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 .
Statement re Text of U.S. Code
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Comment on Claim Markings
It is noted that the markings shown in the claim set filed July 6, 2026 do not accurately reflect the changes made with respect to the immediately prior version of the claims. For example, it does not appear that the changes to claim 1 that were filed 7/6/2026 reflect/include the changes that had been previously made to claim 1 in the preliminary amendment that was filed September 25, 2023 (including at least the changes to punctuation and line spacing in lines 2-4 of claim 1 as submitted 9/25/2023, and including the changes in text in the last two lines of claim 1 as submitted 9/25/2023), nor does the version of claim 1 filed 7/6/2026 include any markings to show that claim 1 (as filed 7/6/2026) was being amended to remove the changes to claim 1 that were filed on 9/25/2023. Care should be taken in future amendments to ensure that the markings accurately reflect the changes being made, as required by 37 CFR 1.121 (and particularly 37 CFR 1.121 (c)).
Election/Restrictions
Claims 4-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 (of species (i), a first species of electrostatic chuck shown in Figures 1-3) was made without traverse in the reply filed on March 19, 2026.
Response to Amendment
The preliminary amendment filed September 25, 2023, as well as the amendment filed July 6, 2026, is objected to under 35 U.S.C. 132(a) because it/they introduce(s) 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 Japanese patent application 2021-052408, and/or the express incorporation by reference of International Application PCT/JP2022/008593. (It is noted that it is unclear precisely which application is intended to be incorporated by reference re the remaining language “the entire contents of which are incorporated herein by reference”, i.e., the PCT, the Japanese application, or both, but regardless of which application(s) is/are intended to be expressly incorporated by reference, such express incorporation by reference was first added after the filing date of the present application, and is thus new matter.)
Applicant is required to cancel the new matter in the reply to this Office Action.
In particular, note that the aforementioned subject matter of the preliminary amendment to the specification was first 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 (and to the amendment of July 6, 2026). 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).
While it is noted that the amendment filed July 6, 2026 canceled one occurrence of the language “incorporated herein by reference” from paragraph [0000], the amendment filed July 6, 2026 did not cancel all of the improper incorporation by reference statements, and thus, new matter is still present. See paragraph [0000] as filed July 6, 2026.
Claim Rejections - 35 USC § 112
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 8-10, the claim sets forth “an embedded member located in the through hole and comprising a porous body communicating with 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 communicating with the first channel and” (also communicating with) “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 that for the former, the second channel is not required to be part of the embedded member (but rather, merely requires the first channel to communicate with the second channel, whether or not the second channel is part of the embedded member), whereas for the latter, the second channel is required to be part of the embedded member.
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. 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”.
In claim 2, the limitation “the single through hole” lacks sufficient antecedent basis in the claim, noting that no through hole that is a “single” through hole was previously recited in the claim, and noting that it is unclear as claimed whether or not such intends to refer to the “through hole” that was previously recited in claim 1, line 6. Furthermore, it is unclear as claimed what effect the term “single” is intended to have on the scope of the claim, i.e., whether the claim merely intends to refer back to the one through hole that was previously expressly recited, vs. whether the claim intends to indicate that some element of the chuck (and if so, which element or elements) only has one through hole (though if the latter is the case, care should be taken to ensure that the specification as originally filed provides support for such; currently, with respect to the prior art, the limitation is being treated as merely referring back to the through hole that was previously expressly recited in claim 1, line 6). The same situation exists in claim 3 re the limitation “the single through hole”.
Claim Rejections - 35 USC § 102
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) (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”) communicating with 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), wherein
the first channel (11) and the second channel (the continuous pores of 51 described above) are “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), and
the first channel (11) and the second channel (the continuous pores of 51) are located “in” the through hole (27) in a plane perspective view (see Figures 3-4 and 0023-0024, as well as paragraph 0018, noting that in “a” plane perspective view, such as, for example, when the electrostatic chuck 61 of Figure 3 is viewed from below along a vertical line of sight, portion 14 of the first channel 11 is located “in” the through hole 27, and so is the aforedescribed second channel re the continuous pores of 51).
