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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C.
102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
statutory basis for the rejection will not be considered a new ground of rejection if the prior art
relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1 and 2 have been amended
Claims 1-3 are pending
Claims 4-8 have been cancelled
Continued Examination
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has been timely paid, the finality of the previous Office action has been withdrawn pursuant to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 03/16/2026has 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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR 102132251), in view of Petorak et al. (US 20120177908), Iwasaki et al. (US 20020132449), Matsumoto et al. (US 20030013794), and Hwang et al. (US 20200062654), with Ritland et al. (US 5525374), Moriya et al. (US 5578129), Ryding et al. (US 6515288), Karabacak et al. (US 20160226065), and Baklanov et al. (US 20160276133) as evidentiary references.
Regarding Claim 1:
Kim teaches an edge ring for a semiconductor manufacturing process, comprising: boron carbide (B4C) (edge ring 600 can be comprised of boron carbide) [Fig. 1 & Page 3 lines 20-28].
Kim does not specifically disclose an edge ring comprising: a boron carbide (B4C) base layer comprising a sintered body; a mixed layer formed on the surface of the boron carbide base layer by chemical vapor deposition (CVD); and a boron carbide (B4C) surface layer formed on the surface of the mixed layer by CVD, however, Petorak discloses that varying porosity throughout a structure can help improve resistance to thermo-mechanical damage [Petorak - Fig. 2 & 0051, 0055, 0076, 0083]. It's also noted that the coating of Petorak can be comprised of boron carbide, and that the thermal coating can be formed by sintering [Petorak – 0027, 0029].
It would be obvious for one of ordinary skill in the art before the effective filing date of the invention to modify the edge ring of Kim to comprise of multiple layers with different densities, as in Petorak, to improve corrosion resistance [Petorak – 0016, 0055, 0066, 0070]. It is noted that modifying the boron carbide ring of Kim to have a density/porosity gradient would result in a boron carbide edge ring with different layers. Ritland et al. (US 5525374) also discloses that a ceramic structure with a density gradient can help alleviate thermal expansion [Ritland - Col. 9 lines 6-24].
Modified Kim does not specifically disclose wherein the mixed layer has a density gradient in which the density of the mixed layer converges to the numerical range of the density of the base layer by relatively lowering the density of the mixed layer as it is closer to the base layer and converges to the numerical range of the density of the surface layer by relatively increasing the density of the mixed layer as it is closer to the surface layer.
While Iwasaki does not specifically disclose "wherein the mixed layer has a density gradient in which the density of the mixed layer converges to the numerical range of the density of the base layer by relatively lowering the density of the mixed layer as it is closer to the base layer and converges to the numerical range of the density of the surface layer by relatively increasing the density of the mixed layer as it is closer to the surface layer," however, Iwasaki does disclose that porosity is a result effective variable. Specifically, the thermal conductivity of a porous layer depends on its porosity. As such, it would be obvious for one of ordinary skill in the art before the effective filing date of the invention to find an optimum porosity for a layer to obtain a desired thermal conductivity [Iwasaki - 0034]. Moriya et al. (US 5578129) also discloses that a porous member’s porosity falling out of a certain range reduces gas flow rate [Moriya – Col. 7 lines 10-18]. Ryding et al. (US 6515288) discloses that a lower porosity in a porous member increases resistance to gas flow [Ryding – Col. 2 lines 53-59]. Karabacak et al. (US 20160226065) discloses that low porosity makes ion diffusion easier [Karabacak - 0121]. Baklanov et al. (US 20160276133) discloses that having a higher porosity increases the speed of diffusion [Baklanov - 0102].
