DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Invention Group I (claims 1 – 3, 9 – 12, 14 – 17, 19, and 20) in the reply filed on July 8, 2026 is acknowledged.
Claims 4 – 8, 13, and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention Group (Groups II – V), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 8, 2026.
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:
“processing unit” recited in claim 1
“driving unit” recited in claim 1
“braking unit” recited in claim 1
“control unit” recited in claim 1
“length measurement unit” recited in claim 3
“position detection unit” recited in claim 3
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.
The limitation “processing unit” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a generic placeholder for performing the claimed function (“unit”).
(B) The generic placeholder is modified by functional language (“processing” or ‘for processing’ and “configured to perform an attachment process”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “driving unit” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a generic placeholder for performing the claimed function (“unit”).
(B) The generic placeholder is modified by functional language (“driving” or ‘for driving’ and “configured to move the substrate table and the processing unit relative to each other”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “driving unit” will be interpreted so as to comprise “a servo motor,” as taught by the Specification (paragraph 16), or an equivalent thereof.
The limitation “braking unit” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a generic placeholder for performing the claimed function (“unit”).
(B) The generic placeholder is modified by functional language (“braking” or ‘for braking’ and “configured to restrict movement, caused by the driving unit, of at least one of the substrate table and the processing unit”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “braking unit” will be interpreted so as to comprise “an X-direction clamp and a Y-direction clamp,” as taught by the Specification (paragraph 27), or an equivalent thereof.
The limitation “control unit” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a generic placeholder for performing the claimed function (“unit”).
(B) The generic placeholder is modified by functional language (“configured to restrict, by using the braking unit, the movement of the at least one of the substrate table and the processing unit during the attachment process”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Due to the invocation of 35 U.S.C. 112(f), the limitation “control unit” will be interpreted so as to comprise “a CPU and storage device,” as taught by the Specification (paragraph 40), or an equivalent thereof.
The limitation “length measurement unit” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a generic placeholder for performing the claimed function (“unit”).
(B) The generic placeholder is modified by functional language (“length measurement” or ‘configured to measure length’ and “configured to dispose a position detection unit along the slide rail”).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The limitation “position detection unit” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The limitation uses a generic placeholder for performing the claimed function (“unit”).
(B) The generic placeholder is modified by functional language (“position detection” or ‘configured to detect a position’).
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
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 – 3, 9 – 12, 14 – 17, 19, and 20 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.
As explained above, each of the claim limitations “processing unit,” “length measurement unit,” and “position detection unit” 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 functions and to clearly link the structure, material, or acts to the functions. Regarding the limitation “processing unit,” Examiner recognizes that the Specification teaches the limitation comprising a plurality of different structurally defined elements (paragraph 23). However, it is generally unclear as to what elements are structurally required to perform the claimed function of ‘performing the attachment process.’ Regarding the limitation “length measurement unit,” Examiner recognizes that the Specification provides antecedent basis for the limitation (paragraph 28). However, the Specification does not teach the structure required to perform the claimed function. Likewise, regarding the limitation “position detection unit,” the Specification provides antecedent basis for the limitation (paragraphs 13 and 28). However, the Specification does not teach the structure required for the limitation to perform the claimed function. 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.
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.
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 – 3, 9 – 12, 14 – 17, 19, and 20 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.
As explained above, each of the limitations “processing unit,” “length measurement unit,” and “position detection unit” invoke interpretation under 35 U.S.C. 112(f). As further explained above, the Specification does not teach the sufficient structure for each of the limitations to perform their respective claimed functions. Therefore, the limitations are not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 11, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kojo (U.S. Patent Application Publication Number 2019/0369591).
As to claim 1, Kojo teaches a positioning device for determining a relative position between a substrate and a processing unit that is configured to perform an attachment process, when performing the attachment process at a prescribed position of the substrate (abstract), comprising: a substrate table configured to hold the substrate (figure 1, element 28 being the ‘substrate table’; paragraph 26); a processing position movement mechanism including: a driving unit, comprising two motors, configured to move the substrate table and the processing unit relative to each other (figure 1, elements 31a and 32a being the ‘driving unit’ and ‘motors’; paragraph 27), and a braking unit, comprising an X-direction clamp and a Y-direction clamp, configured to restrict movement, caused by the driving unit, of the substrate table (figure 1, see below).
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Kojo further teaches a control unit, comprising a CPU and storage device, connected to the driving unit and the braking unit, the control unit being configured to restrict, by using the braking unit, the movement of the substrate table during the attachment process (figure 2, element 10 being the ‘control unit’; paragraphs 27 and 29).
As to claim 2, Kojo teaches that the processing position movement mechanism has a slide rail (figure 1, elements 31b and 32b being the ‘slide rail’; paragraph 27), the driving unit is configured to move the substrate table and the processing unit relative to each other along the slide rail (figure 1, elements 31a, 32a, 28, 31b, and 32b; paragraph 27), and the braking unit restricts movement by partially gripping the slide rail (figure 1, elements 31b and 32b, see above).
As to claim 11, Kojo teaches that the control unit is configured to turn off power supply to the driving unit after operating the braking unit (figure 2, element 10; paragraphs 29 – 33 and 39 – 43).
As to claim 16, Kojo teaches that the driving unit includes a servo motor (figure 1, elements 31a and 32a being the ‘servo motor’; paragraph 27), and the control unit is configured to change responsiveness of the servo motor after operating the braking unit (figure 2, element 10; paragraphs 27 and 29).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Maeda (U.S. Patent Application Publication Number 2019/0043743) teaches a positioning device comprising a substrate table; processing position movement mechanism; and control unit.
Takekoshi (U.S. Patent Number 4,896,869) teaches a positioning device comprising a substrate table; processing position movement mechanism; and control unit.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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