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 .
Status of Application
Claims 1, 2, 4-9, 12-16 and 18-23 are pending and presented for examination.
Response to Arguments
Applicant’s amendment to incorporate allowable subject matter into independent claims 1 and 15 has overcome the rejections of claims 1, 2, 4-9, 12-14, 16, 18-21 and 23.
However, claim 22 remains rejected for the reasons as set forth below. Claim 22 is a product-by-process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim"). In this case, as outlined below, the product of the prior art is the same as the claimed product even if made using a different precursor. Therefore, claim 22 remains rejected over the prior art of record.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
1. Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blanquart et al. (U.S. PGPUB No. 2020/0013612) in view of Mallick et al. (U.S. PGPUB No. 2014/0045342) and Manna et al. (U.S. PGPUB No. 2021/0028055).
Regarding claim 22, Blanquart teaches a structure (Blanquart at claim 19) and a process for preparing the structure (Blanquart at claim 1), wherein the process comprises: providing a substrate in a reaction chamber (claim 1 and Figure 1A); and depositing a material on a surface of the substrate by flowing a flowable precursor (Blanquart at claim 1), such as mesitylene (0069), which includes a benzene cyclic structure (0069), and exposing the precursor to a plasma to form deposited material which fills the recess (Blanquart at claim 1) and note that the plasma is not shut down immediately upon filling and is continued for at least some amount of time after filling the recess (consistent with a post-deposition plasma treatment step), the depositing and post-deposition yielding a flowable film that flows within the recess (Blanquart at claim 1). Blanquart teaches the deposited material comprises carbon (0117), the depositing temperature being 85 ºC (Table 5, 0117) and a pressure being 1100 Pa (Table 5, 0117). Blanquart teaches that the step of depositing can be a continuous process and not cyclical (0081). Blanquart further teaches the inclusion of a nitrogen carrier gas for the plasma treatment (0030). Blanquart fails to teach the post-deposition treatment performed after the deposited material solidifies and the post-deposition treatment causing the deposited material to reflow such that it reduces an amount of voids in the deposited material. Blanquart further fails to teach the precursor including a ketone functional group, a hydroxy group, and a methyl group. Finally, Blanquart fails to teach the post-deposition treatment temperature higher than the temperature during depositing.
First, Mallick teaches a similar process for depositing a flowable carbon containing layer (abstract) utilizing plasma (abstract) with a precursor, such as methane (0019), mesitylene (0019, having a benzene cyclic structure) and/or ketones and phenols (0019). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Blanquart’s process by including and/or substituting Mallick’s precursor for Blanquart’s precursor. One would have been motivated to make this substitution as one could have substituted one known precursor for another with a reasonable expectation of success (note that Mallick and Blanquart’s similar use of the precursor for depositing a flowable plasma deposited carbon layer), and the predictable result of providing a method for filling a recess without leaving any voids or gaps. Furthermore, even though Blanquart in view of Mallick fail to teach the identical precursor material, the Examiner notes that the final product will be identical as the precursor is decomposed to form a deposited material comprising carbon, silicon oxide, silicon nitride and silicon carbide.
Second, Manna teaches a process for filling a recess on a surface of a substrate (abstract and Figures 1 and 3A) comprising: providing a substrate in a reaction chamber (0040); flowing a flowable precursor into the reaction chamber (0034); and exposing the precursor to a plasma (0037) at a temperature range of 150-550 ºC to form a solid deposited material including a void (0031 and Figure 3C) without using a cyclical process (0037); after depositing the material to fill the recess performing a post-deposition ion implantation process to cause the deposited material to reflow within the recess and fill the void at a temperature less than 500 ºC (0045). Manna teaches that the deposited material can comprise carbon or silicon oxide (0043). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Blanquart’s process by additionally performing an ion implantation process at a temperature higher than the depositing temperature (note that Manna teaches a temperature up to 500 ºC) after Blanquart’s deposited material solidifies to cause the material to reflow and reduce the amount of any voids or seams as disclosed by Manna. One would have been motivated to make this modification to ensure that any seams or voids are closed thereby providing an improved final product. The structure prepared by the combination of Blanquart in view of Mallick and Manna is essentially identical to the claimed structure. Therefore, the structure of claim 22 is obvious over the prior art.
Allowable Subject Matter
2. Claims 1, 2, 4-9, 12-16, 18-21 and 23 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to teach or suggest the methods of claims 1 and 15. In particular, as previously noted, the prior art fails to teach the process wherein the precursor comprises either a carbonyl functional group bonded to the cyclic structure and a carbon atom or a cyclic structure bonded to the ketone functional group. Therefore, claims 1 and 15 are allowed. Claims 2, 4-9, 12-14, 16, 18-21 and 23 depend from claim 1 or 15 and are allowed for the same reasons.
Conclusion
Claims 1, 2, 4-9, 12-16 and 18-23 are pending.
Claims 1, 2, 4-9, 12-16, 18-21 and 23 are allowed.
Claim 22 is rejected.
THIS ACTION IS MADE FINAL. 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 ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT S WALTERS JR/
May 11, 2026Primary Examiner, Art Unit 1717
Prosecution Insights