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 .
Election/Restrictions
This application contains the following patentably distinct species:
Species 1 method comprising: contacting the substrate with ozonated water and irradiating the substrate and the ozonated water with UV electromagnetic radiation from a UV lamp within a cleaning chamber; wherein the UV lamp is disposed in thermal communication with a cooling fluid; wherein the cleaning chamber further comprises at least one of a sensor configured to determine a temperature of the UV lamp or a UV detector; and wherein the method further comprises controlling a flow of the cooling fluid based at least in part on the temperature of the UV lamp and/or a signal from the UV detector such that greater than or equal to about 50% of the UV electromagnetic radiation has a wavelength of greater than or equal to about 280 nm (as shown by, e.g., claim 1); and
Species 2 method comprising: contacting the substrate with ozonated water and irradiating the substrate and the ozonated water with UV electromagnetic radiation from a mercury UV lamp within a cleaning chamber comprising a UV detector; and based at least in part on a signal from the UV detector, controlling a flow of a cooling fluid in thermal communication with the UV lamp such that greater than or equal to about 50% of the UV electromagnetic radiation has a wavelength of greater than or equal to about 280 nm (as shown by, e.g., claim 11).
The species are independent or distinct because they require mutually exclusive steps. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claims appear to be generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: the species require a different field of search (e.g., employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Mark Cooper on 09/16/2026 a provisional election was made without traverse to prosecute Species 1, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The information disclosure statements filed 01/31/2025 and 08/19/2026 fail to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because they appear to be repeats of information disclosure statement filed 01/22/2025. They have been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Specification
The disclosure is objected to because of the following:
On page 1 of the specification, in para [0001], the phrase “, and issued as U.S. Patent No. 12233441 on February 25, 2025”, or the like, should be added immediately after “2022” in line 2.
Appropriate correction is required.
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.
Claims 1, 3, 5 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2015153927 to Pre Tech Co. Ltd. (“Pre Tech”, and note the attached translation) in view of US 2007/0295012 to Ho et al. (“Ho”).
Regarding claim 1, Pre Tech teaches a method of cleaning a substrate (translation, abstract), comprising: contacting the substrate with ozonated water (translation, page 5, paragraph beginning “Here, the cleaning liquid”, note Figs. 3 and 4, ref. 4) and irradiating the substrate and the ozonated water with UV electromagnetic radiation from a UV lamp (translation, page 5, paragraph beginning “Further, as shown in FIG. 1”, note Fig. 1, ref. 7); and wherein the UV lamp is disposed in thermal communication with a cooling fluid (translation, page 6, paragraph beginning “As shown in FIGS. 1, 2, 3, and 4”).
Pre Tech does not explicitly teach that the UV lamp is disposed within a cleaning chamber. However, the use of cleaning chambers was known in the art (see, e.g., Ho at, inter alia, para [0034]), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the Pre Tech method as was known wherein the UV lamp is disposed within a cleaning chamber, with a reasonable expectation of success, in order to shield the lamp, and to inhibit the escape or contamination of the water.
Pre Tech discloses using ultraviolet rays having a wavelength of 250 nm to 300 nm (Pre Tech, translation, page 6, paragraph beginning “As shown in FIGS. 1, 2, 3, and 4”, and last paragraph) but does not explicitly teach the method wherein the cleaning chamber further comprises at least one of a sensor configured to determine a temperature of the UV lamp or a UV detector; and wherein the method further comprises controlling a flow of the cooling fluid based at least in part on the temperature of the UV lamp and/or a signal from the UV detector such that greater than or equal to about 50% of the UV electromagnetic radiation has a wavelength of greater than or equal to about 280 nm. However, the use of sensors configured to determine a temperature of a UV lamp, and wherein a flow of cooling fluid is controlled based at least in part on the temperature of the UV lamp, were known in the art as effective for cooling UV lamps (see, e.g., Ho at, inter alia, paragraph [0034]), and the skilled artisan would have found it obvious to modify the Pre Tech method as was known wherein the cleaning chamber further comprises at least one of a sensor configured to determine a temperature of the UV lamp or a UV detector; and wherein the method further comprises controlling a flow of the cooling fluid based at least in part on the temperature of the UV lamp and/or a signal from the UV detector such that greater than or equal to about 50% of the UV electromagnetic radiation has a wavelength of greater than or equal to about 280 nm, with a reasonable expectation of success, since it was known as effective for cooling UV lamps, and in view of the disclosure of UV lamp cooling fluid and UV wavelength preference (Pre Tech, translation, page 6, paragraph beginning “As shown in FIGS. 1, 2, 3, and 4”, and last paragraph). Note that overlapping ranges are prima facie obvious (MPEP 2144.05(I)).
