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 .
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.
This Office Action is in response to Amendments/Remarks filed on April 02, 2026.
Claim Rejections - 35 USC § 112
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.
Claim 6 is 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. As to claim 6, the disclosed same or identical material of the embedded film and the first insulation film is directed to aluminum oxide in [0065] of the Specification. There is no explicit disclosure or support to have the identical or same material of ZrO2, La2O3, and Y2O3 as amended. Thus, 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
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.
Claim 7 is 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. As to claim 7, the limitation “aluminum oxide film” appears to include a broader scope than what is defined in the independent claim 1 as claim 1 merely recites ZrO2, La2O3, and Y2O3. Thus, the limitation renders the claim indefinite and clarification is required.
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.
Claim(s) 1-4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2017/0092543 A1 to Ok et al. (“Ok”) in view of U.S. Patent No. 10,128,334 B1 to Bourjot et al. (“Bourjot”).
As to claim 1, although Ok discloses a semiconductor device, comprising: a semiconductor base (42); and a field effect transistor on the semiconductor base (42), wherein the field effect transistor includes: an insulation layer (52, 60, 70) that includes: a gate opening (at 56); a first insulation film (60, 70) on a main surface of the semiconductor base (42); and a second insulation film (52) on the first insulation film (60, 70); a gate electrode (56) that includes: a head part (top) on the insulation layer (52, 60, 70); and a body part (bottom) extending from the head part (top) toward the main surface of the semiconductor base (42), wherein a width of the head part (top) is larger than a width of the body part (bottom); an embedded film (54) between the first insulation film (60, 70) and the body part (bottom) of the gate electrode (56) in a gate length direction of the gate electrode (56), wherein the embedded film (54) comprises at least one of a zirconium oxide (ZrO2) film, a lanthanum oxide (La2O3) film, or an yttrium oxide (Y2O3) film, and a relative permittivity of the embedded film (54) is equal to a relative permittivity of the second insulation film (52) or higher than the relative permittivity of the second insulation film (52); and a chamber (under 70) in the first insulation film (60, 70), wherein a width of the chamber (under 70) is larger than each of a width of the body part (bottom) of the gate electrode (56) and a width of the gate opening (at 56), and the chamber (under 70) includes the embedded film (54) (See Fig. 4, Fig. 6, Fig. 7, Fig. 10, ¶ 0052, ¶ 0053, ¶ 0054, ¶ 0055, ¶ 0060), Ok does not specifically disclose wherein etching selectivity of the second insulation film is higher than etching selectivity of the first insulation film. However, Ok does disclose wherein the second insulation film (52) includes a silicon nitride film (52), the first insulation film (60, 70) is any material used as a hard mask (See ¶ 0054, ¶ 0060) and Bourjot discloses the second insulation film (240) of silicon nitride having etching selectivity higher than etching selectivity of the first insulation film (263) (See Fig. 2, Fig. 3, Column 7, lines 60-67, Column 8, lines 1-19, Column 9, lines 5-27). In view of the teachings of Ok and Bourjot, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have wherein etching selectivity of the second insulation film is higher than etching selectivity of the first insulation film because the etching selectivity is designed in view of the required manufacturing processes that can be altered as desired, where the higher etching selectivity allows the second insulation film to be etched with respect to the first insulation film serving as the hard mask. Furthermore, the limitation “wherein etching selectivity of the second insulation film is higher than etching selectivity of the first insulation film” is a product-by-process limitation that does not structurally distinguish the claimed invention over the prior art. It has been held it has been held that “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). As to claim 2, Ok further discloses wherein the relative permittivity of the embedded film (54) is higher than the relative permittivity of the second insulation film (52) (See ¶ 0054, ¶ 0055). As to claim 3, Ok further discloses wherein the relative permittivity of the embedded film (54) is equal to a relative permittivity of the first insulation film (60, 70) or higher than the relative permittivity of the first insulation film (60, 70) (See ¶ 0054, ¶ 0055, ¶ 0060). As to