DETAILED ACTION
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.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Figures 2A, 2B, 2C: Reference 1a
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 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.
Claims 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.
Regarding claim 1:
The claim recites a “planarization method of performing a planarization process a plurality of times on the same surface of a substrate, the planarization process including: …” Because the claim recites the term “planarization method” as distinct from a “planarization process” and then further delimits what the planarization process includes, it is unclear whether the invention as a whole is directed to a “planarization method” or directed to “a [method] of repeatedly performing a planarization process a plurality of times on the same surface of a substrate”.
If directed to a “planarization method”, then the preamble the claim would be “[a] planarization method” where the preposition “of” would be acting acting as a transition phrase that relates the latter clause of “repeatedly performing …” as a manipulative act of the recited “[a] planarization method”. However if the claim is instead directed to “a [method] of repeatedly performing a planarization process a plurality of times on the same surface of a substrate … separating the superstrate from the cured film”, then the entirety of the description of at least to “… superstrate from the cured film” would be considered the preamble of the claimed method setting forth the purpose of the method because the prepositional phrase “of repeatedly performing a planarization method … surface of a substrate … ” modifies the kind or nature of the “planarization method”; thus the claim does not set forth what acts would constitute the “planarization method of performing …from the cured film”. Under U.S. practice, transition phrases that separate the preamble of a given claim from the elements that define a claim are typically verbals (e.g. comprising, having, including) derived from verbs. Thus, it is unclear whether the claim is directed to all potential planarization process-repeating planarization methods or directed to the broader “planarization methods” and having the step of “repeatedly performing … cured film”.
Additionally, the claim recites “wherein … in the supplying the curable material in a second planarization process after a first planarization process …”, there is a lack of antecedent basis for the possible acts “… supplying the curable material in a second planarization process” and “cured film in the first planarization process”. The problem is exacerbated by the fact that the present wherein clause is written in passive voice and does renders unclear the wherein clause is directed to a functionality or intention of the method as a whole, a functionality, intention or end result of a particular manipulative act positively recited by the claimed method. Thus, it becomes unclear what particular manipulative acts define the claimed planarization method, rendering the claim indefinite.
Dependent claims 2, 3, 4, 5 exacerbate the lack of clarity by referring to conditions, intentions or substeps that are not active requirements of the claimed method.
Regarding claim 11:
In addition to the deficiencies of claim 1 as discussed above, claim 11 requires a step of forming a film according to the recited planarization method. As recited, the imported method of claim 1 does not clearly result in a film, and thus there is a lack of clarity whether there are additional unrecited substeps or direction required to form the required film beyond mere execution of what claim 1 entails. The Examiner suggests that claim 11 be amended to an independent claim and to import the subject matter of claim 1 fully into claim 11 with clear links to what results in the required formed-film. No new matter is to be added.
Dependent claims not enumerated above are rejected on the basis of their parent claims, mutatis mutandis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Wan et al. US 20210305082
Shackleton et al. US 20230167017 A1
Lu US 20220189832 A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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, Dah-Wei Yuan can be reached on (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
Prosecution Insights