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 .
Election/Restrictions
Applicant’s election without traverse of species (i) (a first species of electrostatic chuck shown in Figures 1-3) in the reply filed on March 19, 2026 is acknowledged.
Claims 4-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 19, 2026.
Response to Amendment
The preliminary amendment filed September 25, 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the express incorporation by reference of International Application PCT/JP2022/008593 and of Japanese patent application 2021-052408.
Applicant is required to cancel the new matter in the reply to this Office Action.
In particular, note that the preliminary amendment to the specification was filed September 25, 2023, and that since the present application is merely a stage of the PCT (i.e., the national stage of the PCT), the filing date of the present application is the filling date of the PCT application, which is March 1, 2022, which is prior to the amendment of September 25, 2023. See, for example, MPEP section 1893.03(b), which states:
An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application.
To add an express incorporation by reference statement after the original filing date constitutes new matter.
See MPEP section 608.01 (p), which teaches the following:
As a safeguard against the omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, applicant may include a statement at the time of filing of the later application incorporating by reference the prior application. See MPEP § 201.06(c) and § 211 et seq. where domestic benefit is claimed. See MPEP §§ 213-216 where foreign priority is claimed. See MPEP §217 regarding 37 CFR 1.57(b). The inclusion of such an incorporation by reference statement in the later-filed application will permit applicant to include subject matter from the prior application into the later-filed application without the subject matter being considered as new matter. For the incorporation by reference to be effective as a proper safeguard, the incorporation by reference statement must be filed at the time of filing of the later-filed application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a).
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 1-3 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.
In claim 1, lines 8-9, the claim recites “an embedded member located in the through hole and comprising a porous body facing the first channel…”. However, it is unclear as set forth in the claim what is meant by “facing the first channel”. For example, it is unclear as set forth in the claim whether “facing the first channel” is intended to require a particular (unspecified in the claim) angular range of (some unclaimed portion/aspect/frame of reference of) the porous body with respect to the first channel, or whether such is intended to require a particular (unspecified in the claim) degree of proximity of the porous body with respect to the first channel. Regardless of which meaning of “facing the first channel” is intended, given that no such angular range and no such degree of proximity are set forth in the claim, it is unclear what configuration(s) of porous body meet the limitation "a porous body facing the first channel” and what configuration(s) of porous body are excluded by the limitation.
In claim 1, lines 8-10, the claim sets forth “an embedded member located in the through hole and comprising a porous body facing the first channel and a second channel communicating with the first channel via the porous body”. However, it is unclear as set forth in the claim with what “and a second channel communicating with the first channel via the porous body is intended to go, i.e., “a porous body facing the first channel and” (also facing) “a second channel communicating with the first channel…”, vs. “an embedded member…comprising…a second channel communicating with the first channel…”, vs. “[A]n electrostatic chuck comprising:…a second channel communicating with the first channel…”. Note also that in the event that the claim intends for the porous body to (also be) “facing” the second channel, then the same clarity issues arise regarding the unclear intended meaning of the term “facing” re the second channel as were described above re the limitation “facing the first channel”.
In claim 2, the claim recites “wherein the ceramic substrate comprises a plurality of the first channels”. However, noting all of the various limitations set forth in claim 1 on the previously-recited first channel, it is unclear as claimed what limitations/qualities the plural first channels of claim 2 are required to have. For example, it is unclear as claimed whether each of the plural first channels of claim 2 must be at a position corresponding to the through hole, whether the porous body must “face” each of the plural first channels, whether the second channel must communicate with each of the plural first channels via the porous body, whether each of the first channels must be located apart from the second channel in “a plane perspective view”, etc. Applicant may wish to instead consider reciting “an additional channel” in claim 2 (rather than “a plurality of the first channels”), and add whatever limitations to claim 2 that Applicant intends for such additional channel to have. Similar issues exist re claim 3 which likewise references “the plurality of first channels”.
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 1-3, as best understood in view of the above rejections based on 35 USC 112, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2005-268654 A (hereinafter, “JP ‘654”).
It is noted that a machine translation of JP ‘654 is being made of record on the Notice of References Cited (PTO-892) accompanying this Office Action. That said, attention is directed to that machine translation regarding any references herein to page numbers, line numbers, paragraph numbers, or the like, re JP ‘654.
JP ‘654 teaches:
an electrostatic chuck (61; see Figures 3-4 and paragraph 0023, for example) comprising:
a ceramic substrate (2) (Figure 3, paragraph 0023, which teaches that the embodiment of Figures 3-4 only differs from the embodiment of Figures 1-2 in that a porous ceramic body 51 is fitted within base member 21, i.e., instead of tubular member 31 being fitted into 21; and see also paragraph 0015, which teaches that element 2 is made of ceramic) comprising:
a first surface (3) on which a to-be-treated object (101) is placed (Figure 3, paragraphs 0023 and 0015);
a second surface (4) opposite to the first surface (3) (see Figure 3, as well as paragraphs 0023 and 0015; and
a first channel (11) penetrating through the first surface (3) and the second surface (4) (see Figure 3 and paragraphs 0023 and 0018-0019, for example);
a base plate (21) bonded to the second surface (4) of the ceramic substrate (2) (see Figure 3 and paragraphs 0023, 0014, 0016, for example) and comprising a through hole (27) at least at a position “corresponding to” the first channel (11) (see Figures 3-4 and paragraphs 0023 and 0017); and
an embedded member (51) located in the through hole (27) and comprising a porous body (see at least paragraphs 0023-0024 which expressly teach that 51 is a “porous ceramic body”) “facing” the first channel (11) (see Figure 3) and (comprising) a second channel (the continuous pores of 51 expressly taught by paragraphs 0023-0024, and it is further noted that paragraph 0024 further expressly teaches that the continuous pores are used as a “channel”) communicating with the first channel (11) via the porous body (51) (see Figures 3-4 and paragraphs 0023-0025, as well as paragraphs 0018-0019), the first channel (11) and the second channel (the continuous pores of 51 described above) being “located apart from each other in a plane perspective view” (see, for example, Figure 3, noting that when the electrostatic chuck 61 of Figure 3 is viewed from below along a vertical line of sight, portion 12 of the first channel 11 is located “apart” in the left/right direction re Figure 3 from the continuous pores of 51; alternatively/additionally, as can be seen in Figure 3 from the diameter of element 51 and the pores of 51, at least some of the pores in the top face of 51 are located “apart from” the first channel 11 in the left/right direction re Figure 3).
Regarding claim 2, the ceramic substrate (2) comprises a plurality of the first channels (11, 11). See Figure 3.
Regarding claim 3, the plurality of first channels (11, 11) are located to “surround” (insofar as such is the case in Figure 3 of the present specification) the (aforedescribed) second channel in a plane perspective view. See Figure 3, noting that when viewed from below along a vertical line of sight re Figure 3, the portions 12, 12 of the two first channels 11, 11 shown in Figure 2 are located on opposing outer (re the left/right direction re Figure 3) sides of the aforedescribed second channel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA E CADUGAN whose telephone number is (571)272-4474. The examiner can normally be reached Monday-Thursday, 5:30 a.m. to 4:00 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA E CADUGAN/Primary Examiner, Art Unit 3722
eec
April 2, 2026
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