UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
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`9
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`APPLICATION NO.
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`F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`13/964,938
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`08/12/2013
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`Donald K. Smith
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`EGQ—005CP3C1
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`1022
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`PROSKAUER ROSE up
`ONE INTERNATIONAL PLACE
`MCCORMACK JASONL
`BOSTON, MA 02110
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`ART UNIT
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`PAPER NUMBER
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`2881
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`NOTIFICATION DATE
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`DELIVERY MODE
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`02/27/2015
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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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`D0cketingPatentB0st0n @pr0skauer.c0m
`oandrews @pr0skauer.c0m
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`PTOL—90A (Rev. 04/07)
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`(cid:36)(cid:54)(cid:48)(cid:47)(cid:3)(cid:20)(cid:20)(cid:20)(cid:19)
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`ASML 1110
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`

`
`Application No.
`13/964,938
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`App|icant(s)
`SMITH, DONALD K.
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`Office Action Summary
`
`AIA (First lnventorto File)
`Art unit
`Examiner
`f\,*f‘)‘”5
`2881
`JASON MCCORMACK
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) 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).
`
`In no event, however, may a reply be timely filed
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`—
`—
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`Status
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`1)IXI Responsive to communication(s) filed on 1/6/2015.
`I:I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)IXI This action is non—final.
`2a)I:I 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)I:I 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 Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IX| Claim(s) 1-4 6 8 9 13-20 26-28 and31—39 is/are pending in the application.
`5a) Of the above claim(s) j is/are withdrawn from consideration.
`6)I:I Claim(s) j is/are allowed.
`7)IZ| Claim(s) 1 4 13-20 26 31-33 and 37-39 is/are rejected.
`8)IZI Claim(s) 2 3 6 8 9 27 28 and 34-36 is/are objected to.
`9)I:I Claim(s) _ are subject to restriction and/or election requirement.
`* 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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`
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`participating intellectual property office for the corresponding application. For more information, please see
`if/index.‘s
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`
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`://\wlIw.uspto. ov/ atents/init events/'
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`or send an inquiry to PPI--lfeedback@usjgjtoxzov.
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`htt
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I 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
`12)I:I 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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`b)I:I Some** c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No. j
`3.I:| 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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`Attach ment(s)
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`1) X Notice of References Cited (PTO-892)
`_
`_
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date 10/21/2015 1/15/2015.
`U.S. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
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`Office Action Summary
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`
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`3) D jntervjew summary (pTo-413)
`Paper No(s)/Mail Date. j
`4) I:I Other‘ :-
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`Part of Paper No./Mail Date 20150128
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`

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`Application/Control Number: 13/964,938
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`Page 2
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`Art Unit: 2881
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`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`DETAILED ACTION
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`Continued Examination Under 37 CFR 1. 114
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`2.
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`1/6/2015 has been entered.
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`Response to Arguments
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`3.
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`Applicant’s arguments with respect to claims 1-4, 6, 8, 9, 13-20, 26-28, and 31-
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`39 have been considered but are moot because the arguments do not apply to any of
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`the references being used in the current rejection.
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`Double Patenting
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`4.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the claims at issue are not identical, but at least
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`one examined application claim is not patentably distinct from the reference claim(s)
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`because the examined application claim is either anticipated by, or would have been
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`

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`Application/Control Number: 13/964,938
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`Page 3
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`Art Unit: 2881
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`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
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`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
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`1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on a nonstatutory
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`double patenting ground provided the reference application or patent either is shown to
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`be commonly owned with this application, or claims an invention made as a result of
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`activities undertaken within the scope of a joint research agreement. A terminal
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`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
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`The USPTO internet Web site contains terminal disclaimer forms which may be
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`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
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`determine what form should be used. A web-based eTerminal Disclaimer may be filled
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`out completely online using web-screens. An eTerminal Disclaimer that meets all
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`requirements is auto-processed and approved immediately upon submission. For more
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`information about eTerminal Disclaimers, refer to
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`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`5.
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`Claims 1, 4, and 31 are rejected on the ground of nonstatutory double patenting
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`as being unpatentable over claim 34 of copending application No. 14/510959. Although
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`the claims at issue are not identical, they are not patentably distinct from each other
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`