Additionally/alternatively, Matsumoto discloses that the porosity of a silicon carbide body is a result effective variable. Specifically, porosity can be adjusted to change mechanical strength [Matsumoto - 0058]. As such, It would be obvious for one of ordinary skill in the art before the effective filing date of the invention to find an optimum porosity for a boron carbide body to achieve a desired mechanical strength. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Additionally/alternatively, Hwang discloses boron carbide bodies with relative densities ranging from 63.7% to 99.9% (it is noted that Hwang utilizes a reference density of 2.21 g/cm3 for boron carbide, therefore a 63.7 % relative density would be 1.4 g/cm3, and 99.9% relative density would be 2.2 g/cm3) [Hwang - Table 2, 0003, 0145-0147]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would also be obvious to modify any of the layers of Modified Kim to be any of the densities listed in Hwang, since all are suitable densities for a boron carbide body. It has been held that selecting a known material on the basis of suitability for the intended use involves only routine skill in the art [MPEP 2144.07]. It is noted that using the teachings for Hwang, one of ordinary skill in the art could reasonably set the density of the base layer to be 1.4 g/cm3, the mixed layer to be 1.99 g/cm3, and the surface layer to be 2.2 g/cm3, since all these densities are disclosed as suitable densities for boron carbide bodies. As such, Modified Kim can be further modified to have its layers have the specific density gradient as claimed.
It’s further notes that the limitations “by chemical vapor deposition (CVD),” are product by process limitations and product by process limitations are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[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) [See MPEP 2113 I]. In summary, since all the structural limitations (the product) of the claim are met by the prior art, how the structure is made (i.e., the process) is not given patentable weight.
Regarding Claim 2:
Modified Kim does not specifically disclose wherein the base layer has a density gradient ranging from 1.0 to 1.9 g/cc, the mixed layer has a density gradient ranging from 1.8 to 2.3 g/cc, and the surface layer has a density gradient ranging from 2.1 to 2.52 g/cc.
Iwasaki does not specifically disclose "wherein the base layer has a density gradient ranging from 1.0 to 1.9 g/cc, the mixed layer has a density gradient ranging from 1.8 to 2.3 g/cc, and the surface layer has a density gradient ranging from 2.1 to 2.52 g/cc," however, Iwasaki does disclose that porosity is a result effective variable. Specifically, the thermal conductivity of a porous layer depends on its porosity. As such, It would be obvious for one of ordinary skill in the art before the effective filing date of the invention to find an optimum porosity for a layer to obtain a desired thermal conductivity [Iwasaki - 0034]. Moriya et al. (US 5578129) also discloses that a porous member’s porosity falling out of a certain range reduces gas flow rate [Moriya – Col. 7 lines 10-18]. Ryding et al. (US 6515288) discloses that a lower porosity in a porous member increases resistance to gas flow [Ryding – Col. 2 lines 53-59]. Karabacak et al. (US 20160226065) discloses that low porosity makes ion diffusion easier [Karabacak - 0121]. Baklanov et al. (US 20160276133) discloses that having a higher porosity increases the speed of diffusion [Baklanov - 0102].
Additionally/alternatively, Matsumoto discloses that the porosity of a silicon carbide body is a result effective variable. Specifically, porosity can be adjusted to change mechanical strength [Matsumoto - 0058]. As such, It would be obvious for one of ordinary skill in the art before the effective filing date of the invention to find an optimum porosity for a boron carbide body to achieve a desired mechanical strength. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Additionally/alternatively, Hwang discloses boron carbide bodies with relative densities ranging from 63.77% to 99.9% (it is noted that Hwang utilizes a reference density of 2.21 g/cm3 for boron carbide, therefore a 63.77 % relative density would be 1.4 g/cm3, and 99.9% relative density would be 2.2 g/cm3) [Hwang - Table 2, 0003, 0145-0147]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would also be obvious to modify any of the layers of Modified Kim to be any of the densities listed in Hwang since all are suitable densities for a boron carbide body. It has been held that selecting a known material on the basis of suitability for the intended use involves only routine skill in the art [MPEP 2144.07].
Regarding Claim 3:
Kim does not specifically disclose wherein the mixed layer has a thickness of 0.1 to 5 mm, the surface layer has a thickness of 1 to 10 mm, and the sum of the thicknesses of the base layer, mixed layer, and surface layer ranges from 3 to 20mm.
