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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: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`14/818,415
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`08/05/2015
`
`ShOgO OKITA
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`PIPMM-54878
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`8557
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`759°
`52°“
`PEARNE & GORDON LLP
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`11/22/2019
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`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`FORD NATHAN K
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`1716
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/22/2019
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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
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`following e—mail address(es):
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`patdoeket@pearne.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
`
`Application No.
`14/818,415
`Examiner
`NATHAN K FORD
`
`Applicant(s)
`OKITA etal.
`Art Unit
`1716
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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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`Status
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`1). Responsive to communication(s) filed on 8/16/19.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) D This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; 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
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`1—7 and 9—16 is/are pending in the application.
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`5a) Of the above claim(s) fl is/are withdrawn from consideration.
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`
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`E] Claim(ss)
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`is/are allowed.
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`Claim(ss) 4—7 and 9— 16 is/are rejected.
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`1:] Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`C] 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
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`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
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`Application Papers
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`10):] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 8/5/15 is/are: a). accepted or b)[j 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).
`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). 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). All
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`b)C] Some**
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`c)[j None of the:
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`1.. Certified copies of the priority documents have been received.
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`2E] Certified copies of the priority documents have been received in Application No.
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`3C] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** 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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`1) [3 Notice of References Cited (PTO-892)
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`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20191114
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`

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`Application/Control Number: 14/818,415
`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 August 16, 2019.
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`The applicant contends:
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`(1) Senda cannot disclose the claimed step of “measuring a position of the substrate with respect to the frame," because
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`the reference’s transport carrier does not even comprise a “frame." Rather, Senda establishes the position of the substrate
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`on its transport carrier by measuring the circumferential edges of both and then determining the difference therebetween.
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`As such, Senda measures substrate position only in relation to a carrier edge, not a frame (p. 3).
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`(2) Ansell’s frame (44) is situated within a narrow groove (28) which cannot accommodate the Office’s proposed step
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`of shifting the frame laterally in the case of a deviated substrate. Although the Office asserts that margins obtain on either
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`side of the frame, Ansell does not contemplate any dimensional differences between the groove and the frame to justify
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`this statement (p. 4).
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`In response, these arguments have been considered but are not persuasive for the reasons elaborated below:
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`(1) The examiner observes that the claim does not define the structure of the frame. Thus, one can simply define the
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`circumferential edge of Senda’s carrier as a “frame," in the sense that it frames the carrier’s body.
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`More thoroughly, Senda modifies the primary reference of Ansell, who already discloses a transport carrier comprising
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`a frame in the full spirit of the applicant’s denotation, i.e., a raised circumferential edge. As discussed above, Senda
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`measures substrate position relative to the edge of the transport carrier. The edge of Ansell’s transport carrier is constituted
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`by the aforesaid frame. Thus, applying Senda’s procedure to Ansell’s system necessarily entails measuring substrate
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`position with respect to a frame.
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`(2) The figurative deliverances of a disclosure are as legitimate as its verbal deliverances. Figure 2 of Ansell clearly
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`depicts inner and outer circumferential gaps obtaining on either side of the frame (44) when situated within the cover (28)
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`of the holding sheet (42). Irrefutably, then, the transport carrier can be shifted laterally in either direction. Although the
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`Applicant notes that the width of these gaps is not quantified, this observation is ungermane given that the claim set does
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`not quantify the berth that must be provided between the frame and cover.
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`The examiner fully acknowledges that a given instance of substrate deviation may be so substantial that the berth
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`afforded by Ansell’s cover-frame relationship cannot accommodate the lateral shift required to center the substrate, but
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`the applicant’s own system possesses structural limits of the same sort. As such, observing that Ansell’s system may be
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`incapable of resolving extreme substrate deviations does not diminish the fact that deviations of lesser degree can be fully
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`accommodated, whereby only this latter threshold need be satisfied to justify the outstanding rejection.
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`

