DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on December 30, 2025 was received. Claims 12 was amended. Claim 19 was canceled. No claim was added. Claims 1-11 were withdrawn.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued October 8, 2025.
Claim Rejections - 35 USC § 112
The claim rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, on claims 12-18 and 20-32 are withdrawn, because the claims have been amended.
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 claim rejections under 35 U.S.C. 103 as being unpatentable over Wu (US20180327899) in view of Speyer (US20230127014) on claims 12-15 and 20-22 are withdrawn, because the claims have been amended.
The claim rejections under 35 U.S.C. 103 as being unpatentable over Wu (US20180327899) in view of Speyer (US20230127014) as applied to claims 12-15 and 20-22, and further in view of Hayasaki (US20050282034) and Kim (US20100219742), on claims 16-17 are withdrawn, because the claims have been amended.
The claim rejection under 35 U.S.C. 103 as being unpatentable over Wu (US20180327899) in view of Speyer (US20230127014) as applied to claims 12-15 and 20-22, and further in view of Puy (US5705717) on claim 18 is withdrawn, because the claim has been amended.
Claims 12-15 and 20-32 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US20180327899) in view of Speyer (US20230127014) and Neal (US20100047474) and Scarlete (CA2489199).
Regarding claim 12, Wu teaches a method of converting the surface of the metal oxide into M-O-F layer (metal oxyfluoride) (paragraph 0002) on a plasma resistance ceramic member (paragraphs 0003-0004, 0052, 0081-0082, 0098). Wu teaches to prepare a substate with a ceramic coating layer, wherein the ceramic coating is a ceramic oxide, such as Y2O3 (or other yttrium based oxide) (paragraphs 0052, 0065, 0081-0082, figure 3A). Wu teaches to heat the HF or other fluorine source containing F anions (heating a raw material containing one or more anions selected from the group consisting of F and Cl) (paragraphs 0087-0089, figure 3A). Wu teaches to convert the Y2O3 coating (or other yttrium based oxide) at least on the surface into a Y-O-F layer (yttrium oxyfluoride), thus, indicating the F anion is absorbed to the surface to modify the surface of the ceramic coating layer (paragraph 0081 and 0092-0094). Wu teaches the surface layer is a layer in which an oxide composition component is modified with a composition comprising one or more anions selected from group consisting of F and Cl (paragraphs 0081, 0092-0094). Wu teaches the process is carried out without a physical vapor deposition technique (paragraphs 0081-0094).
Wu does not explicitly teach to vaporize the raw material. However, Speyer teaches a method of forming a transparent ceramic material (abstract). Speyer teaches to provide a fluoride anion source to a metal oxide compact to absorb the fluorine ion during sintering (heating), wherein the metal oxide includes Y2O3 or YAG (paragraphs 0053, 0058-0059, see figure 1A). Speyer teaches the fluoride anion sources is fluorine/nitrogen trifluoride gas (Wu’s fluoride source) or fluoride salts that melt and vaporizing during heating, such as LiF, LiBF4, NaF KF etc (paragraph 0057). Therefore, it would have been obvious to one of ordinary skill in the art to substitute vaporizing fluoride source for using gas (fluorine/nitrogen trifluoride gas) as fluoride anion source in the method of adsorbing the fluoride in the yttrium oxide to convert the surface to Y-O-F as disclosed by Wu.
Wu in view of Speyer does not explicitly teach the inert carrier gas. Wu teaches the process is conducted in a chamber (controlled atmosphere) (pargraph 0087-0088). However, Neal teaches a method of depositing a coating by vaporizing deposit material in a crucible on to a heated substrate inside a chamber (paragraph 0022). Neal teaches the chamber is vacuum chamber (paragraph 0011). Neal teaches a carrier gas is directed to carry the evaporated raw material from the crucibles to the substrate surface (paragraphs 0022-0023, figure 1) (control the atmosphere for surface modification). The carrier gas is expected to be inert, as it is conventional to use an inert gas as carrier gas to avoid the reaction from the reaction gas. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an inert carrier gas as disclosed by Neal in the method of Wu in view of Speyer because Neal teaches such gas carries the vaporized raw material to deposit onto the surface of the substrate (paragraphs 0022-0023).