Petorak teaches wherein the mixed layer has a thickness of 0.1 to 5 mm, the surface layer has a thickness of 1 to 10 mm, and the sum of the thicknesses of the base layer, mixed layer, and surface layer ranges from 3 to 20 mm (the layers of the coatings can have a thickness of 0.0001 inches to 0.1 inches, or 0.00254 mm to 2.54 mm. It is noted that a coating comprising three 2.54 mm layers can have a total thickness of 7.62 mm; a ceramic coating comprising three layers is disclosed) [Fig. 2 & 0034, 0075]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant' s arguments, see Remarks, filed 03/16/2026, with respect to the rejection of claim 3 under 35 USC 112b have been fully considered and are persuasive. The rejection of claim 3 under 35 USC 112b has been withdrawn.
Applicant' s arguments, see Remarks, filed 03/16/2026, with respect to the rejection of claims 1-3 under 35 USC 103 have been fully considered but are not persuasive.
Applicant argues that the combination of references does nor disclose “an edge ring for a semiconductor manufacturing process, comprising: a boron carbide (B4C) base layer comprising a sintered body; a mixed layer formed on a surface of the boron carbide base layer by chemical vapor deposition (CVD); and a boron carbide (B4C) surface layer formed on a surface of the mixed layer by CVD, wherein the mixed layer has a density gradient in which the density of the mixed layer decreases and converges to a numerical range of the density of the base layer in a first area of the mixed layer as the first area is disposed closer to the base layer, and increases and converges to a numerical range of the density of the surface layer in a second area of the mixed layer as the second area is disposed closer to the surface layer,” because one of ordinary skill in the art would have no motivation to combine Petorak et al. (US 20120177908) with Kim (KR 102132251).
The applicant argues that Petorak cannot be combined with Kim because Kim discloses an edge ring comprised entirely from a single boron carbide material, while Petorak is directed to solving a specific problem of solving thermal expansion from a mismatch that arises between a metallic or non-metallic substrate and an overlying ceramic coating. As such, the problem Petorak is trying to solve is simply not present within Kim.
The examiner respectfully disagrees, as the gradient structure of Petorak by itself also improves plasma erosion resistance [Petorak – 0016, 0055, 0066, 0070]. Furthermore, Petorak is directed to producing an internal member for a plasma treating vessel, of which, focus rings are included [Petorak – 0061, 0065]. Kim is directed to a boron carbide sintered body for use in a plasma device [Kim – Page 2 lines 23-25]. As such, since the gradient structure of Petorak itself improves plasma erosion resistance, one of ordinary skill in the art would have a motivation to utilize its gradient structure in the boron carbide sintered body of Kim.
The applicant argues that the combination of references does not specifically disclose “an edge ring for a semiconductor manufacturing process, comprising: a boron carbide (B4C) base layer comprising a sintered body; a mixed layer formed on the surface of the boron carbide base layer by chemical vapor deposition (CVD); and a boron carbide (B4C) surface layer formed on a surface of the mixed layer by CVD.” In response, the examiner would like to note that the limitations “by chemical vapor deposition (CVD),” are product by process limitations and product by process limitations are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[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) [See MPEP 2113 I]. In summary, since all the structural limitations (the product) of the claim are met by the prior art, how the structure is made (i.e., the process) is not given patentable weight.
Currently, claim 1 structurally merely requires an edge ring for a semiconductor manufacturing process, comprising: a boron carbide (B4C) base layer comprising a body; a mixed layer formed on a surface of the boron carbide base layer by chemical vapor deposition (CVD); and a boron carbide (B4C) surface layer formed on a surface of the mixed layer, wherein the mixed layer has a density gradient in which the density of the mixed layer decreases and converges to a numerical range of the density of the base layer in a first area of the mixed layer as the first area is disposed closer to the base layer, and increases and converges to a numerical range of the density of the surface layer in a second area of the mixed layer as the second area is disposed closer to the surface layer. As disclosed in the rejection above, the combination of references discloses this structure, and as such, the combination of references discloses the limitations of the claim.
