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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`15/795,368
`
`10/27/2017
`
`TETSUHIRO IWAI
`
`PIPMM-58313
`
`3376
`
`759°
`52°“
`PEARNE & GORDON LLP
`
`10W”
`
`1801 EAST 9TH STREET
`SUITE 1200
`
`CLEVELAND, OH 44114-3108
`
`HALL JR~ TYRONE VINCENT
`
`3723
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`10/17/2019
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`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)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/795,368
`Examiner
`TYRONE v HALL JR
`
`Applicant(s)
`IWAI et al.
`Art Unit
`3723
`
`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). Responsive to communication(s) filed on 9/12/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D 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
`; 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—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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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`E] Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* 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
`
`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 10/27/2017 is/are: a). accepted or b)C] 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).
`
`Priority under 35 U.S.C. § 119
`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)|:] Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.|:] Certified copies of the priority documents have been received in Application No.
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`3D 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)).
`
`** 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)
`
`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_
`U.S. Patent and Trademark Office
`
`3) C] 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 20191011
`
`

`

`Application/Control Number: 15/795,368
`Art Unit: 3723
`
`Page 2
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`DETAILED ACTION
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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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`Election/Restrictions
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`2.
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`Applicant’s election without traverse of invention l in the reply filed on September
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`12, 2019 is acknowledged.
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`3.
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`Claims 9-16 are withdrawn from further consideration pursuant to 37 CFR
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`1.142(b) as being drawn to a nonelected invention, there being no allowable generic or
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`linking claim. Election was made without traverse in the reply filed on September 12,
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`2019.
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`Claim Rejections - 35 USC § 1 12
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`4.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(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.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`5.
`
`Claims 4--6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention.
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`6.
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`Claim 4 recites the limitation "the side of the lid" in line 4. There is insufficient
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`antecedent basis for this limitation in the claim.
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`7.
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`The following is a quotation of 35 U.S.C. 112(d):
`
`

`

`Application/Control Number: 15/795,368
`Art Unit: 3723
`
`Page 3
`
`(d) REFERENCE IN DEPENDENT FORMS—Subject to subsection (e), a claim in dependent
`form shall contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed. A claim in dependent form shall be construed to
`incorporate by reference all the limitations of the claim to which it refers.
`
`The following is a quotation of pre-AlA 35 U.S.C. 112, fourth paragraph:
`
`Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim
`in dependent form shall contain a reference to a claim previously set forth and then specify a
`further limitation of the subject matter claimed. A claim in dependent form shall be construed
`to incorporate by reference all the limitations of the claim to which it refers.
`
`8.
`
`Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th
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`paragraph, as being of improper dependent form for failing to further limit the subject
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`matter of the claim upon which it depends, or for failing to include all the limitations of
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`the claim upon which it depends. Claim 8 simply recites functional language drawn to
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`the use of the plasma processing apparatus but does not further recite structural
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`limitations to the claimed apparatus to further limit the claim. Applicant may cancel the
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`claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the
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`claim(s) in independent form, or present a sufficient showing that the dependent
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`claim(s) complies with the statutory requirements.
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`Claim Rejections - 35 USC § 102
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`9.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or othenNise available to the public before the effective filing date of the claimed
`invention.
`
`10.
`
`Claim(s) 1-3 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Korenaga JP 2013-134885A.
`
`

`

`Application/Control Number: 15/795,368
`Art Unit: 3723
`
`Page 4
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`11.
`
`Korenaga discloses a plasma processing apparatus comprising: a base (111)
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`that has an electrode body (102) provided with a placing surface (top surface of 102) on
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`which a substrate (200) is placed and a pedestal (top surface of 1 11) which supports
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`the electrode body; a lid (112) that is lift-able and lower-able (via moving means 105)
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`with respect to the base and forms a sealed space (vacuum space) for performing
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`plasma processing on the substrate placed on the placing surface by being lowered to
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`come into close contact with the pedestal; a cover (131) that is provided integrally with
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`the lid and covers at least a part of an outer edge of the substrate placed on the placing
`
`surface when the sealed space is formed (see Fig. 8); and a guide (132) that is
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`disposed around the electrode body and is provided with a first main surface (top
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`surface of 132) which is opposite to the lid (see Figs. 7-8), a second main surface
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`(bottom surface of 132) which is opposite to the pedestal (see Figs. 7-8), and a guide
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`surface (inner side surface of 132) which faces a side surface of the electrode body
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`(see Figs. 7-8); wherein, when the sealed space is formed, the cover abuts on the first
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`main surface and at least one of the cover and the guide surface is opposite to a side
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`surface of the substrate (see Fig. 8), and wherein, when the sealed space is not formed,
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`the cover and the first main surface are separated from each other and at least a part of
`
`the guide surface protrudes from the placing surface toward a side of the lid (see Fig.
`
`7).
`
`

`

`Application/Control Number: 15/795,368
`Art Unit: 3723
`
`Page 5
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`12.
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`13.
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`As for claim 2, Korenaga discloses wherein a first biasing part (152) connects the
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`cover (112) with the lid (131). The biasing part (152) biases the lid toward the linkage
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`arm (151).
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`14.
`
`As for claim 3, Korenaga discloses wherein a second biasing part (152) is
`
`interposed between the guide (132) and the pedestal (111) and enables the guide to be
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`lifted and lowered with respect to the electrode body (see Figs. 7-8); and a linkage (151)
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`that is provided integrally with the lid (131) and pushes down the guide from a lifting
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`position to a lowered position (see Figs. 7-8), wherein, when the sealed space is
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`formed, the guide is pushed down to the lowered position by the linkage (Fig. 8).
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`15.
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`As for claim 7, Korenaga discloses wherein the cover (112) is a frame-shaped
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`body corresponding to the outer edge of the substrate (200, see Figs. 1-2).
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`16.
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`As for claim 8, Korenaga discloses wherein when the sealed space is formed, the
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`cover is capable of not coming into contact with the substrate (see Figs. 4 and 8).
`
`

`

`Application/Control Number: 15/795,368
`Art Unit: 3723
`
`
`
`
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`Allowable Subject Matter
`
`18.
`
`Claims 4-6 would be allowable if rewritten to overcome the rejection(s) under 35
`
`U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action
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`and to include all of the limitations of the base claim and any intervening claims.
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`Conclusion
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`19.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to TYRONE V HALL JR whose telephone number is
`
`(571)270-5948. The examiner can normally be reached on Mon-Fri. 7:30am-3:30pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Orlando E. Aviles can be reached on 571-270-5531. The fax phone number
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`

`

`Application/Control Number: 15/795,368
`Art Unit: 3723
`
`Page 7
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/TYRONE V HALL JR/
`
`Primary Examiner, Art Unit 3723
`
`