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 .
Claims Status
The amendment filed 03/26/2026 has been entered. Claims 1-6 and 9-14 are pending. Claims 10-14 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/04/2025 and on 07/01/2025. Claims 1-6 and 9 are under examination on the merits.
In the amendment filed 03/26/2026, claims 1, 4, 6, and 9 were amended, claims 7-8 were canceled, and no claims were newly added.
Election/Restrictions
Applicant’s election of Species A (embodiment of Fig 1 including liquid coating device 500 and bake device 600), claims 1-9, in the reply filed on 11/04/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant’s election of Invention I (apparatus), claims 1-13 in the reply filed on 07/01/2025 remains acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-14 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/04/2025 and on 07/01/2025.
Claim Interpretation
The claim term “controller” is interpreted as a control structure for the apparatus consistent with the instant specification [0033].
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 (e.g. “device”) 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:
“polishing device” in claim 1-4, 6, and 9 interpreted as either (i) a polishing pad 310, a polishing table 330, a top ring 331, a polishing liquid supply nozzle 332, a dresser, and an atomizer [0024]; or (ii) a polishing pad [0089]; and equivalents thereof.
“coating device” in claim 6 and 9 interpreted as any one of (i) a table 502, a motor 504 for rotating the table, a rinse water nozzle 506, a rinse water pipe 508, an on-off valve 510, a nozzle 512, a pipe 514, and an on-off valve 516 [0038]; or (ii) a tank storing the silane coupling agent or resin protective film agent into which the substrate is put [0044]; or (iii) a table for rotating and drying the substrate, a nozzle for supplying the silane coupling agent or the resin protective film agent to the substrate, and an on-off valve for adjusting a flow rate supplied from the nozzle to the substrate [0092]; or (iv) a buff table, a buff pad, and a nozzle for supplying the silane coupling agent or the resin protective film agent to the substrate installed on the buff table [0093]; and equivalents thereof.
“bake device” in claim 6-9 interpreted as a heater chamber 602, a load/unload cooling chamber 604, a heater 606, a heater power supply 608, and a shutter 610 [0047].
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 § 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.
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) 1-6 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato (prev. presented US 2008/0113510), in view of Yamaguchi (prev. presented US 2016/0059376) and Ohtani (prev. presented US 5765072).
Regarding claim 1, Kato teaches a substrate processing apparatus (Fig 4) comprising: a polishing device (polishing pad 73 and 74 Fig 4 and [0072]) for polishing a semiconductor substrate [0072]; a protective layer forming device (spin coater [0078]) for forming a protective layer on a surface of the substrate using a silane coupling agent or a resin protective film agent [0078]. Kato teaches the apparatus is operated such that the protective layer forming device forms the protective layer on the substrate after the polishing device finishes polishing the substrate [0074-0078] and Fig 1 (see step F after step E). Kato fails to teach a controller and fails to teach the controller controls the polishing device and the protective layer forming device. Kato also fails to teach the substrate apparatus contains the polishing device and protective layer forming device provided together. Kato further fails to teach the details of the protective layer forming device as claimed. Regarding the controller and the apparatus containing the polishing device and protective layer forming device together, in the same field of endeavor of a substrate processing apparatus (abstract and Fig 1), Yamaguchi teaches a substrate processing apparatus containing a plurality of different processing step units (e.g. polishing unit, cleaning unit) provided together to perform a multiple step operation [0144]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kato to include the polishing device and spin coater together in one multiple chamber apparatus because Yamaguchi demonstrates such a multichamber configuration is known in the art and this arrangement allows for automated control and transport to perform multiple steps of a process. This reduces the cost of manufacturing by automation. Regarding a controller, Yamaguchi further teaches a controller (5 Fig 1) that controls the apparatus units for substrate processing [0144]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kato to include the controller because Yamaguchi teaches this enables automated control of the substrate processing which will reduce manufacturing costs. Additionally it is noted that Broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958).
