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 .
Claim Interpretation
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.
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-AIA 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:
detecting part which includes the generic placeholder part coupled with the function that detects displacement of the diaphragm based on a position of the detected part.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 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 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.
Claim Rejections - 35 USC § 112
Claim limitation “detecting part” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim(s) 1-3, 5-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Henkel US 4966528 in view of Teshima US 20210190064.
Henkel discloses:
1. (Currently Amended) A diaphragm pump 11 for sucking and discharging a
predetermined amount of a chemical solution at a time, which is to be supplied to a
semiconductor wafer (Henkel is structurally capable of being used in the manner claimed and therefore meets the limitations of the apparatus claim. See MPEP 2114 II.), the diaphragm pump comprising: a diaphragm 4 having a film shape (4 has a film [thin] shape); a body 12 including a space part in which the diaphragm 4 is placed to be displaceable, the space part being divided by the diaphragm into a chemical solution chamber in which the chemical solution flows (see 14) and a drive chamber to which an operating fluid for displacing the diaphragm is supplied (see 13); a detected part (comprising 8 including 5) held in the body to contact a surface of the diaphragm, located on a side facing the drive chamber, the detected part being movable to follow the diaphragm (see e.g. Fig 1); and a detecting part (as best understood, see 3) that detects displacement of the diaphragm based on a position of the detected part, and wherein the detected part is movable at a moving distance shorter than a maximum stroke amount of the diaphragm (The detected part [comprising 8 including 5] is movable any distance up to the maximum stroke distance of the diaphragm inherently including all distances shorter than a maximum stroke amount of the diaphragm. Therefore Henkel meets the limitations of the claim.).
Regarding the limitations made of resin, Henkel does not specify the particular material but does say “suitable material” in col 3 line 2. Thus any suitable diaphragm material would be obvious. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416). Additionally, Teshima discloses the use of a resin material (see e.g. 0044).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a resin material for the diaphragm as taught by Teshima in the system of Henkel to gain the benefit of using a known suitable material for pump diaphragms.
Henkel as modified above discloses:
2. (Original) The diaphragm pump according to claim 1, wherein the diaphragm is
made by extrusion molding, rolling process, or both the extrusion molding and the rolling
process (These are product by process limitations in an apparatus claim. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art as is the diaphragm of Henkel, the claim is unpatentable even if the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966). See MPEP 2113.). Additionally, as per MPEP 2143 I (C) and (D), the use of known manufacturing techniques [wherein applicant refers to the techniques by name with no particular disclosure of the details of the techniques] to manufacture the diaphragm of Henkel as modified above would be obvious and produce the predictable result of manufacturing a pump diaphragm. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize extrusion molding and/or rolling processes in the system of Henkel as modified above to gain the benefit of using known manufacturing techniques.
3. (Currently Amended) The diaphragm pump according to claim 1,
wherein the diaphragm is made of PFA (see e.g. 0044 of Teshima).
5. (Currently Amended) The diaphragm pump according to claim 1,
wherein the diaphragm has a film thickness of 0.1 mm or more and 0.3 mm or less (see e.g. 0047 of Teshima).
Henkel discloses:
6. (Currently Amended) A diaphragm pump 11 for sucking and discharging a predetermined amount of a chemical solution at a time, which is to be supplied to a semiconductor wafer (Henkel is structurally capable of being used in the manner claimed and therefore meets the limitations of the apparatus claim. See MPEP 2114 II.), the diaphragm pump comprising: a diaphragm 4 having a film shape (4 has a film [thin] shape); a body 12 including a space part in which the diaphragm is placed to be displaceable, the space part being divided by the diaphragm into a chemical solution chamber in which the chemical solution flows (see 14) and a drive chamber to which an operating fluid for displacing the diaphragm is supplied (see 13): a detected part (comprising 8 including 5) held in the body to contact a surface of the diaphragm, located on a side facing the drive chamber, the detected part being movable to follow the diaphragm (see e.g. Fig 1); a detecting part (as best understood, see 3) that detects displacement of the diaphragm based on a position of the detected part, and an urging member 7 that urges the detected part toward the space part (see e.g. Fig 1).
Regarding the limitations made of resin and wherein the diaphragm has a film thickness of 0.1 mm or more and 0.3 mm or less, Henkel does not specify the particular material or its thickness but does say “suitable material” in col 3 line 2. Thus any suitable diaphragm material would be obvious. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416). Additionally, Teshima discloses the use of a resin material (see e.g. 0044) of the claimed thickness (see e.g. 0047).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a resin material of the claimed thickness for the diaphragm as taught by Teshima in the system of Henkel to gain the benefit of using a known suitable material and thickness for pump diaphragms.