Regarding claim 2, the ceramic substrate (2) comprises a plurality of the first channels (11, 11; see Figure 3) “located corresponding to” the “single” through hole in “a” plane perspective view. See Figures 3-4, for example, noting that the plural first channels 11, 11 are located (as broadly claimed) “corresponding to” one of the through holes 27 at least in that the plural first channels 11, 11 are located in proximity to one of the through holes 27, including when viewed along a (for example) vertical line of sight re Figure 3.
Regarding claim 3, the plurality of first channels (11, 11) (that are, as described above re claim 2) “located corresponding to the single through hole in a plane perspective view” 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 3 are located on opposing outer (re the left/right direction re Figure 3) sides of the aforedescribed second channel.
Response to Arguments
Applicant's arguments filed July 6, 2026 have been fully considered but they are not persuasive.
Regarding the previous (and present) objection to the specification under 35 USC 132(a) for the introduction of new matter, Applicant has indicated (on page 6 of the response filed 7/6/2026) that the specification has been amended to remove the objectionable language. However, such is not entirely accurate, noting that only one occurrence re the “incorporated herein by reference” language was removed from the specification in the response filed July 6, 2026. Attention is directed to the above objection to the specification under 35 USC 132(a) regarding the issues that remain.
Regarding the previous rejections under 35 USC 112(b) and 35 USC 112(a), Applicant indicates that the claims have been amended to address the concerns. However, attention is directed to the above rejections under 35 USC 112(b) for any issues with respect thereto that either remain, or that were newly created via the amendment filed 7/6/2026.
Regarding the previous (and present) rejection(s) of the elected claims under 35 USC 102(a)(1) as being anticipated by JP 2005/268654 A (hereinafter, “JP ‘654”), it is noted that Applicant indicates (last paragraph of page 9 of the response filed 7/6/2026) that “[The Office Action maps the surface-side longitudinal hole 12 of JP ‘654 (referred to in some translations as the surface-side vertical holes 12) to the claimed first channel”. It is noted that such is not an accurate characterization of the previous (and present) Office Action(s)/rejection(s). Attention is directed to, for example, page 6 of the Non-Final Office Action mailed 4/6/2026 which expressly maps the claimed “first channel” to reference character/element 11 of JP ‘654. As can be seen in Figure 3 of JP ‘654, hole portion 12 is a portion of the “first channel” 11.
Applicant asserts that JP ‘654 does not teach the limitation “the first channel and the second channel are located apart from each other in a plane perspective view, and the first channel and the second channel are located in the through hole in a plane perspective view” (page 9 of the 7/6/2026 reply), and goes on (on page 10 of the 7/6/2026 reply) to state that “[T]o the extent the Examiner instead relies on gas passage 11 as a whole, that mapping also fails because gas passage 11 includes portions, such as the surface-side longitudinal holes 12 and horizontal hole 13, that extend outside the through hole in plan view”. However, such is not persuasive (and as a side note, it is noted that the claims do not refer to any “plan view”, but rather, refer to a “plane perspective view”). As noted in the above rejection of claim 1 under 35 USC 102(a)(1) as being anticipated by JP ‘654, JP ‘654 teaches:
the first channel (11) and the second channel (the continuous pores of 51 described above) are “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), and
the first channel (11) and the second channel (the continuous pores of 51) are located “in” the through hole (27) in a plane perspective view (see Figures 3-4 and 0023-0024, as well as paragraph 0018, noting that in “a” plane perspective view, such as, for example, when the electrostatic chuck 61 of Figure 3 is viewed from below along a vertical line of sight, portion 14 of the first channel 11 is located “in” the through hole 27, and so is the aforedescribed second channel re the continuous pores of 51).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., apparently that the entirety of the first channel and the entirety of the second channel are “located apart” from each other when the chuck is viewed in a “plan” view, and apparently that the entirety of the first and second channel are located in the through hole when the electrostatic chuck is viewed in a “plan” view) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally regarding the limitation “the first channel and the second channel are located in the through hole in a plane perspective view”, Applicant points to second channel 132 of the presently-disclosed invention, and has also asserted (last paragraph of page 10, first eight lines of page 11, of the response filed 7/6/2026) that JP ‘654 does not disclose “a second channel located in the through hole in a plane perspective view” because in JP ‘654 “only porous ceramic body 51 is present in the relevant through hole or gas flow path, and gas merely passes through the continuous pores of that porous ceramic body”, and thus, “JP ‘654 therefore does not disclose a second channel, separate from the porous body, that is located in the through hole and communicates with the alleged first channel via the porous body”.
