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 .
Status of the Claims
Claims 1-2 and 4-6 are currently pending.
Claim 3 has been canceled.
Response to Amendments
Applicant’s amendments filed 08/19/2026 have been entered.
Claims 1 and 4 have been amended. Claim 3 has been canceled.
The rejection of claims 1 and 2 has been updated to reflect Applicant’s amendments.
The rejection of claims 4-6 have been withdrawn in view of Applicant’s amendments.
However, a new Section 103 rejection has been implemented to reflect Applicant’s amendments.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 2 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yamaji et al. (WO 2021/045055 A1 with US 2022/0306656 A1 as the English equivalent).
Regarding claim 1,
Yamaji teaches a printed wiring board (a structural member) comprising a metal (a base material) and a chemical film on a surface of said metal (a protective film) covering a surface of the base material and suppressing oxidation of the metal surface (protecting) (Yamaji: abstract; par. 0001, 0008, 0029, and 0047).
The limitation requiring the structural member to be “for use in a semiconductor manufacturing apparatus” is intended use of the claimed structural member. The preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II. The claim limitation will be met if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
The limitation requiring the protective film to be “configured to protect the base material from plasma” is satisfied by Yamaji as the protective film protects the metal surface physically and chemically to some degree and there is no “configured to” language in the specification to define additional structural requirements for the protective film and the plasma protection is broadly claimed. The protective film may also undergo plasma treatment (Yamaji: par. 0393) and thus would be capable of protecting from plasma to some degree.
Applicant describes “reduction processing of reducing an in-plane variation in residual stress on a surface” of the protective film as a process which reduces an in-plane variation in residual stress such as heating, etching, and the like (Applicant’s specification: par. 0006). Thus, the limitation will be given the broadest reasonable interpretation in light of the specification as any physical or chemical process or treatment that would alter the surface chemistry or physical chemistry of the protective film will result in an in-plane variation in residual stress to some degree on a surface.
It is noted that the method to forming the claimed in-plane variation of residual stress on a surface is a product by process limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, the chemical film may heated or modified with plasma, laser, ion beam, ozone or the like or mechanical etching such as mechanical polishing and thus would have some level of in-plane variation in residual stress on the surface (Yamaji: par. 0393).
The limitation requiring the protective film surface to be “formed by an aerosol deposition method” is a product by process limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, there appears to be no structural difference between the claimed protective film and the protective film of Yamaji.
Regarding claim 2,
Yamaji teaches the structural member required by claim 1. The limitation requiring the protective film surface to be “subjected to polishing prior to the reduction processing” is a product by process limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, Yamaji teaches polishing the protective film and thus there appears to be no structural difference between the final product of Yamaji and the claimed product (Yamaji: par. 0393).
Claim Rejections - 35 USC § 103
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.
Claim(s) 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaji in view of SiSiB Silicones Silane coupling Agents Data Sheet (2017).
Regarding claims 4-6,
Yamaji teaches a printed wiring board (a structural member) comprising a metal (a base material) and a chemical film on a surface of said metal (a protective film) covering a surface of the base material and suppressing oxidation of the metal surface (protecting) (Yamaji: abstract; par. 0001, 0008, 0029, and 0047). As Yamaji teaches methods of forming the protective film over the base material, there would inherently be a step of providing a base material and a step of forming a protective film on a surface of the base material.
The limitation requiring the structural member to be “for use in a semiconductor manufacturing apparatus” is intended use of the claimed structural member. The preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II. The claim limitation will be met if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
Applicant describes “reduction processing of reducing an in-plane variation in residual stress on a surface” of the protective film as a process which reduces an in-plane variation in residual stress such as heating, etching, and the like (Applicant’s specification: par. 0006). Thus, the limitation will be given the broadest reasonable interpretation in light of the specification as any physical or chemical process or treatment that would alter the surface chemistry or physical chemistry of the protective film will result in an in-plane variation in residual stress to some degree on a surface.
The protective film may be subjected to heating (which would inherently be done at a predetermined temperature as all temperatures may be considered predetermined) and/or the protective film may have a thickness controlled by utilizing an acidic solution, such as hydrochloric acid (the same chemical used in Applicant’s specification for chemical etching) to make the thickness uniform (Yamaji: par. 0393 and 0395; Applicant’s specification: par. 0022). Thus, there would be a step of subjecting the protective film to reduction processing which is processing of reducing an in-plane variation in residual stress on a surface of the protective film.
Yamaji does not explicitly teach wherein the protective film is formed by an aerosol deposition. However, Yamaji does teach the chemical film (the protective film) can be formed by other methods so long as it allows bonding between said chemical film and the base film (Yamaji: par. 0399).
SiSiB Silicones teaches silane coupling agents are excellent at bonding to metals such as the base film of Yamaji and may be deposited via wet, dry, or spray (aerosol) methods in which spray methods simplify processing and may be desirable to one of ordinary skill in the art as drying steps may be omitted (SiSiB: pgs. 1 and 2).
Yamaji and SiSiB are in the corresponding field of the use of silane coupling agents on metal base materials to improve bonding between said materials. Therefore, it would be obvious to utilize an aerosol deposition method to simplify processing conditions of Yamaji as taught by SiSiB.
Response to Arguments
Applicant’s arguments filed 08/19/2026 have been fully considered but they are not found persuasive.
Applicant argues that Yamaji is not drawn to a structural member “for use in semiconductor manufacturing apparatus” as required by amended claim 1.
The argument is not found persuasive as the limitation requiring the structural member to be “for use in a semiconductor manufacturing apparatus” is intended use of the claimed structural member. The preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II. The claim limitation will be met if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. That is, the limitation adds no further limiting structure to the claimed structural member.
Applicant argues the limitation requiring “aerosol deposition” to not be product by process but implies additional structure.
The argument is not found persuasive as Applicant has not provided any evidence or pointed to a structural difference between the claimed structure and the structure disclosed by Yamaji. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 2145 I. Applicant’s statements are merely conclusionary as Applicant states with no evidence the method steps result in different structure.
Applicant’s argument towards the Section 102 of claims 4-6 is moot as the rejection has been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783
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