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/Restriction
Applicant’s election without traverse of Species A-2, B-1, C-1, D-1 in the reply filed on 5/15/2026 is acknowledged.
On 6/9/2026 Examiner called Applicant's attorney Michael Swope to discuss Applicant's response (filed 5/15/2026) to the Requirement for Restriction (mailed 3/20/2026). See attached Interview Summary for details, regarding the discussion of claims 4 and 10 particularly.
Upon detailed review/consideration, it is determined that the specification identifies that claim 10 is indeed not generic and directed towards non-elected species D-2. Relevant information from the spec follows:
Para 0042 identifies: “FIG. 8 is a flow chart for explaining one embodiment of the transparent-liquid filling method. In this embodiment, while the space 32 is being evacuated, the pure water as a transparent liquid is supplied into the space 32 through the transparent-liquid supply line 35.” Wherein the Method according to Fig 8 is elected species D-1 and the underlined portion is what is recited in claim 9.
Para 0044 identifies: “FIG. 9 is a flow chart for explaining another embodiment of the transparent-liquid filling method. In this embodiment, after the evacuation of the space 32 is stopped and when negative pressure is formed in the space 32, the pure water as the transparent liquid is supplied into the space 32 through the transparent-liquid supply line 35.” Wherein the Method according to Fig 9 is non-elected species D-2 and the underlined portion is what is recited in claim 10.
Claim(s) 4, 10 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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: “flow-rate measuring device” in claim 6, “pressure measuring device” in claim 7.
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(b)
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(s) 6, 7, 11 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.
Claim 11 (line 2) recites the limitation “the entire space” which lacks proper antecedent basis and thus renders the claim indefinite. It is suggested that the limitation be rewritten as -- an entirety of the space --.
Regarding Claim 6: The claim limitation “flow-rate measuring device” 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. 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 7: The claim limitation “pressure measuring device” 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. 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 each of the above, 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.
In view of the 112(b) rejections set forth above, the claims are rejected below as best understood.
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) 1-3, 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20190344398 A1 (Watanabe).
Regarding claim 1, Watanabe discloses:
A polishing apparatus comprising:
a polishing pad (3; Fig 1) having a transparent window (window 46; Fig 25A; e.g. para 0121) configured to allow light to pass therethrough;
a polishing table (4; Fig 1) supporting the polishing pad;
a polishing head (6; Fig 1) configured to press a workpiece (5; Fig 1) against the polishing pad;
and an optical film-thickness measuring system (generally shown in Fig 1; e.g. para 0041) having an optical sensor head (e.g. 11; Fig 1) disposed below the transparent window,
a space (13; Fig 1) formed between the transparent window and the optical sensor head being filled with a transparent liquid (e.g. para 0041: “pure water is supplied from a pure water supplier 14 to the optical path region 13”).
Regarding claim 2, Watanabe discloses:
the transparent window has a lower surface (light-receiving surface combined with retreat surface in Annotated Fig 25A_a) including a light-receiving surface (Annotated Fig 25A_a) configured to receive light (e.g. para 0041, 0121) from the optical sensor head and a retreat surface (Annotated Fig 25A_a) located higher than the light-receiving surface.
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Annotated Fig 25A_a
Regarding claim 3, Watanabe discloses:
the retreat surface surrounds the light-receiving surface (Fig 25A shows this).
Regarding claim 5, Watanabe discloses:
a transparent-liquid supply line (Annotated Fig 1a) and a transparent-liquid discharge line (Annotated Fig 1a) communicating with the space, the transparent-liquid discharge line extending in the polishing table (Fig 1 shows this).
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Annotated Fig 1a
Claim Rejections - 35 USC § 103
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over the prior art reference(s) as applied to claim 5 above, and further in view of US 20190291144 A1 (hereinafter Siefering).
Regarding claim 6, Watanabe discloses all claim limitations (see above) except may not explicitly disclose:
a flow-rate measuring device provided in at least one of the transparent-liquid supply line and the transparent-liquid discharge line,
the flow-rate measuring device being configured to measure a flow rate of the transparent liquid flowing through the transparent-liquid supply line;
and an operation controller electrically coupled to the flow-rate measuring device,
the operation controller being configured to generate an alarm signal when a measured value of the flow rate of the transparent liquid falls outside a preset flow rate range.
However, Siefering, in the same field of endeavor, wafer devices, teaches:
A sensor, that senses a flow rate of a fluid in a supply line, coupled with a controller capable of generating an alarm if the flow rate falls outside of desired rates, in order to indicate a failure of desired operating conditions/rates and process shutdown if needed (e.g. para 0010).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify Watanabe to include Siefering’s teachings as described above, having sensors, that sense a flow rate of fluids in supply lines, coupled with a controller capable of generating an alarm if the flow rate falls outside of desired rates, in order to indicate a failure of desired operating conditions/rates and process shutdown if needed (e.g. para 0010).
