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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 7, 2025, has been entered.
Claim Rejections - 35 USC § 102, 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 1-3, 5-12, 15-20 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 1-3, 5-12, 15-20 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 is provided at greater than 99.999% v/v purity [0128].
99.999% v/v purity equates to impurities present at 0.001% v/v, or 10 ppm. Therefore, any impurity is present at 10 ppm total or less, including impurities of hydrogen fluoride or carbonyl fluoride. 10 ppm is less than 100 ppm, and thus Anderson anticipates claims 1-2.
In one example, Anderson describes a concentration of 99.9% v/v purity that has 0.1% by volume impurities. 0.1 % by volume equates to 1000 ppm. 1000 ppm is higher than the claimed range, however even at such levels of impurities compare to the claimed range, Anderson discloses that the preferred water content is less than 20 ppm by weight [0128]. In addition, Anderson discloses that there are less than 150 ppm of nitrogen-containing and oxygen-containing gases [0128]. These levels of impurities (20 ppm, 150 ppm) at 0.1% by volume suggest that when a concentration of impurities is 0.001% by volume, i.e., 100 times less than at 0.1%, that water impurities and nitrogen-containing and oxygen-containing gases would likewise scale to less than 20 ppm, or less than 150 ppm, which are levels that are within the cited range.
Nonetheless, Anderson fails to explicitly disclose the purity with respect to the hydrogen fluoride concentration (claim 1) or the carbonyl fluoride concentration (claim 2). However, the composition of Anderson is produced by the same method as in the instant invention, and therefore the same results of carbonyl fluoride purity and hydrogen fluoride purity are expected to be inherent.
More specifically, Anderson teaches a method for producing the etching gas according to amended claim 1 comprising:
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 treatment as in the instant invention (instant specification at page 16, paragraph [0045])); and
applying deoxidizing gas treatment to the crude fluorobutene (distillation [0128], which is the same as in the instant invention, page 18, paragraph [0050]).
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 hydrogen fluoride concentration and carbonyl fluoride concentration 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 hydrogen fluoride concentration and the carbonyl fluoride concentration. 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 amended claim 3, as discussed above, Anderson discloses or inherently discloses the impurity levels of hydrogen fluoride, moisture levels by the dehydration treatment and oxygen levels by the deoxidizing gas treatment.
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 encompasses 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, 9 and 11.
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 claim 13, as discussed above, Anderson discloses that the dehydration treatment is treatment of bringing the crude fluorobutene into contact with an adsorbent to cause the adsorbent to adsorb the water (“passing the gas … through a suitable adsorbent, such as a 4A molecular sieve” [0128]).
As to claim 14, Anderson discloses that the gas may be passed into a “container” [0138], which encompasses the cited filling step.
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. 18/031,471 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ’471 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 November 7, 2025, have been fully considered but they are not persuasive.
It is acknowledged that Anderson discloses impurity concentrations such as “for example, N2 and/or H2O and/or CO2 should be less than 150 ppm by volume” and “the moisture content should be less than 20 ppm” [0128]. In response, these levels of impurities correspond to the example in which Anderson describes a concentration of 99.9% v/v purity that has 0.1% by volume impurities.
These levels of impurities (20 ppm, 150 ppm) included in the impurity level of 0.1% by volume suggest that when a concentration of impurities is 0.001% by volume, i.e., 100 times less than at 0.1%, that water impurities and nitrogen-containing and oxygen-containing gases would likewise scale to less than 20 ppm, and less than 150 ppm, which provide impurity levels that are within the claimed range.
It is acknowledged that Anderson does not describe detailed conditions of the dehydration and deoxygenation steps, but neither does the claimed invention.
It is acknowledged that Anderson does not specifically mention hydrogen fluoride or oxygen gas. However, as explained above in the rejection, the levels of impurities are either anticipated or inherent for a 99.999% v/v fluorobutene gas purified by the same treatment steps as in the instant invention.
The claims remain rejected under obvious-type double patenting over claims 1-20 of 18/031,471.
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 purification by using distillation and molecular sieves.
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.
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/ANITA K ALANKO/ Patent Examiner, Art Unit 1713