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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 C.F.R. § 1.55.
Claim Objections
Claims 1-3 and 5 are objected to because of the following informalities:
“wherein,” (claim 1, line 10) should be changed to --wherein:--, and add a carriage return thereafter (“with a direction” (line 10) should start on a new line);
delete the carriage return and indentation between “outside, the space” (claim 1, lines 11-12);
“the other direction” (claim 1, line 11) should be changed to --an other direction--;
“wherein” (claim 2, line 2) should be changed to --wherein:--, and add a carriage return thereafter (“the annular partition wall” (line 2) should start on a new line);
“wherein” (claim 3, line 2) should be changed to --wherein:--, and add a carriage return thereafter (“the closing member” (line 2) should start on a new line);
“an introduction path” (claim 5, line 3) should be changed to --a first introduction path-- (to distinguish from another “introduction path”);
“an introduction path” (claim 5, line 4) should be changed to --a second introduction path-- (to distinguish from another “introduction path”).
Appropriate correction is required.
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:
“a closing member which closes an upper surface side opening of an opening of the first annular member” (claim 1, line 4).
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 U.S.C. § 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 1-7 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 1 recites the limitations “a direction toward a center of the opening of the first annular member” and “[an] other direction” (lines 10-11). These limitations are indefinite because they are unclear and fail to inform a person of ordinary skill in the art what these mean. Specifically, the “direction” and the “other direction” are not defined in any coordinate system or relative to any reference axis or direction, other than “toward a center” (but this phrase does not provide sufficient reference because “toward a center” can be any number of infinite directions). For examination purposes, these directions are assumed to be in the radial direction (i.e., “a first radial direction towards a center of the opening...” and “a second radial direction away from the center of the opening...”. Claims 2-7 are rejected on the basis they incorporate these limitations of claim 1.
Claim Rejections – 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). In re Berg, 140 F.3d 1428, 1431-32 (Fed. Cir. 1998); In re Longi, 759 F.2d 887, 892-93 (Fed. Cir. 1985).
A timely filed terminal disclaimer in compliance with 37 C.F.R. § 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 C.F.R. § 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. MPEP § 804(I)(B)(1). For a reply to a non-final Office action, see 37 C.F.R. § 1.111(a). For a reply to final Office action, see 37 C.F.R. § 1.113(c). A request for reconsideration while not provided for in 37 C.F.R. § 1.113(c) may be filed after final for consideration. MPEP §§ 706.07(e), 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. 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.
Applicant is advised of its duty of disclosure, candor, and good faith to identify its own copending applications and patents that disclose similar subject matter, as well as prior art and other information from the prosecution of its own copending applications and patents, that are material to the patentability (including double patenting) of this application. MPEP §§ 2001.04, 2001.05, 2001.06, 2001.06(a)-(e).
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/545,306 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other as follows. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application 18/570,231
Copending Application 18/545,306
1. A polishing head, which comprises:
a first annular member,
a closing member which closes an upper surface side opening of an opening of the first annular member,
a membrane which closes a lower surface side opening of the opening of the first annular member,
and a second annular member situated under the membrane and having an opening which holds a work to be polished,
wherein[:]
with a direction toward a center of the opening of the first annular member assumed as an inside, and with [an] other direction assumed as an outside, the space, which is formed by closing the opening of the first annular member with the closing member and the membrane, is partitioned into an inside space and an outside space with an annular partition wall having a top annular connection part connected to the closing member and a bottom annular connection part connected to the membrane,
an inside diameter of the bottom annular connection part of the annular partition wall is larger than an inside diameter of the second annular member,
and an outer circumferential region of a setting position of the work to be polished is situated vertically under the top annular connection part of the annular partition wall.
1. A polishing head, which comprises:
a first annular member,
a closing member which closes an upper surface side opening of an opening of the first annular member,
a membrane which closes a lower surface side opening of an opening of the first annular member,
and a second annular member situated under the membrane, and having an opening which holds a work to be polished,
wherein,
with a direction toward a center of the opening of the first annular member assumed as an inside, and with the other direction assumed as an outside, a space, which is formed by closing the opening of the first annular member by the closing member and the membrane, is partitioned into an inside space and an outside space by an annular partition wall with a top annular connection part connected to the closing member and with a bottom annular connection part connected to the membrane,
an inside diameter of the bottom annular connection part of the annular partition wall is larger than an inside diameter of the second annular member,
7. The polishing head according to claim 1, wherein...vertically under at least a part of the side surface shape, a region including an inside circumferential end of the second annular member and an outside circumferential end of the setting position of the work to be polished is situated,
2. The polishing head according to claim 1, wherein[:]
the annular partition wall comprises a side surface shape selected from the group consisting of an inclined shape and a horizontal shape in a cross-sectional shape,
and vertically under at least a part of the side surface shape, an inside circumferential end of the second annular member and an outside circumferential end of the setting position of the work to be polished are situated.
