DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 02/18/2026 without traverse of Group I, claims 1-11 for further examination. Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 statement (IDS) submitted on 09/12/2023 is being considered by the examiner.
Claim Interpretation
5. 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: “solution supply unit” in claims 1-2, 4-8 & 10.
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
6. 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.
7. Claims 1-11 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 & 11-12 recite the limitation “the corresponding solution treatment module”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the corresponding solution treatment module” in line 10 as “a corresponding solution treatment module”. To correct this problem, amend line 10 to recite “a corresponding solution treatment module”.
As regards to claim 2, line 2 recites the limitation “the supply pipeline”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the supply pipeline” as “a supply pipeline of the supply pipelines”. To correct this problem, amend line 2 to recite “a supply pipeline of the supply pipelines”.
As regards to claim 3, line 5 recites the limitation “the supply pipeline”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the supply pipeline” as “a supply pipeline of the supply pipelines”. To correct this problem, amend line 5 to recite “a supply pipeline of the supply pipelines”.
As regards to claim 3, lines 2 & 3 recite the limitation “the solution treatment module”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the solution treatment module” in line 2 as “a solution treatment module of the plurality of solution treatment modules”. To correct this problem, amend line 2 to recite “a solution treatment module of the solution treatment modules”.
As regards to claim 6, line 2 recites the limitation “the supply pipeline”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the supply pipeline” as “a supply pipeline of the supply pipelines”. To correct this problem, amend line 2 to recite “a supply pipeline of the supply pipelines”.
As regards to claim 6, line 6 recites the limitation “the storage source”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the storage source” as “a storage source”. To correct this problem, amend line 6 to recite “a storage source”.
As regards to claim 6, line 9 recites the limitation “the other”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the other” as “another”. To correct this problem, amend line 9 to recite “another”.
As regards to claim 7, line 5 recites the limitation “the supply pipeline”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the supply pipeline” as “a supply pipeline of the supply pipelines”. To correct this problem, amend line 5 to recite “a supply pipeline of the supply pipelines”.
As regards to claim 10, lines 2 & 6 recite the limitation “the supply pipeline”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the supply pipeline” in line 2 as “a supply pipeline of the supply pipelines”. To correct this problem, amend line 2 to recite “a supply pipeline of the supply pipelines”.
Claims 2-11 are rejected at least based on their dependency from claim 1.
Claim Rejections
8. 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.
9. 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
10. 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.
11. Claims 1-8 & 10-11 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Kimura et al. (US 2007/0095278 A1) hereinafter Kimura (the terminology of the claims in the application is used, but the references of Kimura are included between parentheses).
As regards to claim 1, Kimura discloses a substrate treatment apparatus (abs; fig 1-7), comprising:
a plurality of solution treatment modules ((COT) M1 to M5) stacked at multiple levels (see fig 1 & 4), each configured to perform a treatment using a treatment solution on a substrate ([0049]-[0055]; fig 1-4); and
a solution supply unit (dispensing mechanism: [0049]-[0050]) configured to supply the treatment solution to the plurality of solution treatment modules ((COT) M1 to M5) ([0049]-[0060]; fig 1-4), wherein:
the solution supply unit (dispensing mechanism: [0049]-[0050]) comprises supply pipelines (45) provided with a solution feeder (30-34), corresponding to the solution treatment modules ((COT) M1 to M5) ([0049]-[0060]; [0071]-[0074]; [0079]; fig 1-7); and
the solution feeder (30-34) comprises a pump (34) configured to pressure-feed the treatment solution to a corresponding solution treatment module ((COT) M1 to M5) and a filter (32) configured to filtrate the treatment solution, and is arranged adjacent to the corresponding solution treatment module in a horizontal direction (see fig 3-4) ([0049]-[0060]; [0070]-[0074]; [0079]; fig 1-7).