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`Application/Control Number: 14/818,415
`Art Unit: 1716
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`Page 3
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`The following is a quotation of 35 U.S.C. 112(f):
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`Cluim Interpretation
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`(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.
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`This application includes one or more claim limitations that do not use the word “means," but are nonetheless being
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`interpreted under 35 U.S.C. 112(f) because the claim limitations use a generic placeholder — “section" and “mechanism,"
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`in this case — that is coupled with functional language without reciting sufficient structure to perform the recited function
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`and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
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`0 The “position measuring section" of claims 4-5, 7, and 10;
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`o The “transport mechanism" of claims 10 and 11.
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`Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the
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`corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
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`The ”position measuring section” will be interpreted to encompass at least a rotatable measuring stage (301) and a
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`sensor (302) in accordance with paragraph [0065] of the pre-grant publication.
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`The ”transport mechanism” will be interpreted to encompass at least a fork (201) and an arm (202) in accordance
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`with paragraph [0045] of the pre-grant publication.
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`If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the
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`claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform
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`the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform
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`the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
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`Lastly, although “plasma processing section" uses a nonce term, the limitation will not be interpreted under 112(f)
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`because the claims 4 and 11 proceed to elaborate at least a portion of its structural content, e.g., a processing stage. Further,
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`the “position measuring section," as recited by claim 11, will not be interpreted under 112(f) because, unlike claim 4, claim
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`11 recites at least a portion of its structural content, i.e., a measuring stage.
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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 Office
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`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
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`

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`Application/Control Number: 14/818,415
`Art Unit: 1716
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`Page 4
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`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 4-7 and 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Ansell et al., US 2014/ 0352889, in view
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`of Senda et al., JP 2006-269915, wherein machine translation is relied upon.
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`Claims 4, 7, 9, 12, 15-16: Ansell discloses a method of applying plasma processing to a substrate (24) held on a transport
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`carrier. The transport carrier includes a frame (44) and a holding sheet (42) that covers an opening of the frame (Fig. 2).
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`Ansell initiates plasma processing subsequent the carrier’s loading onto a processing stage (26) disposed in a plasma
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`processing section (40). The processing section includes a cover (28) which shrouds both the frame (44) and a portion of
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`the holding sheet (42) so as to expose the substrate from a window section formed by cover’s circumference [0051].
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`As depicted by Figure 2, the transport carrier is loaded such that the center of the substrate aligns with the center of the
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`window section. Ansell, though, is silent regarding the claimed step of “measuring a position of the substrate with respect
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`to the frame." In supplementation, Senda discloses a system which accommodates workpieces of the same type as Ansell
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`— substrates affixed adhesively to a transport carrier. This citation, though, recognizes the contingency in which the
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`substrate may adhere imperfectly to the carrier, i.e., the substrate’s center may not align with the carrier’s center [0001]. In
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`such instances, subsequent alignment operations premised upon the centering of the carrier alone will induce an eccentric
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`alignment of the misplaced substrate [0007]. As a remedy, Senda prescribes a measuring step performed in a position
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`measuring section. The position measuring section includes both a rotatable stage and a sensor, which are used to assess
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`the position of the substrate with respect to the carrier, thereby enabling direct discovery of the substrate’s position [0011].
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`Availing this data, ensuing alignment operations will be able to accurately locate and position the substrate’s central axis.
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`Given that Ansell intends to align the central axes of the substrate and window section, it would have been obvious to
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`integrate Senda’s measuring technique within Ansell’s processing method to promote this desideratum.
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`Lastly, as shown by Figure 2 of Ansell, the cover (28) circumscribes the frame (44) such that margins obtain on either
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`side of the latter, thereby enabling lateral shifting of the transport carrier given the contingency of a misaligned substrate.
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`Claims 5, 13: 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. Further, Senda identifies ranges of tolerance [0061].
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`Claims 6, 14: Senda determines substrate deviation during a rotation of the carrier [0055].
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`Claims 10-11: The rejection of claim 4, above, substantially addresses these limitations. In addition, regarding the
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`redtation of a “transport mechanism," Figure 1 of Senda limns a transfer robot (3) comprising an arm (2) and an end
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`effector, the latter of which is taken as a functional equivalent of a fork, per the 112(f) analysis, above.
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`

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`Application/Control Number: 14/818,415
`Art Unit: 1716
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`Page 5
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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 11-7230 PM. If
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`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 A MOORE/
`Primary Examiner, Art Unit 1716
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`