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 .
Response to Amendment
Claims 1-4 and 7-15 are pending in the Amendment filed 02/19/2026, of which claims 13-15 remain withdrawn.
The prior art rejections of record are withdrawn in view of Applicant’s amendment to independent claim 1 (incorporating previous claim 6, “in said operation c), a temperature of said dry processing liquid is increased to said contact temperature by heating said dry processing liquid that is in contact with said surface of said substrate.”), and persuasive argument as to the rejection over Nakamori et al. [“Remarks”, pg. 9-10].
However, the rejection on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent No. 12417906 is maintained, but has been modified to meet amended claims, as set forth below:
Claims 1-4, 7, and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 8-9, 11 and 13 of U.S. Patent No. 12417906 (herein ‘906).
Response to Arguments
Applicant’s arguments, see “Remarks”, filed 02/19/2026, with respect to amended claim 1 have been fully considered and are persuasive. The rejection of claims 1-8 under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Nakamori et al. (US 20180040471 A1) is withdrawn.
As to amended claim 1, Applicant argues:
“The rear surface heating of Nakamori is solely designed to prevent or slow down the temperature drop in the wafer W to "reduce the risk of pattern collapse" (paragraph [0075]) and cannot raise the temperature of the HFO in contact with the upper surface of the substrate to the contact temperature. Specifically, since Nakamori teaches that the hot water supplied to the lower surface of the substrate by the rear surface heating mechanism is to be below the temperature of HFO (e.g. below 100° C at 75°C), the process disclosed in Nakamori cannot raise the temperature of the HFO that is applied to the upper surface of the substrate. Thus, Nakamori does not anticipate claim 1 because it does not teach "bringing a heated dry processing liquid into contact with said surface of said substrate after said operation" and increasing the temperature of the dry processing liquid by heating the dry processing liquid in the step of "bringing a heated dry processing liquid into contact with said surface of said substrate after said operation" ("a temperature of said dry processing liquid is increased to said contact temperature by heating said dry processing liquid that is in contact with said surface of said substrate").’ [“Remarks”, pg. 9-10].
In response, this argument is persuasive for the reason set forth by Applicant—that the process disclosed in Nakamori cannot raise the temperature of the HFO that is applied to the upper surface of the substrate [para. 0082-83; para. 0100, 106].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7, and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 8-9, 11 and 13 of U.S. Patent No. 12417906 (herein ‘906). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is anticipated by claim 1, or alternatively claim 13 (as it depends from claim 9) of ‘906.
Instant claim 2 is anticipated by claim 2, or alternatively claim 4, (as they depend from claim 1) of ‘906.
Instant claim 3 is anticipated by claim 1 of ‘906.
Instant claim 4 is anticipated by claim 1 of ‘906.
Instant claim 7 is rendered obvious by claim 1 (where the disclosed range, “not lower than said boiling point of said rinse liquid and lower than that of said dry processing liquid” substantially overlaps the claimed range).
Instant claim 9 is anticipated by claim 1 of ‘906.
Instant claim 10 is anticipated by claim 8 (as it depends from claim 1) of ‘906.
Instant claim 11 is anticipated by claim 8 (as it depends from claim 1) of ‘906.
Instant claim 12 is anticipated by claim 8 (as it depends from claim 1) of ‘906.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: Applicant’s amendment to claim 1 has overcome the prior art of record. The double patenting rejection of record over U.S. Patent No. 12417906 does not anticipate or render obvious the feature of claim 8.
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 CHRISTOPHER M REMAVEGE whose telephone number is (571)270-5511. The examiner can normally be reached Monday-Friday 10:00 AM - 3:30 PM.
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/CHRISTOPHER REMAVEGE/Examiner, Art Unit 1713
/BINH X TRAN/Primary Examiner, Art Unit 1713
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