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
Applicant's election without traverse of Invention (claims 1-7) in the reply filed on 03/02/2026 is acknowledged. Non-elected claims 8-14 are withdrawn.
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) 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:
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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), 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), 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), 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) are:
“mist generator” in claims 1 and 6.
“conveying device” in claims 5-6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f), it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
“mist generator” is interpreted as requiring the structure(s) of an ultrasonic generator (see specification at ¶¶ 0043-44) or a spray nozzle (see specification at ¶¶ 0044, 0046), and equivalents thereof.
“conveying device” is interpreted as requiring the structure(s) of a conveyor belt (see specification at ¶¶ 0048, 0059-60), and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (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).
Claim Objections
In claim 6 line 2, “is” should be changed to “are,” because “a plurality of treatment units” is plural so the corresponding verb must be plural as well.
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 7 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 7 recites the limitation "the adjacent treatment chambers" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HE et al. (Chinese Publication CN107352501A, as translated by Espacenet).
Regarding Claim 1, HE teaches a substrate surface treatment device (see Fig. 2).
As a preliminary matter, the preamble is non-limiting, because the phrase “for surface treatment of a substrate by causing a treatment liquid to adhere to a treatment surface of the substrate” only recites the purpose of intended use of the claimed invention, and the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention. See MPEP § 2111.02(II). Moreover, the recited “substrate” is not part of the claimed device; rather, it’s the article worked upon by the claimed device. See MPEP § 2115 (“inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.”)
Nonetheless, HE’s device is structurally fully capable of performing the recited function of “surface treatment of a substrate….” For example, atomized TMAH is introduced into chamber 12, which contains a wafer therein (see ¶¶ 0008, 0010, 0014, 0029, 0031, 0039).
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HE’s device comprises: a mist generator (an atomization system comprising ultrasonic transducer 22 and container 24, see Fig. 2, ¶ 0029) configured to generate a mist of the treatment liquid (see ¶¶ 0013, 0029, 0039, turning on transducer 22 to start atomizing in container 24).
HE’s device comprises: a treatment chamber (chamber 12), which is structurally fully capable of performing the recited function of “introduce the mist generated by the mist generator and cause the introduced mist to adhere to the treatment surface of the substrate.” See ¶¶ 0008, 0010, 0014, 0029, 0031, 0039 (atomized TMAH—generated from atomization container 24—is introduced into chamber 12, which contains a wafer therein).
HE’s device comprises: a circulation path (see Fig. 2, a path formed by chamber 12, pipe 13, chamber 15, pipe 20, container 24, pipe 25), which is structurally fully capable of performing the recited function of “circulate the mist discharged from the treatment chamber to the treatment chamber together with the mist generated by the mist generator.” See Fig. 2, ¶¶ 0014, 0030, 0032 (TMAH discharged from chamber 12 flows back to container 24 so that TMAH can be atomized again for use in chamber 12).
Regarding Claim 2, HE teaches the device according to claim 1.
HE teaches the mist generator (atomization system comprising container 24) is disposed in the circulation path (see Fig. 2; as explained above, container 24 is in the path).
HE teaches the mist generator includes a container (container 24), which is structurally fully capable of performing the recited function of “collects the treatment liquid derived from the mist from the treatment chamber and stores the treatment liquid.” See Fig. 2, ¶¶ 0014, 0030, 0032 (TMAH discharged from chamber 12 flows back to container 24).
The recited function of “the mist generator generates the mist from the treatment liquid stored in the container” is interpreted as intended use, because it’s directed to how the claimed apparatus is used without imposing any structural requirement. A claimed apparatus must be distinguished from the prior art in terms of structure. See MPEP § 2114.II. ("Apparatus claims cover what a device is, not what a device does"). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Here, HE’s mist generator (atomization system comprising ultrasonic transducer 22 and container 24) is structurally fully capable of performing the recited function (see ¶¶ 0013, 0029, 0039, turning on transducer 22 to start atomizing in container 24).
Regarding Claim 4, HE teaches the device according to claim 1. HE teaches wherein the circulation path is connected to a gas path (nitrogen pipeline 27, see Fig. 2, ¶ 0029) for a carrier gas (N2 gas) that carries the mist to the treatment chamber (see id.).
