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 .
Election/Restrictions
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 August 2026.
Applicant's election with traverse of Claims 1-9 in the reply filed on 11 August 2026 is acknowledged. The traversal is on the ground(s) that undue diverse searching should not be required (as well that claims are properly presented and should be examined together). This is not found persuasive because “diverse searching” is not the only reason given, and Applicant has not provided a rebuttal to all reasons, including whether inventions have acquired a separate status in view of their different classification, whether they have acquired separate status due to their recognized divergent subject matter, and whether inventions are likely to raise different non-prior art issues under 35 USC 101.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
In Claims 1, 2, 6, 7, 8, and 9, none of “input circuitry,” “calculation circuitry,” or “display control circuitry” are terms in the specification.
In Claims 6 and 8, “determination circuitry” is not a term in the specification.
Appropriate correction should be made without the addition of new matter.
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:
In Claim 1:
“information processing unit,” associated with a computer [0040]
“input circuitry configured to input summary data . . . .” (generic placeholder: “circuitry,” read “unit,” since this is the closest description in the originally-filed specification; functional language: “input . . . configured to input summary data . . . .”), not clearly associated with structure. Specification describes an “input unit,” which is not clearly input circuitry [0045-0046] and which is associated with an operation panel and an I/O port [0061].
“calculation circuitry configured to calculate a plurality of estimated values . . . .” (generic placeholder: “circuitry,” read “unit,” since this is the closest description in the originally-filed specification; functional language: “calculation . . . configured to calculate a plurality of estimated values . . . .”), not clearly associated with a distinct structure (e.g. circuitry). The specification does not clearly describe any structures (e.g. “circuitry”) which are distinctly “calculation circuitry,” “determination circuitry,” or “display control circuitry,” but rather describes a “calculation unit,” “determination unit,” and “display control unit,” which are merely functions of a generic CPU [0061]. Examiner considers “calculation circuitry” and “display control circuitry” rather to include “calculation unit” and “display control unit,” which are not structures, but are rather functions of a generic CPU.
“display control circuitry configured to display”: not clearly associated with structure in the specification, and no description of a distinct structure, but rather a “display unit” is merely a function of a generic CPU. See “calculation circuitry configured to calculate a plurality of estimated values . . . .” above.
In Claim 6:
“storage configured to store an input condition” (generic placeholder +function: ”storage” -- something that has a function of storing; functional: “storage configured to store an input condition), associated with generic conventional computer components -- ROM, RAM, and a hard drive [0061].
“determination circuitry configured to determine . . . .” (generic placeholder: “circuitry,” also read “unit”), not clearly associated with any structure in the specification. “determination unit” is not described as a distinct structure (e.g. circuitry), but merely as a function performed by a generic CPU [0061].
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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (mental steps) without significantly more.
The claim(s) recite(s) mental steps:
“configured to estimate substrate processing results at a plurality of points on the substrate, based on the substrate processing result”
“calculate a plurality of estimated values indicating the substrate processing results at the plurality of points on the substrate based on the summary data”
Claim 1 is drawn to an apparatus which includes components recited as “circuitry,” but which the specification describes as little more than a generic computer, including generic computer components (CPU, ROM, RAM, hard drive, display). See, also discussion under “Claim Interpretation” above. In addition to a generic computer, capable of generic and conventional functions, including input, calculation, storage, “determination,” and storage, the claimed apparatus includes a film thickness measuring sensor.
Step 2A, prong 1: The conventional computer is recited as capable of performing mental steps of estimating substrate processing results at a plurality of points on the substrate, based on the substrate processing result and calculating a plurality of estimated values indicating the substrate processing results at the plurality of points on the substrate based on the summary data. The steps are merely transformations of data, calculations, and/ or mental associations or correlations.
Step 2A, prong 2: The abstract idea (mental steps) has not been integrated into a particular practical application. The specification describes a generic and conventional computer with generic and conventional computer parts (Figs. 3-4; [0028,0040,0061]. Moreover, it is conventional to input, calculate, determine a result from calculations, and output data to a display on and/ or with a conventional computer.
. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because a film thickness sensor is also generic, well-known in the art, and conventional. See, for example Higo et al. (JP 3091577 B2) (2000) and Shinozuka et al. (US 6,447,632) (2002).
Thus, the claims are directed to a judicial exception, which is an abstract idea (mental steps) without significantly more.
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 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.
Regarding Claim 1, claim limitation “input circuitry configured to input summary data . . . .” invokes 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. The specific does not describe “input circuitry.” The specification describes an “input unit,” which is not clearly input circuitry [0045-0046] and which is associated with an operation panel and an I/O port [0061].
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Regarding Claim 1, claim limitation “calculation circuitry configured to calculate a plurality of estimated values . . . .” invokes 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. The specific does not describe “calculation circuitry.” The specification does not describe specifically “calculation circuitry,” but rather describes a “calculation unit,” which is rather merely one function among functions (including “calculation unit,” “determination unit,” and “display control unit”) of a generic CPU [0061].
