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 I drawn to the apparatus and claims 1-9 in the reply filed on 13 Nov 2025 is acknowledged.
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 13 Nov 2025.
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
Drawings filed 28 July 2024 are acknowledged and accepted.
Specification
Specification filed 28 July 2024 are acknowledged and accepted.
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: “gas supply mechanism” (claim 1, 2, 3).
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. Examiner notes that a review of the Specification did not result in finding a corresponding structure to perform the functions of the claimed “gas supply mechanism.” Examiner notes that all recitation of “gas supply mechanism” refer to “gas supply mechanism 7” with no corresponding structure to perform the claimed functions. Additionally, Fig. 1 shows gas supply mechanism 7 as a box with no further structure. The box shown in Fig. 1 could be interpreted as a gas container. However, for example, claim 3 limitation requires the gas supply mechanism to control a ratio of a flow rate and the disclosure does not show a corresponding structure to perform this function. Since there is no disclosed corresponding structure of the “gas supply mechanism” this raises rejections under U.S.C. 112(a) and U.S.C. 112(b) as further discussed below.
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.
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 1, 2, 3 is/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.
Regarding claim 1, 2, 3, limitation “gas supply mechanism” invokes interpretation under U.S.C. 112(f). However, all recitations of “gas supply mechanism” in the Specification (paragraph [0028],[0029], [0030], [0045], [0049], [0050], [0053], [0057], [0058], [0064]-[0066]) refers to “gas supply mechanism 7” without further specifying a specific structure to perform the function of “supplies a raw material gas containing C, H, O into the vacuum container” (claim 1), “gas supplied by the gas supply mechanism, a ratio of a concentration of O atoms to a total concentration of O atoms and H atoms is 10 at% or more and 60 at% or less” (claim 2), “supplies a catalyst gas together with the raw material gas into the vacuum container and a ratio of a flow rate of the catalyst gas to a total flow rate of all gases supplied into the vacuum container is set to 50% or more and 90% or less” (claim 3). Without any disclosure of any structure, materials, or acts for performing the functions or any link of structure to the functions, one cannot conclude that the inventor was in possession of the claimed invention.
In light of the above, dependent claims 2-9 are also rejected at least due to dependency on rejected claim 1.
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 1, 2, 3 is/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.
Regarding claims 1, 2, 3, claim limitation “gas supply mechanism” 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 of “supplies a raw material gas containing C, H, O into the vacuum container” (claim 1), “gas supplied” (claim 2), “supplies a catalyst gas together with the raw material gas into the vacuum container and a ratio of a flow rate of the catalyst gas to a total flow rate of all gases supplied into the vacuum container is set to 50% or more and 90% or less” (claim 3). Additionally, Fig. 1 shows gas supply mechanism 7 as a box with no further structure. The box shown in Fig. 1 could be interpreted as a gas container. However, claim 3 limitation requires the gas supply mechanism to control a ratio of a flow rate and the disclosure does not show a corresponding structure to perform this 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.
For the purpose of examination, “gas supply mechanism” shall be interpreted as comprising a gas source or gas container of (i.e. comprising) C, H, O gas or alternatively a gas source or gas container capable of supplying C, H, O gas; and a flow rate controller, mass flow controller, or valve; and equivalents thereof.
In light of the above, dependent claims 2-9 are also rejected at least due to dependency on rejected claim 1.
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.
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) 1, 2, 3, 4, 5, 6, 8, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ando et al. (US 2019/0373710 A1 hereinafter “Ando”) in view of Mikami (JP2005088452A IDS art hereinafter referring to English Machine Translation) or alternatively Sahmuganathan et al. (US 2022/0127721 A1 having effectively filed date of 23 Oct 2020 and hereinafter “Sahmuganathan”).
Regarding independent claim 1, preamble limitation “film forming device” is/are intended use limitations are do not receive patentable weight. However, those limitations are mapped to the prior art for the purpose of compact prosecution.