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`Application/Control Number: 13/964,938
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`Page 4
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`Art Unit: 2881
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`because it is impossible to practice the invention of copending application No.
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`14/510959 without infringing on claims 1 and 4 of the immediate application.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`6.
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`Claims 13, 37, and 39 are rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claim 19 of copending application No. 14/510959.
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`Although the claims at issue are not identical, they are not patentably distinct from each
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`other because it is impossible to practice the invention of copending application No.
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`14/510959 without infringing on claims 13, 37, and 39 of the immediate application.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`7.
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`Claim 26 is rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1 and/or 15 of copending application No. 14/510959. Although
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`the claims at issue are not identical, they are not patentably distinct from each other
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`because it is impossible to practice the invention of copending application No.
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`14/510959 without infringing on claim 26 of the immediate application.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`8.
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`Claims 32 and 33 are rejected on the ground of nonstatutory double patenting as
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`being unpatentable over claim 33 of copending application No. 14/510959. Although the
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`claims at issue are not identical, they are not patentably distinct from each other
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`

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`Application/Control Number: 13/964,938
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`Page 5
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`Art Unit: 2881
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`because it is impossible to practice the invention of copending application No.
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`14/510959 without infringing on claims 32 and 33 of the immediate application.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`Claim Rejections - 35 USC § 1 12
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`9.
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`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSlON.—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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`The following is a quotation of 35 U.S.C. 112 (pre—AlA), 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.
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`The following is a quotation of 35 U.S.C. 112(f):
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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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`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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`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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`Use of the word “means” (or “step for”) in a claim with functional language
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`creates a rebuttable presumption that the claim element is to be treated in accordance
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`with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that
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`35 U.S.C. 112(f) (pre—AlA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when
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`Application/Control Number: 13/964,938
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`Page 6
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`Art Unit: 2881
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`the function is recited with sufficient structure, material, or acts within the claim itself to
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`entirely perform the recited function.
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`Absence of the word “means” (or “step for”) in a claim creates a rebuttable
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`presumption that the claim element is not to be treated in accordance with 35 U.S.C.
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`112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f)
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`(pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim
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`element recites function but fails to recite sufficiently definite structure, material or acts
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`to perform that function.
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`Claim elements in this application that use the word “means” (or “step for”) are
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`presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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`Similarly, claim elements that do not use the word “means” (or “step for”) are presumed
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`not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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`10.
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`Claims 13-20 and 37-39 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112
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`(pre-AIA), second paragraph, as being indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention. The term “means for allowing the plasma-
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`generated light to exit the pressurized plasma chamber” invokes 35 U.S.C. 112(f).
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`However, the specification does not directly relate the corresponding structure (the
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`specification describes numerous configurations for placement/material composition of
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`a window through which light may traverse). Therefore, the specific structure to be
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`Application/Control Number: 13/964,938
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`Page 7
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`Art Unit: 2881
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`associated with the “means for allowing the plasma generated light to exit the
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`pressurized plasma chamber” must be clearly identified, or the feature canceled from
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`the claims.
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`Allowable Subject Matter
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`11.
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`Claims 2, 3, 6, 8, 9, 14-20, 17, 18, 34, 35, and 36 are objected to as being
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`dependent upon a rejected base claim, but would be allowable if rewritten in
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`independent form including all of the limitations of the base claim and any intervening
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`claims.
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`The prior art fails to disclose at least one substantially continuous laser for
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`providing energy within a wavelength range from about 700 nm to 2000 nm to an
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`ionized gas to sustain a plasma within a chamber having greater than atmospheric
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`pressure to produce a plasma-generated light having wavelengths greater than 50 nm,
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`as claimed in independent claim 1, with similar limitations in independent claims 13, 26,
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`and 32.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JASON MCCORMACK whose telephone number is
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`(571)270-1489. The examiner can normally be reached on Monday — Thursday 7:00am
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`— 3:00pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Robert Kim can be reached on (571)272-2293. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 13/964,938
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`Page 8
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`Art Unit: 2881
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`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.
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`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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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toII—free).
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`If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/JASON MCCORMACK/
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`Examiner, Art Unit 2881
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`/ROBERT K|M/
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`Supervisory Patent Examiner, Art Unit 2881