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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/6/26 has been entered.
Response to Amendment
Amendments submitted on 7/6/26 include amendments to the claims. Claims 1-7, 10-15, 18-24 are pending. Claims 10-14 remain withdrawn. Claims 18-24 have been newly added.
Newly added claims 22-24 are also withdrawn from further consideration as being drawn to a non-elected invention as per the Restriction Requirement of 9/24/25, which, after traversal, was made final in the Non-Final Rejection of 12/12/25.
Election/Restrictions
Claims 22-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/17/25. The restriction requirement was made final in the office action of 12/12/25.
Response to Arguments
Applicant's arguments filed 7/6/26 have been fully considered but they are not persuasive.
Regarding applicant’s arguments that none of the references teach that the apparatus has at least one first nozzle configured to discharge a first medium at a first pressure, and at least one second nozzle configured to discharge a second medium at a second pressure, wherein the first medium is different from the second medium, and wherein the first pressure is lower than the second pressure: Kutsuzawa et al. teaches that there is more than one decoating head (see figures 6a, 6b, column 6, lines 30-41), and each decoating head has a nozzle 21 capable of supplying a fluid (reads on first medium) at a first pressure (see figure 3, column 4, lines 61-67). Kutsuzawa et al. does not explicitly teach that each decoating head has more than one nozzle. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention that each decoating head may include more than one nozzle (reads on at least one second nozzle) so as to increase the fluid supplying capacity to the substrate. Furthermore, it has been determined that the duplication of parts constitutes an obvious design choice to one of ordinary skill in the art absent persuasive evidence that a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Kutsuzawa et al. does not explicitly teach that the at least one second nozzle supplies a second medium different to the first medium at a second pressure higher than the first pressure. However, Kutsuzawa et al. teaches a plurality of nozzles (see e.g. different nozzles on different decoating heads, as well as, in the modified system, different nozzles on the same decoating head) that are each capable of supplying a fluid therethrough at different pressures (e.g. the pressures of the fluids sprayed by the nozzles may vary based on the nature of the fluid itself, as well as through the variation of other process parameters such as differences in pressurization settings of the fluid supply), therefore, since all of the structural requirements of the claim are taught by the prior art, the particular choice of fluid and pressure at which it is supplied is a matter of intended use, and it has been determined that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Hence, the choice of supplying the first medium from the at least one first nozzle at a first pressure lower than the second pressure at which the at least one second nozzle supplies the second medium is a matter of intended use.
Regarding applicant’s arguments that Kutsuzawa et al. teaches away from increasing fluid supply through an increased number of nozzles because Kutsuzawa et al. teaches the removal of solvent that minimizes usage: Kutsuzawa et al.’s teaching that solvent retrieval and/or that the system is efficient in its use of solvent relative to conventional systems (see column 2, lines 26-29, column 5, lines 45-55) does not negate the fact that the amount of fluid necessary to achieve a desired level of substrate decoating will vary based on the level and type of coating, the types of fluid applied, the manner of fluid application and other process parameters. Therefore, increasing the number of nozzles and allowing for greater fluid flow capacity may be desirable depending on the particular application, and Kutsuzawa et al. does not teach away from such an obvious modification.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the two dispensing tubes, first media pump, second media pump, compressed air source, nitrogen source, first medium reservoir, second medium reservoir, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 19 and 21 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.
Claim 19 recites the limitation: “…a second media pump configured for discharging the second medium with the second pressure” in lines 3-4. The specification teaches a media pump for discharging a fluid at a low pressure in paragraph [0052], but does not teach a second media pump configured for discharging a second medium at a second pressure that is different to the first.
Claim 21 recites the limitation: “…a second medium reservoir configured for supplying a second medium…” in line 3. The specification teaches a solvent or etching medium reservoir in paragraph [0052], but does not teach a second medium reservoir configured for supplying a second medium that is different to the first.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-7, 15, 18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kutsuzawa et al. (US5688411A).
