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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2/27/2024, 8/16/2024, and 12/19/2024 have been considered by the examiner.
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.
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:
an estimation unit;
a current density calculation unit;
a film thickness calculation unit; and
a control parameter determination unit
in claim 1.
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.
Regarding the film thickness calculation unit, Formula 9 is interpreted as the corresponding algorithm for performing the recited functional limitation in claim 1.
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.
Furthermore, these limitations appear to be related to a computer-implemented or software limitations for the claim does not recite a computer or storage device associated with the limitations. It is suggested that the applicant recite a control module comprising these computer-implemented functional limitations.
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 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Regarding claims 1 and 2, the phrase “an optimal operation mode” is indefinite or renders the scope of the claim unclear because it relies on subjective or relative terminology. The term “optimal” depends on subjective judgment, and the claim does not provide an objective baseline or standard for determining what constitutes an optimal mode versus a non-optimal mode, failing to particularly point out and distinctly claim the invention.
Regarding claim 1, the limitations an estimation unit, a current density calculation unit, and a control parameter determination unit invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Regarding the estimation unit, the specification fails to clearly disclose structure to perform the claimed function. The specification generally describes that the outer edge current density can be estimated using Formula 1 (appears to be a state space model) to calculate the current density and describes calculating an observation value from an observation equation (appears to be Formula 4). The specification further discloses the Kalman filter to correct the estimation. Additionally, the specification states that other state space model (paragraph 52) or observation equations (paragraph 60) could be used. Based on these numerous teachings, it is not clear which of the formulas or combinations of formulas, and whether it includes Kalman filter, correspond to the estimation unit as interpreted under 112(f). Applicant is requested to clarify which algorithm or structure is associated with the corresponding estimation unit.
Regarding the current density calculation unit, the specification describes several equations, particularly Formula 8 and Formula 11, to calculate the current intensity. However, specification fails to clearly disclose the corresponding structure to perform the claimed function. Based on these numerous teachings, it is not clear which of the formulas or combinations of formulas corresponds to the current density calculation unit. Applicant is requested to clarify which algorithm or structure is associated with the corresponding current density calculation unit.
Regarding the control parameter determination unit, paragraph 78 of the specification describes that the control parameter determination unit determines the operating parameters based on the predetermined plating film thickness calculation but does not disclose any specific algorithm or structure for performing the recited functions. The specification provides no detail as to how to evaluate the different film thicknesses to determine the parameters for the optimal operation mode. Applicant is requested to clarify which algorithm or structure is associated with the corresponding control parameter determination unit.
Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 3–9 are rejected by virtue of their dependence upon the rejected base claim(s).
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7, and 9 of copending Application No. 18/168486 in view of Birang et al. (US 20110031112).
Application ‘486 claims a plating apparatus for plating a substrate, comprising:
a plating tank (claim 1 of Application ‘486) to store a plating solution,
a substrate holder (claim 1) that holds the substrate,
an anode disposed in the plating tank to oppose the substrate held by the substrate holder (claim 1),
a potential sensor (claim 1) disposed in the vicinity of the substrate held by the substrate holder and configured to measure a potential of the plating solution,
an estimation unit configured to estimate a density of a current flowing through an outer edge of the substrate based on a value of the potential of the plating solution that is measured by the potential sensor (i.e., processor configured to estimate current density flowing through an outer edge part of the substrate; claim 1),
a current density calculation unit configured to calculate a density of a plating current flowing through the plating solution into the substrate, based on the estimated current density and a control parameter that specifies an operation mode of the plating apparatus, the current density calculation unit calculating the plating current density for each of a plurality of different operation modes of the plating apparatus (i.e., a current density calculator configured to calculate plating current density flowing into the substrate from the plating liquid; claim 6), and
a film thickness calculation unit configured to calculate a thickness of a plating film formed on the substrate for each of the plurality of operation modes, based on each of the plating current densities calculated by the current density calculation unit (i.e., a film thickness calculator configured to calculate film thickness of a plated film; claim 7).
Application ‘486 does not explicitly claim a control parameter determination unit configured to determine a control parameter corresponding to an optimal operation mode, based on the plating film thickness for each operation mode of the plating apparatus that is calculated by the film thickness calculation unit, the plating apparatus performing a plating process on the substrate by use of the control parameter determined by the control parameter determination unit.
Birang et al. teaches an apparatus to measure differential voltages at various positions in a plating cell (Figs. 3 and 4D). These voltage measurements are used to calculate local current densities, which are then correlated to the thickness of the plated material (step 458, Fig. 4D). Process parameters are adjusted if there are differences between the real-time thickness profile in the desired thickness profile (paragraph 71). Since the output for these process parameters are performed by the control unit 1120 (paragraph 73), the algorithm for outputting the process parameters based on the plating film thickness in Birang et al. reads on the instant control parameter determination unit.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention modify to incorporate the control parameter determination unit of Birang et al. in the apparatus of Application ‘486 to electroplate a substrate with uniform thickness profile (paragraph 13 Birang et al.).
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to the applicant's disclosure. US 6542784, US-20050241945, and US20060172427.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUAN V VAN whose telephone number is (571)272-8521. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Mallari can be reached at (571) 272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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