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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 7-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11623319 (hereinafter ‘319). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘319 patent render obvious the claims of the instant application.
Specifically, claim 1 of ’319 includes the entirety of the subject matter of claim 1 of the instant application (the claimed “first longitudinal axis” of the instant application being equivalent to the “second longitudinal axis” of ‘319), with the exception of the claimed “slot on a bottom” of the adjustment block. While the slot is not overtly recited in claim 1 of ‘319, a slot would be necessary for the inclusion of the claimed adjustment screw. Therefore, claim 1 of the instant application is rendered obvious, as it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a slot in the adjustment block for the purposes of providing a space for the adjustment screw.
Additionally, claims 2-4 of the instant application are anticipated by claims 2-4 of ‘319, claim 7 of the instant application is anticipated by claim 5 of ‘319, claims 8-12 of the instant application are anticipated by claim 1 of ‘319, claims 13-21 of the instant application are anticipated by claims 6-15 of ‘319.
Claims 5-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 11623319 (hereinafter ‘319) in view of Takahashi (US 6179695).
Claim 1 of the instant application is unpatentable over claim 1 of the ‘319 patent as discussed above. While claims 5 and 6 of the instant application are not fully anticipated by the subject matter of the claims of ‘319, claim 4 of ‘319 recites attachment by a joint, while claims 5 and 6 of the instant application merely recite examples of joints. Takahashi teaches a machine for treating a surface of a wafer chuck with a treatment tool attached to a tool shaft by a joint, where the joint is a ball and socket joint (fig 7; hemispherical top of 217 in socket 216a attaching tool 218 to shaft) and wherein the treatment tool is rotationally constrained with the tool shaft (as described in col 9, lines 9-20, rotation of the shaft causes rotation of the tool, indicating rotational constraint between the tool and shaft). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to rotationally constrain the treatment tool with the tool shaft of ‘319 and use a ball and socket joint for the connection of the tool shaft, as these are known ways to connect a treatment tool to a shaft, which allows the shaft to rotate the tool to work on a workpiece and to incline in accordance with the surface of the workpiece as taught by Takahashi (col 9, lines 21-30).
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13-22 of U.S. Patent No. 12122012 (hereinafter ‘012). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated or rendered obvious by the claims the ‘012 patent.
Specifically, claim 1 of ‘012 contains the entirety of the subject matter of claim 1 of the instant application, with the exception of the contacting surface being toroidal. However, claim 14 of ‘012 recites a toroidal contacting surface. Therefore, claims 1 and 14 of ‘012 anticipate the subject matter of claim 1 of the instant application.
Additionally, claims 2-21 of the instant application are anticipated by claims 1, 3-11, and 13-22.
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.
Claims 1-21 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.
Claim 1 recites the limitation "the wafer" in the last line. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this term is intended to refer to a wafer, or to the previously claimed wafer chuck. For the purposes of this examination, “the wafer” will be interpreted as “the wafer chuck”, as this appears to be applicant’s intent.
Claims 2-21 are rejected as indefinite due to their dependency upon rejected claim 1.
Regarding claim 14, the claim recites “the wafer chuck being of silicon carbide” and “a hardness of the contacting surface is similar to a hardness of the surface of the wafer chuck.” However, the wafer chuck is not positively recited in the structure of the claimed machine. The claimed machine’s intended use is to treat a surface of a wafer chuck and the structure of the desired workpiece does not limit the structure of the claimed machine. This makes the determination of a “similar” hardness unclear in the context of the claims. For the purposes of this examination, this claim will be interpreted as simply defining the surface of the treatment tool comprises silicon carbide, as this appears to be applicant’s intent.
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.
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.
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) 1-4, 6-11, 13, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang (US 2014/0106647, cited by applicant) in view of Thibaut (US 5478271, cited by applicant), and further in view of Cox (US 4610111, cited by applicant).
Regarding claim 1, Kang teaches a machine for treating a surface of a wafer chuck (note that the desired workpiece does not limit the structure of the claimed machine), the machine comprising: an input shaft (17) being rotatable ([0013]) about a first longitudinal axis (vertical axis as viewed in fig 1) and being movable relative to the surface (indicated by vertical arrow c-d); a treatment tool (15) attached to said input shaft, said treatment tool including a toroidal contacting surface (bottom surface) configured to contact the surface of the workpiece (see fig 3 showing contacting surface being annularly arranged on a disc, resulting in a toroidal contacting surface).
