DETAILED ACTION
Elections/Restrictions
1. This office action is a response to Applicant's election filed on 02/12/2026 without traverse of Group I, claims 1-10 for further examination. Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
3. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 12/04/2024 is being considered by the examiner.
Claim Interpretation
5. 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-AlA 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: “first processing device” in claims 1-2 & 8-10; “second processing device” in claims 1-2, 4-5 & 8-10; “conveyance mechanism” in claims 1-2 & 8-10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AlA 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 wishes to provide further explanation or dispute the examiner' s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections
6. 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 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.
7. 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 Rejections - 35 USC § 102
8. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
9. Claims 1-9 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Harada et al. (JP 2017-055110 A) hereinafter Harada (the terminology of the claims in the application is used, but the references of Harada are included between parentheses).
Regarding claim 1, the recitation “of curing the composition on the substrate in a contact state in which the flat surface of the member is in contact with the composition… of separating the member from the composition on the substrate that has undergone the curing processing by the first processing device and is in the contact state…having undergone the curing processing by the first processing device to the second processing device…around the substrate in the contact state”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Harada since Harada meets all the structural elements of the claim and is capable of curing the composition on the substrate in a contact state in which the flat surface of the member is in contact with the composition, of separating the member from the composition on the substrate that has undergone the curing processing by the first processing device and is in the contact state, conveying the substrate having undergone the curing processing by the first processing device to the second processing device and the ion generator configured to ionize a gas around the substrate in the contact state, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Harada discloses a planarization apparatus that planarizes a composition on a substrate by using a member having a flat surface (abs; fig 1-15), comprising:
a first processing device (21) capable of performing curing processing of curing the composition (resin composition) on the substrate (40) in a contact state in which the flat surface of the member (50) is in contact with the composition (resin composition) ([0030]-[0032]; [0042]-[0044]; [0072]; fig 1-2, 4-9; 11-15; clm 1);
a second processing device (17) capable of performing separation processing of separating the member (50) from the composition (resin composition) on the substrate (40) that has undergone the curing processing by the first processing device (21) and is in the contact state ([0030]-[0032]; [0035]; [0039]-[0048]; [0059]-[0062]; [0066]; [0070]-[0073]; [0100]-[0101]; fig 1-2, 4-9; 11-15; clm 1); and
a conveyance mechanism (12) capable of conveying the substrate (40) having undergone the curing processing by the first processing device (21) to the second processing device (17) ([0030]-[0036]; [0038]-[0048]; [0059]-[0062]; [0066]-[0067]; [0070]-[0073]; [0081]; [0100]-[0101]; fig 1-2, 4-9; 11-15; clm 1),
wherein the second processing device (17) includes an ion generator (18/181) capable of ionizing a gas around the substrate (40) in the contact state ([0031]; [0049]-[0063]; [0074]-[0096]; [0100]-[0117]; fig 1-2, 4-9; 11-15; clm 1).
Regarding claim 2, the recitation “starts to ionize the gas around the substrate in the contact state after the conveyance mechanism conveys the substrate from the first processing device to the second processing device”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Harada since Harada meets all the structural elements of the claim and is capable of starting to ionize the gas around the substrate in the contact state after the conveyance mechanism conveys the substrate from the first processing device to the second processing device, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 2, Harada discloses the apparatus (abs; fig 1-15), wherein the ion generator (18/181) is capable of starting to ionize the gas around the substrate (40) in the contact state after the conveyance mechanism (12) conveys the substrate (40) from the first processing device (21) to the second processing device (17) ([0049]-[0063]; [0074]-[0096]; [0100]-[0117]; fig 1-2, 4-9; 11-15; clm 1).
Regarding claim 3, the recitation “starts to ionize the gas around the substrate in the contact state before the separation processing is started”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Harada since Harada meets all the structural elements of the claim and is capable of starting to ionize the gas around the substrate in the contact state before the separation processing is started, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 3, Harada discloses the apparatus (abs; fig 1-15), wherein the ion generator (18/181) is capable of starting to ionize the gas around the substrate (40) in the contact state before the separation processing is started ([0049]-[0063]; [0074]-[0096]; [0100]-[0117]; fig 1-2, 4-9; 11-15; clm 1).
Regarding claim 4, the recitation “the separation processing includes a holding operation of causing the holder to hold the member by bringing the holder close to the member in contact with the composition on the substrate, and a separating operation of separating the member from the composition on the substrate by bringing the holder far from the substrate after the holding operation, and the ion generator starts to ionize the gas around the substrate in the contact state before the holding operation is started”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Harada since Harada meets all the structural elements of the claim and is capable of the separation processing including a holding operation of causing the holder to hold the member by bringing the holder close to the member in contact with the composition on the substrate, and a separating operation of separating the member from the composition on the substrate by bringing the holder far from the substrate after the holding operation, and the ion generator starting to ionize the gas around the substrate in the contact state before the holding operation is started, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 4, Harada discloses the apparatus (abs; fig 1-15), wherein the second processing device (17) includes a holder (see fig 1, block connecting 17 to 50) capable of holding the member (50) in contact with the composition (resin composition) on the substrate (40), the separation processing capable of including a holding operation of causing the holder (see fig 1, block connecting 17 to 50) to hold the member (50) by bringing the holder (see fig 1, block connecting 17 to 50) close to the member (50) in contact with the composition (resin composition) on the substrate (40), and a separating operation of separating the member (50) from the composition (resin composition) on the substrate (40) by bringing the holder (see fig 1, block connecting 17 to 50) far from the substrate (40) after the holding operation, and the ion generator (18/181) capable of starting to ionize the gas around the substrate (40) in the contact state before the holding operation is started ([0030]-[0036]; [0038]-[0063]; [0074]-[0096]; [0100]-[0117]; fig 1-2, 4-9; 11-15; clm 1).
