DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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.
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Claims 1-5, 7 and 13 are non-provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-3, 6, 7, 4 and 5 of U.S. Patent No. 12306113 B2 respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application is broader than the patent, therefore, the patented claims anticipate the instant claims.
Claims 1-5, 7 and 13 of the instant application correspond to the patented claims as follows:
Instant application
USPAT 12306113 B2
1, 2, 3, 4, 5
1, 2, 3, 6, 7 respectively.
7
4
13
5
Allowable Subject Matter
3. Claims 1, 7 and 13 would be allowable once the double patenting rejection set forth in this office action is overcome.
Claims 2-6, 8-12 and 14-18 would also be allowable because of their dependency status from Claims 1, 7 and 13 respectively.
Reason for Allowance
4. The following is a statement of reasons for the indication of allowable subject matter:
5. As to Claim 1, the prior arts of record alone or in combination fails to teach or suggest the claimed “controlling the first imaging sensor and the second imaging sensor by the controller such that only the capturing of the visible light image is performed by the first imaging sensor when a film thickness of the target film formed on the surface of the substrate is equal to or larger than a first film thickness value”, along with all other limitations of claim 1.
6. As to Claim 7, the prior arts of record alone or in combination fails to teach or suggest the claimed “controlling the first imaging sensor and the second imaging sensor by the controller such that only the capturing of the ultraviolet light image is performed by the second imaging sensor when a film thickness of the target film formed on the surface of the substrate is equal to or less than a second film thickness value”, along with all other limitations of claim 7.
7. As to Claim 13, the prior arts of record alone or in combination fails to teach or suggest the claimed “controlling the first imaging sensor and the second imaging sensor by the controller such that both the capturing of the visible light image by the first imaging sensor and the capturing of the ultraviolet light image by the second imaging sensor are performed when a film thickness of the target film formed on the surface of the substrate falls between a third film thickness value and a fourth film thickness value”, along with all other limitations of claim 13.
8. Yoshihiro (JP2009175150A) teaches a substrate inspection method of inspecting a substrate having a target film formed on a surface thereof by using an image of the substrate, the substrate inspection method comprising: holding the substrate by a holder; emitting visible light from a first light source unit to the substrate held by the holder; emitting ultraviolet light from a second light source unit to the substrate held by the holder
but fails to teach the claimed limitations.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIL AHMED whose telephone number is (571)272-1950. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM.
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/JAMIL AHMED/Primary Examiner, Art Unit 2877
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