CTNF 18/786,382 CTNF 88113 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 12142514 . Although the claims at issue are not identical, they are not patentably distinct from each other because claims under examination are anticipated, respectively, by claims of the reference patent. Every limitation in the application under examination claims is recited in the conflicting reference patent claims . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-27-aia AIA Claim(s) 11-14 is/are rejected under 35 U.S.C. 102( a)(1 ) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chen US 2004/0149226 . PNG media_image1.png 266 290 media_image1.png Greyscale PNG media_image2.png 208 362 media_image2.png Greyscale Chen discloses and/or teaches a method (¶0007-11 and ¶0032-34) of depositing a film onto a workpiece (26, 58), the method comprising: providing a deposition chamber (12) with a clamp ring (40) including: a body (41), the body including a top side, a bottom side, an inner periphery (44), and an outer periphery 46); and a plurality of pads (60, 64) spaced around the inner periphery of the body, each of the plurality of pads extending radially inward from the inner periphery of the body; elevating (by screws 24) the workpiece towards the bottom side of the clamp ring (22, 40); contacting the workpiece with the plurality of pads (60, 64), wherein the inner periphery does not contact the workpiece (contacts pad 64 spaced away from ring body 41, see Fig .6); and depositing a film onto the workpiece. As for claims 12 and 13, Chen discloses and/or teaches wherein the inner periphery of the body has an inner circumference C1, and wherein the contacting includes contacting the workpiece with a portion of the bottom side of the clamp ring. Chen does not specify wherein the contact makes up no more than 10% of C1 or no more than 5% of C1. However, the contact points (64) of Chen are small in relation to the overall circumference of the inner periphery and clearly spaced around the periphery of the bottom side (48) of the clamp ring (40) making up less than the inner circumference C1 of the ring. It would have been obvious to one of ordinary skill in the art, before the effective filing date, through routine engineering and/or optimization for best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodrufl 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955). As for claim 14, Chen discloses contacting the workpiece with one or more of the plurality of pads (64). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYRONE V HALL JR whose telephone number is (571)270-5948. The examiner can normally be reached Mon.-Fri. 7:30am-3:30pm. 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, Monica Carter can be reached at (571) 272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /TYRONE V HALL JR/Primary Examiner, Art Unit 3723 Application/Control Number: 18/786,382 Page 2 Art Unit: 3723 Application/Control Number: 18/786,382 Page 3 Art Unit: 3723 Application/Control Number: 18/786,382 Page 4 Art Unit: 3723 Application/Control Number: 18/786,382 Page 5 Art Unit: 3723 Application/Control Number: 18/786,382 Page 6 Art Unit: 3723
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