DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 06/02/2026 without traverse of Group I, species I-3, claims 1, 4 & 6-9 for further examination. Claims 2-3, 5, & 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 01/04/2024 is being considered by the examiner.
Claim Interpretation
5. In claims 1 & 4, without “configured to” language between the controller and the claimed operations, the limitations “that executes control for measurement, wherein the controller controls to: introduce the plating solution into the reaction container by the plating solution introduction mechanism to deposit the metal film on the deposition member; introduce the etching solution into the reaction container by the etching solution introduction mechanism after the plating solution in the reaction container is discharged, so as to dissolve the metal film deposited on the deposition member; and use the measurement equipment to measure the metal concentration-related value of the etching solution, which has dissolved the metal film, and estimates a deposition status of the metal film in the plating tank on the basis of the metal concentration-related value” and “estimates a deposition rate in the plating tank as the deposition status” have been given their broadest reasonable interpretation and thus interpreted as an intended use of a programmable computer.
Although the claims are interpreted in light of the specification, it is improper to import claim limitations from the specification (see MPEP 2111). The current claim limitation does not require the controller actually operate in accordance with the recited functions. The prior art controller need only be capable of operating in the claimed manner (see MPEP 2114(IV)).
Claim Interpretation
6. 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-AlA 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: “plating solution introduction mechanism” in claim 1; “etching solution introduction mechanism” in claim 1; “measurement equipment” in claims 1 & 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AlA 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 wishes to provide further explanation or dispute the examiner' s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1, 4 & 6-9 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, lines 11-12, 23-24 & 26-27 recites “metal concentration-related value”. This phrase renders the claim indefinite because the claim includes elements not actually disclosed (i.e. those encompassed by "related"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d). For examination purposes, examiner is interpreting “metal concentration-related value” as any value. To correct this problem, amend claim 1 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 6, line 4 recites “close” which is a relative term and renders the claim indefinite. The term “close” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. See MPEP 2173.05(b). For examination purposes, examiner is interpreting “close” as any degree. To correct this problem, amend claim 6 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 4 & 6-9 are rejected at least based on their dependency from claim 1.
Because the claims are indefinite, assessing the scope of the claim in its entirety and establishing a further rejection would require speculation with regard to the metes and bounds of the claimed subject matter. Additionally, it is not clear which problem the
invention is trying to solve, and how the technical features contribute to it. As far as understood from the application, the invention aims at providing a reaction container, a plating solution introduction mechanism that introduces a plating solution in a plating tank into the reaction container, an etching solution introduction mechanism that introduces an etching solution into the reaction container, a measurement equipment that measures a value and a controller that executes control for measurement and estimates a deposition status on the basis of the metal value. However, these features are known to one of ordinary skill in the art and disclosed in Matsumoto et al. (JP S61-276978 A) & Iwasaki et al. (US 5,376,214 A). After resolving the AIA 35 U.S.C. 112(b) issues, the Applicant is therefore invited to provide amendments/arguments in support of the inventive features, particularly emphasis should be given to the features, technical effect and to the problem to be solved.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei D. Yuan can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights