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 .
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: “system” in claims 18-33.
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 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 20-21 and 23-25 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 20 recites the limitation "the pad-surface index value" in line 2. There is insufficient antecedent basis for this limitation in the claim. One of ordinary skill in the art cannot know which “pad-surface index value” is being referred to.
Claim 23 recites the limitation "the pad surface determining system" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Listed depending claims do not remedy these deficiencies. One of ordinary skill in the art cannot know which “pad surface determining system” is being referred to.
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 1-4, 6-11, 14-16, 18-21, 23-27, and 30-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 5-10, 11-13, 14-17, 18-22, and 23-25, respectively, of copending Application No. 19/247,279 (Copending) in view of US 20160184960 A1 (Matsuo). Copending does not teach polishing surface having a recess formed therein. Matsuo teaches these limitations (Matsuo: See the arguments and citations provided in the 35 USC 103 rejection below).
Thus, it would have been obvious for one of ordinary skill in the art, prior to filing, to implement the teachings of Matsuo into Application Claims since both Application Claims and Matsuo suggest a practical solution and field of endeavor of measuring polishing pad surface property using lights and different incident angles in general and Matsuo additionally provides teachings that can be incorporated into Application Claims in that the polishing surface having a recess formed therein. One having ordinary skill in the art would know that the advantage of holes in the pad surface is to hold and uniformly distribute polishing liquid across the substrate being polished. The teachings of Matsuo can be incorporated into Application Claims in that polishing surface having a recess formed therein. Furthermore, one of ordinary skill in the art could have combined the elements as claimed by known methods and, in combination, each component functions the same as it does separately. One of ordinary skill in the art would have recognized that the results of the combination would be predictable.
This is a provisional nonstatutory double patenting rejection.
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.
Claim(s) 1-3 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over JP2018192572A machine translation (Yoshida) in view of US 20160184960 A1 (Matsuo).
As per claim 1, Yoshida a pad surface determining method of determining a surface property of a polishing pad having a polishing surface (the following of “for polishing a substrate” is recited as intended use) for polishing a substrate, (Yoshida:
PNG
media_image1.png
618
1620
media_image1.png
Greyscale
para 1: “measuring a surface state of a processing surface of a processing tool”;
para 2: “The polishing apparatus polishes a workpiece with a polishing pad containing abrasive grains. A polishing pad formed by increasing the amount of abrasive grains contained in the polishing pad is brittle and easily chipped. If there is a chip, a locus may be formed on the surface to be polished of the workpiece, resulting in poor polishing. . Therefore, it is necessary to confirm whether or not chipping has occurred on the processing surface (polishing surface) of the polishing pad. In addition, a grinding apparatus may use a grinding wheel provided with a grinding wheel containing a large amount of small abrasive grains in order to finish the work surface of a workpiece to a mirror surface. The amount of bonds that harden the grains is small and chipping is likely to occur.”: the spaces around the grains are recesses.
PNG
media_image2.png
944
1233
media_image2.png
Greyscale
Check the condition of a polishing pad’s surface, where that surface has at least one recess in it), the method comprising:
irradiating a target area in the polishing surface with a plurality of lights from a plurality of light sources at different incident angles; receiving a plurality of reflected lights from the target area by an imaging device; generating a plurality of images corresponding to the different incident angles by the imaging device (Yoshida:
para 7;
PNG
media_image3.png
655
1630
media_image3.png
Greyscale
PNG
media_image4.png
843
1650
media_image4.png
Greyscale
PNG
media_image5.png
434
1636
media_image5.png
Greyscale
Fig. 1 (shown above): mainly 10, 11, 12, 13;
Fig. 4 (shown below): mainly 10, 11, 12, 13, 110, 120, 130;
Paras 24-25;
PNG
media_image6.png
537
1258
media_image6.png
Greyscale
shine at least 2 light beams onto an area on the pad, coming from at least two light sources, hitting that area at different angles. camera collects the light that bounces back from that area. camera generates one image for each light angle); and
determining the surface property of the polishing pad based on at least one of the plurality of images (Yoshida:
PNG
media_image7.png
754
1650
media_image7.png
Greyscale
PNG
media_image8.png
522
1631
media_image8.png
Greyscale
PNG
media_image9.png
937
1650
media_image9.png
Greyscale
PNG
media_image10.png
528
1641
media_image10.png
Greyscale
determine the pad’s surface condition using at least one of the images).
Yoshida does not teach the polishing surface having a recess formed therein.
Matsuo teaches the polishing surface having a recess formed therein (Matsuo:
Para 51: “The polishing pad 2 comprising SUBA 800, IC-1000, IC-1000/SUBA400 (two-layer cloth) or the like manufactured by the Dow Chemical Company is used. The SUBA 800 is non-woven fabrics bonded by urethane resin. The IC-1000 comprises a pad composed of hard polyurethane foam and having a large number of fine holes (pores) formed in its surface, and is also called a perforated pad. A polishing liquid supply nozzle (not shown) is provided above the polishing table 1 to supply a polishing liquid (slurry) onto the polishing pad 2 on the polishing table 1.”;
PNG
media_image11.png
586
1117
media_image11.png
Greyscale
).
Thus, it would have been obvious for one of ordinary skill in the art, prior to filing, to implement the teachings of Matsuo into Yoshida since both Yoshida and Matsuo suggest a practical solution and field of endeavor of measuring polishing pad surface property using lights and different incident angles in general and Matsuo additionally provides teachings that can be incorporated into Yoshida in that the polishing surface having a recess formed therein. One having ordinary skill in the art would know that the advantage of holes in the pad surface is to hold and uniformly distribute polishing liquid across the substrate being polished. The teachings of Matsuo can be incorporated into Yoshida in that polishing surface having a recess formed therein. Furthermore, one of ordinary skill in the art could have combined the elements as claimed by known methods and, in combination, each component functions the same as it does separately. One of ordinary skill in the art would have recognized that the results of the combination would be predictable.
As per claim 2, Yoshida in view of Matsuo the pad surface determining method according to claim 1, wherein determining the surface property of the polishing pad comprises generating a pad-surface index value from the at least one image (Yoshida: See arguments and citations offered in rejecting claim 1 above).
As per claim 3, Yoshida in view of Matsuo the pad surface determining method according to claim 2, wherein the pad-surface index value is calculated based on brightness information of an image (Yoshida: See arguments and citations offered in rejecting claim 1 above).
As per claim(s) 18-20, arguments made in rejecting claim(s) 1-3 are analogous, respectively. Yoshida also teaches a pad surface determining system for determining a surface property of a polishing pad having a polishing surface for polishing a substrate, the polishing surface having a recess formed therein (Yoshida: See arguments and citations offered in rejecting claim 1 above: Figs. 1, 8).
Claim(s) 11 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida in view of Matsuo as applied to claim 1 above, and further in view of US 20210370461 A1 (Kamiki).
As per claim 11, Yoshida in view of Matsuo the pad surface determining method according to claim 1. Yoshida in view of Matsuo does not teach determining the surface property of the polishing pad based on the at least one image comprises: inputting the at least one image into a determination model constructed by machine learning; and outputting a determination result of the surface property of the polishing pad from the determination model. Kamiki teaches these limitations (Kamiki: paras 202, 204-209, 211, 213, 214, 217, 218
Figs. 26-29).
Thus, it would have been obvious for one of ordinary skill in the art, prior to filing, to implement the teachings of Kamiki into Yoshida in view of Matsuo since both Yoshida in view of Matsuo and Kamiki suggest a practical solution and field of endeavor of measuring polishing pad surface property using illumination formed images in general and Kamiki additionally provides teachings that can be incorporated into Yoshida in view of Matsuo in that machine learning is used to determine the polishing pad surface property as to “predicts and outputs to the polishing apparatus the suitable dressing conditions, the necessity of dressing, the necessity of additional dressing” (Kamiki: para 204). The teachings of Kamiki can be incorporated into Yoshida in view of Matsuo in that machine learning is used to determine the polishing pad surface property. Furthermore, one of ordinary skill in the art could have combined the elements as claimed by known methods and, in combination, each component functions the same as it does separately. One of ordinary skill in the art would have recognized that the results of the combination would be predictable.
As per claim(s) 27, arguments made in rejecting claim(s) 11 are analogous. Yoshida also teaches a pad surface determining system for determining a surface property of a polishing pad having a polishing surface for polishing a substrate, the polishing surface having a recess formed therein (Yoshida: See arguments and citations offered in rejecting claim 1 above: Figs. 1, 8).
Allowable Subject Matter
Claims 5, 12-13, 17, 22, 28-29, and 33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 4, 6-10, 14-16, 21, 23-26, and 30-32 would be allowable if rewritten to overcome the non-statutory double patenting rejection(s) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 21 and 23-25 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Limitations in the listed depending claims distinguish over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Atiba Fitzpatrick whose telephone number is (571) 270-5255. The examiner can normally be reached on M-F 10:00am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Bee can be reached on (571) 270-5183. The fax phone number for Atiba Fitzpatrick is (571) 270-6255.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Atiba Fitzpatrick
/ATIBA O FITZPATRICK/
Primary Examiner, Art Unit 2677
Prosecution Insights