As regards to claim 2, Kimura discloses an apparatus (abs; fig 1-7), wherein the solution supply unit (dispensing mechanism: [0049]-[0050]) comprises a supply pipeline (45) of the supply pipelines (45) for each of the solution treatment modules ((COT) M1 to M5) ([0049]-[0060]; [0070]-[0074]; [0079]; fig 1-7).
As regards to claim 3, Kimura discloses an apparatus (abs; fig 1-7), wherein: a solution treatment module ((COT) M1 to M5) of the plurality of solution treatment modules ((COT) M1 to M5) comprises a discharge nozzle (Nz1 to Nz5) configured to discharge the treatment solution supplied to the solution treatment module ((COT) M1 to M5); and a supply pipeline (45) of the supply pipelines (45) has one end connected to the discharge nozzle (Nz1 to Nz5) of the corresponding solution treatment module ((COT) M1 to M5), and is provided with a discharge control valve (35) configured to control discharge of the treatment solution from the discharge nozzle (Nz1 to Nz5), on a downstream side of the solution feeder (30-34) ([0049]-[0063]; [0068]-[0074]; [0077]-[0079]; fig 1-7).
As regards to claim 4, Kimura discloses an apparatus (abs; fig 1-7), wherein: the solution supply unit (dispensing mechanism: [0049]-[0050]) further comprises a regulator (36) configured to control an operation of the discharge control valve (35); and the regulator (36) is configured as a separate body from the discharge control valve (35) ([0012]-[0014]; [0049]-[0063]; [0068]-[0074]; [0077]-[0079]; fig 1-7).
As regards to claim 5, Kimura discloses an apparatus (abs; fig 1-7), wherein: the solution supply unit (dispensing mechanism: [0049]-[0050]) further comprises a regulator (36) configured to control an operation of the pump (34); and the regulator (36) is configured as a separate body from the pump (34) ([0012]-[0014]; [0049]-[0063]; [0068]-[0074]; [0077]-[0079]; fig 1-7).
Regarding claim 6, the recitation “at the replenishment from the storage source to the solution supply unit, only the switching valve corresponding to the storage source is brought into an open state and the other switching valve is brought into a closed state”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Kimura since Kimura meets all the structural elements of the claim and is capable of at the replenishment from the storage source to the solution supply unit, only the switching valve corresponding to the storage source is brought into an open state and another switching valve is brought into a closed state, 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 6, Kimura discloses an apparatus (abs; fig 1-7), wherein a supply pipeline (45) of the supply pipelines (45) has one end connected to the corresponding solution treatment module ((COT) M1 to M5), has another end connected to a plurality of storage sources (seven kinds of resists) each configured to store the treatment solution, and is provided with a switching valve (V6) configured to switch between execution and stop of replenishment of the treatment solution from the storage source (seven kinds of resists), for each storage source (seven kinds of resists); and at the replenishment from a storage source (seven kinds of resists) to the solution supply unit (dispensing mechanism: [0049]-[0050]), the apparatus is capable of only the switching valve (V6) corresponding to the storage source (seven kinds of resists) is brought into an open state and another switching valve (V5) is brought into a closed state ([0012]-[0014]; [0049]-[0063]; [0068]-[0074]; [0077]-[0079]; fig 1-7).
As regards to claim 7, Kimura discloses an apparatus (abs; fig 1-7), wherein: the solution supply unit (dispensing mechanism: [0049]-[0050]) further comprises a return pipeline (see fig 3, pipeline on either side of 32 + pipeline leading from 32 to V5 to V4 to 31) having one end branched from a downstream side (portion between 34 & 35 leading from downstream side toward V6) of the pump (34) and the filter (32) on a supply pipeline (45) of the supply pipelines (45), and another end (portion between 34 & V6) connected to an upstream side of the pump (34) and the filter (32) on a supply pipeline (45) of the supply pipelines (45); and the return pipeline (see fig 3, pipeline on either side of 32 + pipeline leading from 32 to V5 to V4 to 31) constitutes a circulation path (see fig 3) of the treatment solution together with a portion, of a supply pipeline (45) of the supply pipelines (45), provided with the pump (34) and the filter (32) ([0012]-[0014]; [0049]-[0063]; [0068]-[0074]; [0077]-[0079]; fig 1-7).
