www.uspto.gov
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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
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`15/700,600
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`09/11/2017
`
`Tetsuhiro IWAI
`
`ISHII-57832
`
`1511
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`11/29/2019
`
`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`SONG MATTHEW]
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`1714
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`11/29/2019
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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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`

`

`017/09 A0170” Summary
`
`Application No.
`15/700,600
`Examiner
`MATTHEWJ SONG
`
`Applicant(s)
`IWAI et al.
`Art Unit
`1714
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`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).
`
`Status
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`1)C] Responsive to communication(s) filed on
`C] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)Cj This action is FINAL.
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`2b)
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`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 25 March 2019; 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) wis/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)_is/are allowed.
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`Claim(ss) 1_0—18 is/are rejected.
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`D Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`E] 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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`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
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`10)|:] The specification is objected to by the Examiner.
`
`is/are: a)D accepted or b)D objected to by the Examiner.
`11):] The drawing(s) filed on
`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)I:I All
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`b)[:l Some**
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`c)[:l None of the:
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`1D 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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`3.8 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)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 09/11/2017.
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20191112
`
`

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`Application/Control Number: 15/700,600
`Art Unit: 1714
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Election/Restriction
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`2.
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
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`l. Claims 1-9, drawn to an apparatus, classified in H01J 5/00.
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`ll. Claims 10-18, drawn to a method, classified in H01 L 21/00.
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`The inventions are independent or distinct, each from the other because:
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`3.
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`Inventions l and II are related as process and apparatus for its practice. The
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`inventions are distinct if it can be shown that either: (1) the process as claimed can be
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`practiced by another and materially different apparatus or by hand, or (2) the apparatus
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`as claimed can be used to practice another and materially different process.
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`(MPEP §
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`806.05(e)).
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`In this case the apparatus as claimed can be used in another and materially
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`different process, such as a non-plasma process, Le. a heat treatment.
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`4.
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`Restriction for examination purposes as indicated is proper because all the
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`inventions listed in this action are independent or distinct for the reasons given above
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`fl there would be a serious search and/or examination burden if restriction were not
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`required because one or more of the following reasons apply:
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`--the inventions require a different field of search (e.g., searching different
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`

`

`Application/Control Number: 15/700,600
`Art Unit: 1714
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`Page 3
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`classes/subclasses or electronic resources, or employing different search strategies or
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`search queries).
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of a invention to be examined even though the requirement
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`may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing
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`the elected invention.
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`The election of an invention may be made with or without traverse. To reserve a
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`right to petition, the election must be made with traverse. If the reply does not distinctly
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`and specifically point out supposed errors in the restriction requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time
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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144. lf claims are added after
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`the election, applicant must indicate which of these claims are readable upon the
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`elected invention.
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`Should applicant traverse on the ground that the inventions are not patentably
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`distinct, applicant should submit evidence or identify such evidence now of record
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`showing the inventions to be obvious variants or clearly admit on the record that this is
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`the case. In either instance, if the examiner finds one of the inventions unpatentable
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`over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C.
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`103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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`5.
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`During a telephone conversation with Mike Garvey on 03/25/2019 a provisional
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`election was made without traverse to prosecute the invention of Group II, claims 10-18.
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`Affirmation of this election must be made by applicant in replying to this Office action.
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`

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`Application/Control Number: 15/700,600
`Art Unit: 1714
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`Page 4
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`Claims 1-9 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b),
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`as being drawn to a non-elected invention.
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`Claim Rejections - 35 USC § 103
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`1.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`2.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this 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, 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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`3.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`

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`Application/Control Number: 15/700,600
`Art Unit: 1714
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`Page 5
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`4.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`5.
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`Claim 10, 12-14 and 16-18 is/are rejected under 35 U.S.C. 103 as being
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`unpatentable over lwai et al (JP 2006-253365), an English computer translation (CT)
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`has been provided, in view of Okita et al (US 2015/0059980).
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`lwai et al teaches a plasma processing method for treatment of a substrate with
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`use of a plasma processing apparatus (Fig 1-2), which comprises a base 2 including an
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`electrode body 6 having a seat surface for setting a substrate 8 held on a conveying
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`carrier (transfer arm 9), and a platform (base 2) for supporting the electrode body 6, and
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`a lid 3 configured to be moved up and down relative to the base, wherein the lid is
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`moved down and appressed on the platform to define a closed space and a plasma is
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`generated within the closed space to implement a plasma processing for the substrate
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`set on the seat surface (CT [0012]); a preparation step for preparing the conveying
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`carrier which holds the substrate (CT [0020], Fig 4a teaches placing substrate on
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`transfer arm and aligning with guide 7); a delivery step for delivering the conveying
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`carrier to a position which is opposed to and away from the seat surface; a setting step
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`for delivering the conveying carrier to a position which is opposed to and away from the
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`