The applicant argues that Iwasaki et al. (US 20020132449) teaches away from the claimed invention because the teachings of Iwasaki are directed to a porous layer functioning as a separation layer, while the invention is directed to bonding. While the examiner agrees that the claimed invention and Iwasaki are directed to two different functions, the examiner would like to note that Iwasaki is merely being used to disclose that porosity is a result effective variable. The function or purpose of the members of Iwasaki is not persuasive enough of a reason to discount its specific teachings that porosity as a variable specifically changes how thermally conductive a member is [Iwasaki - 0034]. In summary, the applicant has not provided persuasive arguments specifically against how the result effective variable reasoning. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (See MPEP 2144.05). Furthermore, the examiner has further utilized the teachings of Matsumoto et al. (US 20030013794) to disclose the specific densities of the boron carbide layers (see the rejection above).
The applicant argues that the claimed density ranges are critical, and the combination achieves unexpected results, however the examiner does not find this argument persuasive. The applicant’s claim to criticality would have potentially more persuasiveness if the examiner was making an argument based off on design choice, as proof of criticality would overturn a design choice argument. For example, if the examiner made the claim that choosing a specific density would merely be an matter of obvious design choice or routine optimization to achieve a predictable result, then the applicant’s arguments would hold more persuasiveness. However, the examiner has explicitly not utilized a design choice argument or a routine optimization argument. Rather, the examiner has utilized multiple avenues to disclose the limitations of claim.
Firstly, the examiner has utilized a result effective variable argument, which states that discovering an optimum value of a result effective variable involves only routine skill in the art (See MPEP 2144.05). This differs from routine optimization as there is a specific result correlated to the variable being changed. In the case of Iwasaki, it is disclosed that changing porosity changes a porous member’s thermal conductivity [Iwasaki - 0034]. As such, one of ordinary skill in the art would have a specific reason to find an optimum porosity to obtain a desired thermal conductivity.
Secondly, the examiner has utilized an overlapping ranges argument to disclose the claimed densities. Hwang discloses boron carbide bodies with relative densities ranging from 63.7% to 99.9% (it is noted that Hwang utilizes a reference density of 2.21 g/cm3 for boron carbide, therefore a 63.7 % relative density would be 1.4 g/cm3, and 99.9% relative density would be 2.2 g/cm3) [Hwang - Table 2, 0003, 0145-0147]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would also be obvious to modify any of the layers of Modified Kim to be any of the densities listed in Hwang, since all are suitable densities for a boron carbide body. With this argument, the applicant’s densities being unexpected is not persuasive enough of a reason to overcome the fact that Hwang specifically discloses their claimed ranges.
Thirdly, the examiner has utilized a materials argument, in which it is asserted that it would be obvious to one of ordinary skill in the art to modify individual layers in a ceramic body with the specific densities of Hwang because the listed densities are disclosed as suitable densities for boron carbide bodies. As such, Modified Kim can be further modified to have its layers have the specific density gradient as claimed. It has been held that selecting a known material on the basis of suitability for the intended use involves only routine skill in the art [MPEP 2144.07].
Furthermore the examiner respectfully disagrees that the applicant’s density values yield unexpected results. The applicant states that their specific porosities yield unexpected results because they specifically allow adequate CVD gas penetration. Adjusting porosity to change gas flow is a very well-known technique in the art; Moriya et al. (US 5578129) discloses that a porous member’s porosity falling out of a certain range reduces gas flow rate [Moriya – Col. 7 lines 10-18]. Ryding et al. (US 6515288) discloses that a lower porosity in a porous member increases resistance to gas flow [Ryding – Col. 2 lines 53-59]. Karabacak et al. (US 20160226065) discloses that low porosity makes ion diffusion easier [Karabacak - 0121]. Baklanov et al. (US 20160276133) discloses that having a higher porosity increases the speed of diffusion [Baklanov - 0102]. Therefore porosity affecting gas flow is well-known in the art, and as such, the applicant’s density values would not be unexpected because one of ordinary skill in the art could reasonably arrive at the applicant’s claimed values to achieve desired gas flow.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA NATHANIEL PINEDA REYES whose telephone number is (571)272-4693. The examiner can normally be reached Monday - Friday 8 AM to 4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at (571) 272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.R./Examiner, Art Unit 1718 /GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
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