Regarding the details of the protective film forming device, Kato teaches it includes a coating device (spin coater [0078]) for applying a resin protective agent to the substrate [0078] but fails to explicitly teach that the coating device includes the recited structures. In the same field of endeavor of a substrate processing apparatus (abstract and Fig 1, 3), Ohtani teaches a spin coater (chamber 2, Fig 3 and col 11, ln 50-65) and teaches the coating device includes: a table (2a Fig 1, col 7, ln 40-55) for rotating and drying the substrate (col 7, ln 40-55); a nozzle (2b Fig 1, col 7, ln 40-55) for supplying the silane coupling agent or the resin protective film agent to the substrate installed in the coating device (col 7, ln 40-55); and an on-off valve (9, including 9a and 9b Fig 1, col 7, ln 30-55) for adjusting a flow rate of the silane coupling agent or the resin protective film agent supplied from the nozzle to the substrate (col 7, ln 30-55), and the control device controls the on-off valve to cause the nozzle to supply the silane coupling agent or the resin protective film agent to the substrate after a center of the substrate is dried and before an outer circumferential portion of the substrate is dried (col 7, ln 25-55, note the control unit 4 controls the valve 9 to supply or stop supply, see also col 8,ln 55-65 and col 10, ln 5-30, note the control to start and stop is inclusive of to supply within a set period and col 9,ln 45-65 teaches the control unit configured to control the timing of steps, note the claim language is interpreted as being directed to controlling the timing of the steps because there is no indication the controller has feedback controlling or other monitoring to provide control in response to the detection of the drying and therefore the limitation is merely directed to a controller that can provide timewise control of the on-off valve with user inputs for the timing.). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate these structures and control into the apparatus of Kato because Kato teaches a spin coater but doesn’t teach specific structures and Ohtani teaches structures and control for operating a spin coater.
Regarding claim 2, the combination remains as applied to claim 1 above. The recitation of being configured to form the protective layer using silane coupling agent is directed to the contents of the apparatus during operation. Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Further the apparatus of the combination is capable of operating with a silane coupling agent. As indicated above, there is no indication of what the control device is and therefore no indication that the control device is aware of or otherwise modified based on the intended contents during operation nor is there any indication that there is any programming and therefore no indication of programming specific to the material used to form the protective layer.
Regarding claim 3, the analysis remains as applied to the analogous limitation of claim 2 above. Further is it noted that Kato does teach resin [0078].
Regarding claim 4, Kato as applied in the combination teaches polishing and then forming the protective layer [0074-0078]. The specific time between the end of polishing and the start of the protective layer formation represents routine optimization to speed up the entire processing of the substrate. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to minimize the time to below ten minutes because the time represents a transition between processing steps and does not include active processing steps and therefore may be minimized to increase the process throughput without altering the processing results.
Regarding claim 5, Kato teaches the polishing device (Fig 4) includes a polishing pad (73, 74 Fig 4 [0072]). Regarding the end time of polishing, the end of polishing being when the pad separates from the substrate does not change the analysis as applied to claim 4 above.
Regarding claim 6, the combination remains as applied to claim 1 above. Kato refers to a baking step [0078] but fails to teach a bake device. Ohtani teaches a spin coater (chamber 2, Fig 3 and col 11, ln 50-65) and a bake device (chamber 21, Fig 3 and col 11, ln 65 to col 12, ln 10). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination to include the bake device because Kato refers to a baking or drying step [0078] and Ohtani teaches the structure for performing heating (i.e. baking) after coating (col 12, ln 55-65).
