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 .
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.
Claims 1-2, 4-6, 8-19 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.
In claims 1 and 19, the newly added limitations “the first gas being noncorrosive to metals” and “the oxidizing gas being noncorrosive to metals” contain new matter not described in the specification. The specification describes the background art, Patent Documents 1-3, where chlorine gas, hydrogen fluoride gas, boron-containing gas, or formic acid vapor damage metal-atom-containing film, corrode stainless-steel material, or have a strong metal corrosion property (paragraphs [0005]-[0007]). However, the specification fails to describe that the first gas and the oxidizing gas, as in the context of claims 1 and 19, are noncorrosive to metals.
Claims 2, 4-6, and 8-18 also include the new matter of the base claim and are therefore also rejected.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-6, 9 and 15 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Zhang et al (WO 2020/150043 A1), or Zhang et al (US 2022/0084838).
For purposes of the rejection, reference is made to US 2022/0084838, the U.S. national filing of the international application.
Zhang discloses a method of atomic layer etching a metal oxide film [0070] in a laminate including a substrate (Fig. 19A), the method comprising:
a first step of introducing, into a treatment atmosphere (the interior of plasma chamber 108, [0051], Fig. 1) storing the laminate (on substrate support 110, Fig. 1) a first gas consisting of at least one gaseous oxidizable compound of an alcohol compound (ethanol, or tert-butyl alcohol [0072]), the first gas being non-corrosive to metals (the alcohol compound is the same composition as in the instant method, and therefore the same results of non-corrosivity is expected);
a second step of introducing an oxidizing gas consisting of oxygen (or ozone, water vapor, hydrogen peroxide) [0071] into the treatment atmosphere after the first step (the steps are cyclically repeated [0075], which includes, broadly interpreted the cited order),
wherein the alcohol compound is ethanol or tert-butyl alcohol [0072].
Further as to Zhang, applicant argues that chlorine is required. However, paragraphs [0071] and [0072] use the word “or” so that a combination that includes chlorine is not required by Zhang. In other words, chlorine is an optional component in the method of Zhang.
Further, it is noted that the treatment atmosphere is not limited to the first gas in the first step because other gases may be present. For example, a second gas may be present in the treatment atmosphere. However, Zhang does not require a second gas because paragraph [0072] uses the word “or” when describing the gases in the treatment atmosphere.
As to claim 2, Zhang discloses a treatment atmosphere temperature of 200 °C [0091], which is within the cited range.
As to claim 4, Zhang discloses that the metal oxide includes a metal such as aluminum, zirconium, or hafnium [0073].
As to claim 5, Zhang disclose an alcohol compound such as ethanol [0072], which has 2 carbon atoms or tert-butyl alcohol [0072], which has 4 carbon atoms, which are within the cited range.
As to claim 6, Zhang discloses that the gaseous oxidizable compound is ethanol, which is free of any fluorine atom, and the oxidizing gas is oxygen [0071], which is free of any fluorine atom.
As to claims 9 and 15, Zhang discloses ethanol, or tert-butyl alcohol [0072].
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
Claims 8, 10-14, 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (WO 2020/150043 A1), or Zhang et al (US 2022/0084838).
As to claims 8, 10-14, 16-18, Zhang discloses to include ethanol, or tert-butyl alcohol [0072], but fails to explicitly disclose other alcohols with different amounts of carbon atoms or the arrangement, as cited in claims 8, 10-14, 16-18. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the other alcohols as cited in the method of Zhang because of their close structural similarity to ethanol or tert-butyl alcohol and the expectation that they would perform the same function as other alcohols taught by Zhang. MPEP 2144.09.
As to claim 19, see the rejection of claim 1. Further, Zhang discloses that an inert gas may be introduced [0055]. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include an inert gas as cited because Zhang already discloses to include them and including inert gases helps to control the plasma process.
Response to Amendment
Applicant’s arguments, see page 7, filed January 22, 2026, with respect to the claim rejections over Yamauchi have been fully considered and are persuasive.
The prior art rejection under 35 USC 102(a)(1), (a)(2) over Yamauchi et al (US 2022/0415667) is withdrawn. Applicant’s point is persuasive that Yamauchi ’667 teaches that it is essential to use an etching gas C containing β-diketone, which is highly corrosive to metals.
The prior art rejection under 35 USC 102(a)(1), (a)(2) over Yamauchi et al (US 2020/0066541) is withdrawn. Applicant’s point is persuasive that Yamauchi ’541 teaches that it is essential to use an etching gas containing a β-diketone, which is highly corrosive to metals.
Claims 1-2, 4-6, 9 and 15 are rejected under 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by Zhang et al (WO 2020/150043 A1) or Zhang et al (US 2022/0084838).
Claims 8, 10-14, 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (WO 2020/150043 A1) or Zhang et al (US 2022/0084838).
Claims 1-2, 4-6, 8-19 are rejected under 35 U.S.C. 112(a) because the amendment introduces new matter into the claims.
Response to Arguments
Applicant's arguments filed January 22, 2026, have been fully considered but they are not persuasive, to the extent they still apply. Applicant argues that Zhang teaches that it is essential to use chlorine, which is highly corrosive to metals. In response, Zhang teaches chlorine is one example of an etching gas, but not required, because of the use of the word “or”. Paragraphs [0071] and [0072] use the word “or” so that a combination that includes chlorine is not required by Zhang. In other words, chlorine is an optional component in the method of Zhang.
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 ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
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, Joshua Allen can be reached at 571-270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANITA K ALANKO/ Primary Examiner, Art Unit 1713
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