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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 28 July 2026 has been entered.
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.
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Claims 1-9 and 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 11,886,120 in view of Chamberlin et al. (US 4,144,211).
Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 9,12-15, 17-18, and 20 of US’120 encompass all the subject matter of Claims 1, 14, and 19 of the current application, including multiple iterations of flowing precursor, oxidant (first precursor and oxidant followed by second precursor and oxidant), and R is an alkyl (either linear or branched) with x=0-6,, y=0-6 (i.e. X-4). Claims 12 and 17 recite “pseudo halide”; the claims fail to expressly recite specific members of that group. However, CN, CNO, SCN, and SeCN are common and typical pseudohalides. Chamberlin et al. (US 4,144,211), published in 1979, provides evidence that CN, SCN, OCN, ONC are the most common pseudohalides (col. 3, lines 22-27). Thus, it would have been obvious to consider the recited “pseudo halide” in these claims to include the most common members of that group - - CN, SCN, OCN, ONC.
Regarding Claims 2,3, and 19, US’120 fails to teach purging the chamber. Purging is a conventional step to clear a chamber of a precursor or other reactant gas before introducing another or between the processing of one substrate and another.
Regarding Claim 7, a change in order of flowing reactants is a prima facie obvious change in order in which two reactants are required to form an metal oxo complex.
Regarding Claims 8 and 20, a plasma is ignited in US’120, Claims 5, 11, 16, 19, and 20.
Regarding Claims 12 and 19, O2 and H2O are conventional oxidants for vapor deposition.
Regarding Claims 9 and 13, rotating a substrate and/or placing a substrate in different areas of a chamber is conventional to achieve uniform coating.
Regarding Claim 14, see Claim 11 of US’120.
Regarding Claim 15, US’120 claims a plasma treatment and multiple iterations of a deposition cycle; Claim 15 does not define a first iteration (any iteration can be considered a first iteration. Also compare Claim 16 which restarts iterations). It would have been obvious to treat the substrate with an initial plasma treatment prior to initiating a first iteration of the deposition cycle as a prima facie obvious change in order of steps or to treat a photoresist layer as in Claims 11 and 20 of the reference before an iteration (“first iteration” of further deposition). MPEP 2144.04.
Claims 1-9, 11-14, and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 11-16 of U.S. Patent No. 12,618,153 in view of Meyers (US 2017/0102612).
Application
US’153
Claim 1: A method of forming a metal-oxo photoresist on a substrate, comprising:
a) flowing a metal-comprising precursor into a chamber comprising the substrate; and
wherein the metal- comprising precursor comprises a general formula of MRxLy, where X = 1, 2, or 3 and Y = 4-X, and wherein M is a metal
b) flowing an oxidant into the chamber, wherein the oxidant and the metal-comprising precursor react to form the metal-oxo photoresist,
R is a linear alkyl, a branched alkyl, or a cyclic alkyl
L is CN, CNO, SCN, or SeCN.
Claim 11: A method of forming a metal-oxo photoresist, comprising:
flowing a precursor gas into a chamber, wherein the precursor gas comprises a general formula of MR.sub.xL.sub.n-x, wherein M is a metal, R is a reactive group, and L is a ligand, and wherein x is equal to 1-4, and n is equal to 1-5 (although the set of values for X and n are not identical, there is obvious overlap and constraints by the chemical formula to require n to be dependent on the choice of x);
flowing an oxidant into the chamber; and depositing the metal-oxo photoresist onto a substrate in the chamber with a dry deposition process.
Claim 13: R is methyl or ethyl, “functionalized” with an H
Claim 15
Claims 2-3
Purging steps conventional to clear reactants before providing additional reactants or between cycles before depositing additional layers
Claim 4
Conventional oxidants contain more than one constituent (e.g. O2, H2O)
Claim 5
Obvious to substitute methyl for ethyl, for example, in at least one other cycle
Claim 6
Obvious to use any of ozone, oxygen, or water, for example, in one and a different one in another with reasonable expectation of oxidizing
Claim 7
Prima facie reordering of adding reactants (MPEP 2144.04, order of adding ingredients)
Claim 8
Claim 5 and plasma enhanced ALD deposition (PEALD) is conventional and obvious
Claim 9
Rotating a substrate and/or placing a substrate in different areas of a chamber is conventional to achieve uniform coating.
Claim 11
Claim 16
Claim 12
Oxygen gas (O2) is a conventional oxidant gas for vapor deposition
Claim 13
Rotating a substrate and/or placing a substrate in different areas of a chamber is conventional to achieve uniform coating.
Claim 14
Plasma treatment is conventional. See, also, US’612 [0060,0098]
Claim 16
Obvious to restart iterations to deposit another layer after the first layer is deposited or on another substrate, where a final plasma treatment of each layer is obvious. See, for example, US’612 [0060,0098]
Claim 17
Obvious to treat each layer of an obvious plurality of layers (for patterning of multiple layers) where a final plasma treatment of each layer is obvious. See, for example, US’612 [0060,0098]
Claim 18
Prima facie obvious duplication of parts
Claim 19
See rejection of Claim 1 above
Purging steps conventional to clear reactants before providing additional reactants or between cycles before depositing additional layers (see, also, US’612, Claim 5); Oxygen gas (O2) is a conventional oxidant gas for vapor deposition. (see, also, US’612, [0077])
Claim 20
Claim 5 and plasma enhanced ALD deposition (PEALD) is conventional and obvious
The claims of US’153 fail to require a step of “repeating a deposition cycle.” However, it is prima facie obvious to repeat a step or series of steps. Additionally, Meyers et al. (US’612) is analogous prior art in the field of teach a method of forming a metal-oxo photoresist [0009,0029,0034] on a substrate, comprising: repeating a deposition cycle to deposit multiple layers of patterned materials [0033,0005,0100], wherein each iteration of the deposition cycle comprises: a) flowing a metal-comprising precursor into a chamber comprising the substrate; and b) flowing an oxidant (water) into the chamber, wherein the oxidant and the metal-comprising precursor react to form the metal-oxo photoresist, wherein the metal-comprising precursor comprises a general formula of MRxLy, where X = 0, 1, 2, 3 or 4 and Y = 4-X, and wherein M is a metal (e.g. Sn, hafnium, zirconium, tungsten, tantalum, cobalt, nickel, indium, antimony, bismuth, tellurium), R is a linear or a branched alkyl or alkyl amino (hydrocarbyl, e.g. tetrakis(dialkylamido)tin, Hf(NMe)4) [0058,0032,0034,0047,0143-0145]) or a chloride [0080]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the claimed process of US’153 by repeating the deposition cycle a) because it is prima facie obvious to repeat a series of steps and b) because US’612 suggests it would have been obvious to repeat the series of steps in a cycle to deposit multiple patterned layers.
Response to Arguments
Applicant’s amendment to the claims, filed 28 July 2026, with respect to the rejections of Claims 1-9 and 11-20 under 35 USC 102 and 103 have been fully considered and are persuasive. The rejections of Claims 1-9 and 11-20 under 35 USC 102 and 103 have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the obviously similar claims of US 12,618,153 in view of Meyers (US 2017/0102612) and of US 11,886,120 in view of Chamberlin et al. (US 4,144,211), which necessitate non-statutory double patenting rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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