Kang does not teach the input shaft being movable in three orthogonal directions (only one movable direction is disclosed in Kang). Thibaut teaches a machine for treating a surface including an input shaft (15) being movable in three orthogonal directions relative to the workpiece (fig 1; horizontally along beam 2, horizontally along rail 4, vertically via block 14; col 3, liens 3-23). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the additional two horizontal orthogonal movement to the input shaft of Kang, resulting in three orthogonal movement directions, in order to achieve the predictable result of allowing the treatment tool to be positioned at any desired position relative to the working area as taught by Thibaut (col 3, lines 3-10).
Kang does not teach an adjustment block connected to the input shaft and being rotatable therewith, or a tool shaft along a second longitudinal axis, the tool shaft being adjustably connected to the adjustment block, the adjustment block comprising a slot. Cox teaches a machine for treating a surface including an input shaft (2) rotatable about a first axis (3), an adjustment block (1) connected to the input shaft and being rotatably therewith about the first longitudinal axis (fig 1; col 2, lines 20-25), and a treatment tool (27) attached to a tool shaft (26) along a second longitudinal axis (10), the tool shaft being adjustably connected to the adjustment block, wherein the adjustment block comprises a slot (4) on a bottom adapted to receive the tool shaft therein (col 2, lines 34-38; tool shaft accommodated through eccentric 6) and allow linear offset adjustment of the first longitudinal axis relative to the second longitudinal axis (fig 1; col 3, lines 6-14). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include an adjustment block and tool shaft adjustably connected to the adjustment block through a slot to the treatment tool of Kang, as this arrangement allows for adjusting the eccentricity of the tool, allowing a user to adjust the severity of the treatment on the workpiece as taught by Cox (col 3, lines 25-31).
Regarding claim 2, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches said treatment tool is a single tool (fig 2; single grinding wheel 15).
Regarding claim 3, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches the machine is configured to obtain input data including profilometer data ([0028]; thickness measurement) reporting on elevation (thickness) of the workpiece, and wherein the machine is configured to direct the treatment tool to operate on one or more regions of the workpiece deterministically based on input data reporting on the input data ([0028]; includes a sensor for elevation (thickness) and adjusts the machining process based on the thickness measurement).
Regarding claims 4 and 6, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches the tool is attached to the shaft by a joint (fig 3; unlabeled connection between tool 15 and shaft 17), wherein the treatment tool is rotationally constrained with the shaft ([0009]; indicated by the shaft driving the tool to rotate).
Regarding claim 7, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches said treatment tool comprises a geometry selected from the group consisting of a ring, an assemblage of rings, and a ring with a treating surface located within an annulus of said ring (ring shown in fig 2).
Regarding claim 8, Kang, as modified, teaches all the limitations of claim 1 as described above. Cox further teaches the tool shaft (included as described in the rejection of claim 1 above) is configured to adjust the treatment tool between an aligned position in which the tool shaft is co-axial with the first longitudinal axis and an offset position in which the tool shaft is at a radial offset relative to the first longitudinal axis (described by the explanation of the adjustment block of Cox which can provide an adjustable eccentricity, which can be zero; col 3, lines 25-37).
Regarding claim 9, Kang, as modified, teaches all the limitations of claim 8 as described above. Cox further teaches the radial offset is configured to impart a dither to the treatment tool (col 3, lines 25-37; the non-zero offset constitutes dithering on the tool).
Regarding claims 10 and 11, Kang, as modified, teaches all the limitations of claim 1 as described above. Cox further teaches the adjustment block comprises an adjuster screw (24) to allow the linear offset adjustment (col 3, lines 6-14); wherein the adjuster screw is orthogonal to the input shaft (as shown in figures 1 and 2).
Regarding claim 13, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches the machine is configured to process an elevated surface of the wafer chuck that is at a different elevation than the first surface (this function is provided by the machine tool’s ability to vertically change its elevation up and down as indicated by arrow c-d).
Regarding claim 15, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches a motor (26) configured to translate said treatment tool along at least one of the three orthogonal directions ([0007]; direction d).