Wu in view of Speyer and Neal does not explicitly teach the heating means surround the chamber or the furnace. However, Scarlete teaches a method of forming a thin film on a substrate by CVD in a chamber (page 11 lines 7-20), wherein the gaseous precursors are vaporized (page 20 lines 10-25). Scarlete teaches the heating elements surround the outside of the reactor to produce a temperature gradient (page 15 lines 20-32, figure 1A). It would have been obvious to one of ordinary skill in the art at the time the invention was made to place to use the heating means to surround the chamber/furnace as suggested by Scarlete in the method of Wu in view of Speyer and Neal, because Scarlete teaches such set up allows properly control the temperature gradient inside of the chamber/furnace, which ensure the appropriate range for the precursors (vaporizing material) (page 15 lines 20-32).
Regarding claim 13, Wu teaches the ceramic coating layer is Y2O3, yttria stabilized zirconia etc (paragraph 0081).
Regarding claim 14, Wu teaches the thickness of the surface layer is 50nm to 5µm (paragraph 0093), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 15, Speyer teaches the raw material is LiF, LiBF4, NaF KF etc, which are in solid form in ambient and requires melting (paragraph 0087).
Regarding claim 20, Wu teaches oxygen gas plasma is included with the fluoride anion source (paragraph 0088). Since the final layer includes an oxygen content, it would be reasonably expected the oxygen content is affected by the oxygen gas plasma. It would be reasonable to expect the oxygen gas plasma facilitate the moving of the raw material to the ceramic coating layer as both of them are being deposited/absorbed into the ceramic coating layer.
Regarding claim 21, Wu teaches to heat the ceramic coating layer and the raw material so that the surface absorbs the raw material (paragraph 0087). Spryer teaches to heat the vaporize the raw material and also heating the metal oxide (paragraph 0057).
Regarding claim 22, Speyer teaches the melt and vaporize the raw material (paragraph 0057), which is reasonably expected to be near the melting point of the raw material (pargraph 0057). Speyer teaches the melting point of the raw material overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 23, Neal taches to put the raw material into the crucible, loading the crucible and the substrate into the chamber configured to adjust an inner temperature by heating means and heating and vaporized the raw material using the heating means (paragraphs 0012-0013, 0019, 0022-0023, see figure 1). Neal does not explicitly teach the substrate is placed inside of the crucible. However, the particular placement of the substrate holding device (or the substrate) inside of the chamber was held to be an obvious matter of design choice (MPEP 2144.04 VI C). Thus, it would be obvious for one of the ordinarily skill in the art before the effective filing date of the claimed invention to place the substrate holder inside of the crucible along with the raw material in light of the teaching of Neal, especially Neal teaches the heating of both the substrate and the raw material are both conducted by the same heating element (paragraphs 0013 and 0023). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the apparatus as disclosed by Neal in the method of Wu in view of Speyer because Neal teaches such apparatus provides enhanced temperature control (paragraph 0002).
Regarding claim 24, Neal teaches the substrate and the raw material are placed separately from each other (see figure 1).
Regarding claim 25, Neal teaches the substrate is placed higher than the raw material (see figure 1),
Regarding claim 26, Neal teaches the support is provide to be higher than the bottomed surface of the crucible, and would be expected to be smaller than the inner diameter of the crucible to be fitted inside. Neal teaches the raw material is placed on the bottom surface of the crucible (see figure 1), Neal teaches the substrate is mounted on the support to be placed higher than the raw material, so that the raw material and the substrate are spatially separated.
Regarding claim 27, Neal teaches placing the substate in the furnace (paragraph 0011, see figure). Neal teaches putting the raw material in the crucible, and placing the crucible in the furnace so that the raw material is spaced apart from the substrate; heating and vaporizing the raw material using a heating means (paragraphs 0022-0023, see figure 1). Wu teaches the heating temperature for the substrate and the raw material are set differently from each other (paragraphs 0087-0088). In addition, Speyer teaches the melt and vaporize the raw material (paragraph 0057), therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the heating temperature of the raw material in the process to yield the proper melting and vaporization of the raw material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the apparatus as disclosed by Neal in the method of Wu in view of Speyer because Neal teaches such apparatus provides enhanced temperature control (paragraph 0002).
