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 .
Applicant’s amendment filed 12/29/2025 is acknowledged. Claims 21, 22, 24, 25, 27, 29, 30 and 32-44 are pending. Claims 1-20, 23, 26, 28 and 31 are cancelled. Claims 41-44 are new.
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 38-41 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.
The term “low pressure nozzles” in claim 38 is a relative term which renders the claims indefinite. The term “low pressure nozzles” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It can at least be understood that the intended meaning is nozzles, and this meaning will be used for purposes of examination.
The term “low pressure spray” in claim 38 is a relative term which renders the claims indefinite. The term “low pressure spray” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 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 21, 22, 24, 27, 29, 30, 32, 33, 37-42 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2739777 to Illinois Tool Works (“EP ‘777”) in view of US 6,273,790 to Neese et al. (“Neese”).
Regarding claim 21, EP ‘777 teaches a system useful to clean a continuous substrate (abstract, claim 10, para [0015], note Fig. 1A, ref 105), the system comprising: a plurality of first nozzles (Fig. 1A, ref. 134, para [0023]) located in a first volume, each of the first nozzles configured to spray a first spray of a first cleaning fluid at a first side of the continuous substrate to remove particulate matter from the continuous substrate; an agitation bath comprising at least one of a megasonic transducer or an ultrasonic transducer (Fig. 1A, ref. 144, (para [0031]) configured to direct energy at the continuous substrate within the agitation bath; a plurality of rollers (Fig. 1A, ref. 132, para [0026]) configured to transport the continuous substrate from the first volume to a second volume having the agitation bath; and a dryer (Fig. 1B, ref. 170, para [0052]) configured to dry the continuous substrate.
The present specification defines “high pressure, low flow spray” as referring to a fluid spray that has a per-nozzle pressure of at least 40 pounds per square inch (PSI), and a per-nozzle flow rate of at least 0.15 gallons per minute (gpm) of fluid (para [0024]). Such nozzles were known in the art (see, e.g., Neese at, inter alia, col. 6, line 31 – col. 7, line 6) and it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the EP ‘777 as was known wherein the one or more nozzles are high pressure nozzles capable of high pressure, low flow spray, with a reasonable expectation of success, in order to enhance cleaning capability from increased pressure and inhibit wasted time from insufficient flowrate.
EP ‘777/Neese disclose downward-facing nozzles directed into a bath fluid (EP ‘777, Fig. 1A) but do not explicitly teach at least one downward-facing nozzle directed into a bath fluid of the second volume and configured to replenish the bath fluid and generate turbulence in the bath fluid. However, the skilled artisan would have found it obvious to modify the EP ‘777/Neese system wherein it includes at least one downward-facing nozzle directed into a bath fluid of the second volume and configured to be usable to replenish the bath fluid and generate turbulence in the bath fluid, with a reasonable expectation of success, in order to enhance cleaning and ensure fluid supply. Note that duplication of parts is prima facie obvious (MPEP 2144.04(VI)(B)) as is rearrangement of parts (MPEP 2144.04(VI)(C)).
Regarding claim 22, EP ‘777/Neese disclose a system one or more second high pressure, low flow nozzles configured to spray a second high pressure, low flow spray of a second cleaning fluid at the continuous substrate in the first volume to remove particulate matter from a second side of the continuous substrate (EP ‘777, Fig. 1A, ref. 134).
Regarding claim 24, the EP ‘777/Neese system appears to be fully capable of being operated in a manner wherein the continuous substrate is not submerged during the applying of the first high pressure, low flow spray (EP ‘777, Fig. 1A, note ref. 130).
Regarding claim 27, EP ‘777/Neese disclose a barrier (EP ‘777, Fig. 1A, ref. 144) wherein: the second volume comprises a bath section and a drain section separated from the bath section by the barrier (EP ‘777, Fig. 1A, bath section including and above barrier ref. 144, drain section below barrier ref. 144); and the bath section comprises the agitation bath and the at least one of the megasonic transducer or the ultrasonic transducer (EP ‘777, Fig. 1A). Further, the EP ‘777/Neese system appears to be fully capable of being operated in a manner wherein a second high pressure, low flow spray of the at least one downward-facing nozzle is configured to cause particulates or ions floating in the bath fluid to be moved over or around the barrier and into the drain section.