Regarding claims 1, 3-6, 15, Kutsuzawa et al. teaches an apparatus capable of decoating an angular substrate (see abstract, figures 1, 5 and 6), comprising a decoating head (see top portion of 12 as shown in figure 3) (see column 4, lines 38-60, figures 1-3, 7), a mobilization device 4-6 (see column 4, lines 15-37, figures 1, 5a-6b), wherein the decoating head is configured to be guided along a longitudinal edge of the angular substrate W in a working path (see column 4, lines 15-37, figures 1, 5a-6b) (reads on claim 1); a further working path is provided with a further decoating head (see figures 6a, 6b, column 6, lines 30-41) (reads on claim 3); the decoating head and further decoating head are capable of being guided in opposite directions (see figures 6a, 6b, column 6, lines 30-41) (reads on claim 4); an extension arm (see bottom portion of 12 as shown in figure 3) comprising a gas extrusion 22 (see column 4, lines 61-67, figure 3) (reads on claim 5); the extension arm in a working position is arranged on a side of the angular substrate opposite to the decoating head (see figure 3, top portion of 12 is opposite to the bottom portion of 12 with the substrate W disposed in between in a working position) (reads on claim 6). Kutsuzawa et al. also teaches that there is more than one decoating head (see figures 6a, 6b, column 6, lines 30-41), and each decoating head has a nozzle 21 capable of supplying a fluid (reads on first medium) at a first pressure (see figure 3, column 4, lines 61-67). Kutsuzawa et al. does not explicitly teach that each decoating head has more than one nozzle. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention that each decoating head may include more than one nozzle (reads on at least one second nozzle) (reads on claim 15) so as to increase the fluid supplying capacity to the substrate. Furthermore, it has been determined that the duplication of parts constitutes an obvious design choice to one of ordinary skill in the art absent persuasive evidence that a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Kutsuzawa et al. does not explicitly teach that the at least one second nozzle supplies a second medium different to the first medium at a second pressure higher than the first pressure. However, Kutsuzawa et al. teaches a plurality of nozzles (see e.g. different nozzles on different decoating heads, as well as, in the modified system, different nozzles on the same decoating head) that are each capable of supplying a fluid therethrough at different pressures (e.g. the pressures of the fluids sprayed by the nozzles may vary based on the nature of the fluid itself, as well as through the variation of other process parameters such as differences in pressurization settings of the fluid supply), therefore, since all of the structural requirements of the claim are taught by the prior art, the particular choice of fluid and pressure at which it is supplied is a matter of intended use, and it has been determined that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Hence, the choice of supplying the first medium from the at least one first nozzle at a first pressure lower than the second pressure at which the at least one second nozzle supplies the second medium is a matter of intended use.
Regarding claim 2, Kutsuzawa et al. teaches the limitations of claim 1. Kutsuzawa et al. also teaches that the mobilization device 4-6 is capable of setting a further longitudinal substrate edge of the angular substrate W into an operative connection with the working path of the decoating head (see column 2, lines 40-51, see rotation of substrate followed by insertion of substrate edge into slot), wherein the decoating head and the mobilization device 4-6 comprise an either-or circuit (the decoating head is capable of stopping operation while the mobilization device 4-6 is capable of removing the substrate edge from the slot of the decoating head, rotating the substrate and inserting a different edge of the substrate into the slot after which the decoating head proceeds with treating the newly inserted edge – reads on an either-or circuit).
Regarding claim 7, Kutsuzawa et al. teaches the limitations of claim 5. Kutsuzawa et al. also teaches that the extension arm has the gas extrusion 22 capable of providing a stabilizing air flow, and wherein the gas extrusion 22 is capable of directing flow onto the angular substrate on the other side of the decoating head (see figure 3, column 4, lines 61-67). Kutsuzawa et al. does not explicitly teach that the gas that flows through the air extrusion is air. However, since all of the structural requirements of the claim are taught by the prior art, the particular choice of fluid that is used is a matter of intended use, and it has been determined that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding claim 18, Kutsuzawa et al. teaches the limitations of claim 1. Kutsuzawa et al. teaches in figures 1,2, 5a-6b, column 4, lines 15-37 that the nozzle 21 is disposed on an edge of a substrate W and configured to be moved along the longitudinal edge of the substrate W in the working direction, so as to provide processing fluid to the longitudinal edge of the substrate W. Kutsuzawa et al. does not teach that the at least one first nozzle and the at least one second nozzle are arranged next to each other on the decoating head in direction along the working path. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention that at least one second nozzle may be arranged next the first nozzle in a direction along the longitudinal working path so as to increase the ability to provide processing fluid to the longitudinal edge of the substrate as the decoating head is moved along the longitudinal edge of the substrate in the working path. Furthermore, it has been determined that the rearrangement of parts constitutes an obvious design choice to one of ordinary skill in the art absent persuasive evidence that a new and unexpected result is produced. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 21, Kutsuzawa et al. teaches the limitations of claim 1. As discussed in the rejection of claim 1, the modified system by Kutsuzawa et al. is capable of supplying different fluids from different nozzles, such that the first medium and the second medium being different media for etching, dissolving, water-cleaning or drying different layers of a coating on the substrate in different ways, is merely a matter of intended use. Kutsuzawa et al. teaches in the abstract and column 4, lines 38-41 that reservoirs may be used to hold fluids to be supplied by the nozzles of the decoating head. Hence, it is readily apparent that, in the modified system, the at least one first nozzle may be connected to a first medium reservoir configured for supplying the first medium and the at least one second nozzle may be connected to a second medium reservoir configured for supplying the second medium.