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`Application/Control Number: 15/700,600
`Art Unit: 1714
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`Page 6
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`seat surface (CT [0021]. Fig 4b teaches arm moved into chamber and lowering wafer
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`onto guide portion 7); and a closing step for defining a closed space by lowering the lid
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`after the setting step (CT [0022]-[0023]; Fig 5A).
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`lwai does not teach the conveying carrier has a holding sheet and a frame
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`provided around a periphery of the holding sheet; and the frame is covered by a cover.
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`In a plasma processing method and apparatus, Okita et al teaches a plasma
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`processing method for treatment of a substrate with use of a plasma processing
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`apparatus 1 which comprises a base 17 including an electrode body 15,16b having a
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`seat surface (stage 11 including chuck 16A) for setting a substrate 2 held on a
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`conveying carrier 5, wherein the conveying carrier has a holding sheet 6 and a frame 7
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`provided around a periphery of the holding sheet and a platform (base 2) for supporting
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`the electrode body 6 (Figs 1-2; [0020]-[0053]). Okita et al also teaches the frame 7 is
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`covered by the cover 28 (Figs 1-2). Okita et al teaches a using the carrier, frame and
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`cover to etch the entire wafer and reducing thermal damage ([0044], [0053]).
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`It would have been obvious to one of ordinary skill in the art at the time of filing to
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`modify lwai et al by using the carrier with a holding sheet and frame and cover, as
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`taught by Okita et al, to reduce thermal damage.
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`Referring to claim 12, the combination of lwai et al and Okita et al teaches the
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`guide includes a first surface opposite to the lid, a second surface opposite to the
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`platform, and a guide surface facing to a side surface of the electrode body, and
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`wherein at least a portion of the guide surface is closer to the lid than the seat surface
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`when the closed space is not defined (Iwai Fig 1 and 3 show guide 7 having a stepped
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`

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`Application/Control Number: 15/700,600
`Art Unit: 1714
`
`Page 7
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`surface with a lower portion to support a wafer and an upper portion to support side of
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`the wafer).
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`Referring to claims 12-18, these are apparatus limitation without any process
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`steps. Apparatus limitations, unless they affect the process in a manipulative sense,
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`may have little weight in process claims. In re Tarczy-Hornoch 158 USPQ 141, 150
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`(CCPA 1968).
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`Referring to claim 13, the combination of lwai et al and Okita et al teaches the
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`frame (Okita frame 7) has an outer diameter greater than that of the seat surface (,
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`wherein the guide surface includes a guiding region provided along a circumference of
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`the frame and a supporting surface for supporting the frame (lwai guide 7 supports
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`wafer which would be supported by the carrier and frame of Okita), and wherein at least
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`a portion of the guiding region is closer to the lid than the seat region when the closed
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`space is not defined (lwai teaches stepped guide 7 in Fig 1-2).
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`Referring to claim 14, the combination of lwai et al and Okita et al teaches an
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`guide with inclined surface (lwai teaches stepped guide 7 in Fig 1-2).
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`Referring to claim 16-18, the combination of lwai et al and Okita et al teaches a
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`cover having similar shape as the frame (Okita Fig 1), and the cover not in contact when
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`the space is open (Okita Fig 1), and the cover in contact when the process is closed
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`(Okita Fig 2).
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`6.
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`Claim 11 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`lwai et al (JP 2006-253365), an English computer translation (CT) has been provided, in
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`

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`Application/Control Number: 15/700,600
`Art Unit: 1714
`
`Page 8
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`view of Okita et al (US 2015/0059980), as applied to claim 10 above, and further in view
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`of Hirakawa (US 2012/032900).
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`The combination of lwai et al and Okita et al teaches all of the limitations of claim
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`11, as discussed above, except the cover is connected with the lid through a first
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`biasing means.
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`In a substrate processing apparatus, Hirakawa teaches a cover 31 attached to a
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`lid 11 by a biasing means (bellows 33) for moving the cover 31 in a vertical direction,
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`and guide members 42 attached to the lid 11 by bias means 40 (Figs 1-2; [0043]—[0056])
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`It would have been obvious to one of ordinary skill in the art at the time of filing to
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`modify the combination of lwai et al and Okita et al by connecting the cover to the lid
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`through a first biasing means, as taught by Hirakawa, to vertically move the lid and the
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`cover simultaneously.
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`Referring to claim 15, the combination of lwai et al, Okita et al and Hirakawa
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`teaches a second bias means connected to the guide with the lid (Hirakawa teaches the
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`guide 42 connected to lid 11 by bias means 41).
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`Conclusion
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`7.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MATTHEW J SONG whose telephone number is
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`(571)272-1468. The examiner can normally be reached on Monday-Friday 10AM-6PM.
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`

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`Application/Control Number: 15/700,600
`Art Unit: 1714
`
`Page 9
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Michael Kornakov can be reached on 571-272—1303. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
`
`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`
`MATTHEW J. SONG
`
`Examiner
`
`Art Unit 1714
`
`/MATTHEW J SONG/
`
`Primary Examiner, Art Unit 1714
`
`