Regarding claim 28, Wu teaches the heating temperature for the substrate and the raw material are set differently from each other, wherein the heating temperature is set lower than that of the substate (paragraphs 0087-0088). In addition, Speyer teaches the melt and vaporize the raw material (paragraph 0057), therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the heating temperature of the raw material in the process to yield the proper melting and vaporization of the raw material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 29, Neal teaches the substate and the raw material are heated using the heating means, beam 20, and a carrier gas is flowed to allow the vaporized raw material to move to the substate to adsorbed to the surface of the coating (see paragraphs 0013 and 0022-0023, see figure 1).
Regarding claim 30, Neal teaches placing the substate in the furnace, putting a raw material and placing the crucible in a second furnace, heating and vaporizing the substrate the substrate having the ceramic coating layer using a first heating means and heating and vaporizing the raw material using a second heating means (paragraphs 0012-0013, 0022-0023, see figure 1). Wu teaches the heating temperature for the substrate and the raw material are set differently from each other, wherein the heating temperature is set lower than that of the substate (paragraphs 0087-0088). In addition, Speyer teaches the melt and vaporize the raw material (paragraph 0057), therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the heating temperature of the raw material in the process to yield the proper melting and vaporization of the raw material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. The claim does not require the first and second furnace, or the first and second heating means to be different from each other. Thus, Neal teaches the claimed limitation. Nevertheless, it is well settled that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI). Thus, it would be obvious for one of the ordinarily skill in the art before the effective filing date of the claimed invention to place duplicate the number of chamber and heating means (to hold and heat the substrate and raw material) in light of the teaching of Neal’s apparatus. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the apparatus as disclosed by Neal in the method of Wu in view of Speyer because Neal teaches such apparatus provides enhanced temperature control (paragraph 0002).
Regarding claim 31, Wu teaches the heating temperature for the substrate and the raw material are set differently from each other, wherein the heating temperature is set lower than that of the substate (paragraphs 0087-0088). In addition, Speyer teaches the melt and vaporize the raw material (paragraph 0057), therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the heating temperature of the raw material in the process to yield the proper melting and vaporization of the raw material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 32, Neal teaches a carrier gas is flowed from the raw material to the substrate to move the vaporized raw material to be absorbed on the surface of the substrate (paragraphs 0022-0023). Thus, Neal teaches the carrier gas flow from the “second furnace” (where the raw material is located) to the “first furnace” (where the substrate is located).
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US20180327899) in view of Speyer (US20230127014), Neal (US20100047474) and Scarlete (CA2489199) as applied to claims 12-15 and 20-32 above, and further in view of Hayasaki (US20050282034) and Kim (US20100219742).
Regarding claim 16, Wu in view of Speyer teaches all limitations of these claim, except to include the chloride anion source. However, Hayasaki teaches a method of forming a corrosion resistant member comprising a base material ceramic oxide and at least one layer of corrosion resistant film against fluorine and chlorine (abstract and paragraphs 0027, 0043), wherein the ceramic oxide layer is YAG (paragraph 0028). Hayasaki teaches the corrosion resistant film is formed from Y2O3 on the base material, and YF3 and YCl3 formed through reaction of Y2O3 and a fluorine containing gas and a chlorine containing gas, respectively (paragraph 0076). Thus, Hayasaki teaches the modified surface is modified of Y2O3 with both F and Cl anions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the Cl anions in the modified surface (corrosion resistant film) as suggested by Hayasaki in the method of Wu in view of Speyer because Hayasaki teaches the inclusion of the chloride component ensure the corrosion resistance to the chlorine plasma in addition to the fluorine plasma (paragraphs 0004-0006, 0027, 0082)
Wu in view of Speyer and Hayasaki does not explicitly the specific chloride material as claimed. However, Kim teaches a method of preparing a compound (abstract). Kim teaches chloride ions source for the reaction is provided by evaporating NH4Cl, which is solid in ambient, at low temperature (pargraph 0064). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to evaporating NH4Cl to obtain the chloride ion source as suggested by Kim in the method of Wu in view of Speyer and Hayasaki because Kim teaches the chloride ions can be obtained at low temperature (pargraph 0064).