7. The polishing head according to claim 1, wherein...
the annular partition wall comprises a side surface shape selected from the group consisting of an inclined shape and a horizontal shape in a cross-sectional shape,
vertically under at least a part of the side surface shape, a region including an inside circumferential end of the second annular member and an outside circumferential end of the setting position of the work to be polished is situated.
3. The polishing head according to claim 1, wherein[:]
the closing member comprises a top disk-shaped member and a bottom disk-shaped member with a smaller outside diameter than that of the top disk-shaped member,
and in the annular partition wall, the top annular connection part is connected to a side surface of the bottom disk-shaped member.
7. The polishing head according to claim 1, wherein...
the closing member comprises a top disk-shaped member and a bottom disk- shaped member having a smaller outside diameter than that of the top disk-shaped member,
and in the annular partition wall, the top annular connection part is connected with a side surface of the bottom disk-shaped member.
4. The polishing head according to claim 1, which further comprises a back pad between the membrane and the second annular member.
7. The polishing head according to claim 1, wherein...the polishing head further comprises a back pad between the membrane and the second annular member.
5. The polishing head according to claim 1, which comprises: [a first] introduction path which introduces a gas into the inside space, and [a second] introduction path which introduces a gas into the outside space.
7. The polishing head according to claim 1, wherein...the polishing head further comprises: an introduction path which introduces a gas into the inside space, and an introduction path which introduces a gas into the outside space.
Allowable Subject Matter
Claims 1-7 would be allowable if rewritten to overcome the claim objections and rejection under 35 U.S.C. § 112(b) (claim 1), and the double patenting rejections, as set forth in this Office action.
As allowable subject matter has been indicated, Applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. 37 C.F.R. § 1.111(b) and MPEP § 707.07(a).
The following is Examiner’s statement of reasons for allowance:
The closest prior art of record is US 6494774 B1 (“Zuniga”) and US 20120052774 A1 (“Moriya”).
Regarding claim 1, Zuniga discloses a polishing head (Figs. 1, 3A-F, polishing head 100),
which comprises:
a first annular member (Figs. 3A-F, annular ring 110),
a closing member which closes an upper surface side opening of an opening of the first annular member (Figs. 3A-F, top disk 102 and bottom disk 123 closes the upper surface side opening of annular ring 110; this limitation is interpreted under § 112(f), which includes disk shaped members such as elements 10a and/or 10b, and equivalents thereof (Spec. Figs. 1-2, 5-7; ¶¶ 0024-0025)),
a membrane which closes a lower surface side opening of the opening of the first annular member (Figs. 3A-F, membrane 124 closes lower surface side opening of annular ring 110),
wherein[:]
with a direction toward a center of the opening of the first annular member assumed as an inside, and with [an] other direction assumed as an outside, the space, which is formed by closing the opening of the first annular member with the closing member and the membrane, is partitioned into an inside space and an outside space with an annular partition wall having a top annular connection part connected to the closing member and a bottom annular connection part connected to the membrane (Figs. 3A-F, space within the opening of the annular ring 110 is divided into an inside space (towards the central rotational axis) and outside space (radially away from the central rotational axis) with annular partition wall 122 (see annotated Fig. 3A below), top annular connection part connects to closing member 102 and 123 and bottom annular connection part connected to membrane 124 (via elements 127/126a/128a) (“bottom” is towards the wafer 10)),
and an outer circumferential region of a setting position of the work to be polished is situated vertically under the top annular connection part of the annular partition wall (Figs. 3A-F, outer circumferential region of wafer 10 (see annotated Fig. 3A below) is vertically under the top annular connection part of annular partition wall 122 (at reference 123); Examiner interprets this limitation to not actually require the presence of the work, but that the device is configured so that a work to be polished would be located as recited).
[AltContent: arrow][AltContent: textbox (“Outer circumferential region”)][AltContent: arrow][AltContent: textbox (Outside space)][AltContent: textbox (Inside space)][AltContent: arrow]
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Zuniga Fig. 3A (annotated)
Zuniga does not explicitly disclose:
a second annular member situated under the membrane and having an opening which holds a work to be polished (Examiner notes that the phrase “which holds a work to be polished” is interpreted as “which is configured to hold a work to be polished”),
an inside diameter of the bottom annular connection part of the annular partition wall is larger than an inside diameter of the second annular member.
