DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 7, 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the amendment filed on April 7, 2026, claims 1, 8 – 9, 13, 20 are pending. Claims 1, 20 have been amended and claims 2 – 7, 10 – 12, 14 – 19 have been canceled.
Claim Rejections - 35 USC § 112
As a preliminary matter, the Examiner notes that the claims have been substantially amended to require (collectively, the limitations are hereinafter “Limitation I”):
the forming the SiCN seed layer consists of supplying a hexachlorodisilane (HCD) gas to the substrate, supplying a C2H4 gas to the substrate, and supplying an NH3 gas to the substrate [hereinafter “Limitation A”],
the forming the SiN protective layer consists of supplying the HCD gas to the substrate and supplying the NH3 gas to the substrate [hereinafter “Limitation B”], and
the forming the SiN bulk layer consists of supplying a dichlorosilane (DCS) gas to the substrate and exposing the substrate to a plasma generated from the NH3 gas [hereinafter “Limitation C”].
During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit' s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("consisting of" defined as "closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith"). But see Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331-32, 70 USPQ2d 1508, 1516 (Fed. Cir. 2004).
When the phrase "consisting of" appears in a clause of the body of a claim, rather than immediately following the preamble, there is an "exceptionally strong presumption that a claim term set off with ‘consisting of’ is closed to unrecited elements." Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1359, 119 USPQ2d 1773, 1781 (Fed. Cir. 2016).
In contrast, the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004)
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.
Claims 1, 8, 9, 13, 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 8, 9, 13 and 20:
The claims have been amended to recited Limitation I, which contains the close-ended Limitation A, Limitation B, and Limitation C. However, the present claim 1 also recites that Limitation A, Limitation B, and Limitation C are formed respectively by a thermal atomic layer deposition (thermal ALD) process, a separate thermal ALD process, and a plasma enhanced ALD. The instant specification generally describes a thermal ALD process that contain a first purge step, a supply step of HCD, a second purge step, a supply step of C2H4, a third purge step, a supply step of NH3, and repetition of the preceding steps in sequence. Such a general description comports with the basic understanding of the common features of an ALD process, whether thermal or plasma enhanced. However, Limitation I’s sub-limitations only respectively contain their recited substeps, and thus do not contain or allow for purge sub-steps and does not contain or allow for repetitions of the recited sub-steps . Limitation I is therefore inconsistent with the specification and the general understanding of the ALD process by a person of ordinary skill in the art, rendering unclear whether such other characteristic steps of ALD are intended to be included or excluded. Thus, present claim 20, present claim 1 and claims dependent on claim 1 are rendered indefinite.
Regarding claims 8, 13:
Present claim 8 and its dependent claim 13 require that the step of forming the SiN bulk layer further includes exposing the substrate to a plasma generated from a H2 gas. Present claims 8 and 13 depend upon claim 1, which requires that the step of forming the SiN bulk layer consists of the recited supplying step and exposing step. Because the claim limitations imported from present claim 1 requires that only the recited elements within the “consists of” clause, but dependent claims 8 and 13 “further includes”, i.e. “further comprises” the additional elements, there is a lack of clarity with regards to the scope of the recited forming step as to whether it only includes the recited elements, or may include additional, unrecited elements, rendering the claims indefinite.
If the intention is to maintain the closed elements in dependent claims 8 and 13, the Examiner suggests that the phrase “further includes” be amended to “further consists”/ “further consists of” (as appropriate), which would render clear that the claim elements further narrowed by the limitations of the dependent claims do not introduce unrecited elements.
The following is a quotation of 35 U.S.C. 112(d):
(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-AIA 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.
Claims 8, 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In view of the indefiniteness of the claims, claims 8 and 13 allow for unrecited elements/substeps to be part of the recited forming step, thus failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 8, 9, 13, 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 8, 9, 13 and 20:
In light of the indefiniteness of the claims, the claims as presented have been amended to recite Limitation I. The originally filed disclosure does not expressly recite the added claim limitation. The Applicant also has not recited where the newly added claim limitation is supported in the originally filed disclosure.
While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. See MPEP 2163.02 and In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971). If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. MPEP 2163.02.
The closest recitations of the originally filed disclosure to the subject matter encapsulated in the claims include paragraph [0037] of the originally filed specification as discussed above. Critically, the ALD process conveyed by paragraph [0037] requires purge steps and repetition of the film forming steps and purge steps; which is critical to the formation of films with thickness. The lack of such limitations may then be considered an omission from the close-ended Limitation A, Limitation B and Limitation C. In the context of such close-ended scope, A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement. See Gentry Gallery, 134 F.3d at 1480, 45 USPQ2d at 1503; In re Sus, 306 F.2d 494, 504, 134 USPQ 301, 309 (CCPA 1962).
Thus, the new claim introduces New Matter. New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971). Accordingly, there is no reasonable conveyance to one of ordinary skill in the art that the inventor or joint inventor has possession of the claimed invention at the time the application was filed.
Claim Rejections - 35 USC § 103
The rejections of the claims under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment. In particular, the Examiner notes that Hashimoto et al. US 2017/0025271 A1 (hereafter “Hashimoto”) requires in many embodiments that precursor gases are supplied with an inert gas, e.g. N2 at the same time as part of the overall formation of films, and generally requires that, regardless of the presence of additional carrier/inert gases, that supplying steps are repeated. The other prior art of record, mirror the additional gases required and repetition of steps.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chen et al. US 20230230830 A1; particularly disclosing embodiments of their method that supplies reactive gases for plasma enhanced processes that do not contain additional gases and other embodiments where additional gases are included as carrier or diluent gases. See paragraphs [0023], [0032], [0034] – [0035].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
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