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:
- "translation device" which uses the generic placeholder "device" coupled with the function “configured to arrange a second target surface in place of the first target surface”.
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.
Claim 15-17, 20, 22-28 is/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.
In claim 15, claim limitation “translation device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to sufficiently 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. Insufficient details of the target surface replenishment mechanism are provided in the specification as filed. Element 501 in Fig 5 is only a rectangular box with no details of the actual structure of the translation device. The written description has insufficient details of the structure of the translation device. No details of the actual structure of the translation device are provided. 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.
Dependent claims are rejected based on their dependency to the claims rejected in detail above.
Claims 15-17, 20, 22-28 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.
Claims 15 recites a “translation device”. Under the claim interpretation above, the “translation device” is interpreted as the structure disclosed in the specification as filed which performs the associated function as detailed above in the claim interpretation section.
The specification states (emphasis added):
Figure 5 is a schematic illustration of a target surface insertion and removal mechanism 500 for use with an evaporator pump system installed in a chamber. The target surface insertion and removal mechanism is for providing a replenished (or "clean") target plate 506 in place of target plate 106 that was previously in a position to receive the deposited5 getter layer 107, i.e., a "dirty" plate. . The mechanism comprises: a translation device 501 for moving a clean target plate 506 and removing the target plate 106. The translation device 501 may be actuated from the atmospheric pressure side in order to provide the necessary motive force to replace target plate 106 with clean target plate 506. The mechanism further comprises dedicated storage modules 502, 503 for10 respectely storing the "clean" and "used" target surfaces. In some examples, these storage modules 502, 503 are located within the chamber being pumped. In such examples, the translation device 501 can advantageously be actuated to replace plates 106, 506 without having to depressurise the chamber in which the pump system is disposed. Alternatively, the storage modules 502, 503 can be located outside the chamber, although that set-up requires depressurising the system each time the plates need changing.
MPEP2163 II. A. 3. at paragraph three states: "An applicant may show possession of
an invention by disclosure of drawings or structural chemical formulas that are sufficiently
detailed to show that applicant was in possession of the claimed invention as a
whole." Regarding the written description requirement for claims 15-17, 20, 22-28 insufficient
details of the translation device are provided. Element 501 in Fig 5 is merely a rectangular box with insufficient detail of the actual structure.
MPEP 2163 I. at paragraph two states: "To satisfy the written description requirement, a
patent specification must describe the claimed invention in sufficient detail that one skilled
in the art can reasonably conclude that the inventor had possession of the claimed
invention." Regarding the written description requirement for claims 15-17, 20, 22-28 insufficient details of the translation device are provided as shown in the citation of applicant’s specification above.
As set forth in MPEP 2166 at form paragraph 7.31.01, the questions the examiner asked
which were not satisfactorily resolved and consequently raised doubt as to possession of the
claimed invention at the time of filing, include:
What in particular is the structure of the translation device?
How in particular does the translation device arrange a second target surface in place of the first target surface, wherein the first and second target surfaces are target plates? What is particular is the structure of the translation device that performs this function?
Therefore, for the reasons detailed above, claims 15-17, 20, 22-28 contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Examiner’s note
Given the lack of structural detail provided in the specification as filed for the translation device, the examiner is unable to determine particular corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the claimed functions. This not only prohibits the examiner from determining the particular structure of the translation device itself, it also prohibits the examiner from determining equivalent structures for the translation device as required by 35 USC 112(f). This in turn prohibits the examiner from determining the claimed scope of the claimed invention. Therefore, the examiner is unable to perform the necessary search to determine applicable prior art as the claimed scope of the claimed invention is unclear.
MPEP 904 states (emphasis added) “The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the nonprovisional application, then searches the prior art as disclosed in patents and other published documents, i.e., nonpatent literature (NPL).”.
MPEP 904.01 states “The breadth of the claims in the application should always be carefully noted; that is, the examiner should be fully aware of what the claims do not call for, as well as what they do require.”.
MPEP 2173.02 states “During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected. Packard, 751 F.3d at 1310.”
MPEP 2173.06 II states ” Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
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Response to Arguments
Applicant's arguments filed 8/28/2026 have been fully considered but they are not persuasive.
Applicant argues:
Regarding the rejections under 35 U.S.C. § 112(a), Applicant respectfully submits that the amended claims fully satisfy the written description requirement. Specifically, the claims have been amended to explicitly recite the structural features of the target surface replenishment mechanism that are detailed and supported in the specification as originally filed, thereby
demonstrating clear possession of the claimed invention. Consequently, one of ordinary skill in the art would recognize that the inventors possessed the claimed subject matter at the time of filing.
Examiner’s reply:
Applicant offers only conclusory statements. What in particular are the details applicant refers to when applicant states “detailed and supported in the specification”? Applicant is asked for a full, logical explanation.
Additionally, applicant is directed to MPEP 714.02(b): "The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action". In the prior rejection mailed 6/3/2026, the examiner rejected the claims under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph and specifically included the translation device in those rejections. These rejections included (underlining emphasis added):
MPEP2163 II. A. 3. at paragraph three states: "An applicant may show possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole." Regarding the written description requirement for claims 15-17, 20-24 insufficient details of the target surface replenishment mechanism are provided, insufficient details of the translation device are provided, and insufficient details of the locking mechanism are provided. Fig 5 is merely an arrangement of rectangular boxes with insufficient detail of the actual structure.
MPEP 2163 I. at paragraph two states: "To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention." Regarding the written description requirement for claims 15-17, 20-24 insufficient details of the target surface replenishment mechanism are provided, insufficient details of the translation device are provided, and insufficient details of the locking mechanism are provided.
As set forth in MPEP 2166 at form paragraph 7.31.01, the questions the examiner asked
which were not satisfactorily resolved and consequently raised doubt as to possession of the
claimed invention at the time of filing, include:
What in particular is the structure of the target surface replenishment mechanism?
What in particular is the structure of the disclosed translation device?
What in particular is the structure of the disclosed locking mechanism?
How in particular does the target surface replenishment mechanism provide a
replenished target surface onto which getter vapor can be deposited? What is particular is the
structure of the target surface replenishment mechanism that performs this function?
How in particular does the target surface replenishment mechanism arrange the second
target surface in place of the first target surface? What is particular is the structure of the
target surface replenishment mechanism that performs this function?
Since applicant did not point out any errors in these rejections specifically directed to the translation device (as underlined above) as required by MPEP 714.02(b), it is understood by the examiner that applicant admits to the propriety of these rejections on the record.
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 THOMAS ANDREW FINK whose telephone number is (571)270-3373. The examiner can normally be reached on M-W 9-7.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached on (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4373.
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.
/Thomas Fink/Primary Examiner, Art Unit 3746
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