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 .
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: “volume adjustment device” in claim 1, “closing member … reciprocating mechanism … positioning member” in claim 2, “control device” in claims 3 and 6.
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 § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-4, 6 and 9-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3-4 and 6 recite the limitation “control device” which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed function. In particular, the specification merely states the claimed function of controlling a pressure is performed by the control device, however, there is no disclosure of any particular structure, either explicitly or inherently, to perform the controlling. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 3 further recites the limitation “the buffer tank” and depends from claim 1 which recites “a plurality of buffer tanks”, it is not clear if the buffer tank in claim 3 lacks sufficient antecedent basis or refers to one or all of the plurality of buffer tanks in claim 1.
Claim 4 depends from claim 3 and fails to remedy its deficiencies.
Claim 6 further recites the limitation “the buffer tank” and depends from claim 1 which recites “a plurality of buffer tanks”, it is not clear if the buffer tank in claim 6 lacks sufficient antecedent basis or refers to one or all of the plurality of buffer tanks in claim 1.
Claim 9 recites the limitation “the pressure regulator” and depends from claim 7 which recites “a plurality of pressure regulators”, it is not clear if the pressure regulator in claim 9 lacks sufficient antecedent basis or refers to one or all of the plurality of pressure regulators in claim 7.
Claim 10 depends from claim 9 and fails to remedy its deficiencies.
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 3-4 and 6 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. As described above, the disclosure does not provide adequate structure to perform the claimed function of controlling a pressure. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shinozaki et al – hereafter Shinozaki – (US 20150151401 A1; also US 9,662,761 B2).
Regarding claim 1, Shinozaki teaches a polishing device (Fig.20/21), comprising:
a polishing table (2), supporting a polishing pad (1);
a top ring (5), having a plurality of pressure chambers (C1-C6) for pressing a substrate (W) against a polishing surface of the polishing pad (Fig.21);
a plurality of pressure regulators (R1-R6; note ¶131, “electropneumatic regulators”), controlling pressures of gases in the plurality of pressure chambers;
a plurality of pressure sensors, detecting pressures adjusted by the plurality of pressure regulators (Fig.3, 17; note ¶11, “pressure gauge 17 for measuring pressure of the gas at a downstream side of the pressure-regulating valve … electropneumatic regulator is widely used as the pressure regulator”; and
a plurality of buffer tanks (T1-T6), connected to a plurality of gas transfer lines (F1-F6) connecting the plurality of pressure chambers and the plurality of pressure regulators (Fig.21), wherein
each of the plurality of buffer tanks comprises
a tank section made of a rigid body (Fig.36, 111) and
a volume adjustment device (this element is interpreted under 35 U.S.C. 112(f) as a closing member/plate, reciprocating mechanism/screw/rack and pinion/piston, and positioning member/nut to accomplish the claimed function, and equivalents thereof. Shinozaki teaches a piston/spring/diaphragm, Fig.36, 112/114/116) which adjusts a volume of the buffer tank.
Regarding claim 2, Shinozaki further teaches the volume adjustment device comprises
a closing member which is disposed inside the tank section and closes off a part of an internal space of the tank section (this element is interpreted under 35 U.S.C. 112(f) as a plate, and equivalents thereof. Shinozaki teaches a diaphragm, Fig.36, 114),
a reciprocating mechanism (this element is interpreted under 35 U.S.C. 112(f) as a screw/rack and pinion/piston, and equivalents thereof. Shinozaki teaches a piston, Fig.36, 112) which reciprocates the closing member, and
a positioning member (this element is interpreted under 35 U.S.C. 112(f) as a nut to accomplish the claimed function, and equivalents thereof. Shinozaki teaches a spring, Fig.36, 116) which positions the closing member moved by the reciprocating mechanism.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinozaki.
Regarding claim 5, Shinozaki teaches all the limitations of claim 1, see above, however, does not explicitly teach when each of the plurality of pressure sensors is defined as a first pressure sensor and each of the plurality of pressure regulators is defined as a first pressure regulator, the polishing device comprises a second pressure sensor prepared in place of the first pressure sensor, and a second pressure regulator prepared in place of the first pressure regulator.
Although Shinozaki does not disclose a second pressure sensor prepared in place of the first pressure sensor, and a second pressure regulator prepared in place of the first pressure regulator, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In the current instance, applicant’s disclosure does not describe any new and unexpected result being produced by having a second pressure sensor and a second pressure regulator, therefore, mere duplication of said components has no patentable significance and the claim is deemed obvious in view of Shinozaki.
Allowable Subject Matter
Claims 7-8 are allowed.
Claims 9-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The following claim limitations were not found in the prior art.
determining a volume of each of the plurality of buffer tanks that is variable based on a pressure value measured by each of the pressure sensors corresponding to the volume (as in the context of claim 7).
The closest prior art reference Shinozaki discloses a method for adjusting a pressure control unit including a plurality of buffer tanks (Fig.21, T1-T6), however, does not disclose determining a volume of each of the plurality of buffer tanks as claimed.
Another relevant prior art (Takahashi et al – JP 2015131360 A) discloses a method for adjusting a pressure control unit including a plurality of buffer tanks (Fig.2, T1-T6), however, does not disclose determining a volume of each of the plurality of buffer tanks as claimed.
Another relevant prior art (Shinozaki – JP 2015104790 A) discloses a method for adjusting a pressure control unit including a plurality of buffer tanks (Fig.16, 40), however, does not disclose determining a volume of each of the plurality of buffer tanks as claimed.
No other prior art reference was found that would anticipate or allow establishing a prima facie case of obviousness in view of the cited prior art above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN G FLORES whose telephone number is (571)272-3486. The examiner can normally be reached Monday - Friday, 8:30am - 5:30pm Pacific Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan E Wiehe can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUAN G FLORES/Primary Examiner, Art Unit 3745
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