Regarding claim 17, Speyer teaches the raw material is LiF, LiBF4, NaF KF etc, which are in solid form in ambient and requires melting (paragraph 0087), thus, Wu in view of Speyer teaches all limitations of these claim, except to include the chloride anion source. However, Hayasaki teaches a method of forming a corrosion resistant member comprising a base material ceramic oxide and at least one layer of corrosion resistant film against fluorine and chlorine (abstract and paragraphs 0027, 0043), wherein the ceramic oxide layer is YAG (paragraph 0028). Hayasaki teaches the corrosion resistant film is formed from Y2O3 on the base material, and YF3 and YCl3 formed through reaction of Y2O3 and a fluorine containing gas and a chlorine containing gas, respectively (paragraph 0076). Thus, Hayasaki teaches the modified surface is modified of Y2O3 with both F and Cl anions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the Cl anions in the modified surface (corrosion resistant film) as suggested by Hayasaki in the method of Wu in view of Speyer because Hayasaki teaches the inclusion of the chloride component ensure the corrosion resistance to the chlorine plasma in addition to the fluorine plasma (paragraphs 0004-0006, 0027, 0082)
Wu in view of Speyer and Hayasaki does not explicitly the specific chloride material as claimed. However, Kim teaches a method of preparing a compound (abstract). Kim teaches chloride ions source for the reaction is provided by evaporating NH4Cl, which is solid in ambient, at low temperature (pargraph 0064). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to evaporating NH4Cl to obtain the chloride ion source as suggested by Kim in the method of Wu in view of Speyer and Hayasaki because Kim teaches the chloride ions can be obtained at low temperature (pargraph 0064).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (US20180327899) in view of Speyer (US20230127014) Neal (US20100047474) and Scarlete (CA2489199) as applied to claims 12-15 and 20-32 above, and further in view of Puy (US5705717).
Regarding claim 18, Wu in view of Speyer teaches all limitation of this claim, except a non-reactive solid diluent is mixed with the raw material so that the raw material vaporized is adjusted by the non-reactive solid diluent. However, Puy teaches a method of fluorinating (abstract). Puy teaches to include a carrier with an effective amount of hydrogen fluoride (fluoride anion source) to produce a solid or liquid form, wherein the carrier is do not participate as reactants in the fluorination reaction (non-reactive solid diluent) (column 1 line 65 to column 2 line 5, column 2 lines 9-60). Since Puy teaches the non-reactive solid diluent serve to lower the vapor pressure of the hydrogen fluoride, thus, the amount of raw material vaporized is adjusted by the non-reactive solid diluent. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the non-reactive solid diluent to raw material as suggested by Puy in the method of Wu in view of Speyer because Puy teaches the inclusion of the non-reactive solid diluent renders the raw material less hazardous but also exhibits good reactivity (column 1 line 45-50).
Response to Arguments
Applicant's arguments filed on December 30, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Wu and Speyer address different problems. Wu and Speyer provide incompatible mechanisms.
In response to Applicant’s arguments, please consider the following comments:
Examiner disagrees that Wu and Speyer address different problems. Wu teaches all the limitations except the claimed fluorine (fluorine anion), and Speyer teaches methods to provide a fluorine source to the same metal oxide material, thus, they are addressing the same problem. In response to applicant's argument that the references are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both references address the problem of providing fluorine source to metal oxide. Speyer also specifically teaches the vaporizing of LiF create the fluorine anions (see 1A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NGA LEUNG V LAW whose telephone number is (571)270-1115. The examiner can normally be reached M-F 8 am - 5 pm.
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 on 5712721295. 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.
/NGA LEUNG V LAW/Examiner, Art Unit 1717
Prosecution Insights