Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-7 in the reply filed on 07/02/2026 is acknowledged.
Claims 8-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/02/2026.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 6 and 7 are objected to because of the following informalities:
The preamble of claims 6 and 7 recite ‘The substrate processing apparatus according to any claim 1,’. It appears this is a typographical error, intending to recite ‘‘The substrate processing apparatus according to
Claim 7 recites ‘the valve)’ in line 11. The parenthesis should be removed.
Appropriate correction is required.
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, 5 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 19/029906 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant independent claim 1 is merely broader than copending independent claim 1. It is clear that all of the elements of claims 1, 5 and 6 are found in claims 1-6 of the copending application. The difference lies in the fact that the copending claims include many more elements and is thus much more specific. Thus the invention of the copending claims 1-6 are in effect a "species" of the "generic" invention of the instant claims 1-7. It has been held that the generic invention is "anticipated” by the “species". See MPEP 804 Section 11(B). Since claims 1-7 are anticipated by copending claims 1-6, they are not patentably distinct from the copending claims 1-6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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, 2, 5 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0358241 to LEE ET AL.
With regard to claim 1, LEE teaches a substrate processing apparatus (fig. 3) comprising: a chamber to accommodate a substrate having a front surface on which a device is provided and a rear surface positioned on an opposite side to the front surface ([0016]); a substrate holder to hold the substrate in the chamber (support chuck, 310); a chemical liquid supply to supply a chemical liquid to the front surface of the substrate held by the substrate holder (chemical liquid supply source, 102); a rinse liquid supply to supply a rinse liquid to the front surface of the substrate held by the substrate holder (rinse solution supply source, 104); a recovered-liquid storage tank to store a recovered liquid obtained by recovering a liquid (reservoir, 600 [0047]); and a rear surface processing liquid supply to supply the recovered liquid stored in the recovered-liquid storage tank to the rear surface of the substrate (second nozzle, 340).
With regard to claim 2, LEE teaches the apparatus of claim 1. Furthermore, LEE teaches a controller configured to determine whether or not to recover the liquid into the recovered-liquid storage tank ([0026], [0038], [0047]).
With regard to claim 5, LEE teaches the apparatus of claim 1. Furthermore, LEE teaches the chemical liquid supply includes a chemical liquid storage tank to store the chemical liquid (first unit supply, 100), and the recovered-liquid storage tank is fully capable of storing, as the recovered liquid, at least a part of a cleaning liquid which has cleaned the chemical liquid storage tank ([0038]-[0040], [0047] and fig. 3).
With regard to claim 6, LEE teaches the apparatus of claim 1. Furthermore, LEE teaches a cup to trap a processing liquid scattering from a substrate held by the substrate holder (350, [0020]); a drain piping that connects the cup and the recovered liquid storage tank (376, [0025], fig3. ); and a chamber cleaning piping which is disposed in the chamber and through which a cleaning liquid for cleaning an inside of the chamber is to be discharged (shown in fig 1), wherein the recovered-liquid storage tank is fully capable of storing, as the recovered liquid, at least a part of a cleaning liquid discharged from the chamber cleaning piping ([0038]-[0040], [0047] and fig 3).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0358241 to LEE ET AL in view of JP2020-88208 to ENDO ET AL and US 2024/0162060 to INABA ET AL.
With regard to claim 3, LEE teaches the apparatus of claim 2. LEE teaches a storage tank that stores a liquid (second supply, 200), but LEE does not teach the heater to heat the liquid in the storage tank or temperature sensor as instantly claimed. However, it is known in the art to have a heater to heat liquid flowing from a storage tank (24); the controller is configured or programmed to determine whether or not to recover a liquid heated by the heater into the recovered-liquid storage tank based on the temperature of the fluid in the storage tank ([0052]-[0053]), as taught by ENDO. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of LEE to have the heater and controller that determines whether to recover liquid heated by the heater based on the temperature of the fluid in the storage tank, as taught by ENDO, with reasonable expectation of success to ensure that the desired fluid with the desired properties is recovered.
While ENDO teaches that the control is based on the temperature, LEO does explicitly teach a temperature sensor to measure the temperature. However, it is known in the art to include a temperature sensor on a tank to monitor the temperature of the liquid heated by the heater, as taught by INABA ([0076], [0085]-[0099]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of LEE/ENDO to include a temperature sensor to measure the temperature of liquid heated by a heater, as taught by INABA, with reasonable expectation of success to ensure the fluid flowing from the storage tank is at the desired temperature.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0358241 to LEE ET AL in view of US 2024/0162060 to INABA ET AL
With regard to claim 4, LEE teaches the apparatus of claim 2. LEE does not teach an ozone gas generator, an ozone gas dissolving tank, or a concentration sensor as instantly claimed. However, it is known in the art to have an ozone gas generator to generate an ozone gas (7); an ozone gas dissolving tank to dissolve the ozone gas generated in the ozone gas generator into a liquid to generate an ozone liquid (60, [0080]); and a concentration sensor to measure an ozone concentration of the ozone liquid generated in the ozone gas dissolving tank, wherein a controller is configured to determine whether or not to recover the ozone liquid generated in the ozone gas dissolving tank into a recovered-liquid storage tank based on the ozone concentration measured by the concentration sensor, as taught by INABA ([0085]-[0099]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of LEE to include the ozone gas generator, dissolving tank, concentration sensor and control to determine if the recovered liquid should be recovered based on the ozone concentration, as taught by INABA, to allow for a device that can supply ozone into the chemical liquid supply fluid to enhance the processing of the substrates and allow ozone bubbles to be mixed in the fluid.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0358241 to LEE ET AL in view of US 2008/0093340 to NAKAMORI ET AL.
With regard to claim 7, LEE teaches the apparatus of claim 1. Furthermore, LEE teaches the rinse liquid supply includes a rinse liquid piping in which the rinse liquid is to flow with branch piping that connects the rinse liquid piping to the recovered liquid storage tank (piping shown from 104 in figure 3). LEE does not teach a valve that is provided on the rinse liquid piping and thus does not teach that the valve is downstream of the branch piping. However, it is known in the art to have a valve provided on the rinse liquid piping to adjust the flow rate of rinse liquid flowing in the rinse liquid piping where the valve is downstream of a branch piping, as taught by NAKAMORI (48a, [0034]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the rinse liquid piping in the apparatus of LEE to have a valve, as taught by NAKAMORI, with reasonable expectation of success to control the flow of liquid in the piping. The apparatus taught by LEE/NAKAMORI would result in the branch piping being connected to the rinse liquid piping at a more upstream position than the valve on the rinse liquid piping and in which the rinse liquid would flow even in a case when the valve is closed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATELYN W SMITH whose telephone number is (571)270-5545. The examiner can normally be reached 9AM-5PM EST M-F.
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/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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