DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/7/2025 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al (US 8,992,743) in view of Ishihara (US 2016/0027623) and Wang et al (US 10,431,440).
With respect to claim 1, Yamaguchi discloses a sputter apparatus (i.e. film forming apparatus) capable of forming a metal oxide on a substrate (Abstract; col. 1, lines 18-38; col. 9, lines 5-14), wherein figs. 1-2 depicts the film forming apparatus [1] comprises: a vacuum chamber (e.g. claimed “processing chamber”) [2] including a top portion (i.e. claimed “lid portion”) that has a truncated cone shape and a top surface at a central portion of the lid portion, wherein the top surface of the lid portion having a first height from a bottom surface of the processing chamber [2] (col. 3, lines 44-58); a substrate holder [7] holding the substrate [10] in the processing chamber [2] (col. 3, lines 63-67; col. 5, lines 5-20); a target holder (i.e. claimed “target electrode”) [6] above the substrate holder [7] and holding a target [4] of metal in a target arrangement space and supplied with power from a power supply [12] to the target [4] (col. 1, lines 26-31; col. 3, lines 59-62; col. 5, lines 9-26), figs. 1-2 showing the target arrangement space is at a second height from the bottom surface of the processing chamber [2] that is less than the first height; a gas introduction system [161] (shown in fig. 8) configured for supplying a reactive gas of oxygen (e.g. claimed “oxidizing gas introduction mechanism” [161]) configured to supply an oxygen gas (e.g. claimed “oxidizing gas”) to the substrate [10] on the substrate holder [7] (fig. 8; col. 9, lines 10-14 and 31-67; col. 10, lines 1-10); a “cathode shutter” (i.e. claimed “partition unit”) [14] between the target arrangement space where the target [4] is disposed and a processing space where the substrate [10] is disposed, figs. 1-2 showing the processing space having a third height from the bottom surface of the processing chamber [2] that is less than each of the first and second heights, wherein the partition unit [14] has first and second partition plates that both have a truncated cone shape that corresponds to a shape of the lid portion, and each of the first and second partition plates have an opening which communicates the target arrangement space to the processing space (col. 3, lines 59-67; col. 4, lines 1-3 and 8-25; col. 5, lines 65-67; col. 6, lines 1-2); an opening/closing mechanism configured to put the partition unit [14] to an open state or a closed state, wherein the opening/closing mechanism is configured to locate the openings of the first and second partition plates at a position corresponding to the target [4] as shown in fig. 2 (col. 5, lines 65-67; col. 6, lines 1-2); a gas supply system (i.e. claimed “gas supply unit”) [53] configured to supply an inert gas to the processing chamber [2], wherein the gas supply unit [53] includes a gas introduction port (i.e. claimed “gas introducing member”) [35] in the top surface of the central portion of the lid portion of the processing chamber [2] (col. 4, lines 21-25); and the target electrode [6] is attached to the lid portion of the processing chamber [2], wherein the partition unit [14] is disposed between the lid portion with the target electrode [6] and the substrate holder [7] with substrate [10] and spaced apart from each of them, and the gas supply unit [35] provided on the top surface of the lid portion of the processing chamber [2] is capable of supplying the inert gas to the target arrangement space provided between the lid portion that includes the target electrode [6] and the partition unit [14] (col. 3, lines 59-67; col. 4, lines 1-3, 21-25, and 56-65; col. 8, lines 6-18; col. 9, lines 5-24). Yamaguchi further discloses the target [4] is made of a metal (col. 1, lines 26-38), wherein a constituent metal of particles is sputtered (i.e. claimed “discharged”) as metal particles from the target [4] when applied with the power from the power supply [12] to deposit a metal film onto the substrate [10] (col. 1, lines 26-38; col. 5, lines 5-14), wherein the metal film is then oxidized via the oxygen gas introduction mechanism [161] (9, lines 10-14 and 31-67; col.10, lines 1-10). Yamaguchi also discloses a control unit [100] configured to individually control operating the power supply [12], operating the gas supply unit [53] connected to an Ar gas source [54], and operating the oxygen gas introduction mechanism [161] (figs. 6-7; col. 4, lines 21-25; col. 5, lines 9-15; col. 7, lines 55-67; col. 8, lines 38 col. 10, lines 1-43).
However Yamaguchi is limited in that the partition unit [14] comprising the second partition plate with the opening that is capable of moving is not suggested.
