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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitations of “ so as to remove the polymer film from the first principal surface without forming any pattern of the polymer film on the first principal surface” constitutes new matter not supported by the originally filed specification. Applicant relies on paragraph 133 of the instant specification for support of the above limitations. However, the specification teaches that the polymer film 100 is removed from the entirety of the upper portion of the substrate. The specification does not teach “without forming any pattern of the polymer film on the first principal surface”. Therefore, the above limitations constitute new matter.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, and 5-7 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Inaba et al. (US2025/0201593).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Re claim 1, Inaba et al. teach a polymer film forming step (Fig. 8A, col. 5-col. 7, paragraphs 113-117, element 100, Figs. 6B, Fig. 8C, Fig. 5, step S2), a first cleaning liquid supplying step (i.e. etching step, paragraphs 118, 122, Fig. 8C; Fig. 5, step S3), after the polymer film forming step of supplying the first cleaning liquid to the first principle surface W1, such that the polymer film is maintained on the first principal surface, and a removing liquid supplying step (Fig. 5, element S5), after the first cleaning liquid suppling step (paragraph 135), wherein the removing liquid dissolves the polymer film more easily than the first cleaning liquid (paragraphs 135, 180). Furthermore, the limitations of the removing liquid dissolving the polymer film more easily than the first cleaning liquid are inherently met since Inaba et al. teach the same first cleaning liquid and removing liquid, as the instantly claimed invention. Additionally, paragraph 80 specifically teaches that the polymer has the property of being more easily dissolved into the removing liquid than the etching and rinsing liquids (i.e. cleaning steps). It is also noted that applicant’s claim of the removing liquid is broadly interpreted to include any liquid, which reads on the rinsing liquid. Re claim 2, refer to Fig. 8C for example. Re claim 5, since applicant’s claim is not limited to any type of removing liquid, the limitations of Fig. 6D, reads on applicant’s claim, wherein the rinsing liquid from element 10 discharges liquid towards the second principal surface W2 from a discharge nozzle 10 that faces the second principal surface and supplying the removing liquid to the peripheral edge region by making it flow along a peripheral edge of the substrate. Re claim 6, refer to Fig. 7, element 51 for example. Re claim 7, refer to element 8C, etching liquid dispensed from element 10.
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.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inaba et al. (US2025/0201593) in view of Tahara et al. (US2024/0258107A1).
Re claim 3, Inaba et al. teach the invention substantially as claimed with the exception of a photo-exposing step of photo-exposing the peripheral edge and discharging a second cleaning liquid to the photo-exposed edge from a discharge nozzle towards the first principal surface. Tahara et al. teach irradiating the polymer film (Fig. 6c, for example, paragraphs 154-158), which irradiates the peripheral edge portion, such that the peripheral edge portion is etched by acid generated in the polymer film. Paragraph 158 teach a removing liquid nozzle 10 which is applied to the central region of the substrate. The limitations of the edge being more easily dissolved than the inner side covering portion are met as a result of the combination of irradiation, which etches the peripheral edge and the removing liquid which removes the polymer film. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the method of Inaba et al. to include irradiation, as taught by Tahara et al., for purposes of enhancing the removal of resist from the peripheral edge region of the substrate surface.
Re claim 4, the limitations are met since Tahara et al. teach discharging the removing liquid from the central region of the substrate, which would include the inner side region.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inaba et al. (US2025/0201593).
Re claim 8, Inaba et al. teach the polymer film comprising a hydrophobic film (paragraph 23). Inaba et al. fail to teach a hydrophobizing step before the polymer film forming step. In the absence of a showing of criticality and/or unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a hydrophobizing step prior to the polymer film forming step for purposes of providing a protective film on the substrate surface. In reference to the limitations of evaporation of the solvent, applicant is directed to paragraph 87 for example. Re claim 9, Inaba et al. do not specifically teach a hydrophobizing liquid discharge nozzle towards the second principal surface W2. In the absence of a showing of criticality and/or unexpected results, it would have been well within the level of the skilled artisan to position nozzles to direct fluids to the front as well as the back surfaces (i.e. second peripherical surface), since Inaba et al. clearly teaches that fluids dispense towards the back surface flow along the peripheral region to the peripheral edge of the substrate surface.
Claim(s) 1-2 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izeki et al. (Machine Translation of JP2010-118519A).
Re claim 1, Izeki et al. teach forming a polymer film (i.e. resist film 80) on the wafer (Fig. 11a, paragraph 35), followed by a first cleaning liquid supplying step (paragraph 36), of supplying the first cleaning liquid (i.e. thinner solution) to the first principal surface (nozzle 93); and a removing liquid supply step (paragraph 37) of supplying a washing liquid to remove the resist film. Izeki et al. do not teach the removing liquid dissolving the polymer film more easily than the first cleaning liquid. However, in the absence of a showing of criticality and/or unexpected results, the skilled artisan would have reasonably expected the washing liquid (i.e. removing liquid) to dissolve the film more easily since the film is being thinned with the (cleaning solution) thinning solution, and washing liquid (removing liquid) physically removing the resist film from the peripheral edge of the wafer (Fig. 11b).