This modification results in teaching the limitations above.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over the prior art reference(s) as applied to claim 5 above, and further in view of US 20180266009 A1 (hereinafter Koizumi).
Regarding claim 7, Watanabe discloses all claim limitations (see above) except may not explicitly disclose:
a pressure measuring device provided in at least one of the transparent-liquid supply line and the transparent-liquid discharge line,
the pressure measuring device being configured to measure pressure of the transparent liquid flowing through the transparent-liquid supply line;
and an operation controller electrically coupled to the pressure measuring device,
the operation controller being configured to generate an alarm signal when a measured value of the pressure of the transparent liquid falls outside a preset pressure range.
However, Koizumi, in the same field of endeavor, wafer devices, teaches:
A pressure sensor, measuring a pressure of a liquid in a liquid supply line, coupled with a failure detector/controller capable of generating an alarm if the pressure falls outside of a limit, in order to indicate a failure of desired operating conditions/pressure (e.g. para 0101).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify Watanabe to include Koizumi’s teachings as described above, having sensors, measuring a pressure of liquids in liquid supply lines, coupled with a failure detector/controller capable of generating an alarm if the pressure falls outside of a limit, in order to indicate a failure of desired operating conditions/pressure (e.g. para 0101).
This modification results in teaching the limitations above.
Claim(s) 8, 9, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190344398 A1 (Watanabe) in view of US 20040242121 A1 (hereinafter Hirokawa).
Regarding claim 8, Watanabe discloses:
A transparent-liquid filling method comprising:
a space (13; Fig 1) that is formed between a transparent window (window 46; Fig 25A; e.g. para 0121) constituting a part of a polishing pad (3; Fig 1) for polishing a workpiece (5; Fig 1) and an optical sensor head (e.g. 11; Fig 1) of an optical film-thickness measuring system (generally shown in Fig 1; e.g. para 0041) for measuring a film thickness of the workpiece; and
supplying a transparent liquid (e.g. para 0041: “pure water is supplied from a pure water supplier 14 to the optical path region 13”) into the space through a transparent-liquid supply line (Annotated Fig 1a).
Watanabe may not explicitly disclose:
evacuating the space to form a negative pressure in the space,
supplying the transparent liquid while the negative pressure is formed in the space.
However, Hirokawa, in the same field of endeavor, wafer devices, teaches:
In Fig 1 an analogous configuration of a film thickness measuring system 24 wherein pure water is supplied to a sensor 26, just under the substrate/workpiece 18 and a polishing pad 16, via a supply passage 44 and discharged via a discharge passage 46, wherein the discharge passage 46 is connected to a downstream pump 50 for compulsorily discharging the water and any polishing slurry which may have flowed into the water (e.g. para 0177-0178).
Note that even Applicant’s own specification identifies that a known issue with these devices is that the slurry can enter the pure water/sensor area through the foam polishing pad (e.g. background section, para 0004).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify Watanabe to include Hirokawa’s teachings as described above, having the pure water supplied to Watanabe’s space 13 via a supply passage and discharged via a discharge passage, wherein the discharge passage is connected to a downstream pump for compulsorily discharging the water and any polishing slurry which may have flowed into the water (e.g. Hirokawa para 0177-0178). This can also be an extra precaution or redundancy in addressing the recognized concern for preventing the slurry from being mixed with the pure water in the sensor space (e.g. Watanabe para 0041). This modification to include any valves (e.g. Hirokawa 0179-0180) necessary for proper operation. This modification may possibly be accomplished by removing Watanabe’s water supplier 14, as it might possibly no longer be necessary in conjunction with Hirokawa’s pump.
This modification results in teaching the limitations above.
Regarding claim 9, Watanabe as modified above discloses:
the transparent liquid is supplied into the space through the transparent-liquid supply line while the space is being evacuated (disclosed as discussed in the claim 8 rejection above).
Regarding claim 11, Watanabe as modified above discloses:
stopping the supply of the transparent liquid into the space after the entire space is filled with the transparent liquid (This happens for example when the device is powered off after use at least, wherein Watanabe explicitly discloses that his entire space 13 is filled with the water during operation, e.g. para 0041).
Conclusion
The following prior art, made of record and not relied upon, is considered pertinent to applicant's disclosure:
US 6093081 A - cited for teaching in Fig 11 an optical system comprising a window 11 in pad 4a1 and water supply nozzle 12.
US 20190022820 A1 - cited for teaching in Fig 1 a device wherein a transparent window may be installed in the through-hole 1b.
US 6911662 B2 - cited for teaching a transparent window 122 is formed in the polishing pad 120.
US 6679756 B2 - cited for teaching a transparent acrylic window 15 in polishing pad 13.
US 20080242195 A1 - cited for teaching window portion 252W comprised of a substantially transparent material.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Art Golik whose telephone number is (571)272-6211. The examiner can normally be reached Mon-Fri 9:00-5:30.
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/Art Golik/Examiner, Art Unit 3745
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745
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