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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 7, 2025 has been entered.
Claim Rejections - 35 USC § 102
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 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.
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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson et al (US 2015/0294880 A1), or in the alternative, Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al (US 2015/0294880 A1).
As to claims 1 and 2, Anderson discloses an etching gas comprising:
fluorobutene [0024], [0127], for example, hexafluorobutene, represented by the general formula C4HxFy, in which x is 2 and y is 6, and x + y is 8, which is a species within the cited genus (prior art disclosing a species anticipates a claim to a genus. MPEP 2131.02 I. When the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. MPEP 2131.02 II ),
wherein the etching gas (99.999% v/v purity [0128]), has
a moisture concentration in the fluorobutene of less than 20 ppm [0128], which includes the cited range of 10 ppm by mass or less; and
an oxygen-containing gases at a concentration of less than 150 ppm [0128], which includes the cited range of less than 100 ppm by mass or less, and suggests the cited O2 concentration because O2 is an oxygen-containing gas.
Anderson discloses that the etching gas is produced by a method comprising:
a dehydration step of applying dehydration treatment to crude fluorobutene which is the fluorobutene containing water and an oxygen gas (“passing the gas … through a suitable adsorbent, such as a 4A molecular sieve” [0128], which is the same as in the instant invention (instant specification at page 16, paragraph [0045])); and
a deoxidizing gas step of applying deoxidizing gas treatment to the crude fluorobutene (distillation [0128], which is the same as in the instant invention, page 18, paragraph [0050]).
Anderson fails to explicitly disclose the purity with respect to the carbonyl fluoride concentration (claim 1) or the hydrogen fluoride concentration (claim 2). Anderson also fails to explicitly disclose moisture at less than 10 ppm and oxygen at less than 100 ppm, as cited, although Anderson’s disclosure of ranges include the cited ranges.
The composition of Anderson is produced by the same method as in the instant invention, and therefore the same results of carbonyl fluoride, hydrogen fluoride, moisture and oxygen purities are expected to be inherent.
Anderson discloses that the composition is useful for etching silicon-containing layers [0125] with high selectivity to mask layers and no profile distortion in high aspect ratio structures. [0125]. The instant invention also etches silicon-containing layers (page 24, [0066]) with selectivity to mask layers [0070]. In other words, the etching gas in Anderson and the claimed etching gas have the same utility and the same structure.
Because Anderson discloses the same steps as in the instant invention to etch the same materials, one would expect that the cited carbonyl fluoride, hydrogen fluoride, moisture and oxygen purities are inherently present in the composition of Anderson.
However, the examiner cannot determine whether or not the reference inherently possesses the cited concentrations.
The burden thus shifts to the applicant to prove that the method of Anderson does not necessarily or inherently possess the characteristics including the carbonyl fluoride, hydrogen fluoride, moisture and oxygen purities. MPEP 2112 V.
In the alternative, it would have been obvious to one with ordinary skill in the art at the time the invention was made to provide the cited concentrations in the composition of Anderson because Anderson discloses high purity is desirable to obtain selective etching of silicon-containing films.
In addition, method limitations are given little weight in composition claims. The method of making the etching gas in newly amended claim 1, even though disclosed by Anderson, is given little patentable weight. Claiming an improved process to obtain the same result, an etching gas with no structural or functional differences from Anderson, that improves the purity of the product does not give rise to patentability. MPEP 2144.04 (VII) (citing Purdue Pharma v. Epic Pharma, 811 F.3d 1345 (Fid. Cir. 2016)).
Further, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to obtain an even more pure product as cited because it is within the scope of one skilled in the art in order to optimize the composition for best results. MPEP 2144.05, II, A.
Still further, a product that differs from prior art only in purity is obvious except when the pure product possesses unexpected properties not possessed by the impure one. Ex parte Gray 10 USPQ 2d 1922, 1926 (BPAI 1989); Ex parte Steelmand 140 USPQ 189, 190; In re King 43 USPQ 400 (CCPA 1939); In re Merz 38 USPQ 143 (CCPA 1938); In re Ridgeway 25 USPQ 202 (CCPA 1935); Ex parte Windhaus 15 USPQ 45 (PO BdPatApp 1931). The record does not show unexpected properties of the etching gas.
As to claim 3, see the rejection of claim 1.
As to claim 5, see the rejection of claim 1. Anderson discloses an adsorbent such as a 4A molecular sieve. [0128].