Regarding claims 16-17, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches the machine configured to control a pressure of said treatment tool against the surface of the workpiece ([0009]; “controlling the grinding force”); wherein the machine is configured to control said pressure as a function of at least one of time and location of said treatment tool on the surface ([0009]; grinding pressure (force) is controlled during polishing and withdrawn when complete, thus changing pressure as a function of time).
Regarding claim 18, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches a motor configured to control a rotational velocity of said shaft ([0013]; described as “motor spindle 17”).
Regarding claim 19, Kang, as modified, teaches all the limitations of claim 15 as described above. Kang further teaches the motor (26) configured to control a velocity of said treatment tool along one of said three orthogonal directions ([0007]; controls movement along orthogonal direction d).
Regarding claim 20, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches a dead weight load disposed on the tool shaft and being configured to apply pressure of the treatment tool (counterweighing described [0015]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang, Thibaut, and Cox as applied to claim 4 above, and further in view of Takahashi (US 6179695, cited by applicant).
Regarding claim 5, Kang, as modified, teaches all the limitations of claim 4 as described above. Kang does not teach the joint is a ball and socket joint. Takahashi teaches a machine for treating a surface including a tool (218) attached to a tool shaft (fig 7) by a ball and socket joint (hemispherical top of 217 in socket 216a). it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to use a ball and socket joint for attaching the tool of Kang to the tool shaft, as this allows the tool to incline in accordance with the surface of the workpiece as taught by Takahashi (col 9, lines 21-30).
Claim 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang, Thibaut, and Cox as applied to claim 1 above, and further in view of Su (US 2015/0258657, cited by applicant).
Regarding claim 14, Kang, as modified, teaches all the limitations of claim 1 as described above. Kang further teaches the wafer chuck being of ceramic material ([0009]). Kang is silent as to the material of the contacting surface. Su teaches a machine comprising a treatment tool for grinding a surface, wherein the treatment tool comprises a contacting surface comprising silicon carbide ([0042]; see 112b rejection above for explanation of interpretation). It would have been obvious for a person having ordinary skill in the art at the effective time of filing the invention to make the contacting surface of Kang out of silicon carbide, as silicon carbide is known to have appropriate roughness and hardness for grinding hard materials as taught by Su ([0042]).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang, Thibaut, and Cox as applied to claim 8 above, and further in view of Nishimura (US 2001/0019934).
Regarding claim 21, Kang, as modified, teaches all the limitations of claim 8 as described above. Kang does not teach a motor configured to control the radial offset. Nishimura teaches a machine for treating a surface including a motor ([0074]; “drive means”) configured to control a radial offset (fig 6; controls distance D, which is the offset between first axis 15 and second axis 13). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide a motor for controlling the radial offset in the machine of Kang in order to achieve the predictable result of providing a controllable offset which is automatically adjustable as taught by Nishimura ([0074-0075]).
Allowable Subject Matter
Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Kang (US 2014/0106647) appears to be the closest prior art to claim 12. Kang teaches a machine for treating a wafer chuck including a rotatably mounted wafer chuck, a movable, rotatable input shaft including a treatment tool which grinds a surface of the wafer chuck. However, Kang does not teach an adjustment block connected to the input shaft for adjusting the treatment tool on a tool shaft between the claimed coaxial and offset positions. While it is generally known in the art to adjust a radial offset between a tool shaft and input shaft via an adjustment block (see Cox and Nishimura discussed above), the prior art does not teach or suggest the specifically claimed adjustment screw connection. Cox (US 4610111) discloses a treatment tool (27) attached to a tool shaft (26) and an adjustment block including an adjustment screw (24) orthogonal to an input shaft (2). While this arrangement provides for adjustment of the radial offset of the treatment tool relative to the input shaft, the tool shaft of Cox is not “threadedly connected to the adjuster screw such that the tool shaft is adjustable, via the threaded connection, linearly along the adjustment screw.” While the screw of Cox may be a part of the radial adjustment, the screw is not threadedly connected to the tool shaft, and the tool shaft is not adjustable via the threaded connection as claimed. There is nothing in the prior art which would render such a threaded connection to the tool shaft obvious for a person having ordinary skill in the art, particularly in combination with the machine of Kang.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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