Ishihara teaches in fig. 1 a film forming apparatus [100] comprising a processing chamber [101], a substrate holder [103] holding a substrate [S] in the processing chamber [101], a target holder (i.e. target electrode) [120] above the substrate holder [103] and holding a target (i.e. right target) [110] and supplied with power from a power supply, an Ar gas supply unit (i.e. gas supply unit) [22] to supply an inert gas to a target arrangement comprising the target [110], and a shutter unit (i.e. partition unit) [104] comprising a first shutter (i.e. first partition plate) [104a] with an opening, wherein the partition unit [104] is disposed between the target arrangement having a target arrangement space comprising the target [110] and a processing space where the substrate [S] is disposed (Abstract; para 0014-0015 and 0018), similar to the film forming apparatus shown in figs. 1-2 of Yamaguchi. Ishihara also depicts in fig. 1 the partition unit [104] further comprises a second shutter (i.e. second partition plate) [104b] with an opening also disposed between the target arrangement space and the processing space, wherein the first and second partition plates [104a],[104b] overlap with each other in a vertical direction (para 0015), and wherein the partition unit [104] has a rotating mechanism (i.e. opening/closing mechanism) [118] configured to independently rotate each of the first and second partition plates [104a],[104b] (para 0015), resulting in the opening/closing mechanism [118] configured to locate both openings of the first and second partition plates [104a],[104b] at a position corresponding (e.g. in front of) the target (i.e. right target) [110] in an open state, and to also locate both openings the first and second partition plates [104a],[104b] at a position that does not correspond (e.g. not in front of) the target (i.e. right target) [110] in a closed state. Ishihara cites the advantage of the partition unit [104] comprising first and second partition plates [104a],[104b] as selectively increasing pressure in a space facing a target for ignition of plasma (para 0004 and 0020).
It would have been obvious to one of ordinary skill in the art to incorporate the second partition plate with the opening taught by Ishihara into the partition unit of Yamaguchi to gain the advantage of selectively increasing pressure in a space facing a target for ignition of plasma.
However the combination of Yamaguchi and Ishihara is further limited in that “an elevating mechanism configured to vertically move up and down the partition unit” is not suggested.
Wang teaches in fig. 1 a film forming apparatus comprising a processing chamber [100], a substrate holder [132] holding a substrate [136] in the processing chamber [100], a cathode (i.e. target electrode) [102] above the substrate holder [136] and holding a target (i.e. right target) [106] and supplied with power from a power supply [112], flowing oxygen gas (i.e. oxidizing gas) into the processing chamber [100], and a rotatable shield (i.e. partition unit) [116] with a hole or opening, wherein the partition unit [116] is disposed between a target arrangement having a target arrangement space comprising the target [106] and a processing space where the substrate [136] is disposed (Abstract; col. 3, lines 29-67; col. 4, lines 1-7 and 43-57), similar to the film forming apparatus shown in each of Yamaguchi’s figs. 1-2 and Ishihara’s fig. 1. Wang further teaches the partition unit [116] is moved “up and down” (i.e. vertically) via actuator [124] as indicated via arrow [128] with respect to the target [106] (col. 4, lines 8-12). Wang cites the advantages of moving the partition unit [116] as minimizing sputtered materials in a dark space surrounding the target [106], thereby avoiding contamination of other targets (col. 4, lines 11-22).
It would have been obvious to one of ordinary skill in the art to move the partition unit of the combination of references in the up and down vertically as taught by Wang to gain the advantages of minimizing sputtered materials in a dark space surrounding the target and avoiding contamination of other targets.
In summary, the combination of references Yamaguchi, Ishihara, and Wang has: Yamaguchi teaching in figs. 1-2 the partition unit [14] comprising the first partition plate with the opening (col. 4, lines 8-14; col. 5, lines 65-67; col. 6, lines 1-2), incorporated with the second partition plate [104b] and opening of Ishihara in fig. 1 (para 0015), with the first and second partition plates controlled via the opening/closing mechanism of Yamaguchi. Thus the partition unit of the combination of references is configured to have the openings of the first and second partition plates both closed to separate the target arrangement space and the processing space in the closed state when the oxidizing gas of Yamaguchi is introduced. In addition Yamaguchi further depicts in figs. 1-2 and 8 that the gas introducing member [35] of the gas supply unit [53], the target arrangement space, and the processing space are disposed such that when the partition unit [14] comprising the first partition plate (and second partition plate [104b] from Ishihara) is in the closed state, the inert gas from the gas introducing member [35] flows from the first height to the processing space at the third height only through the target arrangement space at the second height. Yamaguchi further teaches the control unit [100] configured to individually control operating the power supply [12], operating the gas supply unit [53] connected to the Ar gas source [54], and operating the oxygen gas introduction mechanism [161] (figs. 6-7; col. 4, lines 21-25; col. 5, lines 9-15; col. 7, lines 55-67; col. 8, lines 38 col. 10, lines 1-43), and Wang teaching the partition unit [116] (of Yamaguchi and Ishihara) is movable vertically up and down with respect to the target [106] (col. 3, lines 8-12); the claim requirement of “when the oxidizing gas is introduced, the elevating mechanism moves the partition unit to narrow a path through which the oxidizing gas reaches the target, and the gas supply unit supplies the inert gas to the target arrangement space with the partition unit in the closed state so that a pressure in the target arrangement space is positive with respect to a pressure in a processing space where the substrate is disposed” relates to the intended functioning of the claimed film forming apparatus, with the film forming apparatus [1] of the combination of Yamaguchi, Ishihara, and Wang fully capable of functioning in the claimed manner via the control unit [100] of Yamaguchi simply operating to having both the gas supply unit [53] and the oxygen gas introduction mechanism [161] ON at the same time in the film forming apparatus [1] when the partition unit [14] is moved vertically towards the target [4] as taught by Wang.
