DETAILED ACTION
Specification
The disclosure is objected to because of the following informalities: the specification must not reference the claims, see MPEP 2173.03.
Appropriate correction is required.
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.
Claims 1-22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 requires a hub portion which “can be” positioned with respect to an evaporation source. The coating system/vacuum chamber and evaporation source are not required or claimed, therefore it is initially not clear what the limits of it “can be” (or it also can’t be?) position and/or how a structural limitation is based on further non-claimed (or non-existent structure). See also MPEP 2173.05(h) II. in regard to “optional” limitations. The limitations of the “can be” are not known and, even if this were not optional, it is not clear the relationship because the evaporation source is not actively claimed. The claim further requires that the fixture is arranged to be “tiltable” but again it is not clear what impact this has on the actual claimed structure.
The claim also requires two rotational axes, however, as claimed, described and depicted in the figures, the rotational AXIS appear to be the same – both elements rotate around the same central point.
Claim 21 recites the limitation "entrainment system" in claim 20. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "coulisse slots" and “sliding joints” in claim 20. 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, 15 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang (2010/0272893).
Chang teaches a substrate holder comprising:
- a hub portion, see 122, [0051-60],
- at least one arm member, see 126,
- at least one roller body, see 128,
- which includes at least one fixture 80 for holding a substrate in a direction substantially transverse to the second axis, as depicted.
The hub portion is drivable about the first axis.
The one arm extends away and is radial with respect to the first axis.
The roller body is mounted on the arm member – there is no further requirement in regard to the structure of the “roller member”, in any case, the roller member 128 of Chang rotates and therefore at least has a “roller” structure” and rotates around a second axis as claimed.
In regard to the ability of the ability of the fixture “can be arranged tiltable”, this is initially and optional clause but also further an intended use of the apparatus and not specifically limiting wherein the claim does not require any further structure to actual require such a tilt. In any case, Change teaches that the angle is controllable, see Examples and [0020].
The other clauses and phrases such as “for holding (curved) substrates”, vacuum coating, spaced from an evaporation source, rotatably are all related to the intended use and not limiting. it has been held that claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). Also, 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). In the instant case, the only elements that are structurally relevant are addressed per Chang above.
Regarding claim 15, the holder is in a vacuum chamber with an evaporation source, see Fig. 4 and [0060].
Regarding claim 20, the system includes multiple fixtures as depicted.
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.
Claims 2 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Chang in view of Suter (6,082,298).
The teachings of Chang are described above and do not teach the claimed hinge mechanism. Suter, however, teaches that radially extending segments of a substrate holder are operably connected by joints or hinges, see Figs. 1 and 2 and col 3, lines 34-46. It would have been obvious to one of ordinary skill in the art before the effective date of the invention to apply the hinges of Suter in the substrate holder of Chang as an option wherein Chang is largely silent on a connection mechanism and Suter teaches that joints or hinges are operable. It would be understood that hinges assist in making the system more flexible for controlling angle.
Regarding claim 18, the use of the hinge as described above is understood to allow the fixture to be statically fixable or tilted dynamically as described. The teachings of Chang already teach the rotation 136 and 138.
Allowable Subject Matter
Claims 3-17, 19, 21 and 22 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. There is no reason to modify the prior art to include the hinge with a sliding joint, gear mechanism, coulisse carrier or carriage without improper hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A MILLER, JR whose number is (571)270-5825 and fax is (571)270-6825. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Cleveland, can be reached on 571-272-1418. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH A MILLER, JR/ Primary Examiner, Art Unit 1712
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