claim 4, Ok further discloses wherein the embedded film (54) is between the head part (top) of the gate electrode (56) and the semiconductor base (42) (See Fig. 4). As to claim 13, although Ok discloses an electronic apparatus, comprising: a semiconductor device, including: a semiconductor base (42); and a field effect transistor on the semiconductor base (42), wherein the field effect transistor includes: an insulation layer (52, 60, 70) that includes: a gate opening (at 56); a first insulation film (60, 70) on a main surface of the semiconductor base (42); and a second insulation film (52) on the first insulation film (60, 70); a gate electrode (56) that includes: a head part (top) on the insulation layer (52, 60, 70); and a body part (bottom) extending from the head part (top) toward the main surface of the semiconductor base (42), wherein a width of the head part (top) is larger than a width of the body part (bottom); an embedded film (54) between the first insulation film (60, 70) and the body part (bottom) of the gate electrode (56) in a gate length direction of the gate electrode (56), wherein the embedded film (54) comprises at least one of a zirconium oxide (ZrO2) film, a lanthanum oxide (La2O3) film, or an yttrium oxide (Y2O3) film, and a relative permittivity of the embedded film (54) is equal to a relative permittivity of the second insulation film (52) or higher than the relative permittivity of the second insulation film (52); and a chamber (under 70) in the first insulation film (60, 70), wherein a width of the chamber (under 70) is larger than each of a width of the body part (bottom) of the gate electrode (56) and a width of the gate opening (at 56), and the chamber (under 70) includes the embedded film (54) (See Fig. 4, Fig. 6, Fig. 7, Fig. 10, ¶ 0052, ¶ 0053, ¶ 0054, ¶ 0055, ¶ 0060), Ok does not specifically disclose wherein etching selectivity of the second insulation film is higher than etching selectivity of the first insulation film. However, Ok does disclose wherein the second insulation film (52) includes a silicon nitride film (52), the first insulation film (60, 70) is any material used as a hard mask (See ¶ 0054, ¶ 0060) and Bourjot discloses the second insulation film (240) of silicon nitride having etching selectivity higher than etching selectivity of the first insulation film (263) (See Fig. 2, Fig. 3, Column 7, lines 60-67, Column 8, lines 1-19, Column 9, lines 5-27). In view of the teachings of Ok and Bourjot, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have wherein etching selectivity of the second insulation film is higher than etching selectivity of the first insulation film because the etching selectivity is designed in view of the required manufacturing processes that can be altered as desired, where the higher etching selectivity allows the second insulation film to be etched with respect to the first insulation film serving as the hard mask. Furthermore, the limitation “wherein etching selectivity of the second insulation film is higher than etching selectivity of the first insulation film” is a product-by-process limitation that does not structurally distinguish the claimed invention over the prior art. It has been held it has been held that “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2017/0092543 A1 to Ok et al. (“Ok”) and U.S. Patent No. 10,128,334 B1 to Bourjot et al. (“Bourjot”) as applied to claim 1 above, and further in view of U.S. Patent Application Publication No. 2012/0139062 A1 to Yuan et al. (“Yuan”). The teachings of Ok and Bourjot have been discussed above. As to claim 6, although Ok discloses wherein the embedded film (54) includes a high k material and a material of the first insulation film (60, 70) includes any material such has a dielectric metal oxide (See ¶ 0055, ¶ 0060), Ok does not further disclose wherein the embedded film includes a material identical to a material of the first insulation film. However, Yuan does disclose wherein the embedded film (11) includes a material identical to a material of the first insulation film (14) (See Fig. 9, ¶ 0027, ¶ 0073). In view of the teaching of Yuan, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Ok to have wherein the embedded film includes a material identical to a material of the first insulation film because the same material allows the first insulation film to protect the gate conductor during the etch process (See ¶ 0027).
Response to Arguments
Applicant's arguments with respect to claims 1 and 13 have been considered but are moot in view of the new ground(s) of rejection.
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 DAVID CHEN whose telephone number is (571)270-7438. The examiner can normally be reached M-F 12-6.
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/DAVID CHEN/Primary Examiner, Art Unit 2815
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