DETAILED ACTION
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.
Claims 1-10 and 13-15 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 the inventor or a joint inventor regards as the invention.
Claims 1 and 13-15 require that portions are “half-etched”. The term is confusing because “half” suggests half of the total whereas the remainder of the claim refers to various depths, but do not seem to require that the depths are actually half (claim 3 for example wherein the thickness of portion two is merely smaller than that of portion one).
Claim 4 inappropriately defines the second portion relative to the second portion.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 7, 8, 11-13, 15-17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeda (2016/0293844).
Takeda teaches a deposition mask for forming a pattern on a substrate comprising:
- a first portion having an upper surface, see first portion, per Figs. 1-5 particularly Fig. 5, first portion includes upper surface labelled second surface to the mask bottom mask, “portion” is defined similarly as in the instant specification particularly with reference to Fig. 2C and related text, wherein a portion includes at least a thickness and surface,
- a second portion with an upper surface half-etched to a first depth from the upper surface of the first portion – see the surface between the inflection points S2 and S4, and then including the depth/thickness of mask to the bottom surface, and
- a third portion having an upper surface half-etched to a second depth from the upper surface of the second portion, see the surface between points Q1 and S2 to the bottom.
The third portion includes the portion going downward (first intersection Q1) and therefore includes an opening corresponding to the pattern, and also includes a plane perpendicular to a thickness direction of the deposition mask (as depicted).
In regard to the requirements of being “half-etched”, to the extent that this is requiring an etch step, the limitations are product by process limitations. Per MPEP 2113, the product by process limitations are not limited to the claimed steps but only the structure implied by the steps. So, even if the prior art does not teach that the upper surfaces / various portions are formed by etching, the product itself determines patentability. Further, in any case, the teachings of Takeda include an etching process to form the noted mask [0087-89]. In either case, all limitations of the claim are met.
Regarding claim 2, the upper surface of the first and second portions, as depicted, include planes perpendicular to the thickness direction of the mask.
Regarding claim 3, since the first portion is from the topmost surface include the entire thickness, the second portion the intermediate surface to the first surface, and the third portion includes the first inflection point to the first surface, the thickness requirements are met as demonstrated.
Regarding claim 4, the second portion as argued is between the first portion and third portion, since the claim is indefinite, this is held to meet the requirements.
Regarding claims 5 and 17, the teachings include an angle theta1 which includes any angle such that the third portion is tapered [0031-33].
Regarding claim 7, the mask is taught as per claim 1 – the use of the mask with the substrate is intended use. it has been held that claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). In this case, the limitation is met by the use of the mask with a substrate of a size such that the upper surface of the second portion is in contact with the mask as claimed. Therefore, because the mask is capable of such use, the limitation is met.
Regarding claims 8 and 15, the teachings include grooves – including grooves applied on both surfaces of the mask [0068], thereby meeting the requirement of a lower surface or the second surface (claim 15).
Regarding claim 11, the deposition mask as defined above includes the claimed first, second and third portion, thickness are described as per the arguments to claim 3. In regard to the substrate, this limitation is met by the intended use in the manner outlined above in claim 7 and will not be repeated.
Regarding claim 12, further to the intended use as outlined per claim 7 and applied likewise to claim 11, the mask is capable of use of such a substrate, including such a carrier as claimed. The use with a carrier is further intended use of the mask.
Regarding claim 13, as defined per claim 1 above, the second and third portions are “half-etched” at different depths from the upper surface of the first portion per Fig. 1.
Regarding claim 16, the portions are defined as claimed, with the third portion the lowest and defining the opening corresponding to the pattern.
Regarding claim 19, as per the depictions, there are openings defined by both the second and third portions.
Claim Rejections - 35 USC § 103
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.
Claims 6, 9, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda.
Regarding claims 6 and 18, the teachings do not include a taper along with an edge portion that is parallel to a thickness direction, but as above, it is obvious to modify shape. In this case, since Takeda teaches modifying the angle and also teaches parallel to thickness portions, it would have been obvious to include the claimed shape based on the teachings of Takeda that such various shapes are useful for the mask as per the teachings (straight, parallel and angled portions are described).
Regarding claim 9, the teachings include grooves [0068] and are not limiting to the placement thereof and therefore would have been obvious to place in the first portion and one at least in one of the second and third portions in to absorb expansion of the mask as described.
Regarding claim 14, the second and third portions are etched at different depths- the depths are not defined as per Takeda, but as further discussed per claim 3, it is obvious to form the portions at different depths as claimed, see citation to MPEP 2144.04 IV. A. It would be further obvious to form the depths to the claimed ranges, particularly wherein no criticality is presented within the scope of the claim.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda in view of Anathan (2013/0093049).
Regarding claim 20, the teachings do not include the first portion surrounding the section portion or a boundary between the two portions being circular plan view but Anathan teaches that such a deposition is operably formed in a circular pattern [0062]. It would have been obvious at the effective date of the invention to apply the circular shape mask of Anathan as the teachings include that a deposition mask is operable formed in such fashion. In forming the mask as such, it would follow that, as one of limited number of manners of combining the arrangement of Takeda with that of Anathan, one the first portion surrounds the second portion (in a manner similar as to Takeda teaches) and the boundary is circular – in order to confirm to the overall circular shape as per Anathan.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A MILLER, JR whose number is (571)270-5825 and fax is (571)270-6825. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Cleveland, can be reached on 571-272-1418. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH A MILLER, JR/ Primary Examiner, Art Unit 1712