dissolution is provided by the supply mechanism (note para [0045]).
Regarding claim 9, the Takagi apparatus appears to be fully capable of being operated in a manner wherein a temperature of the organic solvent for dissolution is 30°C or more and 60°C or less (para [0039]). It is noted that the recited solvent is not affirmatively claimed and is not understood to be a required structural feature of the claimed apparatus.
Regarding claim 11, the Takagi apparatus appears to be fully capable of being operated in a manner wherein the supply mechanism provides the organic solvent while the cleaning member is in a retracted position (para [0032], [0043], note, e.g., Fig. 2, X direction).
Regarding claim 12, the Takagi apparatus appears to be fully capable of being operated in a manner wherein a cover or an air curtain is provided between the substrate and the cleaning member. For example, a cover or air curtain may be provided in a gap created by a thin substrate (Fig. 2, ref. SB) and/or a withdrawn cleaning member (para [0032], [0043], note, e.g., Fig. 2, X direction). Further, a gap may be created by displacing the flexible cleaning member (para [0037]).
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0053816 to Takagi et al. (“Takagi”).
Regarding claim 6, the Takagi apparatus appears to be fully capable of being operated in a manner wherein the cleaning member is used as a cleaning member that contacts with the substrate to clean the substrate, while the organic solvent for dissolution is provided to the substrate (note Fig. 2). Takagi does not explicitly teach that the there is a dedicated cleaning member that is different from the cleaning member. However, the skilled artisan would have found it obvious to modify the Takagi apparatus wherein there are a plurality of the cleaning members, including one that could be designated as a dedicated one, with a reasonable expectation of success, in order to save cleaning time. Note that duplication of parts is prima facie obvious. MPEP 2144.04(VI)(B).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0053816 to Takagi et al. (“Takagi”) in view of US 2007/0181163 to Wada et el. (“Wada”).
Regarding claim 4, Takagi does not explicitly teach the apparatus wherein the ejection part is electrically connected to a ground. However, grounding ejection parts was known in the art as effective for inhibiting static electricity (see, e.g., Wada at, inter alia, para [0037]), and the skilled artisan would have found it obvious to modify the Takagi apparatus as was known wherein the ejection part is electrically connected to a ground, with a reasonable expectation of success, in order to inhibit static electricity.
Response to Arguments
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., IPA-vapor drying hardware) (remarks, page 7, paragraph beginning “The Examiner asserts”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
If applicant intends for the claims to require particular structural features currently being interpreted as an intended use (e.g., as a result of functional language) (see, e.g., remarks, page 9, last full paragraph), applicant may want to positively claim such features (fluids, substrates, structural features performing recited functions, etc.) as required structural features of the claimed apparatus.
If applicant intends for method steps to be considered structural features in the present apparatus claim, applicant may want to positively claim a computer readable medium comprising instruction that, when executed, cause the claimed apparatus to perform the steps (being mindful not to introduce new matter).
In response to applicant's argument that the applied art does not explicitly teach operating the apparatus in a manner wherein the organic solvent is provided while the cleaning member is apart from the substrate (remarks, paragraph bridging pages 7-8), or using an organic solvent that is different than cleaning liquid (remarks, page 8, last paragraph), 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.
Applicant’s assertion that operating the Takagi apparatus as contemplated by the present claims would change the principle of operation of Takagi (remarks, page 10, first paragraph), is unpersuasive. Even if, arguendo, applicant’s assertion is correct, such that the Takagi operation referred to by applicant isn’t merely one possible use contemplated by Takagi, the test when examining apparatuses is whether or not the applied art apparatus is capable of being operated in the manner recited, not whether or not operating the applied art in the manner recited would conform to the operation(s) contemplated by the applied art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC GOLIGHTLY whose telephone number is (571)270-3715. The examiner can normally be reached M-F: 10 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kaj Olsen can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC W GOLIGHTLY/Primary Examiner, Art Unit 1714