However, Applicant appears to be reading more into the limitation than the claim language presently says. What the claim language presently says is “an embedded member located in the through hole and comprising a porous body communicating with the first channel and a second channel communicating with the first body via the porous body, wherein the first channel and the second channel are located apart from each other in a plane perspective view, and the first channel and the second channel are located in the through hole in a plane perspective view”. That said, the claim language is sufficiently broad as to be met by the configuration taught by JP ‘654. In particular, as noted above, JP ‘654 teaches:
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”) communicating with 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), wherein
the first channel (11) and the second channel (the continuous pores of 51 described above) are “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), and
the first channel (11) and the second channel (the continuous pores of 51) are located “in” the through hole (27) in a plane perspective view (see Figures 3-4 and 0023-0024, as well as paragraph 0018, noting that in “a” plane perspective view, such as, for example, when the electrostatic chuck 61 of Figure 3 is viewed from below along a vertical line of sight, portion 14 of the first channel 11 is located “in” the through hole 27, and so is the aforedescribed second channel re the continuous pores of 51).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the second channel be “separate from the porous body”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). That said, care should be taken to make sure there is support for any language contemplated by Applicant in this regard, noting that as shown in present Figure 2, for example, it does not appear that the second channel 132 is located so as to be spaced from/separated from the disclosed porous body 131.
In the last paragraph on page 11 of the 7/6/2026 reply, Applicant makes a number of assertions about the presently-disclosed invention and JP ‘654, and notes that “the present application discloses a materially different structure” (i.e., than JP ‘654). However, the issue is that the rejected claims are sufficiently broad as to be met by JP ‘654. That said, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the porous body is “located at the end portion of embedded member 130 on the side of first channels 112”, that “the first channel 112 and the second channel 132 are arranged so as to not overlap in plan view, thereby forming a bent of labyrinthine gas-flow passage that suppresses abnormal discharge”, anything whatsoever to do specifically with a “plan” view, that the second channel communicates with the first channel through a porous body that is “distinct” in some way from something unspecified in either the argument or the claim, that the first channel, porous body, and second channel are “within the through-hole footprint”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On page 12 of the 7/6/2026 reply, Applicant has indicated that JP ‘654 likewise does not meet dependent claims 2-3 for the same reasoning mentioned previously re claim 1. That said, attention is directed to the above response to those arguments re claim 1, which likewise apply re the claims (2-3) dependent from claim 1.
Additionally (also on page 12 of the 7/6/2026 reply), Applicant has indicated that JP ‘654 further fails to disclose the additional limitations of claims 2-3. However, attention is directed to the above rejections of dependent claims 2-3 under 35 USC 102(a)(1) as being anticipated by JP ‘654 for details as to how the JP ‘654 reference is considered to teach the specific limitations of dependent claims 2-3.
Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, it is noted that each of U.S. Patent Application Publication No.’s 2020/0286768 and 2016/0352260, both cited in the Notice of References Cited mailed on 4/6/2026, teach electrostatic chucks that include porous bodies and a variety of channels.
Applicant's amendment necessitated any 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 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.
Examiner interviews are available via telephone, and via 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, 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
August 3, 2026
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