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 .
Claim Objections
Claim 15 objected to because of the following informalities:
On line 3, “…according claim 1 to in a…” should read “…according to claim 1 in a…”
Appropriate correction is required.
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.
The following “means” limitations were identified the application:
“Measuring means” as first positively recited in line 2 of claim 1. The corresponding structure identified in the specification is:
“The measuring means may comprise one or more electrical contact elements (electrodes), which are arranged at the contact surface of the housing. For the measurement, the contact surface and the electrical contact element(s) therein are arranged in contact with the surface of the polishing pad. The measurement is based on measuring a physical quantity that varies as a function of the moisture in the polishing pad. Such a physical quantity is, for example, the capacitance between one electrical contact element and a polishing platen to which the polishing pad is attached, i.e. the capacitance between the opposite sides of the polishing pad. Another such physical quantity is the (electrical) resistance between two electrical contact elements when they are arranged in contact with the surface of the polishing pad.
The electrical contact elements provide an electrical path through which electrical properties of the polishing pad can be measured. The electrical contact elements can have different shapes and sizes. The electrical contact elements are made of an electrically conductive material, which is preferably also wear and corrosion resistant. Preferable materials for the electrical contact elements are, for example, steel and gold-platinum alloy. The electrical contact elements are electrically isolated from each other to prevent short circuits.
The measuring means may comprise a measuring instrument that is electrically connected with electrical connections such as wires, cables and/or carbon brushes to the electrical contact elements and the polishing platen. The measuring instrument can be configured to measure the capacitance between one electrical contact element and the polishing platen, and/or the resistance between two electrical contact elements when they are in contact with the surface of the polishing pad.”
“Dispensing means” as first positively recited in line 4 of claim 1. The corresponding structure identified in the specification is:
”The dispensing means may comprise a container for the polishing suspension and a nozzle arranged at the contact surface. The nozzle can be connected by a hose to the container. The dispensing means may comprise a valve or a (piezoelectric) micropump arranged in connection with the container, the hose or the nozzle, and a control unit for controlling the operation of the valve or the micropump.”
“Pressing means” as first positively recited in line 2 of claim 14. Only functional language was identified in the specification; no corresponding structure was identified. The following quotation from the specification is the closest identified description to structure, note that no specific structure is described:
“The pressing means can utilize mechanical force, air pressure, gravity, or magnetic or electromagnetic force in producing the suitable pressing force.”
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:
“Control unit” as first positively recited in line 3 of claim 11. The corresponding structure identified in the specification is:
“The control unit may comprise a processor and a memory including computer program code.”
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.
Additionally, the following limitations were found to use a generic placeholder and recite functional language, but are not being interpreted under 35 U.S.C. 112(f) as they do recite further structural limitations in the claim:
“A device” as first positively recited in line 1 of claim 1.
“A device as positively recited in line 1 of claim 13.
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 14 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The limitation “pressing means” was found to invoke 35 U.S.C. 112(f); however, no corresponding structure was identified in the specification, as such the limitation is not described.
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 1-15 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 moisture" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, it has been assumed that the limitation should read “moisture.”
Claim 3 recites the limitation "the resistance" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, it has been assumed that the limitation should read “a resistance.”
Claim 6 recites the limitation "the capacitance" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, it has been assumed that the limitation should read “a capacitance.”
Claim 11 recites the limitation "the operation" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, it has been assumed that the limitation should read “an operation.”
Claim 13 positively recites the limitation “a device” twice, once in line 1 and once in line 7. The limitation “a device” was previously positively recited in claim 1, from which claim 13 depends. This repeated positive recitation renders the claim indefinite as it is unclear if the later recitations are intended to be new limitations or be referencing the limitation of claim 1. For the purpose of examination, the recitation in line 1 of claim 13 has been assumed to be “A second device” and the recitation in line 7 has been assumed to be “the device.”
Claim 13 positively recites the limitations “a polishing pad” and “a surface.” These limitations were previously positively recited in claim 1, from which claim 13 depends. This repeated positive recitations render the claim indefinite as it is unclear if the later recitations are intended to be new limitations or be referencing the limitations of claim 1. For the purpose of examination, the limitations have been assumed to read “the polishing pad” and “the surface,” respectively.
