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
Amendments submitted on 3/12/26 include amendments to the claims. Claims 1-7, 9-16 are pending. Claims 1, 9-10 and 16 have been amended. Claims 8 and 17 have been cancelled. Claims 10-14 remain withdrawn.
Response to Arguments
Applicant's arguments filed 3/12/26 have been fully considered but they are not persuasive.
Regarding applicant’s arguments that the rejection under 35 USC 112 should be withdrawn because one of ordinary skill in the art would understand that the “sensor monitoring system” of claims 9 and 16 refers to “a camera or other sensor for assessing from an image or measurement…whether the decoating process of the edge region was successful”: Paragraph [0046] of the specification merely provides that the sensor monitoring system is “preferably for quality assurance”, this does not provide with sufficient specificity the structure of the sensor system being claimed. Furthermore, that the sensor monitoring system may be “a camera or other sensor for assessing from an image or measurement” also does not particularly point out and distinctly claim the structure of the sensor system with sufficient specificity.
Regarding applicant’s arguments that none of the references teach that the apparatus is configured for dispensing different solvent media, etching media, or combinations thereof through different nozzles: 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 (reads on different nozzles) (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 (also reads on different nozzles) 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 apparatus is configured for dispensing different solvent media, etching media, or combinations thereof through different nozzles. 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, therefore, since all of the structural requirements of the claim are taught by the prior art, the particular choice of fluid 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).
In response to applicant's argument that Yashiki et al. is nonanalogous art because it teaches using a sensor for positional control and not coating removal quality, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Yashiki et al. is in the field of the inventor’s endeavor as it teaches a substrate treatment apparatus (see abstract) that utilizes nozzles for treatment of the substrate, including an edge region of the substrate (see abstract, paragraphs [0031], [0051]).
Regarding applicant’s arguments that Yashiki et al. does not teach monitoring process quality or multi-layer removal effectiveness: The claims do not require monitoring process quality or multi-layer removal effectiveness.
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 9 and 16 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.
Claims 9 and 16 recite the limitation: “…the apparatus has a sensor monitoring system.” It is unclear what type of sensor is being claimed. While paragraph [0046] of the specification provides that the sensor monitoring system is “preferably for quality assurance”, this does not provide with sufficient specificity the structure of the sensor system being claimed.
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 and 15 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 said decoating head (see figures 6a, 6b, column 6, lines 30-41), and each said decoating head has a nozzle 21 (reads on different nozzles) (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 (also reads on different nozzles) (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 apparatus is configured for dispensing different solvent media, etching media, or combinations thereof through different nozzles. 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, therefore, since all of the structural requirements of the claim are taught by the prior art, the particular choice of fluid 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).
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).
Claims 9 and 16 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.
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.
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/TINSAE B AYALEW/EXAMINER, Art Unit 1711