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 with traverse of Invention I in the reply filed on August 20, 2026 is acknowledged. The traversal is on the ground(s) that the amendments to the claims are such that the products of Inventions I and II are no longer patentably distinct from each other. Examiner finds the arguments persuasive and rejoins claims 8 – 20 into the application.
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:
“pin driving member” recited in claim 15
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.
The limitation “pin driving member” invokes interpretation under 35 U.S.C. 112(f) because:
(A) The claim limitation uses a substitute for “means” that is a generic placeholder for performing the claimed function (“member”).
(B) The generic placeholder is modified by functional language (“pin driving” or ‘for pin driving’ and ‘configured for lifting or lowering the lifting/lowering pin’)
(C) The generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
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 1 – 7 and 15 – 20 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 1 recites the limitation “the vacuum hole” in the preamble of the claim. There is insufficient antecedent basis for the limitation in the claim. For the purposes of this Office Action, Examiner will interpret the limitation as “the vacuum hole connector.”
Claim 15 recites the limitation “a substrate support ... supporting and heating a substrate” in the second paragraph of the body of the claim. Examiner notes that the preamble of the claim is directed towards “a substrate treatment apparatus.” Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘supporting and heating a substrate,’ such that the claim is directed towards ‘a method of treating a substrate,’ or whether Applicant intends the limitation to recite functional language of the ‘substrate support,’ such that the claim is directed towards the ‘substrate treatment apparatus’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “a substrate support ... configured to support and heat a substrate.”
Claim 15 further recites the limitation “... a lifting/lowering pin lifted or lowered while penetrating the substrate support” in the third paragraph of the body of the claim. Examiner notes that the preamble of the claim is directed towards “a substrate treatment apparatus.” Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘lifting and lowering a lifting/lowering pin while penetrating the substrate support,’ such that the claim is directed towards ‘a method of treating a substrate,’ or whether Applicant intends the limitation to recite functional language of the ‘lifting/lowering pin,’ such that the claim is directed towards the ‘substrate treatment apparatus’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “... a lifting/lowering pin configured to be lifted or lowered while penetrating the substrate support.”
Claim 15 further recites the limitation “a pin driving member lifting or lowering the lifting/lowering pin” in the third paragraph of the body of the claim. Examiner notes that the preamble of the claim is directed towards “a substrate treatment apparatus.” Therefore, it is unclear as to whether Applicant intends the limitation to positively require a step of ‘lifting and lowering the lifting/lowering pin,’ such that the claim is directed towards ‘a method of treating a substrate,’ or whether Applicant intends the limitation to recite functional language of the ‘pin driving member,’ such that the claim is directed towards the ‘substrate treatment apparatus’ itself. For the purposes of this Office Action, Examiner will interpret the limitation as “a pin driving member configured to lift or lower the lifting/lowering pin.”
As explained above, the claim limitation “pin driving member” 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. While the Specification provides antecedent basis for the limitation and the claimed function (paragraph 54), the Specification does not teach sufficient structure for the limitation to perform the claimed 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.
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.
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.
Claims 15 – 20 are 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.
As explained above, the limitation “pin driving member” invokes interpretation under 35 U.S.C. 112(f). As further explained above, the Specification fails to teach sufficient structure of the limitation to perform the claimed function. Therefore, the limitation is not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention.
Allowable Subject Matter
Claims 1 - 7 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 8 – 14 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Examiner’s closest art, Kojima (U.S. Patent Application Publication Number 2024/0055240), teaches a vacuum hole connector of a substrate treatment apparatus having a processing chamber, and a substrate support (abstract), the vacuum hole connector comprising: a first connection member fixed to a lower portion of a first vacuum hole of a heating plate (figures 2 and 3, element 40 being the ‘first connection member,’ element 24 being the ‘first vacuum hole,’ and element 20 being the ‘heating plate’; paragraphs 22, 23, and 31), and in which a first connection hole is formed (figure 3, element 44 being the ‘first connection hole’; paragraph 31); and a second connection member installed in a second vacuum hole (figures 2 and 3, element 50 being the ‘second connection member’ and element 34 being the ‘second vacuum hole’; paragraphs 22 and 29), attached to the first connection member (figures 2 and 3, elements 50 and 40), and in which a second connection hole is formed (figures 2 and 3, element 54 being the ‘second connection hole’; paragraph 29), wherein the first vacuum hole communicates with the second vacuum hole through the first connection hole and the second connection hole, when the first connection member and the second connection member are assembled (figures 2 and 3, elements 24, 34, 44, 54, 40, and 50).
However, Kojima teaches the second connection member being installed in the second vacuum hole of an unheated base plate (figures 2 and 3, element 30 being the ‘base plate’; paragraphs 22 and 26 – 27), rather than a heater cup. Kojima also expressly teaches the first connection member being a resin adhesive (figures 2 and 3, element 40; paragraph 28), rather than a metallic member.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BESLER whose telephone number is (571)270-5331. The examiner can normally be reached Monday - Friday, 10:30 am - 7:30 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J. BESLER/Primary Examiner, Art Unit 3726
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