Re claim 1, the examiner argues that the claim is open ended because of the term “comprising” to include other steps. Claim 1 only requires that during the removing step, no pattern of the polymer film is formed. Claim 1 does not require or limit any pattern from being formed by additional steps. Absent of a showing of criticality and/or unexpected results, the limitations are met since Izeki et al. teach removing the resist film with a washing liquid. The examiner argues that since the resist film is being removed by the washing liquid, then the skilled artisan would reasonably expect no polymer film to be formed on the principal surface during the removing step. Re claim 2, refer to Fig. 10a for example. Re claims 5-7, refer to Fig. 10c, elements 19, 40 and paragraph 37. Additionally, Izeki et al. teach discharging cleaning liquid from the upper nozzle 93, as well as discharging from the lower nozzle 40.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izeki et al. (Machine Translation of JP2010-118519A) in view of Tahara et al. (US2024/0258107A1).
Re claim 3, Izeki et al. teach the invention substantially as claimed with the exception of a photo-exposing step of photo-exposing the peripheral edge and discharging a second cleaning liquid to the photo-exposed edge from a discharge nozzle towards the first principal surface. Tahara et al. teach irradiating the polymer film (Fig. 6c, for example, paragraphs 154-158), which irradiates the peripheral edge portion, such that the peripheral edge portion is etched by acid generated in the polymer film. Paragraph 158 teach a removing liquid nozzle 10 which is applied to the central region of the substrate. The limitations of the edge being more easily dissolved than the inner side covering portion are met as a result of the combination of irradiation, which etches the peripheral edge and the removing liquid which removes the polymer film. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the method of Izeki et al. to include irradiation, as taught by Tahara et al., for purposes of enhancing the removal of resist from the peripheral edge region of the substrate surface.
Re claim 4, the limitations are met since Tahara et al. teach discharging the removing liquid from the central region of the substrate, which would include the inner side region.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izeki et al. (Machine Translation of JP2010-118519A) in view of Rottstegge et al. (US2003/0143484A1).
Re claim 8, Izeki et al .teach hydrophobizing the wafer surface prior to forming a resist film (paragraph 58). Izeki et al. fail to teach during the polymer film forming step, evaporation of the solvent to form the polymer film. Rottstegge et al. teach forming a photoresist comprising a polymeric film (abstract) on a semiconductor substrate (paragraph 2). Paragraph 8 teaches it is well known in the after application of the photoresist, to evaporate the solvent such that the photoresist forms a film on the substrate surface. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have modified the method of Izeki et al. to include evaporation of the solvent, as taught by Rottstegge et al., as a conventional and well known practice to form the photoresist film on the semiconductor during the manufacturing process. Re claim 9, Izeki et al. do not specifically teach a hydrophobizing liquid discharge nozzle towards the second principal surface W2. In the absence of a showing of criticality and/or unexpected results, it would have been well within the level of the skilled artisan to position nozzles to direct fluids to the front as well as the back surfaces (i.e. second peripherical surface), since Izeki et al. clearly teaches that fluids dispense towards the back surface flow along the peripheral region to the peripheral edge of the substrate surface.
Response to Arguments
14. The rejection of the claims, under 112, second paragraph is withdrawn in view of the newly amended limitations.
15. The rejections of the claims as being anticipated and/or unpatentable over Inaba et al. is maintained. Applicant argues that the citations of Inaba et al. and Tahara et al. are disqualified because of applicant’s statement of common assignment. This is correct, however, applicant’s statement of common assignment is not persuasive as applicant’s statement does not include the specified patent application publication numbers as well as the language of: “The subject matter disclosed in patent application publication XXX and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.” MPEP 2154.02(c)
16. The rejections of the claims as being unpatentable over Izeki et al. is maintained for the reasons recited above. Applicant argues that the prior art of Izeki teaches a resist film 80 that forms a polymer pattern. Applicant’s claim is broadly interpreted that during the removing step, no pattern is formed. Izeki et al. teach removing a portion of the resist film 80 from the beveled portion 72. The claim is not limited to how much of the polymer film is removed from the principal surface, claim 1 only required that some of the polymer film is removed from the principal surface, and by removing the polymer film during the “removing step” no pattern is formed.
17. 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.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sharidan Carrillo whose telephone number is (571)272-1297. The examiner can normally be reached M-F, 7:00am-4:00pm.
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, Michael Barr can be reached at 571-272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sharidan Carrillo
Primary Examiner
Art Unit 1711
/Sharidan Carrillo/Primary Examiner, Art Unit 1711 bsc