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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 7, 2024, October 21, 2024, and January 7, 2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 4 is 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 4 recites the limitation "the pad" in line 10. There is insufficient antecedent basis for this limitation in the claim. For purpose of compact prosecution, the examiner has interpreted that “the pad” refers to “the conductive pad”.
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)(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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cui et al (US 10,882,192), as evidenced by techiescientist.com (https://techiescientist.com/does-carbon-fiber-conduct- electricity/#-text=Carbon9%20fibers%20are820good220conductors/620of20electricity620due, to62 0form%20carbon%20fibers%20result%20in9%20low%20conductance).
Cui et al discloses a substrate transfer arm (100), as illustrated in Figures 1-5, comprising a support (200) including an upper surface (see annotated Figure 1 below) that faces a substrate (10) and is configured to support the substrate, and a conductive surface (1100) that is connected (via carrying device 2000) to a ground portion having a ground potential; a conductive pad provided on the upper surface of the support (a carbon fiber arm body 100 made of a carbon fiber material – see col. 3, lines 9-10), and configured to support the substrate in contact with a lower surface of the substrate in such a way that the substrate is not brought into contact with the support; and a conductive portion (400) (see Figure 4) configured to connect the conductive pad and the surface of the support, wherein the conductive portion is located below the upper surface of the conductive pad contacting the substrate and is connected to the conductive pad.
The carbon fiber arm body used in Cui et al is known to be as claimed, as evidenced by techiescientist.com (Carbon fibers are good conductors of electricity - see under Conclusion). Thus, the support used in Cui et al inherently has the claimed conductive properties.
PNG
media_image1.png
260
620
media_image1.png
Greyscale
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Cui et al (US 10,882,192), as evidenced by techiescientist.com (https://techiescientist.com/does-carbon-fiber-conduct-electricity/#:~:text=Carbon%20fibers%20are%20good%20conductors%20of%20electricity%20due,to%20form%20carbon%20fibers%20result%20in%20low%20conductance), in view of Agarwal et al (US 9,425,076).
Cui et al discloses a substrate transfer device (100), as illustrated in Figures 1-5, comprising a support (200) having an upper surface (see annotated Figure 1 above) that faces a substrate (10) and is configured to support the substrate; and a conductive surface (1100) that is connected (via carrying device 2000) to a ground portion having a ground potential; a conductive portion (400) (see Figure 4) including a conductive pad provided on the upper surface of the support (a carbon fiber arm body 100 made of a carbon fiber material – see col. 3, lines 9-10), and configured to support the substrate in contact with a lower surface of the substrate in such a way that the substrate is not brought into contact with the support, wherein the conductive portion is located below the upper surface of the conductive pad contacting the substrate and is connected to the conductive pad.
The carbon fiber arm body used in Cui et al is known to be as claimed, as evidenced by techiescientist.com (Carbon fibers are good conductors of electricity - see under Conclusion). Thus, the support used in Cui et al inherently has the claimed conductive properties. However, Cui et al does not show a mover configured to move the support.
Agarwal et al teaches a substrate transfer robot comprising a robot arm (104) connecting to a first link (108), a second link (110) for movement of the blade (102) supporting a substrate (150).
To provide the device of Cui et al with a robot arm having movable links to the arm body would have been obvious to one of ordinary skill in the art, in view of the teachings of Agarwal et al, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention, i.e., one skilled in the art would have recognized that the robot arm with the movable links used in Agarwal et al would allow the arm body of Cui et al to move the substrate to various positions.
Double Patenting
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.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,077,392. Although the claims at issue are not identical, they are not patentably distinct from each other because the referenced U.S. Patent No. 12,077,392 and the instant application are claiming common subject matter, as follows: a substrate transfer device comprising a support including an upper surface, a conductive pad, and a conductive portion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN VU whose telephone number is (571)272-1961. The examiner can normally be reached Monday-Friday, 7:00 am - 3:30 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, Victoria Augustine can be reached at (313) 446-4858. 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.
STEPHEN VU
Primary Examiner
Art Unit 3654
/STEPHEN A VU/Primary Examiner, Art Unit 3654
Prosecution Insights