As regards to claim 8, Kimura discloses an apparatus (abs; fig 1-7), wherein: the solution supply unit (dispensing mechanism: [0049]-[0050]) further comprises a return pipeline (see fig 3, pipeline on either side of 32 + pipeline leading from 32 to V5 to V4 to 31) having one end branched from a downstream side (portion between 34 & 35 leading from downstream side toward V6) of the pump (34) and the filter (32) on a supply pipeline (45) of the supply pipelines (45), and another end (portion between 34 & V6) connected to an upstream side of the pump (34) and the filter (32) on a supply pipeline (45) of the supply pipelines (45); and the return pipeline (see fig 3, pipeline on either side of 32 + pipeline leading from 32 to V5 to V4 to 31) constitutes a circulation path (see fig 3) of the treatment solution together with a portion, of a supply pipeline (45) of the supply pipelines (45), provided with the pump (34) and the filter (32); and the one end of the return pipeline (see fig 3, pipeline on either side of 32 + pipeline leading from 32 to V5 to V4 to 31) is branched (see fig 3 & 5) from a supply pipeline (45) of the supply pipelines (45) in the discharge control valve (35) ([0012]-[0014]; [0049]-[0063]; [0068]-[0074]; [0077]-[0079]; fig 1-7).
As regards to claim 10, Kimura discloses an apparatus (abs; fig 1-7), wherein: a supply pipeline (45) of the supply pipelines (45) comprises a supply pipe (38) through which the treatment solution flows; and the solution supply unit (dispensing mechanism: [0049]-[0050]) further comprises a flowmeter (35: adjusting an opening period of the dispensing valve (AMC) 35, an amount of the resist to be discharged is controlled – [0077]) arranged outside the supply pipe (38) and configured to measure a flow rate of the treatment solution flowing through a supply pipeline (45) of the supply pipelines (45) ([0012]-[0014]; [0016]; [0018]; [0023]; [0049]-[0063]; [0068]-[0074]; [0077]-[0079]; fig 1-7).
As regards to claim 11, Kimura discloses an apparatus (abs; fig 1-7), wherein the return pipeline (see fig 3, pipeline on either side of 32 + pipeline leading from 32 to V5 to V4 to 31) is provided with a foreign substance detector (implicit of gas, such as nitrogen, dissolved in the resist foaming up in the liquid end 31 and valves V4 and V5 discharging the generated bubbles when the bubbles are determined to be present) configured to detect a foreign substance (bubbles) in the treatment solution flowing through the return pipeline (see fig 3, pipeline on either side of 32 + pipeline leading from 32 to V5 to V4 to 31) ([0012]-[0014]; [0016]; [0018]; [0023]; [0049]-[0063]; [0068]-[0074]; [0077]-[0079]; fig 1-7).
Claim Rejections - 35 USC § 103
12. 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 of this title, 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.
13. The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
14. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kimura as applied to claim 1 above.
As regards to claim 9, Kimura discloses an apparatus (abs; fig 1-7), wherein the pump (34) is a constant pressure pump having a storage chamber ([0014]), and a vertical upper side end of the storage chamber is a primary side (see fig 3 & 5) of the pump (34) and a vertical lower side (see fig 3 & 5) end of the storage chamber ([0014]) is a secondary side of the pump (34) ([0012]-[0014]; [0016]; [0018]; [0023]; [0049]-[0063]; [0068]-[0074]; [0077]-[0079]; fig 1-7), however Kimura does not disclose a phragm pump. A phragm pump and a constant pressure pump are considered functionally equivalent pumps. Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to substitute a phragm pump for the constant pressure pump disclosed by Kimura since they are functionally equivalent pumps and one of an obvious finite choices of pumping methods with a reasonable expectation of success.
Conclusion
15. 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.
16. 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