Claim 13 positively recites the limitation “a polishing platen.” The limitation “a polishing platen” was previously positively recited in claim 7, from which claim 13 depends. This repeated positive recitation renders the claim indefinite as it is unclear if the later recitation is intended to be a new limitations or be referencing the limitation of claim 7. Additionally, if the recitation in claim 13 is referencing claim 7, the limitation in claim 13 would lack antecedent basis.
Claim 15 positively recites the limitations “a polishing pad” (on line 1), “a device,” “a surface,” “a polishing pad” (on line 5), “a physical quantity,” “a polishing suspension,” and “a value.” These limitations were previously positively recited in claim 1, from which claim 15 depends. This repeated positive recitations render the claim indefinite as it is unclear if the later recitations are intended to be new limitations or be referencing the limitations of claim 1. For the purpose of examination, the limitations have been assumed to read “the polishing pad,” “the device,” “the surface,” “the polishing pad,” “the physical quantity,” “the polishing suspension,” and “the value,” respectively.
Claim limitation “14” 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. 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.
Claims 2, 4-5, 7-10, and 12 are rejected for their dependence on one or more of the above claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. US 20200055160 A1 (herein Cheng) in view of Peltola et al. WO 2021099682 A1 (herein Peltola).
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Cheng Figure 5
Regarding independent claim 1, Cheng teaches a device (200) for moistening a polishing pad (140), comprising: a measurement sensor (610) for measuring a physical quantity (para 38, ln 6-11), and dispensing means for dispensing a polishing suspension (312, 314, 316), based on a value of the measured physical quantity (para 38, ln 6-11), on a surface of the polishing pad (140), characterized in that the device (200) comprises:- a housing (210 and 230) that encloses the measuring sensor (610) and the dispensing means (312, 314, 316), the housing (210 and 230) having a contact surface (para 20, ln 9-10) for contacting the surface of the polishing pad (140).
Cheng does not disclose the measurement means as interpreted according to 35 U.S.C. 112(f) as provided above.
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Peltola Figure 5
However, in a related device, Peltola teaches a device (abstract) for moistening a polishing pad (503), comprising: measuring means for measuring a physical quantity that is indicative of the moisture in the polishing pad (100), and dispensing means for dispensing a polishing suspension (512), based on a value of the measured physical quantity (pg. 9, ln 5-7), on a surface of the polishing pad (503). Peltola further teaches that this measurement means advantageously measure the moisture in the polishing pad during a polishing process (pg. 1, ln 26-27). It would have been obvious to one skilled in the art, prior to filing date of instant application, to apply the measuring means of Peltola to the housing and dispensing means of Cheng to advantageously measure the moisture in the polishing pad during a polishing process (pg. 1, ln 26-27). Furthermore, 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 such that the combination would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 2, the combination of Cheng and Peltola teaches that the housing (210 and 230 of Cheng) is essentially cylindrical (230 is a retaining ring of Cheng).
Regarding claim 3, the combination of Cheng and Peltola teaches that the physical quantity is the resistance (pg. 3, ln 16-19 of Peltola) on the polishing pad (140 of Cheng).
Regarding claim 4, the combination of Cheng and Peltola teaches that the measuring means (100 of Peltola) comprises two electrical contact elements (102, 103 of Peltola) arranged on the contact surface (105 of Peltola) and a measuring instrument (507 of Peltola) that is configured to measure the resistance (pg. 13, ln 29-31 of Peltola) between the two electrical contact elements (102, 103 of Peltola).
Regarding claim 5, the combination of Cheng and Peltola teaches that the dispensing means (312, 314, 316 of Cheng) is configured to dispense a polishing suspension (S of Cheng) on the surface of the polishing pad (140 of Cheng) if the value of the resistance is larger than a first threshold value (pg. 9, ln 16-17 of Peltola).
Regarding claim 6, the combination of Cheng and Peltola teaches that the physical quantity is the capacitance (pg. 3, ln 16-19 of Peltola) between opposite sides of the polishing pad (140 of Cheng).
Regarding claim 7, the combination of Cheng and Peltola teaches that the measuring means (100 of Peltola) comprises an electrical contact element (101 of Peltola) arranged on the contact surface (105 of Peltola) and a measuring instrument (507 of Peltola) that is configured to measure the capacitance (pg. 13, ln 29-31 of Peltola) between the electrical contact element (101 of Peltola) and a polishing platen (130 of Cheng) on which the polishing pad (140 of Cheng) is placed.