Regarding claim 29, EP ‘777/Neese disclose a system appears to be fully capable of being operated in a manner wherein the one or more first high pressure nozzles are configured to apply the first high pressure, low flow spray by displacing portions of the continuous substrate at multiple locations in the transverse direction of the continuous substrate, to create a wave shape for directing the sprayed first cleaning fluid away from the continuous substrate (note EP ‘777, Fig. 1A). Note that the recited substrate is not positively claimed and is not interpreted to be a required structural feature of the claimed system.
Regarding claim 30, EP ‘777/Neese disclose a system appears to be fully capable of being operated in a manner wherein the one or more first high pressure nozzles are configured to apply the first high pressure, low flow spray by displacing the continuous substrate at different transverse locations at different locations along the length of the continuous substrate (note EP ‘777, Fig. 1A). Note that the recited substrate is not positively claimed and is not interpreted to be a required structural feature of the claimed system.
Regarding claim 32, the EP ‘777/Neese system appears to be fully capable of being operated in a manner wherein the continuous substrate is between 6 inches and 12 inches in width (note EP ‘777, para [0021]). Note that the recited substrate is not positively claimed and is not interpreted to be a required structural feature of the claimed system.
Regarding claim 33, the EP ‘777/Neese system appears to be fully capable of being operated in a manner wherein the first cleaning fluid comprises deionized water (note EP ‘777, para [0045]). Note that the recited cleaning fluid is not positively claimed and is not interpreted to be a required structural feature of the claimed system.
Regarding claim 37, the EP ‘777/Neese system appears to be fully capable of being operated in a manner wherein the plurality of rollers transport the continuous substrate into the agitation bath; transport the continuous substrate adjacent at least one of the megasonic transducer or the ultrasonic transducer; and transport the continuous substrate out of the agitation bath (note EP ‘777, Fig. 1A).
Regarding claim 38, EP ‘777/Neese disclose one or more low pressure nozzles useful to spray a low pressure spray of a second cleaning fluid to rinse the continuous substrate (EP ‘777, Fig. 1B, ref. 164, para [0022], [0023]).
Regarding claim 39, the EP ‘777/Neese system appears to be fully capable of being operated in a manner wherein at least one of the first cleaning fluid or the second cleaning fluid comprises a surfactant (EP ‘777, para [0036). Note that the recited cleaning fluids are not positively claimed and are not interpreted to be required structural features of the claimed system.
Regarding claim 40, the EP ‘777/Neese system appears to be fully capable of being operated in a manner wherein the first cleaning fluid and the second cleaning fluid are the same (EP ‘777, para [0036). Note that the recited cleaning fluids are not positively claimed and are not interpreted to be required structural features of the claimed system.
Regarding claim 41, the EP ‘777/Neese system appears to be fully capable of being operated in a manner wherein the second cleaning fluid comprised deionized water (EP ‘777, para [0036). Note that the recited cleaning fluids are not positively claimed and are not interpreted to be required structural features of the claimed system.
Regarding claim 42, EP ‘777/Neese disclose a drain (EP ‘777, Fig. 1A and 1B, ref. 138, 148, 158 and 168, para [0028], [0036], [0045], [0051]) configured to be useful to drain the bath fluid from the agitation bath, wherein: the at least one downward-facing nozzle is configured to be useful to spray a second high pressure, low flow spray of the first cleaning fluid into the bath fluid in the agitation bath (EP ‘777, Fig. 1A and 1B). EP ‘777/Neese do not explicitly teach the system being operated in a manner wherein it cycles the bath fluid of the agitation bath, the cycling comprising: adding the first cleaning fluid to the agitation bath by spraying the second high pressure, low flow spray into the bath fluid of the second volume; draining the bath fluid from the agitation bath by permitting the bath fluid to flow out of the agitation bath and into the drain; and conducting particulate toward the drain by generating surface tension in the agitation bath via the second high pressure, low flow spray. Initially it is noted that the recited fluids and particulate are not positively claimed and are not interpreted to be required structural features of the claimed apparatus. Further, since EP ‘777/Neese disclose the claimed structural features, it is can be reasonably expected that the EP ‘777/Neese system can be operated in the manner recited.