Regarding Claim 1, claim limitation “display control circuitry configured to display” invokes 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. The specific does not describe “display control circuitry.” The specification rather describes a “display control unit,” which is not clearly circuitry and which is rather described merely as one function among functions (including “calculation unit,” “determination unit,” and “display control unit”), which are merely functions of a generic CPU [0061].
Regarding Claim 6, claim limitation “determination circuitry configured to determine . . .” invokes 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. The specific does not describe “determination circuitry.” The specification rather describes a “determination unit,” which is not clearly circuitry and which is rather described merely as one function among functions (including “calculation unit,” “determination unit,” and “display control unit”), which are merely functions of a generic CPU [0061].
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 2-9 are additionally rejected as depending from rejected claims.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over in view of Takenaga et al. (US 2009/0232967) in view of Kimura et al. (US 2001/0024691).
Regarding Claim 1, Takenaga et al. (US’967) teach a substrate processing system comprising: a substrate processing apparatus including a processing container and a boat for transferring a plurality of substrates into the processing container [0050-0051]; a measuring sensor (measuring apparatus) configured to measure a substrate processing result of a substrate in the substrate processing apparatus [0072, 0080]; and an information processing device (computer) configured to estimate substrate processing results at a plurality of points on the substrate, based on the substrate processing result, wherein the information processing device [0017], includes, an input circuitry (i.e. generic conventional means for inputting data function of a generic computer, also “I/O port 55”) [0060,0076-0078]) configured to input (i.e. capable of inputting) summary data extracted from the substrate processing result measured by the measuring sensor, a calculation circuitry (i.e. generic computer or generic CPU capable of performing calculations) configured to calculate (i.e. capable of calculating) a plurality of estimated values indicating the substrate processing results at the plurality of points on the substrate based on the summary data, control signals output to controllers [0054], and an operation panel connected to the I/O port by which an operator operates the apparatus [0060]. US’967 also teaches tables of data and information one would expect to see on a display monitor of a control panel (Figs. 4,6-7,9-12, 14, 16-19). US’967 fails to teach so-called “display control circuitry” (also not described in Applicant’s specification). However, US’967 teaches a CPU, which is the structure with which the term “display control unit” is associated in Applicant’s specification [0061], and displays are conventional for output of data and to provide a GUI (graphical user interface) for an operator to visualize data and to intuitively interact with a computer. Thus, it would have been obvious to modify the claimed apparatus with a “display control circuitry,” read also “display control unit” as the closest term described in Applicant’s specification, because a CPU capable of controlling a display was conventional at the time of invention. Nevertheless, to provide additional evidence for conventional a “display control” circuitry/unit, Kimura et al. (US’691) is also cited as analogous prior art in the field of processing a substrate with a thin film, including controlling film thickness by measuring film thickness with a film thickness sensor (Abstract; [0023-0024]). US’691 further teaches outputting film thickness onto a predetermined display [0388]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’967 with a display control circuitry/ unit (read also CPU capable of controlling a display) not only because such display control circuitry/unit/display capable CPU was conventional at the time of invention, but also because US’691 suggests outputting film thickness to a display.
Regarding Claim 2, US’967 teaches a film thickness measuring sensor (and also US’691), an I/O port and other inputs, and a CPU, capable of performing calculations. The recited steps are all aspects of n intended use, not given patentable weight for the obvious apparatus.
Regarding Claims 3-5, the symbolic characterization of the data are not given patentable weight, but are rather aspects of an intended use, not given patentable weight for the claimed apparatus. The characterization of data as “summary” and the association of data with aspects of film thickness and film shape on a substrate rely on an association of a human mind (not part of the claimed apparatus) with phenomena learned through training and are not considered to have an objective patentable existence per se.
Regarding Claims 6-9, US’967 teaches storage to store an input condition (i.e. capable of storing inputted data) [0055,0058] and a CPU capable of performing the claimed determination through Boolean and conditional logic, conventional with generic computers. The symbolic characterization of the data are not given patentable weight, but are rather aspects of an intended use, not given patentable weight for the claimed apparatus. The characterization of data as “summary” and the association of data with aspects of film thickness and film shape on a substrate rely on an association of a human mind (not part of the claimed apparatus) with phenomena learned through training and are not considered to have an objective patentable existence per se. Additionally Claim 8 recites calculations, logical processes, and computer processes (e.g. retrieval from storage, comparing conditions, displaying data) which a generic and conventional computer is capable of performing.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Takenaga et al. (US 2013/0260572) (similar to Takenaga et al. (US 2009/0232967))
Takenaga et al. (US 2013/0260328) (similar to Takenaga et al. (US 2009/0232967))
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
Prosecution Insights