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ZHENG et al. (Chinese Publication CN 106623201A, as translated by Espacenet).
Regarding Claim 1, ZHENG teaches a substrate surface treatment device (see Figs. 1-4, ¶¶ 0002, 0008-27, 0064-67).
As a preliminary matter, the preamble is non-limiting, because the phrase “for surface treatment of a substrate by causing a treatment liquid to adhere to a treatment surface of the substrate” only recites the purpose of intended use of the claimed invention, and the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention. See MPEP § 2111.02(II). Moreover, the recited “substrate” is not part of the claimed device; rather, it’s the article worked upon by the claimed device. See MPEP § 2115 (“inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.”)
Nonetheless, ZHENG’s device is structurally fully capable of performing the recited function of “surface treatment of a substrate….” For example, a liquid spray is introduced into each of the chambers 20, 30, and 40 to treat an object therein (see Figs. 1-4, ¶¶ 0064-67, 0071, 0078, 0084).
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ZHENG’s device comprises: a mist generator (spray head 200, 300, or 400) configured to generate a mist of the treatment liquid (see Figs. 1-4, ¶¶ 0071, 0078, 0084).
ZHENG’s device comprises: a treatment chamber (chamber 20, 30, or 40), which is structurally fully capable of performing the recited function of “introduce the mist generated by the mist generator and cause the introduced mist to adhere to the treatment surface of the substrate.” See Figs. 1-4, ¶¶ 0071, 0078, 0084 (mist generated by spray head 200/300/400 is introduced in the corresponding chamber 20/30/40).
ZHENG’s device comprises: a circulation path (see Fig. 2, a path formed by chamber 20, pipe 23, container 21, pipe 22; see Fig. 3, a path formed by chamber 30, pipe 33, container 31, pipe 32; see Fig. 4, a path formed by chamber 40, pipe 43, container 41, pipe 42), wherein the circulation path is structurally fully capable of performing the recited function of “circulate the mist discharged from the treatment chamber to the treatment chamber together with the mist generated by the mist generator.” See Figs. 1-4, ¶¶ 0009, 0019-21, 0065-67, 0072-74 (mist is discharged from chamber 20/30/40 via the corresponding drain pipe 23/33/43, and returned to the chamber via the corresponding delivery pipe 22/32/42).
Regarding Claim 2, ZHENG teaches the device according to claim 1.
ZHENG teaches wherein the mist generator is disposed in the circulation path (see Figs. 1-4, spray head 200/300/400 is part of the circulation path).
ZHENG teaches wherein the mist generator includes a container (container 21, 31, or 41), which is structurally fully capable of performing the recited function of “collects the treatment liquid derived from the mist from the treatment chamber and stores the treatment liquid.” See Figs. 1-4, ¶¶ 0019-21, 0065-67.
The recited function of “the mist generator generates the mist from the treatment liquid stored in the container” is interpreted as intended use, because it’s directed to how the claimed apparatus is used without imposing any structural requirement. A claimed apparatus must be distinguished from the prior art in terms of structure. See MPEP § 2114.II. ("Apparatus claims cover what a device is, not what a device does"). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Here, ZHENG’s mist generator (spray head 200/300/400) is structurally fully capable of performing the recited function (see Figs. 1-4, ¶¶ 0065-67, 0071, 0078, 0084).
Regarding Claim 3, ZHENG teaches the device according to claim 1. ZHENG teaches wherein the circulation path is connected to the treatment chamber 20/30/40 such that the mist is introduced into an upper part of the treatment chamber (see Figs. 1-4, spray head 200/300/400 connected to an upper part of chamber) and the mist is discharged from a lower part of the treatment chamber (see Figs. 1-4, drain pipe 23/33/43 connected to a lower part of chamber), and wherein container 21/31/41 is disposed in a lower part of the circulation path (see Figs. 1-4).
Regarding Claim 5, ZHENG teaches the device according to claim 1.
ZHENG teaches a conveying device (conveyor belt 1, see Fig. 1, ¶ 0064), which is structurally fully capable of performing the recited function of “convey the substrate in and out of the treatment chamber with the treatment surface of the substrate directed upward.” See Fig. 1, ¶¶ 0051, 0064, 0070 (conveyor belt 1 sends an object in and out of each chamber).