Regarding independent claim 1, Ando teaches a film forming device (comprising plasma treatment device 100, Fig. 1, para. [0077]) comprising:
a vacuum container (comprising 2, Fig. 1, para. [0079]) in which a substrate (comprising W, Fig. 1, para. [0081]) is disposed;
an antenna (comprising antenna 3, Fig. 1, para. [0079]) that generates an inductively coupled plasma (para. [0079]) in the vacuum container (comprising 2, Fig. 1) and comprises a conductor element (comprising metal pipe 31 or 31A, Fig. 1 and 16, para. [0086], [0089]) and a capacitor element (comprising capacitance element 33, Fig. 2 and 16, para. [0089]-[0089]) electrically connected in series with each other (para. [0089]);
a high-frequency power supply (comprising high-frequency power source 4, Fig. 1, para. [0079]) that supplies a high-frequency current to the antenna (para. [0079]); and
a gas supply mechanism interpreted under U.S.C. 112f as comprising a flow controller (comprising flow regulator not shown, Fig. 1, para. [0081]) that supplies a gas into the vacuum container (comprising 2, Fig. 1), wherein a thin film is formed on the substrate (comprising W, Fig. 1) in the vacuum container (comprising 2, Fig. 1) according to a plasma CVD method (para. [0077]) using the inductively coupled plasma (para. [0079]) that is generated in the vacuum container (comprising 2, Fig. 1) by passing the high-frequency current through the antenna (comprising 3, Fig. 1) (para. [0077]-[0079]).
Ando does not clearly and explicitly teach the gas supply mechanism comprises a gas storage source or container of C, H, O gas or a gas source/container capable of supplying a raw material gas containing C, H, and O; and a carbon-based thin film is formed on the substrate.
However, Ando teaches that the gas 7 may be any gas as long as it corresponds to the content of the treatment performed on the substrate W (para. [0081]).
Additionally, Mikami teaches a film forming device (11, Fig. 3) including a gas supply mechanism comprising gas storage containers (comprising gas supply device 16, 17, and raw material volatilization supply device 18, Fig. 3, para. [0028]) configured to supply the vacuum chamber (comprising 12, Fig. 3) with a raw material gas containing C, H, O (para. [0017]-[0018], [0028]) to form a carbon-based thin film on a substrate (i.e. diamond like carbon) (para. [0017], [0028]).
Alternatively, Sahmuganathan teaches a film forming device (comprising substrate processing chamber 200, Fig. 2, para. [0042]) including a gas supply mechanism comprising gas storage containers (comprising process cage input 204, Fig. 2, para. [0042]) configured to supply the vacuum chamber (comprising processing chamber 208, Fig. 2) with a raw material gas mixture containing C, H, O (para. [0043] discloses a gas mixture comprising a first gas H2, a second gas CO2, a third gas selected from a group consisting of CH4, C2H2, and C2H4). Sahmuganathan teaches that such a configuration enables the deposition of a nanocrystalline diamond film/layer on a substrate (para. [0051]).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the gas supply mechanism to include a gas source of C, H, O raw material gas or alternatively capable of supplying a C, H, O raw material gas into the vacuum container to form a carbon-based thin film on the substrate (i.e. providing the gas source(s) taught by Mikami or alternatively Sahmuganathan) because Ando already teaches that any gas can be used/supplied into the vacuum chamber as long as it corresponds to the content of the treatment performed on the substrate (i.e. selection of gas for an intended or desired substrate process/treatment) and because Mikami teaches that such a configuration is a known configuration to enable the formation/deposition of a carbon-based (i.e. diamond like carbon) thin film on a substrate and because, alternatively, Sahmuganathan teaches that such a configuration enables the deposition of carbon-based thin film (i.e. a nanocrystalline diamond film layer) on a substrate.
Regarding limitation “to form a carbon-based thin film” thought taught in the prior art; this is an intended use limitation. Since Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the structural limitations of claim(s) above, the apparatus of the same is considered capable of meeting the intended use limitations.
Furthermore, the courts have ruled the following: 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II.