Claims 9, 16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kutsuzawa et al. (US5688411A) as applied to claims 1 and 15, and further in view of Yashiki et al. (US20060185792).
Regarding claims 9 and 16, Kutsuzawa et al. teaches the limitations of claims 1 and 15. Kutsuzawa et al. does not explicitly teach a sensor. Yashiki et al. teaches a substrate treatment apparatus (see abstract) and that a sensor 21/22 may be used to monitor the distance between the substrate and the treatment nozzles thereby allowing for improved precision and uniformity in the treatment of the substrate (see abstract, paragraphs [0031], [0051]). Since both Kutsuzawa et al. and Yashiki et al. teach substrate treatment apparatuses it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention that a sensor may be included in the system by Kutsuzawa et al. to monitor the distance between the substrate and the treatment nozzles thereby allowing for improved precision and uniformity in the treatment of the substrate, as shown to be known and conventional by Yashiki et al.
Regarding claim 19, Kutsuzawa et al. teaches the limitations of claim 1. Kutsuzawa et al. does not explicitly teach that the at least one first nozzle is connected to a first media pump configured for discharging the first medium with the first pressure and the at least one second nozzle is connected to a second media pump configured for discharging the second medium with the second pressure. Yashiki et al. teaches in figure 1 and paragraphs [0027]-[0029] and [0048]-[0049] that pumps may be used to pump different fluids from different reservoirs as directed by a control unit 3 that controls the entire system. Since both Kutsuzawa et al. and Yashiki et al. teach substrate treatment apparatuses it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention that first and second media pumps may be included in the system by Kutsuzawa et al. so as to connect with and provide the necessary pressurization to the at least one first and second nozzles, respectively, and discharge the first and second mediums at their respective pressures, as shown to be known and conventional by Yashiki et al.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kutsuzawa et al. (US5688411A) as applied to claim 1, and further in view of Boughton et al. (EP0140505A1).
Regarding claim 20, Kutsuzawa et al. teaches the limitations of claim 1. Kutsuzawa et al. teaches that the at least one first nozzle 21 may be connected to a gas source. Kutsuzawa et al. does not explicitly teach that the gas is compressed air or nitrogen or that at least one second nozzle has two dispensing tubes which are guided in one another. Boughton et al. teaches a spray cleaning system (see abstract) and that a nozzle 10 may have two dispensing tubes 12, 22 which are guided in one another, and wherein a media pump 36 is connected to a first one 12/22 of the dispensing tubes 12, 22 and the compressed air source may be connected to a second one 22/12 of the dispensing tubes 12, 22, allowing for a high energy jet of fluid with variable patterns of spray (see abstract, figures 1-4, claim 1). Since both Kutsuzawa et al. and Boughton et al. teach spray cleaning systems it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention that, in the modified system of Kutsuzawa et al., at least one second nozzle may have two dispensing tubes guided in one another with a compressed air source so as to allow for a high energy jet of fluid with variable patterns of spray, as shown to be known and conventional by Boughton et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TINSAE B AYALEW whose telephone number is (571)270-0256. The examiner can normally be reached Monday-Friday, 8:30am-5pm.
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, MICHAEL BARR can be reached at 571-272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TINSAE B AYALEW/EXAMINER, Art Unit 1711
Prosecution Insights