Regarding claim 44, EP ‘777/Neese disclose a drain in the second volumer (EP ‘777, Fig. 1A and 1B, ref. 138, 148, 158 and 168, para [0028], [0036], [0045], [0051]) and downward-facing high pressure, low flow nozzles directed into a bath fluid (EP ‘777, Fig. 1A) but do not explicitly teach at least one downward-facing high pressure, low flow nozzle located in the first volume and configured to spray a second high pressure, low flow spray of a second cleaning fluid into the agitation bath to create surface turbulence in the agitation batch. However, the skilled artisan would have found it obvious to modify the EP ‘777/Neese system wherein it includes at least one downward-facing high pressure, low flow nozzle located in the first volume and configured to be useful to spray a second high pressure, low flow spray of a second cleaning fluid into the agitation bath to create surface turbulence in the agitation bath. However, the skilled artisan would have found it obvious to modify the EP ‘777/Neese system wherein it includes at least one downward-facing high pressure, low flow nozzle located in the first volume and configured to be useful to spray a second high pressure, low flow spray of a second cleaning fluid into the agitation bath to create surface turbulence in the agitation bath, with a reasonable expectation of success, in order to enhance cleaning and ensure fluid supply. Note that duplication of parts is prima facie obvious (MPEP 2144.04(VI)(B)) as is rearrangement of parts (MPEP 2144.04(VI)(C)).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over EP 2739777 to Illinois Tool Works (“EP ‘777”) in view of US 6,273,790 to Neese et al. (“Neese”) and in further view of US 3,688,527 to Blustain (“Blustain”).
Regarding claim 25, EP ‘777 does not explicitly teach a reflector plate positioned on an opposite side of the continuous substrate from the at least one of the megasonic transducer or the ultrasonic transducer and configured to reflect the energy from the at least one of the megasonic transducer or the ultrasonic transducer toward the continuous substrate. Blustain teaches a cleaning apparatus (abstract) including a reflector (reflecting means, col. 3, line 10 – col. 4, line 4) which is disclosed as advantageously enhancing cleaning with transducers (col. 3, lines 1-7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the EP ‘777/Neese system in view of Blustain wherein it includes a reflector positioned on an opposite side of the continuous substrate from the at least one of the megasonic transducer or the ultrasonic transducer and configured to reflect the energy from the at least one of the megasonic transducer or the ultrasonic transducer toward the continuous substrate, with a reasonable expectation of success, in order to enhance cleaning.
EP ‘777/Neese/Blustain does not explicitly teach that the reflector is plate shaped. However, the skilled artisan would have fond it obvious to change the shape of the reflector, with a reasonable expectation of success, in order to enhance the reflection. Further, changes in shape are prima facie obvious (MPEP 2144.04(IV)(B)) as is rearrangement of parts (MPEP 2144.04(VI)(C)).
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 21, 22, 24, 25, 27, 29, 30 and 32-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,919,053 to Hall (“US ‘053”), which teaches a system to clean a continuous substrate. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘053 appear to disclose all structural features of the presently claimed system.
Allowable Subject Matter
Claim 43 is rejected under double patenting, but would be allowable with the approval of a proper terminal disclaimer.
Claims 34-36 are objected to as being dependent upon a rejected base claim, and are rejected under double patenting, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and with the approval of a proper terminal disclaimer.
The closest prior art reference is EP 2739777 to Illinois Tool Works. The prior art references of record, taken alone or in combination, do not anticipate or suggest fairly the limitations of a drain section comprising a drain: and a weir wall separating the agitation bath from the drain section, wherein the agitation bath is configured to cycle the first cleaning fluid in the agitation bath via adding water to the agitation bath and permitting the first cleaning fluid to flow out of the agitation bath over the weir wall to the drain (as in claim 34), or a vacuum roller configured to vacuum moisture from the continuous substrate during transport from the first volume to the second volume (as in claims 36 and 43), in combination with the other structural features as instantly recited. Upon further search no other prior art has been located at the date of this Office action.
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
Regarding applicant’s assertion that the Office failed to cite any evidence in the applied prior art that additional nozzles can enhance cleaning and ensure fluid supply (remarks, page 11, last para), it is noted that a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton, and the Office may take into account the inferences and creative steps that a person of ordinary skill in the art would employ. MPEP 2141.03.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning (remarks, page 12, first para), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding applicant’s apparent assertion that the nozzles of the applied art would not be downward-facing and usable to replenish the bath fluid and generate turbulence in the bath fluid (remarks, page 12, last para), applicant’s attention is directed to EP ‘777, Fig. 1A, ref. 134.
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 ERIC GOLIGHTLY whose telephone number is (571)270-3715. The examiner can normally be reached M-F: 10 am - 7 pm.
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, Kaj Olsen can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC W GOLIGHTLY/Primary Examiner, Art Unit 1714