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 .
Applicant’s amendment filed 04/27/2026 is acknowledged. Claims 1, 3-5, 7-12 14 and 15 are pending. Claims 2, 6, and 13 are cancelled. Claims 15 is withdrawn.
Claim Interpretation
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 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: cleaning member in claim claims 1 and 14; pressing mechanism in claims 1 and 14; depressurizing mechanism in claims 1 and 14; and substrate holding and rotating mechanism in claim 11.
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.
Based on a review of the specification, a cleaning member is interpreted to include a pencil cleaner, a sponge, or equivalents thereof; a pressing mechanism is interpreted to include a swing arm, or equivalents thereof; the specification does not appear to provide a structural example of a depressurizing mechanism; and a substrate holding and rotating mechanism is interpreted to include a spin chuck or 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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification as filed does not appear to provide a structural example of a depressurizing mechanism as recited in claims 1 and 14.
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.
Claims 1, 3-5, 11, 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0285484 to Liu et al. (“Liu”) in view of US 5,465,447 to Itoh et al. (“Itoh”).
Regarding claim 1, Liu teaches a substrate cleaning apparatus (abstract) comprising: a cleaning member configured to clean a substrate (Fig. 1, ref. 12, para [0019]), the cleaning member having a lower surface (Fig. 1, lower surface of ref. 12); and a pressing mechanism (Fig. 1, ref. 14, para [0019]) configured to press the lower surface of the cleaning member vertically downward against a surface (note Fig. 1, ref. 11a).
Liu does not explicitly teach a plate having a horizontal plane provided with a hole, wherein the hole penetrates the plate, a casing provided in a lower portion of the plate, a depressurizing mechanism coupled to the casing and configured to depressurize an inside of the casing, and a gas-liquid separating structure formed by the casing or provided between the casing and the depressurizing mechanism; and the apparatus being operated in a manner wherein the pressing mechanism presses the lower surface of the cleaning member vertically downward against the plate such that a first part of the lower surface contacts a portion of the plate where the hole is not provided and that a second part of the lower surface is positioned on the hole, and a liquid discharged from the cleaning member is discharged below via the hole, whereby absorption of the liquid discharged from the cleaning member into the cleaning member is suppressed. Itoh teaches a substrate cleaning apparatus (abstract) including a chuck, or plate, which is disclosed a advantageous for supporting a substrate (col. 2, line 67 – col. 3, line 16), the chuck having a horizontal plane provided with a hole (Figs. 4 and 6, ref. 6 and 11, respectively, col. 6, lines 39-49), a casing provided in a lower portion of the plate (Figs. 2 and 12, lower portion of ref. 6); and a depressurizing mechanism coupled to the casing and configured to depressurize an inside of the casing (para [0021], vacuum chuck), which is disclosed as advantageously providing for draining, including draining of fluid applied to provide back pressure to inhibit warping from contact pressure from cleaning a front side (col. 1, lines 51-56, col. 2, lines 9-15, col. 6, lines 39-49). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the Liu apparatus in view of Itoh wherein it includes a plate having a horizontal plane provided with a hole, a casing provided in a lower portion of the plate, a depressurizing mechanism coupled to the casing and configured to depressurize an inside of the casing, wherein the hole penetrates the plate, with a reasonable expectation of success, in order to enhance support of a substrate (note Liu, para [0019], [0021]), and provide for draining, including draining of fluid applied to provide back pressure to inhibit warping from contact pressure from cleaning a front side. Further, since the Liu/Itoh apparatus includes the claimed structural features, and appears to be substantially identical to the claimed apparatus, the Liu/Itoh apparatus appears to be fully capable of being operated in the manner recited (note, e.g., Liu discloses that the cleaning member, and thus the lower surface of the cleaning member, is moveable (Fig. 1, arrows left and right of ref. 12), so as to be positioned partially over a hole). Thus, the Liu/Itoh casing appears to be capable of being used as a gas-liquid separating structure as does the casing of the present invention. Further, the recited substrate is not positively claimed, is not understood to be a required structural feature of the claimed apparatus, and could be held at held at any number of places, near or far from the claimed apparatus.
Regarding claim 3, Liu/Itoh discloses a nozzle configured to supply a cleaning liquid to the plate (Liu, Fig. 1, either of ref. 16 and 18, para [0019]).
Regarding claim 4, Liu/Itoh discloses an apparatus wherein the pressing mechanism rotates the cleaning member while pressing the cleaning member against the plate (note Liu, Fig. 1).
Regarding claim 5, the Liu/Itoh appears to be fully capable of being operated in a manner wherein the hole is not provided at a position where the cleaning member comes into contact in the plate (note Liu, Fig. 1).