Regarding claim 2, Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the limitations of claim(s) 1 above.
Regarding limitation “wherein in a composition of the raw material gas supplied by the gas supply mechanism, a ratio of a concentration of O atoms to total concentration of O atoms and H atoms is 10 at% or more and 60 at% or less,” this is an intended us limitation. Since Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the structural limitations of the claim including a flow regulator (Ando: para. [0081]) and a gas supply mechanism comprising raw material gas sources that include the same gases disclosed in the instant invention para. [0028] (see Mikami: para. [0017]-[0023]; Sahmuganathan: para. [0043], [0044], [0051]), and further teaches adjusting amounts/supply rates of the mixed gas (Mikami: para. [0021]-[0022]; Sahmuganathan: para. [0043], [0044], [0051]), the apparatus of the same would be considered capable of meeting this limitation.
Furthermore, the courts have ruled the following: 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II.
Regarding claim 3, Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the limitations of claim(s) 1 above.
Regarding limitation “wherein the gas supply mechanism supplies a catalyst gas together with the raw material gas into the vacuum container, and a ratio of a flow rate of the catalyst gas to a total flow rate of all gases supplied into the vacuum container is set to 50% or more and 90% or less,” Examiner interprets “catalyst gas” in light of claim 4 and instant specification para. [0029] as comprising rare gases including Ar, He, and Ne.
Additionally, Mikami further teaches a catalyst gas (i.e. inert gas) including Ar, He, or Ne) supplied together with the raw material gas into the vacuum container (para. [0019], [0028]).
Alternatively, Sahmuganathan further teaches a catalyst gas (i.e. inert gas) including Ar, He, or Ne) supplied together with the raw material gas into the vacuum container (para. [0043]-[0044], [0051]).
Regarding limitation “a ratio of a flow rate of the catalyst gas to a total flow rate of all gases supplied into the vacuum container is set to 50% or more and 90% or less,” this is an intended use limitation. Since Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the structural limitations including a flow regulator (Ando: para. [0081]) and a gas supply mechanism comprising raw material gas sources that include the same gases disclosed in the instant invention para. [0028] (see Mikami: para. [0017]-[0023]; Sahmuganathan: para. [0043], [0044], [0051]), and further teaches adjusting amounts/supply rates of the mixed gas (Mikami: para. [0021]-[0022]; Sahmuganathan: para. [0043], [0044], [0051]), the apparatus of the same would be considered capable of meeting this limitation.
Furthermore, the courts have ruled the following: 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II.
Regarding claim 4, Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the limitations of claim(s) 1, 3 as applied above and further teaches wherein the catalyst gas is an Ar gas (Mikami: para. [0019]; Sahmuganathan: para. [0044]).
Regarding claim 5, Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the limitations of claim(s) 1 as applied above.
Regarding limitation “wherein in an emission spectrum of the inductively coupled plasma, a ratio of luminous intensity of C2 radicals to a luminous intensity of Hα radicals is 30% or more and 300% or less,” is an intended us limitation that depends on the intended plasma processing performed in the film forming device. Since Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the structural limitations including an antenna (Ando: comprising 3, Fig. 1), a high frequency power supply (Ando: comprising 4, Fig. 1), generation of inductively coupled plasma (Ando: para. [0079]), and the C, H, O gases supplied into the vacuum chamber (see teachings of Mikami or alternatively Sahmuganathan as applied in claim 1 rejection), the apparatus of the same is considered capable of meeting the intended use limitations.
Furthermore, the courts have ruled the following: 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II.
Regarding claim 6, Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the limitations of claim(s) 1 as applied above.
Regarding claim 6 limitation “wherein a pressure in the vacuum container during film formation is 7 Pa or more and 100 Pa or less,” this is an intended use limitation. Since Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the structural limitations including a vacuum container (Ando: comprising 2, Fig. 1, para. [0080]) and further teaches an evacuation device/pump (Ando: comprising 6, Fig. 1, para. [0080]){see also Mikami: para. [0021]-[0022], [0029]; Sahmuganathan para. [0033],[0042],[0046]}, the apparatus of the same is considered capable of meeting the intended use limitation.