Regarding the limitations wherein the urging member has an urging force of 0.05 N or more and 0.15 N or less, Henkel does not provide the spring force of the spring or the overall size of the pump and thus does not disclose these force limitations. However, a person of ordinary shill in the art would find it obvious as a simple matter of design choice to utilize a spring with a length that did not apply any force or only a nominal force to the diaphragm in its resting state of eh diaphragm as there is no need for any force in the resting state of the diaphragm such that the force would be near or at zero. It is noted that skill, not the converse, is presumed on the part of those practicing in the art (In re Sovish, 226 USPQ 771) and a conclusion of obviousness can be made from "common sense" of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. (In re Bozek, 163 USPQ 545, 549 (CCPA 1969). Then, when the diaphragm is activated, a force would be applied according to the spring constant and starting from zero force the spring force would increase according to the length of the stroke which would depend upon the overall size of the pump. It would be obvious that starting from zero the force would enter the claimed range at some point depending upon the overall size of the pump and thereby meet the limitations of the claim. That is all the claim requires is that the spring be capable of applying a force in the claimed range. There are no other limitations regarding the force. And, there are no other limitations excluding other forces outside the range being applied to by the spring. Thus, as a simple matter of design choice, it would be obvious to utilize a spring whose length applied no or essentially no force on the diaphragm when the diaphragm is in its resting state to gain the benefit of not applying an unnecessary force to the diaphragm to hinder its movement.
Henkel discloses:
7. (Currently Amended) A diaphragm pump 11 for sucking and discharging a predetermined amount of a chemical solution at a time, which is to be supplied to a semiconductor wafer (Henkel is structurally capable of being used in the manner claimed and therefore meets the limitations of the apparatus claim. See MPEP 2114 II.), the diaphragm pump comprising: a diaphragm 4 having a film shape (4 has a film [thin] shape); a body 12 including a space part in which the diaphragm is placed to be displaceable (see e.g. Fig 1), the space part being divided by the diaphragm into a chemical solution chamber in which the chemical solution flows (see 14) and a drive chamber to which an operating fluid for displacing the diaphragm is supplied (see 13); a detected part (comprising 8 including 5) held in the body to contact a surface of the diaphragm, located on a side facing the drive chamber, the detected part being movable to follow the diaphragm (see e.g. Fig 1); and a detecting part (as best understood, see 3) that detects displacement of the diaphragm based on a position of the detected part, wherein when the diaphragm is in an unloaded state where no load is applied to the diaphragm, a part of the diaphragm corresponding to the space part is placed in a deflected state inside the body [see e.g. “A diaphragm pump 11 has pump housing 12 wherein a cylindrical diaphragm 4 of suitable material is clamped (the particular kind of the attachment is not described in detail since it is known per se). ” in col 3 lines 1-4 wherein clamping a diaphragm would cause if to be in a deflected state at the point of clamping inside the housing 12 which meets the limitations of the claim).
Regarding the limitations made of resin, Henkel does not specify the particular material but does say “suitable material” in col 3 line 2. Thus any suitable diaphragm material would be obvious. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416). Additionally, Teshima discloses the use of a resin material (see e.g. 0044).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a resin material for the diaphragm as taught by Teshima in the system of Henkel to gain the benefit of using a known suitable material for pump diaphragms.
Henkel discloses:
8. (Currently Amended) A diaphragm pump 11 for sucking and discharging a predetermined amount of a chemical solution at a time, which is to be supplied to a semiconductor wafer (Henkel is structurally capable of being used in the manner claimed and therefore meets the limitations of the apparatus claim. See MPEP 2114 II.), the diaphragm pump comprising: a diaphragm 4 having a film shape (4 has a film [thin] shape); a body 12 including a space part in which the diaphragm is placed to be displaceable (see e.g. Fig 1), the space part being divided by the diaphragm into a chemical solution chamber in which the chemical solution flows (see 14) and a drive chamber to which an operating fluid for displacing the diaphragm is supplied (see 13); a detected part (comprising 8 including 5) held in the body to contact a surface of the diaphragm, located on a side facing the drive chamber, the detected part being movable to follow the diaphragm (see Fig 1); and a detecting part (as best understood, see 3) that detects displacement of the diaphragm based on a position of the detected part, wherein the body includes a retaining hole (inside the hole in 9 and 4a through which 8 including 5 moves) that has a bottom and opens in an inner wall 4a of the drive chamber, the detected part and an urging member 7 that urges the detected part toward the space part are accommodated in the retaining hole (see e.g. Fig1), and the detecting part is placed outside the retaining hole (see e.g. Fig 1).
Regarding the limitations made of resin, Henkel does not specify the particular material but does say “suitable material” in col 3 line 2. Thus any suitable diaphragm material would be obvious. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416). Additionally, Teshima discloses the use of a resin material (see e.g. 0044).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a resin material for the diaphragm as taught by Teshima in the system of Henkel to gain the benefit of using a known suitable material for pump diaphragms.
Henkel as modified above discloses:
9. (Original) The diaphragm pump according to claim 8, wherein
the detected part includes:
a magnet 5 to be detected by the detecting part;
a movable part 8 equipped with the magnet and accommodated in the retaining hole so that the movable part is able to protrude or retract; and
a stopper part (portion of 4a which blocks the spring 7 from passing through the hole in 4a through which 8 moves) placed in the retaining hole to restrict movement of the movable part.
10. (New) The diaphragm pump according to claim 2, wherein the diaphragm is
made of PFA (see e.g. 0044 of Teshima).
11. (New) The diaphragm pump according to claim 2, wherein the diaphragm has a
film thickness of 0.1 mm or more and 0.3 mm or less (see e.g. 0047 of Teshima).
Conclusion
See form PTO-892 for additional prior art made of record but not relied upon that is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANDREW FINK whose telephone number is (571) 270-3373. The examiner can normally be reached on M-Th 9-7.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached on (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4373.
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/Thomas Fink/Primary Examiner, Art Unit 3746
