DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 06/30/2026 without traverse of Group I, first species I-1A, however Applicant did not respond to the second species election as required in the 05/01/2026 Office Action. During a telephone conversation with John Bollinger on 09/21/2026, Applicant elected of Group I, species I-2B, claims 1-2, 7, 10, 12-14 to satisfy the species election as required in the 05/01/2026 Office Action. Claims 3-6, 8-9, 11 & 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 statements (IDS) submitted on 02/02/2024, 10/02/2024 & 03/13/2025 are being considered by the examiner.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1-2, 7, 10-11, 13-14 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 10-13 recite “in a case where a number X of the substrates is smaller than a maximum loading number Y of the substrate holder, and the substrate holder includes, at a central portion, the first region where the dispersion loading is performed” which is a conditional limitation depending on a case, thus not a positive recitation of any apparatus/device claim limitation. For examination purposes, examiner is interpreting “in a case where a number X of the substrates is smaller than a maximum loading number Y of the substrate holder, and the substrate holder includes, at a central portion, the first region where the dispersion loading is performed” as optional case and it may be but doesn’t have to be the case. 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 1, lines 12-13 recites the limitation “a central portion”, however “a central portion” is previously recited in line 9-10, thus unclear whether they are the same or different. For examination purposes, examiner is interpreting “a central portion” as “the central portion”. To correct this problem, amend lines 12-13 to recite “the central portion”.
Claims 2, 7, 10-11, 13-14 are rejected at least based on their dependency from claim 1.
Claim Rejections
7. 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 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.
8. 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 Rejections - 35 USC § 102
9. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
10. Claims 1-2, 7, 10, 12-14 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Kaga et al. (JP 2019-178430 A) hereinafter Kaga (the terminology of the claims in the application is used, but the references of Kaga are included between parentheses).
Regarding claim 1, the recitation “in a case where a number X of the substrates is smaller than a maximum loading number Y of the substrate holder, and the substrate holder includes, at a central portion, the first region where the dispersion loading is performed”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Kaga since Kaga meets all the structural elements of the claim and is capable in a case where a number X of the substrates is smaller than a maximum loading number Y of the substrate holder, and the substrate holder includes, at a central portion, the first region where the dispersion loading is performed, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Kaga discloses a substrate processing apparatus (abs; fig 1), comprising:
a process container (201) capable of accommodating a substrate holder (217) that holds substrates (200,601) ([0012]-[0013]; [0024]; [0026]; fig 1);
a gas supplier (310+320) that supplies a gas to the process container (201) ([0019]-[0021]; fig 1);
an exhauster (231+243+246) that exhausts an atmosphere in the process container (201) ([0012]-[0013]; [0023]; fig 1);
a transporter (115) that transports the substrates (200,601) ([0012]-[0013]; [0024]; [0026]; fig 1); and
a controller (121) configured to be capable of controlling the transporter (115) to dispersedly load (see fig 6 & 9, dispersedly loaded/positioned) the substrates (200,601) from a central portion of a first region (see fig 6 & 9, region between 601 on the lower end side and 601 on the upper end side, including the center) in a case where a number X of the substrates (200,601) is smaller than a maximum loading number Y of the substrate holder (217), and the substrate holder (217) includes, at the central portion (see fig 6 & 9, region between 601 on the lower end side and 601 on the upper end side, including the center), the first region (see fig 6 & 9, region between 601 on the lower end side and 601 on the upper end side, including the center) where the dispersion loading (see fig 6 & 9, dispersedly loaded/positioned) is performed ([0012]-[0013]; [0024]; [0026]; [0028]-[0052]; [0097]-[0103]; fig 1, 6, 9).
Regarding claim 2, the recitation “be capable of setting a size of the first region based on the number X”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Kaga since Kaga meets all the structural elements of the claim and is capable of setting a size of the first region based on the number X, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 2, Kaga discloses a substrate processing apparatus (abs; fig 1), wherein the controller (121) is configured to be capable of setting a size of the first region (see fig 6 & 9, region between 601 on the lower end side and 601 on the upper end side) based on the number X ([0012]-[0013]; [0024]; [0026]; [0028]-[0052]; [0097]-[0103]; fig 1, 6, 9).
