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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
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`14/818,415
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`08/05/2015
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`Shogo OKITA
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`PIPMM—54878
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`8557
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`06’2”” —PEARNE&GORDON LLP m
`7590
`52054
`1801 EAST 9TH STREET
`FORD, NATHAN K
`SUITE 1200
`CLEVELAND, OH 441 14-3 108
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`PAPER NUMBER
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`ART UNIT
`1716
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/29/2017
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`patdocket @ pearne.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 14/818,415 OKITA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`NATHAN K. FORD $2213 1716
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
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`In no event, however, may a reply be timely filed
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`Status
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`1)IZI Responsive to communication(s) filed on 3/1/17.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 1-10 is/are pending in the application.
`5a) Of the above claim(s) fl is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_4- 10is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
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`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`hit
`I/'/\WII‘IN.USDIO. ovI’ atentS/init events/
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`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)IXI The drawing(s) filed on 8/5/15 is/are: a)IXI accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)IZl All
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`b)|:l Some” c)I:l None of the:
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`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
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`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
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`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20170606
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`

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`Application/Control Number: 14/8 18,415
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`Art Unit: 1716
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`Page 2
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`DETAILED ACTION
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`Applicant’s Response
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`Acknowledged is the applicant's request for reconsideration filed on March 1, 2017. Claim 4 is amended; claims 7-10
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`are new.
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`The applicant contends that the cited prior art — lwai, namely — fails to teach the new material recited by independent
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`claim 4, which now requires “ digitizing the position of the substrate with respect to the frame.”
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`In response, the examiner concurs that lwai does not anticipate this content, and the 102 rejections have been
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`withdrawn, accordingly. However, in view of further consideration, new rejections have been elaborated below.
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`Separately, with regard to claim 10, the examiner encourages the applicant to explicitly claim the final positional
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`arrangement between the substrate and the window section within the plasma processing section. Presently, the claim
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`set merely requires a “predetermined positional relationship” between these two entities, which is of sufficient breadth
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`to encompass almost any holding status. The examiner recommends clarifying that the center of the substrate (Cw) is
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`ultimately aligned with the center of the window section (Cc).
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`The following is a quotation of 35 U.S.C. 112(b):
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`Claim Rejections - 35 USC § 112
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`(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the inventor or a joint inventor regards as the invention.
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`Claim 7 and its dependents are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out
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`and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AlA the applicant regards as the
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`invention. Claim 7 recites, “the position measuring section measures a deviation between a predetermined location of
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`each of the frame and the substrate.” If the location of the frame and the substrate are both known in advance, i.e., their
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`locations are “predetermined,” in the language of the claim, it is unclear why position measurement would be necessary.
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`Clearly, their respective locations are not predetermined, which is why potential deviations must be calculated in real-
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`time by the position measuring section. Clarification is required. In order to advance prosecution, the examiner will
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`accept prior art disclosures of both predetermined and random placements of the frame and substrate as satisfying the
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`contested limitation.
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`Claim 10 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim
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`the subject matter which the inventor or a joint inventor, or for pre-AlA the applicant regards as the invention. This
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`claim reads, ”a position correction...between the window section and the substrate.” Formally, it is unclear what is being
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`

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`Application/Control Number: 14/818,415
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`Art Unit: 1716
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`Page 3
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`corrected given that the “predetermined positional relationship between the window section and the substrate” is already
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`satisfied by the initial placement of the substrate on the plasma processing stage. In other words, if the “predetermined
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`positional relationship” is already satisfied, it is indeterminate why subsequent “position correction” is necessary.
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`Clarification is required. In order to advance prosecution, the examiner will accept any processing sequence which
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`ultimately attains the “predetermined positional relationship” as satisfying the contested limitation.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this
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`Office action:
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`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 of this title, 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.
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`Claims 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over lwai, US 2010/ 0216313, in view of Campidell
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`et al., US 2009/0189054.
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`Claims 4, 6-8: lwai discloses a method of applying processing to a substrate held on a transport carrier. The transport
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`carrier includes a frame (6) and a holding sheet (7), whereby the substrate (200) is affixed to the latter (Fig. 6A). lwai
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`executes plasma processing by loading the carrier onto a processing stage (300) disposed in a processing section (Fig. 3).
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`A cover (40) shrouds the frame (6) and a portion of the holding sheet (7), while exposing the substrate to a window
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`section formed by said cover. Ultimately, the reference seeks to align the transport carrier’s center with that of the
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`processing stage [0042]. Surely, this intentionality satisfies the claimed requirement of a “predetermined positional
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`relationship.”
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`Lastly, lwai is silent regarding the claim limitation requiring “ digitizing the position of the substrate with respect to
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`the frame by a position measuring section.” In supplementation, Campidell elaborates a method for aligning a substrate
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`prior to its ingress to a processing section [0042]. A carrier (160), to which the substrate (170) is adhered, is disposed atop
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`the rotary driving unit of a measuring stage (Fig. 1, [0026]). The driving unit rotates the carrier, and a position measuring
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`section digitally determines the position of the substrate relative to a central rotational axis [0074-76]. (Given that the
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`carrier’s central axis is initially aligned with the rotational axis of the measuring stage, it could also be said that the
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`position measuring section determines substrate position relative to a center of the frame of the transport carrier, to put it
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`in the language of the claim.) After determining the substrate’s degree of deviation, the carrier is laterally shifted so the
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`Application/Control Number: 14/8 18,415
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`Art Unit: 1716
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`Page 4
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`substrate center aligns with the rotational center of the measuring stage. It would have been obvious to integrate
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`Campidell’s technique of pre-alignment upon a dedicated measuring stage within Iwai’s processing method to ensure
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`the accurate alignment of the substrate prior to plasma processing.
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`Claim 5: This limitation would be inherently satisfied in the case of a substrate whose deviation is so severe its
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`transfer to the plasma processing stage is structurally foreclosed.
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`Claim 9: Initially, Campidell aligns the frame (160) with the rotation center before moving it laterally so as to align the
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`substrate with the rotation center [0074-76].
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`Claim 10: There is no indication Iwai conducts position correction on the measuring stage. Further, as limned by the
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`rejection of claim 4, above, the position correction occurs within Iwai’s processing section [0042].
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this
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`action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory
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`action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory
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`period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
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`calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire
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`later than SIX MONTHS from the mailing date of this final action.
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`Any inquiry concerning this communication or earlier communications from the examiner should be directed to
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`Nathan K. Ford whose telephone number is 571 270 1880. The examiner can normally be reached on M-F, 11230-8200 EDT.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Parviz Hassanzadeh, can be
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`reached at 571 272 1435. The fax phone number for the organization where this application or proceeding is assigned is
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`571 273 8300.
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`/ N. K. F./
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`Examiner, Art Unit 1716
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`/ KARLA MOORE/
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`Primary Examiner, Art Unit 1716
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