Regarding claim 1, Moriya discloses a polishing head (Figs. 1-2, polishing head 14),
which comprises:
a first annular member (Fig. 2, annular ring 22a),
a membrane which closes a lower surface side opening of the opening of the first annular member (Fig. 2, membrane 28 closes lower surface side opening of annular ring 22a),
and a second annular member situated under the membrane and having an opening which holds a work to be polished (Fig. 2, second annular ring 31 situated under membrane 28, with inside opening that is configured to hold wafer 30 to be polished; Examiner notes that the phrase “which holds a work to be polished” is interpreted as “which is configured to hold a work to be polished”),
wherein[:]
with a direction toward a center of the opening of the first annular member assumed as an inside, and with [an] other direction assumed as an outside, the space...is partitioned into an inside space and an outside space with an annular partition wall having a top annular connection part...and a bottom annular connection part connected to the membrane (Fig. 2, space within the opening of the annular ring 22a is divided into an inside space 40 (towards the central rotational axis) and outside space 42 (radially away from the central rotational axis) with annular partition wall 36 having top annular connection part 37 and bottom annular connection part 38 connected to membrane 28 (“bottom” is towards the wafer 10)),
and an outer circumferential region of a setting position of the work to be polished is situated vertically under the top annular connection part of the annular partition wall (Fig. 2, outer circumferential region of wafer 30 is vertically under the top annular connection part of annular partition wall 37; Examiner interprets this limitation to not actually require the presence of the work, but that the device is configured so that a work to be polished would be located as recited).
Moriya does not explicitly disclose:
a closing member which closes an upper surface side opening of an opening of the first annular member,
with a direction toward a center of the opening of the first annular member assumed as an inside, and with [an] other direction assumed as an outside, the space, which is formed by closing the opening of the first annular member with the closing member and the membrane, is partitioned into an inside space and an outside space with an annular partition wall having a top annular connection part connected to the closing member and a bottom annular connection part connected to the membrane,
an inside diameter of the bottom annular connection part of the annular partition wall is larger than an inside diameter of the second annular member.
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Moriya Fig. 2
The prior art of record does not disclose or render obvious the limitations of claim 1 in the combination as claimed. It appears that one of ordinary skill in the art before the effective filing date of this application would not have modified Zuniga or Moriya to include the missing limitations and to implement the configuration of claim 1 without hindsight based on Applicant’s disclosure. Moreover, Examiner notes that due to the fundamental differences in the configurations of Zuniga and Moriya, it does not appear to obvious to take certain aspects of one configuration (e.g., the annular partition wall 36/37/38 of Moriya) and combine them with the other configuration.
In view of the prior art of record and its deficiencies, Applicant’s invention is novel, non-obvious, and allowable as claimed. Claims 2-7 are allowable for depending from claim 1. For claim 2, Examiner interprets the limitation “vertically under at least a part of the side surface shape, an inside circumferential end of the second annular member and an outside circumferential end of the setting position of the work to be polished are situated” to not actually require the presence of the work, but that the device is configured so that a work to be polished would be located as recited.
Status of Claims
Claims 1-7 are pending. Claims 1-7 are rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
WO 2020202682 A1 (“Nakano”) discloses a substrate polishing apparatus with a flexible membrane (Abstr.; Figs. 1-3, 4A-B, 5A-F);
US 20180311783 A1 (“Terakawa”) discloses a substrate polishing apparatus with a flexible membrane (Abstr.; Figs. 1, 2A-C);
US 6511367 B2 (“Zuniga2”) discloses a substrate polishing apparatus with a flexible membrane and partitions (Abstr.; Figs. 4-11);
US 6695687 B2 (“Hollatz”) discloses a substrate polishing apparatus with a flexible membrane and partitions (Abstr.; Figs. 1-3);
US 9266216 B2 (“Masumura”) discloses a substrate polishing apparatus with a flexible membrane and partitions (Abstr.; Figs. 1-7);
US 5916015 A (“Natalicio”) discloses a substrate polishing apparatus with a flexible membrane (Abstr.; Figs. 1-3);
US 20110053474 A1 (“Moriya2”) discloses a substrate polishing apparatus with a flexible membrane with partition walls (Abstr.; Figs. 1-4);
US 20190358768 A1 (“Kang”) discloses a substrate polishing apparatus with a flexible membrane and partitions (Abstr.; Figs. 1-21);
US 6923714 B1 (“Zuniga3”) discloses a substrate polishing apparatus with a flexible membrane and a partition (Abstr.; Figs. 1-2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723