Regarding claim 7, the recitation “be capable of controlling the transporter to sequentially load the substrates in the second region”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Kaga since Kaga meets all the structural elements of the claim and is capable of controlling the transporter to sequentially load the substrates in the second region, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 7, Kaga discloses a substrate processing apparatus (abs; fig 1), wherein the substrate holder (217) includes, on an upper end side and a lower end side, a second region (see fig 6 & 9, region other than the first region between 601 on the lower end side and 601 on the upper end side) where the substrates (200,601) are sequentially loaded, and the controller (121) is configured to be capable of controlling the transporter (115) to sequentially load the substrates (200,601) in the second region (see fig 6 & 9, region other than the first region between 601 on the lower end side and 601 on the upper end side) ([0012]-[0013]; [0024]; [0026]; [0028]-[0052]; [0097]-[0103]; fig 1, 6, 9).
As regards to claim 10, Kaga discloses a substrate processing apparatus (abs; fig 1) further comprising: a first nozzle (410) in which first supply holes (410a) through which a gas is supplied to the upper end side of the substrate holder (217); and a second nozzle (420) in which second supply holes (420a) through which a gas is supplied to the lower end side of the substrate holder (217), wherein the second region (see fig 6 & 9, region other than the first region between 601 on the lower end side and 601 on the upper end side) outside the first region (see fig 6 & 9, region between 601 on the lower end side and 601 on the upper end side) is provided at a position close to one of the first supply holes (410a) or the second supply holes (420a) ([0013]; [0015]-[0017]; [0019]-[0022]; [0027]; [0077]-[0078]; [0081]; [0086]; [0089]; fig 1).
Regarding claim 12, the recitation “be capable of supplying a process gas from one or both of the first nozzle and the second nozzle”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Kaga since Kaga meets all the structural elements of the claim and is capable of supplying a process gas from one or both of the first nozzle and the second nozzle, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 12, Kaga discloses a substrate processing apparatus (abs; fig 1), wherein the gas supplier (310+320) is configured to be capable of supplying a process gas from one or both of the first nozzle (410) and the second nozzle (420) ([0013]; [0015]-[0017]; [0019]-[0022]; [0027]; [0077]-[0078]; [0081]; [0086]; [0089]; fig 1).
Regarding claim 13, the recitation “wherein the process gas is one or both of a raw material gas and a reaction gas”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Kaga since Kaga meets all the structural elements of the claim and is capable of the process gas being one or both of a raw material gas and a reaction gas, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 13, Kaga discloses a substrate processing apparatus (abs; fig 1), wherein the process gas is capable of being one or both of a raw material gas and a reaction gas ([0013]; [0015]-[0017]; [0019]-[0022]; [0027]; [0077]-[0078]; [0081]; [0086]; [0089]; fig 1).
Regarding claim 14, the recitation “wherein the substrates are product substrates, and one or more dummy substrates are loaded between the product substrates in the first region where the dispersion loading is performed”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Kaga since Kaga meets all the structural elements of the claim and is capable of the substrates being product substrates, and one or more dummy substrates are capable of being loaded between the product substrates in the first region where the dispersion loading is performed, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 14, Kaga discloses a substrate processing apparatus (abs; fig 1), wherein the substrates (200,601) are capable of being product substrates (200,601), and one or more dummy substrates (200,601) are capable of being loaded between the product substrates (200,601) in the first region (see fig 6 & 9, region between 601 on the lower end side and 601 on the upper end side) where the dispersion loading is performed ([0012]-[0013]; [0024]; [0026]; [0028]-[0052]; [0097]-[0103]; fig 1, 6, 9).
Conclusion
11. 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.
12. 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..
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, 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