ZHENG teaches wherein the circulation path is connected to the treatment chamber (chamber 20/30/40) such that the mist is introduced into an upper part of the treatment chamber (see Figs. 1-4, spray head 200/300/400 connected to an upper part of chamber) and the mist is discharged from a lower part of the treatment chamber (see Figs. 1-4, drain pipe 23/33/43 connected to a lower part of chamber).
Regarding Claim 6, ZHENG teaches the device according to claim 5. ZHENG teaches wherein a plurality of treatment units (see Fig. 1, treatment units 2, 3 and 4) are disposed along a conveying direction of the conveying device (see Fig. 1, along conveyor belt 1), each serving as a unit comprising at least the mist generator (spray head 200/300/400), the treatment chamber (chamber 20/30/40), and the circulation path (as explained above).
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.
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.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over HE.
Regarding Claim 3, HE teaches the device according to claim 2. HE teaches wherein the circulation path is connected to the treatment chamber (chamber 12) such that the mist is introduced into a lower part of the treatment chamber (see Fig. 2, supply pipe 25 connected to a lower part of chamber 12) and the mist is discharged from a lower part of the treatment chamber (see Fig. 2, return pipe 13 connected to a lower part of chamber 12), and wherein the container (container 24) is disposed in a lower part of the circulation path (see Fig. 2).
HE does not explicitly teach that supply pipe 25 is connected to an upper part of chamber 12. But it still would’ve been obvious to rearrange supply pipe 25 so that it’s connected to an upper part of chamber 12, because rearrangement of parts is generally considered obvious. See MPEP § 2144.04.VI.C. Here, supply pipe 25 as rearranged would still perform the same function as before (e.g., supplying atomized TMAH into chamber 12), thereby yielding predictable results. In other words, rearranging supply pipe 25 is considered obvious because the operation of HE’s device is still the same and/or it’s an obvious matter of design choice.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over ZHENG (as applied to Claim 6), in view of NAKAYAMA et al. (Chinese Publication CN 106623201A, as translated by Espacenet).
Regarding Claim 7, ZHENG teaches the device according to claim 6.
ZHENG does not explicitly teach: “wherein an air nozzle for draining a treatment liquid derived from a mist adhering to the treatment surface of the substrate is disposed between the adjacent treatment chambers of the treatment units.”
But it’s already known in the prior art to place an air nozzle between adjacent treatment chambers. See NAKAYAMA at Fig. 13, ¶ 0159 (air nozzle 91 between chamber 10 and chamber 11). The air nozzle helps reduce contamination between adjacent chambers (see ¶ 0159).
Before the effective filing date of the claimed invention, it would’ve been obvious to a person having ordinary skill in the art to modify ZHENG to incorporate an air nozzle between adjacent treatment chambers, with reasonable expectation of reducing cross contamination. First, the air nozzle helps reduce cross contamination between adjacent chambers; given this benefit, a person of ordinary skill in the art would’ve been motivated to incorporate an air nozzle between ZHENG’s treatment chambers (e.g., between chamber 20 and 30 of ZHENG, and/or between chamber 30 and 40 of ZHENG). Second, it’s already known in the prior art to place an air nozzle between adjacent treatment chambers (see NAKAYAMA). 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 yielded nothing more than predictable results to one of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007); MPEP § 2143, A.
In the resulting combination of ZHENG and NAKAYAMA: an air nozzle would be disposed between the adjacent treatment chambers (ZHENG’s chambers 20/30/40) of the treatment units (ZHENG’s treatment units 2/3/4).
The phrase “for draining a treatment liquid derived from a mist adhering to the treatment surface of the substrate” is interpreted as intended use, because it’s directed to how the claimed apparatus is used without imposing any structural requirement. A claimed apparatus must be distinguished from the prior art in terms of structure. See MPEP § 2114.II. ("Apparatus claims cover what a device is, not what a device does"). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Here, the air nozzle (as taught by the combination of ZHENG and NAKAYAMA) would be structurally fully capable of performing the recited draining function, because the nozzle supplies air to the substrate as the substrate travels between chambers (see NAKAYAMA at Fig. 13, ¶ 0159).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD ZHANG whose telephone number is (571)272-3422. The examiner can normally be reached M-F 09:00-17:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KAJ OLSEN can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.Z.Z./Examiner, Art Unit 1714
/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714
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