As to claim 6, Anderson discloses that the gas may be passed into a “container” [0138], which is the cited filling step.
As to claim 7, Anderson discloses to selectively etching an object that contains silicon, as cited. [0126], [0155].
As to claim 8, Anderson discloses to introduce the gas into a plasma etch tool to contact the member to be etched as cited. [0157].
As to claims 9-10, Anderson discloses that the etching gas includes the fluorobutene and a dilution gas such as nitrogen gas, helium or argon. [0138].
As to claim 11, Anderson discloses treatment to remove a part of the etching object from the semiconductor substrate by the etching, as cited. [0144].
As to claims 12 and 15-20, see the corresponding rejections of claims 3, 6-7 and 9.
Claims 4 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al (US 2015/0294880 A1).
The discussion of Anderson from above is repeated here.
As to claim 4, 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 cited order of steps because Anderson suggests to use the cited order by first disclosing dehydration and then discloses deoxidation.
As to claims 13-14, see the rejection of claims 5-6.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/031,801 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ’801 fully encompass those of the instant invention (see claims 1-2).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed October 7, 2025, have been fully considered but they are not persuasive.
Applicant argues that Anderson describes that the content of impurities is less than 0.1% (less than 1000 ppm). However, in the same sentence, Anderson discloses a purity of 99.999%, which equates to 10 ppm impurities and anticipates the claimed ranges.
Applicant argues that Anderson does not describe the detailed conditions for the dehydration and deoxygenation processes, and thus does not teach or suggest how to achieve the claimed content of impurities, moisture content or oxygen gas content. In response, the instant claims also do not recite detailed conditions for the method, and any detailed conditions in the specification do not form the basis for patentability. As described above in the rejection, when claiming a new process to obtain the same result, an etching gas with no structural or functional differences, then the improvement in the process that improves the purity of the product does not give rise to patentability. MPEP 2144.04 (VII) (citing Purdue Pharma v. Epic Pharma, 811 F.3d 1345 (Fed. Cir. 2016)).
Anderson uses the same techniques as in the instant invention, distillation and a 4A molecular sieve. The use of distillation and molecular sieves are well known. For example, Myers et al (WO 2019/195258 A1) discloses drying a liquid with a molecular sieve to 7 ppm water [0093], [0095]. Sugimoto (US 2016/072335 A1) also discloses distillation to reduce oxygen content [0025] and molecular sieves to reduce water content [0028]. Thus, these techniques are known and within the level of skill of one skilled in the art to optimize for purity.
Applicant argues that Anderson does not specifically mention carbonyl fluoride or oxygen gas in the fluorobutene, and that the claimed amounts would not be expected. In response, the claimed amounts are inherent for the reasons discussed in the rejection. To summarize the teachings of the instant specification: at paragraph 97 of the specification, after the distillation, the oxygen content is low, 4 ppm. The instant specification states that when oxygen gas exceeds 1000 ppm, it reacts with the fluorobutene to generate carbonyl fluoride and hydrogen fluoride. [0027]. Water accelerates the reaction. [0027]. Applicant explains at paragraph [0044] of the instant specification that the dehydration step removes water, but also removes at least one of carbonyl fluoride and hydrogen fluoride. The deoxidation removes oxygen gas, carbonyl fluoride and hydrogen fluoride. [0049]. Thus, a process, like Anderson, that removes oxygen gas and water is expected to also remove carbonyl fluoride and hydrogen fluoride.
Applicant appears to argue that when (a) the dehydration treatment is set to a water concentration of 10 ppm by mass or less and (b) the deoxidizing gas treatment is set to an oxygen concentration of 100 ppm or less, then a result is that a concentration of carbonyl is 100 ppm by mass or less. In response, it is acknowledged that the exact carbonyl concentration is unknown in the etching gas of Anderson, but Anderson discloses moisture and oxygen-containing gases within the cited range, and thus the carbonyl concentration is expected to be inherent. Still further, obtaining an even more pure product is within the scope of one skilled in the art in order to optimize the composition for best results.
For the above reasons, the claims are either anticipated or obvious over Anderson.
In response to this office action, please respond to the obviousness-type double patenting rejection in order to provide a complete reply to the present office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Myers and Sugimoto are cited to show purifying by distillation and molecular sieves (see discussion above under “Response to Arguments”).
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/ANITA K ALANKO/ Patent Examiner, Art Unit 1713