With respect to claim 2, the claim requirement of “the partition unit is configured to be in the open state when the metal film is deposited” relates to the intended functioning of the claimed partition unit [14], with the partition unit [14] of Yamaguchi (with second partition plate [104b] of Ishihara) fully capable of functioning in the claimed manner via the control unit [100] as taught at figs. 6-7 and col. 7, lines 55-67; col. 8, lines 1-38.
With respect to claim 3, modified Yamaguchi further depicts in figs. 8 the oxygen gas introduction mechanism [161] has a “substrate shutter” [19] (i.e. claimed “head portion”) [43] that is movable between a shielding position to cover the substrate [10] as shown in figs. 1-2 (e.g. an oxidation treatment position covering the substrate [10) in the processing space, and a retracted position into a “shutter accommodation unit” [23] (e.g. a retreat position not covering the substrate [10]) distant from the processing space as shown in fig. 8, wherein the oxidizing gas is fully capable of being supplied to the substrate [10] when the head portion [19] is located at the oxidation treatment position as shown in figs. 1-2.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/ patents/apply/applying-online/eterminal-disclaimer
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,309,005 in view of WO 2012/033198 and US 10,431,440. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the US Patent are narrower in scope than the claims of the current invention, and encompass the subject matter of the current claims, with WO 2012/033198 teaching in figs. 1-3 to add a shutter mechanism (i.e. partition unit) [M] in a processing chamber having a truncated cone shape (similar to the shape of processing chamber of U.S. Patent No. 10,309,005 defined in fig. 1) with a gas introducing member [G] in a top surface of a lid portion (also similar to the gas supply of U.S. Patent No. 10,309,005 defined in fig. 1), the partition unit [M] comprising a first partition plate [20] with an opening [22] and a second partition plate [30] with an opening [33], both the first and second partition plates [20],[30] having a truncated cone shape that corresponds to the truncated cone shape of the processing chamber, the partition unit [M] configured to be closed via opening/closing mechanism [23] that rotates both openings [22],[30] to separate a target arrangement space with target [13] from a processing space with substrate [S] to control film thickness distribution; US 10,431,440 teaches the partition unit [M] to be configured for moving vertically up and down with respect to the target [13] minimizes sputtered materials in a dark space surrounding the target [13] and avoids contamination of other targets. Therefore, any reference meeting the limitations set forth in claims 1-10 of the US Patent in view of WO 2012/033198 and US 10,431,440 would also meet the requirements set forth in claims 1-3 of the current invention.
Response to Arguments
Applicant’s Remarks on p. 19-23 filed 11/7/2025 are addressed below.
112 Rejections
Claim 1 has been amended by changing “moving mechanism” to “elevating mechanism”; the previous 112(a) and 112(b) rejections have been withdrawn.
Claim 1 has been amended to clarify “the moving mechanism moves the partition unit close to the target” as “the elevating mechanism raises the partition unit to narrow a path through which oxidizing gas reaches the target”; the previous 112(b) has been withdrawn.
Claim 1 has been amended to clarify “them” as “the lid portion an the substrate holder”; the previous 112(b) has been withdrawn.
103 Rejections
Applicant’s arguments on p. 20-22 with respect to amended claim 1 have been considered but are moot because the arguments do not apply to the new combination of references Yamaguchi, Ishihara, and Wang being applied in the current rejection.
Double Patenting Rejections
Applicant’s arguments on p. 22-23 with respect to claims 1-10 have been considered but are moot because the arguments do not apply to the new combination of references Yamaguchi, Ishihara, and Wang being applied in the current rejection.
Conclusion
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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