Regarding claim 5, the recitation “performs the separation processing in a state in which the substrate is placed at a processing position and moves the substrate from the processing position to an unload position for unloading the substrate from the second processing device after the separation processing is completed, and the ion generator is placed at a position on an opposite side of the processing position to the unload position”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Harada since Harada meets all the structural elements of the claim and is capable of performing the separation processing in a state in which the substrate is placed at a processing position and moves the substrate from the processing position to an unload position for unloading the substrate from the second processing device after the separation processing is completed, and the ion generator is placed at a position on an opposite side of the processing position to the unload position, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 5, Harada discloses the apparatus (abs; fig 1-15), wherein the second processing device (17) is capable of performing the separation processing in a state in which the substrate (40) is placed at a processing position and moves the substrate (40) from the processing position to an unload position for unloading the substrate (40) from the second processing device (17) after the separation processing is completed, and the ion generator (18/181) is placed at a position on an opposite side of the processing position to the unload position ([0030]-[0036]; [0038]-[0063]; [0074]-[0096]; [0100]-[0117]; fig 1-2, 4-9; 11-15; clm 1).
Regarding claim 6, the recitation “continues ionization of a gas until the substrate is placed at the unload position”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Harada since Harada meets all the structural elements of the claim and is capable of continuing the ionization of a gas until the substrate is placed at the unload position, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 6, Harada discloses the apparatus (abs; fig 1-15), wherein the ion generator (18/181) is capable of continuing the ionization of a gas until the substrate (40) is placed at the unload position ([0030]-[0036]; [0038]-[0063]; [0074]-[0096]; [0100]-[0117]; fig 1-2, 4-9; 11-15; clm 1).
As regards to claim 7, Harada discloses the apparatus (abs; fig 1-15), wherein the ion generator (18/181) includes an emitter configured to emit soft X-rays ([0031]; [0049]-[0063]; [0074]-[0096]; [0100]-[0117]; fig 1-2, 4-9; 11-15; clm 1).
As regards to claim 8, Harada discloses the apparatus (abs; fig 1-15), wherein the conveyance mechanism (12) includes a stage (12B) configured to move over the first processing device (21) and the second processing device (17) while holding the substrate (40) ([0030]-[0036]; [0038]-[0048]; [0059]-[0062]; [0066]-[0067]; [0070]-[0073]; [0081]; fig 1-2, 4-9; 11-15; clm 1).
Regarding claim 9, the recitation “perform contact processing of bringing the member into contact with the composition on the substrate before the first processing device performs the curing processing, and the conveyance mechanism conveys the substrate having undergone the contact processing by the second processing device to the first processing device and conveys the substrate having undergone the curing processing by the first processing device to the second processing device”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Harada since Harada meets all the structural elements of the claim and is capable of performing contact processing of bringing the member into contact with the composition on the substrate before the first processing device performs the curing processing, and the conveyance mechanism capable of conveying the substrate having undergone the contact processing by the second processing device to the first processing device and conveying the substrate having undergone the curing processing by the first processing device to the second processing device, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 9, Harada discloses the apparatus (abs; fig 1-15), wherein the second processing device (17) is capable of performing contact processing of bringing the member (50) into contact with the composition (resin composition) on the substrate (40) before the first processing device (21) performs the curing processing, and the conveyance mechanism (12) capable of conveying the substrate (40) having undergone the contact processing by the second processing device (17) to the first processing device (21) and conveying the substrate (40) having undergone the curing processing by the first processing device (21) to the second processing device (17) ([0030]-[0036]; [0038]-[0063]; [0074]-[0096]; [0100]-[0117]; fig 1-2, 4-9; 11-15; clm 1).
Claim Rejections - 35 USC § 103
10. 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 of this title, 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.
11. The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
12. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Harada as applied to claim 1 above.
Regarding claim 10, the recitation “perform contact processing of bringing the member into contact with the composition on the substrate, wherein the conveyance mechanism conveys the substrate having undergone the contact processing by the third processing device to the first processing device and conveys the substrate having undergone the curing processing by the first processing device to the second processing device”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Harada since Harada meets all the structural elements of the claim and is capable of performing perform contact processing of bringing the member into contact with the composition on the substrate, wherein the conveyance mechanism conveys the substrate having undergone the contact processing by the third processing device to the first processing device and conveys the substrate having undergone the curing processing by the first processing device to the second processing device, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. 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 shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 10, Harada discloses the apparatus (abs; fig 1-15), wherein the second processing device (17) is capable of performing contact processing of bringing the member (50) into contact with the composition (resin composition) on the substrate (40) before the first processing device (21) performs the curing processing, and the conveyance mechanism (12) capable of conveying the substrate (40) having undergone the contact processing by the second processing device (17) to the first processing device (21) and conveying the substrate (40) having undergone the curing processing by the first processing device (21) to the second processing device (17) ([0030]-[0036]; [0038]-[0063]; [0074]-[0096]; [0100]-[0117]; fig 1-2, 4-9; 11-15; clm 1), however Harada does not disclose a third processing device.
Although Harada does not explicitly disclose the claimed third processing device, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Harada to have the third processing device recited in the claim to accommodate additional substrates or as needed for an intended coating method and therefore is not expected to alter the operation of the device in a patentably distinct way.
Therefore before the effective filing date of the claimed invention, to one of ordinary skill in the art it would have been an obvious matter of design choice to add an additional transportation track in Harada since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 1 93 USPQ 8.; and it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B.
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
Prosecution Insights