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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2021-119338, filed on 07/20/2021.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dinneen et al. (US 2015/0206770 A1) in view of Yamasaki et al. (US 2019/0093250 A1).
Considering claim 1, Dinneen discloses a plating apparatus and method comprising: a plating tank (403) for housing a plating solution ([0056]-[0058]); an anode (413) arranged in the plating tank [0059]; a substrate holder (409) for holding a substrate (407) with a surface to be plated facing downward ([0056]-[0058]); a rotation mechanism for rotating the substrate holder [0058]; and
a shielding member (449).
Dinneen does not disclose a shielding mechanism configured to move a shielding member into between the anode and the substrate depending on a rotation angle of the substrate holder, wherein the shielding mechanism includes a linear motion drive mechanism configured to linearly move the shielding member between a shielding position and a retracted position, the shielding position being between the anode and the substrate, the retracted position being apart from between the anode and the substrate.
However, Yamasaki discloses linear motion drive mechanism (rods 324) configured to linearly move the mask (314) member between a shielding position and a retracted position, the shielding position being between the anode and the substrate, the retracted position being apart from between the anode and the substrate [0073]
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a linear movement mechanism for inserting the shielding member of Dinneen between the anode and the substrate, because Yamasaki discloses such linear drive mechanism for the same purpose of moving the masking member for masking electric field effects at the substrate edges. With respect to the limitation reciting depending on a rotation angle of the substrate holder the limitation does not require any particular dependency or angle, and the limitation is merely in a functional form, therefore it is met when the apparatus of Dinneen in view of Yamasaki is capable of performing such function. In the instant case, Yamasaki discloses left and right masks can be synchronously adjusted by a controller 103 [0085]. Therefore, the masks can be moved when the rotation angle of the substrate is at angle before the rotation begins (say angle 0).
Considering claim 2, Dinneen discloses the shielding member includes a mask member having an arc shape (wedge) corresponding to a part of a peripheral edge portion of an arc-shaped substrate [0066].
Considering claim 3, in Dinneen as modified by Yamasaki, Yamasaki discloses the linear motion drive mechanism includes a linear motion motor [0104].
Considering claim 4, Dinneen discloses an ionically resistive element including a plate-shaped member (419) having a plurality of holes, the ionically resistive element being disposed between the substrate holder and the anode; wherein the shielding member is disposed between the substrate holder and the ionically resistive element [0061].
Considering claim 5, Dinneen discloses a film thickness sensor (771) configured to measure a plating film thickness at a peripheral edge portion on the substrate ([0015], [0033] and [0068]).
Considering claims 6-8, with respect to the functional limitations of the shielding member moving to a shielding or retracted position, the shielding member of Dinneen as modified by Yamasaki is capable of moving in and out the position. Note that the claim does not require any controller to be programmed of configured to performed the claimed functions but merely the shielding mechanism which on its own may be operated by hand or the movement procedure may be initiated manually.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12270120. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claim 1 are met by claim 5 of the U.S. Patent.
Claims 2-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12270120 in view of Dinneen et al. (US 2015/0206770 A1). The limitations of claims 2-8 are obvious in view of Dinneen as applied to the art rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Wojciech Haske whose telephone number is (571)272-5666. The examiner can normally be reached M-F: 9:30 am - 6:00 pm.
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/WOJCIECH HASKE/Examiner, Art Unit 1794