Regarding claim 3, Pre Tech/Ho disclose a method wherein at least a portion of the ozonated water is irradiated with the UV electromagnetic radiation prior to the ozonated water contacting the substrate (Pre Tech, translation, page 5, paragraph beginning “Further, as shown in FIG. 1”, note Fig. 1, ref. 8).
Regarding claim 5, Pre Tech/Ho disclose a method wherein the cooling fluid is in physical contact with at least a portion of the UV lamp (Pre Tech, translation, page 6, paragraph beginning “As shown in FIGS. 1, 2, 3, and 4”).
Regarding claim 8, Pre Tech/Ho discloses a method wherein greater than or equal to about 50% of the UV electromagnetic radiation has a wavelength from greater than or equal to about 310 nm and less than or equal to about 370 nm (translation, page 3, para beginning “At this time, the ultraviolet light”, and note MPEP 2144.05(I)). It is noted that the present specification does not appear to demonstrate the criticality of the recited range (see, e.g., present claim 10).
Regarding claim 9, Pre Tech/Ho discloses a method wherein greater than or equal to about 50% of the UV electromagnetic radiation has a wavelength greater than or equal to about 310 nm and less than or equal to about 320 nm (translation, page 3, para beginning “At this time, the ultraviolet light”, and note MPEP 2144.05(I)). It is noted that the present specification does not appear to demonstrate the criticality of the recited range (see, e.g., present claim 10).
Regarding claim 10, Pre Tech/Ho discloses a method wherein greater than or equal to about 50% of the UV electromagnetic radiation has a wavelength greater than or equal to about 365 nm and less than or equal to about 375 nm (translation, page 3, para beginning “At this time, the ultraviolet light”, and note MPEP 2144.05(I)). It is noted that the present specification does not appear to demonstrate the criticality of the recited range (see, e.g., present claims 8 and 9).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2015153927 to Pre Tech Co. Ltd. (“Pre Tech”, and note the attached translation) in view of US 2007/0295012 to Ho et al. (“Ho”) and in further view of US 7,935,940 to Smargiassi (“Smargiassi”).
Regarding claim 4, Pre Tech/Ho does not explicitly teach the method wherein the sensor configured to determine a temperature of the UV lamp is a thermocouple. However, the use of thermocouples was well known in the art as effective for determining temperature, (see, e.g., Smargiassi at, inter alia, col. 14, lines 20-27), and the skilled artisan would have found it obvious to modify the Pre Tech/Ho method as was known wherein the sensor configured to determine a temperature of the UV lamp is a thermocouple, with a reasonable expectation of success, since they were known as effective for determining temperature.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2015153927 to Pre Tech Co. Ltd. (“Pre Tech”, and note the attached translation) in view of US 2007/0295012 to Ho et al. (“Ho”) and in further view of WO 2020099385 to Luxembourg Institute of Science and Technology (“LIST”).
Regarding claim 7, Pre Tech discloses that the wavelength affects the cleaning efficiency (translation, page 6, last para), but does not explicitly teach the method wherein the UV lamp comprises a coating configured to produce a bathochromic shift in a wavelength of UV electromagnetic radiation. The use of coatings producing bathchromic shifts was known in the art (see, e.g., LIST at, inter alia, para [0078] – [0111]) and the skilled artisan would have found it obvious to modify the Pre Tech/Ho method wherein the UV lamp comprises a coating configured to produce a bathochromic shift in a wavelength of UV electromagnetic radiation, with a reasonable expectation, in order to vary wavelengths, in order to optimize the cleaning efficiency for a particular substrate.
Allowable Subject Matter
Claims 2 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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:
The closest prior art reference is JP 2015153927 to Pre Tech Co. Ltd. The prior art references of record, taken alone or in combination, do not anticipate or suggest fairly the limitations of: wherein the cleaning chamber comprises the UV detector, and wherein the method comprises controlling the flow of the cooling fluid based at least in part on a signal from the UV detector (as in claim 2), or wherein the UV lamp is configured such that when a temperature of the UV lamp is within a first temperature range, greater than or equal to about 50% of the UV electromagnetic radiation emitted by the UV lamp is less than or equal to 270 nm, and when the temperature of the UV lamp is within an operational temperature range, greater than or equal to about 50% of the UV electromagnetic radiation emitted by the UV lamp is greater than or equal to 280 nm, wherein a lower limit of the operational temperature range is greater than an upper limit of the first temperature range (as in claim 6), in combination with the other method steps as instantly recited. Upon further search no other prior art has been located at the date of this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC GOLIGHTLY whose telephone number is (571)270-3715. The examiner can normally be reached M-F: 10 am - 7 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kaj Olsen can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC W GOLIGHTLY/Primary Examiner, Art Unit 1714
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