Regarding claim 11, Liu/Itoh disclose a substrate holding and rotating mechanism (Liu, para [0019], [0021], note Fig. 1) configured to hold and rotate a substrate in a horizontal direction, and appears to be fully capable of being operated in a manner wherein a lower surface of the cleaning member cleans an upper surface of the substrate, and the pressing mechanism presses the lower surface of the cleaning member against the plate (note Liu, Fig. 1).
Regarding claim 12, Liu/Itoh disclose an apparatus wherein the pressing mechanism is a swing arm (Liu, para [0019]), and appears to be fully capable of being operated in a manner wherein when cleaning the substrate, the swing arm swings the cleaning member on the substrate while the swing arm presses the cleaning member vertically downward against the upper surface of the substrate (note Liu, Fig. 1), and when cleaning the cleaning member, the swing arm presses the cleaning member vertically downward against the plate (note Liu, Fig. 1).
Regarding claim 14, Liu teaches an apparatus (abstract) comprising: a pressing mechanism (Fig. 1, ref. 14, para [0019]) configured to press a lower surface of a cleaning member (Fig. 1, ref. 12, para [0019]) vertically downward against a surface (note Fig. 1, ref. 11a).
Liu does not explicitly teach a plate having a horizontal plane provided with a hole, wherein the hole penetrates the plate, a casing provided in a lower portion of the plate, a depressurizing mechanism coupled to the casing and configured to depressurize an inside of the casing, and a gas-liquid separating structure formed by the casing or provided between the casing and the depressurizing mechanism; and the apparatus being operated in a manner wherein the pressing mechanism presses the lower surface of the cleaning member vertically downward against the plate such that a first part of the lower surface contacts a portion of the plate where the hole is not provided and that a second part of the lower surface is positioned on the hole, and a liquid discharged from the cleaning member is discharged below via the hole, whereby absorption of the liquid discharged from the cleaning member into the cleaning member is suppressed. Itoh teaches a substrate cleaning apparatus (abstract) including a chuck, or plate, which is disclosed a advantageous for supporting a substrate (col. 2, line 67 – col. 3, line 16), the chuck having a horizontal plane provided with a hole (Figs. 4 and 6, ref. 6 and 11, respectively, col. 6, lines 39-49), a casing provided in a lower portion of the plate (Figs. 2 and 12, lower portion of ref. 6); and a depressurizing mechanism coupled to the casing and configured to depressurize an inside of the casing (para [0021], vacuum chuck), which is disclosed as advantageously providing for draining, including draining of fluid applied to provide back pressure to inhibit warping from contact pressure from cleaning a front side (col. 1, lines 51-56, col. 2, lines 9-15, col. 6, lines 39-49). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the Liu apparatus in view of Itoh wherein it includes a plate having a horizontal plane provided with a hole, a casing provided in a lower portion of the plate, a depressurizing mechanism coupled to the casing and configured to depressurize an inside of the casing, wherein the hole penetrates the plate, with a reasonable expectation of success, in order to enhance support of a substrate (note Liu, para [0019], [0021]), and provide for draining, including draining of fluid applied to provide back pressure to inhibit warping from contact pressure from cleaning a front side. Further, since the Liu/Itoh apparatus includes the claimed structural features, and appears to be substantially identical to the claimed apparatus, the Liu/Itoh apparatus appears to be fully capable of being operated in the manner recited (note, e.g., Liu discloses that the cleaning member, and thus the lower surface of the cleaning member, is moveable (Fig. 1, arrows left and right of ref. 12), so as to be positioned partially over a hole). Thus, the Liu/Itoh casing appears to be capable of being used as a gas-liquid separating structure as does the casing of the present invention. Further, the recited substrate is not positively claimed, is not understood to be a required structural feature of the claimed apparatus, and could be held at held at any number of places, near or far from the claimed apparatus.
Allowable Subject Matter
Claims 7-10 are objected to as being dependent upon a rejected base claim (and the base claim, claim 1, is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement), but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (and properly amended to cure the written description rejection of the base claim).
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art references are: US 2012/0285484 to Liu et al. and US 5,465,447 to Itoh et al. The prior art references of record, taken alone or in combination, do not anticipate or suggest fairly the limitations of a sensor provided at a position in contact with the cleaning member and capable of detecting a contamination state of the cleaning member, in combination with the other structural elements as instantly recited. Upon further search no other prior art has been located at the date of this Office action.
Response to Arguments
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that a “fully capable” approach does not complete a prima facie case since, it is alleged, it replaces a required element-by-element with a hypothetical device (remarks, inter alia, page 6, first para), a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Further, it is not clear how an obviousness analysis can be done without the use of a hypothetical device (or method, composition, etc.)
Conclusion
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 ERIC GOLIGHTLY whose telephone number is (571)270-3715. The examiner can normally be reached M-F: 10 am - 7 pm.
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, Michael Barr can be reached on (571) 272-1414. 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.
/ERIC W GOLIGHTLY/Primary Examiner, Art Unit 1714
Prosecution Insights