Regarding claim 7, the combination remains as applied to claim 6 above. Ohtani as applied in the combination teaches the coating device includes: a table (2a Fig 1, col 7, ln 40-55) for rotating and drying the substrate (col 7, ln 40-55); a nozzle (2b Fig 1, col 7, ln 40-55) for supplying the silane coupling agent or the resin protective film agent to the substrate installed in the coating device (col 7, ln 40-55); and an on-off valve (9, including 9a and 9b Fig 1, col 7, ln 30-55) for adjusting a flow rate of the silane coupling agent or the resin protective film agent supplied from the nozzle to the substrate (col 7, ln 30-55), and the control device controls the on-off valve to cause the nozzle to supply the silane coupling agent or the resin protective film agent to the substrate after a center of the substrate is dried and before an outer circumferential portion of the substrate is dried (col 7, ln 25-55, note the control unit 4 controls the valve 9 to supply or stop supply, see also col 8,ln 55-65 and col 10, ln 5-30, note the control to start and stop is inclusive of to supply within a set period and col 9,ln 45-65 teaches the control unit configured to control the timing of steps). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to incorporate these structures and control into the apparatus of Kato because Kato teaches a spin coater but doesn’t teach specific structures and Ohtani teaches structures and control for operating a spin coater.
Regarding claim 9, the combination remains as applied to claim 4 above. A start time of the formation of the protective layer may be labeled as the time when the agent comes into contact with the substrate. Note that this distinction does not alter the structure of the apparatus or the control unit as claimed in claim 4 or 1.
Claim(s) 4-5 is/are additionally and/or alternatively rejected under 35 U.S.C. 103 as being unpatentable over Kato in view of Yamaguchi and Ohtani as applied to claim 1 above, and further in view of Prigge (prev. presented US 4,973,563).
Regarding claim 4, the combination remains as applied to claim 1 and 4 above. This rejection is provided additionally and/or alternatively to the rejection of claim 4 above to further demonstrate the obviousness of minimizing the time between polishing and coating. In the same field of endeavor of processing substrates (abstract), Prigge teaches that immediately coating at the end of polishing is preferred to provide proper protection for the substrate surface (col 3, ln 55 to col 4 ln 35) including a treatment time of up to 10 min (col 4, ln 30-35) which renders obvious optimizing the time between steps to be as close to 0 as possible and less than the time the treatment step takes to protect the surface and avoid the effects of the ambient environment (i.e. native oxide formation) on the surfaces (col 4, ln 30-40).
Regarding claim 5, the combination remains as applied to claim 4 above. Kato teaches the polishing device (Fig 4) includes a polishing pad (73, 74 Fig 4 [0072]). Regarding the end time of polishing, the end of polishing being when the pad separates from the substrate does not change the analysis as applied to claim 4 above.
Response to Arguments
Applicant's arguments filed 03/26/2026, hereinafter reply, have been fully considered but they are not persuasive.
Applicant’s arguments regarding the use of controller (reply p6) to overcome 112(f) interpretation have been found persuasive. Applicant argues (reply p8) that the prior art of record does not teach the claimed timing control of the valve. This argument is not persuasive because Applicants’ specification clarifies that the timing may be any timing [0040] indicating that the controller may accept any user input timing value. There is no indication or suggestion that the controller monitoring the drying and adjusts the on-off control based on feedback or detected drying. Therefore, the broadest reasonable interpretation of the claim language is that the controller provides time based on-off control of the valve and that the specific values of the timing are chosen to be within the recited drying time. However, such a controller is not functionally or programmed different than another controller that provides user input timing. Therefore, the prior art controller with a timing controlled valve is within the broadest reasonable interpretation of the controller. If applicant’s controller has sensors or other feedback programming to ensure the dispensing is always performed relative to the drying, applicant is kindly requested to demonstrate support for such an interpretation and to consider claiming such sensors.
For all of these reasons the arguments are not persuasive as to the patentability of the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2001/0002358 teaches a polishing apparatus with transfer (Fig 1). US 6,099,646 teaches a dispensing system of a spin coater (Fig 30 with an on off valve (34 Fig 3).
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 MARGARET D KLUNK whose telephone number is (571)270-5513. The examiner can normally be reached Mon - Fri 9:30-5:30.
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.
/MARGARET KLUNK/Examiner, Art Unit 1716
/KEATH T CHEN/Primary Examiner, Art Unit 1716
Prosecution Insights