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 .
Election/Restrictions
Applicant’s election without traverse of Group 1 and Species 2, claims 14-19 in the reply filed on 15 June 2026 acknowledged.
Claim 20-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the aforementioned reply.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “at least one of the plurality of gas holes is formed outside of the throttle portion” and “a cross-sectional area of the folded portion is equal to the cross-sectional area of the upward extending portion” must be shown and labeled (if not immediately clear based on the original disclosure) or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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.
Claim 19 is 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. Examiner is unable to find support for claim limitation “a cross-sectional area of the folded portion is equal to the cross-sectional area of the upward extending portion”. Nevertheless, the claims have been examined as written. Note: if Applicant is intending to claim a feature that appears to be illustrated but is not specifically addressed in the original disclosure, Examiner suggests reciting that in the features at issue the relevant elements are substantially equal.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2017/0051408 to Takagi et al.
Regarding claim 14: Takagi et al. discloses an injector (Figs. 1-6B, 249 a, b) substantially as claimed and comprising: an upward extending portion (e.g., 270 and 271-1) capable of extending upward along an inner side of an inner wall of a processing container (203, not a feature of the claimed invention); a folded portion (273) connected to the upward extending portion at an upper portion of the injector; and a downward extending portion (271-2) extending downward from the folded portion, wherein an introduction port (at connection between 232 a, b, c, d and 249 a, b) through which a gas may be introduced is formed at a lower portion of the upward extending portion, wherein a plurality of gas holes (250 c, d) are formed in the downward extending portion at predetermined intervals along a longitudinal direction of the downward extending portion.
Additionally, although not explicitly disclosed, Takagi et al. appears to illustrate a cross-sectional area of the upward extending portion is smaller than a cross-sectional area of the downward extending portion (see annotated figure below), such that it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to provide them as such, wherein the courts have ruled the courts have ruled that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
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Claim(s) 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al. as applied to claim 14 above and further in view of JP-09097768 to Ide.
Takagi et al. disclose the injector substantially as claimed and as described above.
However, Takagi et al. fail to disclose the downward extending portion include a throttle portion having a cross-section area that decreases as a distance from the introduction increases.
Ide teaches providing a gas injector pipe that is gradually reduced in an area where gas holes are formed as it goes away from a gas supply opening for the purpose of making an amount of gas blowing-off from the gas holes along a longitudinal direction is uniform (abstract).
Thus, it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to have provided the injector being gradually reduced in an area where the gas holes are formed as it goes away from the respective gas supply opening in order to make an amount of gas blowing-off from the first gas holes and the second gas holes, respectively, along a longitudinal direction uniform as taught by Ide.
With respect to claim 16, in modified Takagi et al., the throttle portion has one of cone shape, a truncated cone shape, a pyramid shape, or a truncated pyramid shape. See, e.g., Fig. 2 of Ide.
With respect to claims 17, in modified Takagi et al., the plurality of gas holes are formed in the throttle portion of the downward extending portion. See, e.g., Figs. 1, 5, 6A of Takagi et al. and Figs. 1-2 of Ide.
With respect to claim 18, in modified Takagi et al., gas hole 280 is considered to be formed on the downward extending portion, but outside of the throttle as it is provided at a position where the downward extending portion is no longer decreasing.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al. as applied to claim 14 above and further in view of U.S. Patent Pub. No. 2019/0318945 to Takagi et al. (Takagi II).
Takagi et al. disclose the injector substantially as claimed and as described above.
However, Takagi et al. fail to disclose a cross-sectional area of the folded portion is equal to the cross-sectional area of the upward extending portion.
Nevertheless, it is noted that even in a Takagi et al. at a position where the upwardly extending portion ends and the folded portion begins the two features will necessarily have a substantially equal cross-section portion, regardless of the configuration of the downward extending portion, such that this limitation is also considered obvious over the teachings of Takagi et al.
Further still, Takagi II disclose an injector configuration wherein a folded portion and an additional upwardly extending portion attached directly thereto more clearly appear to have an equal cross-section such that it would have been obvious to one of ordinary skill in the art before Applicant’s invention was effectively filed to provide them as such, wherein the courts have ruled the courts have ruled that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
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 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4 of U.S. Patent No. 12,084,765. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘765 include the features of claims 14-17.
Claims 18 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over 2-4 of U.S. Patent No. 12,084,765 in view of Takagi et al. and/or Takagi II. See above wherein Takagi et al. addresses the teachings of claim 18 and Takagi et al. and Takagi II address the features of claim 19
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USP Pub. Nos. 2008/0095678; 2012/0076936; and 2015/0275369.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARLA MOORE whose telephone number is (571)272-1440. The examiner can normally be reached Monday-Friday, 9am-6pm 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, PARVIZ HASSANZADEH can be reached on (571) 272-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARLA A MOORE/Primary Examiner, Art Unit 1716
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