Furthermore, the courts have ruled the following: 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II.
Regarding claim 8, Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the limitations of claim(s) 1 as applied above and further teaches the carbon-based thin film is a diamond film (i.e. diamond like carbon film, Mikami: para. [0017]-[0021], [0028]; nanocrystalline diamond film layer, Sahmuganathan: para. [0043],[0051]).
Though taught in the prior art, limitation “wherein the carbon-based thin film is a diamond film” is an intended use limitation and does not receive patentable weight. Furthermore, the courts have ruled the following: 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II
Regarding claim 9, Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the limitations of claim(s) 1, 8 as applied above. Regarding claim limitation “wherein in a Raman spectroscopic analysis with 325 nm excitation, a peak intensity of diamond of the diamond film in the vicinity of 1333 cm -1 is more than 20% of a peak intensity of a G band in the vicinity of 1550 cm-1” relates to the analysis results of a film intended to be deposited on the substrate/article worked upon and not related to the apparatus. Thus, claim 9 limitations does not receive patentable weight. Additionally, or alternatively, since Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the structural limitations of claim(s) 1, 8 as applied above including a gas supply mechanism comprising raw material gas sources that include the same gases disclosed in the instant invention para. [0028] (see Mikami: para. [0017]-[0023]; Sahmuganathan: para. [0043], [0044], [0051]), the apparatus of the same is considered capable of meeting the intended use limitations.
Furthermore, the courts have ruled the following: 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II
Further, the courts have ruled the following: "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ando et al. (US 2019/0373710 A1 hereinafter “Ando”) in view of Mikami (JP2005088452A IDS art hereinafter referring to English Machine Translation) or alternatively Sahmuganathan et al. (US 2022/0127721 A1 having effectively filed date of 23 Oct 2020 and hereinafter “Sahmuganathan”) as applied above in claims 1, 2, 3, 4, 5, 6, 8, 9 and further in view of Ando (WO2020188809A1 hereinafter “Ando ‘809” and referring to English Machine Translation).
Regarding claim 7, Ando in view of Mikami (or alternatively Sahmuganathan) teaches all of the limitations of claim(s) 1 as applied above. Ando further teaches wherein the antenna (comprising 3, Fig. 1) is linear/straight-line in shape (para. [0079]).
Ando in view of Mikami (or alternatively Sahmuganathan) does not explicitly teach the length of the antenna being 20 cm or more.
However, Ando ‘809 teaches a film forming device (100, Fig. 2) including a straight-line shaped antenna (comprising 3, Fig. 2 and 4, para. [0028]), wherein the antenna has a length of several tens of centimeters or more (para. [0028]). Ando ‘809 teaches that such a length of an antenna is a suitable length for efficiently generating inductive coupled plasma (para.[0028]- [0030]). Examiner notes that taught range of several tens of centimeters or more and claimed range of “20 cm or more” overlap.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to size the length of the antenna to be several tens of centimeters or more because Ando ‘809 teaches that such a length of an antenna is suitable for efficiently generating inductively coupled plasma in a film forming device (Ando ‘809: para. [0028]-[0030]).
Furthermore, the courts have held that the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)(See MPEP § 2144.05(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Liang et al. (US 2021/0217585 A1) teaches an apparatus for depositing a carbon compound (i.e. diamond) on a substrate including using inductively coupled plasma and further teaches supplying C, H, O raw gas, and operating vacuum pressure of the chamber (abstract, para. [0019], [0022], [0026]).
Li et al. (US2017/0370504A1) teaches a film forming device (Fig. 11) including an antenna (comprising 90a or 90b, Fig. 11) and a plurality of gas introduction ports (125, Fig. 11) (para. [0093]).
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/LAUREEN CHAN/Examiner, Art Unit 1716 /RAM N KACKAR/Primary Examiner, Art Unit 1716