Regarding claim 8, the combination of Cheng and Peltola teaches that the dispensing means (312, 314, 316 of Cheng) is configured to dispense the polishing suspension (S of Cheng) on the surface of the polishing pad (140 of Cheng) if the value of the capacitance is smaller than a second threshold value (pg. 9, ln 17-18).
Regarding claim 9, the combination of Cheng and Peltola teaches that the dispensing means (312, 314, 316 of Cheng) comprises a container (314 of Cheng) for holding the polishing suspension (S of Cheng) and a hose (316 of Cheng) having a first end (end of 316 which connects to 314 of Cheng) connected to the container (314 of Cheng) and a second end (end of 316 which connects to 312 of Cheng) arranged in connection with the contact surface (105 of Peltola) (312 is connected to the contact surface via the lower portion of 230 of Cheng).
Regarding claim 10, the combination of Cheng and Peltola teaches that the dispensing means (312, 314, 316 of Cheng) comprises a nozzle (312 of Cheng) connected to the second end (end of 316 which connects to 312 of Cheng) of the hose (316 of Cheng).
Regarding claim 11, the combination of Cheng and Peltola teaches that the dispensing means (312, 314, 316 of Cheng) comprises a valve (318 of Cheng) or a micropump arranged in connection with the container (314 of Cheng), the hose (316 of Cheng) or the nozzle (312 of Cheng), and a control unit (517 of Peltola) that is configured to control the operation (pg. 14, ln 18-19 of Peltola) of the valve (318 of Cheng) or the micropump.
Regarding claim 12, the combination of Cheng and Peltola teaches that the device (200 of Cheng) comprises a power source for supplying electrical power to the measuring means (100 of Peltola) and the dispensing means (312, 314, 316 of Cheng) (para 27, ln 4-6 of Cheng teaches that Cheng controls sensor 640 electrically, while Cheng is silent on what the power source is, one would be required to perform the taught functionality).
Regarding claim 13, the combination of Cheng and Peltola teaches a second device (10 of Cheng) for polishing a specimen (W of Cheng), comprising: a polishing platen (130 of Cheng) rotatable about an axis (CA1 of Cheng), the polishing pad (140 of Cheng) attached to the polishing platen (130 of Cheng), and a specimen holder (110 of Cheng) comprising a plurality of specimen cavities (the main cavity encompassing all of the second device 10 of Cheng other than 120, and the sub cavity inside 200 of Cheng) for holding one or more specimens (W of Cheng) against a surface of the polishing pad (140 of Cheng), characterized in that the second device (10 of Chang) comprises:- a device according to any of the preceding claims (as provided above) inserted into one of the specimen cavities (the main cavity encompassing all of the second device 10 of Cheng other than 120) so that the contact surface (105 of Peltola) is in contact with the surface of the polishing pad (140 of Cheng).
Regarding claim 14, the combination of Cheng and Peltola teaches that the specimen holder (110 of Cheng) comprises pressing means (para 18, ln 11-15 of Cheng) for pressing the contact surface (105 of Peltola) against the surface of the polishing pad (140 of Cheng).
Regarding claim 15, the combination of Cheng and Peltola teaches a method for moistening a polishing pad (140 of Cheng), characterized in that the method comprises: arranging a device (200) to claim 1 (as provided above) in a specimen cavity (the main cavity encompassing all of the second device 10 of Cheng other than 120) of a specimen holder (110 of Cheng) (while the reference does not directly reference this step, this would be an implied manufacturing step to complete the second device 10 of Cheng), arranging the contact surface (105 of Peltola) of the device (200 of Cheng) in contact with a surface of a polishing pad (140 of Cheng) that is attached to a polishing platen (130 of Cheng) (para 18, ln 11-15 of Cheng), rotating the polishing platen about an axis (para 39, ln 3-4), measuring with the device (200 of Cheng) a physical quantity that is indicative of a moisture in the polishing pad (140 of Cheng) (pg. 8, ln 14-18 of Peltola), and dispensing with the device (200 of Cheng) a polishing suspension (S of Cheng), based on a value of the measured physical quantity (pg. 9, ln 16-17 of Peltola), on the surface of the polishing pad (140 of Cheng).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRANT D HAY whose telephone number is (571)272-9510. The examiner can normally be reached Mon-Fri 8:30am-3:30pm EST.
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/G.D.H./ Examiner, Art Unit 3723
/MONICA S CARTER/ Supervisory Patent Examiner, Art Unit 3723
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