DETAILED ACTION
In the amendment filed on December 2, 2025, claims 1 – 3 are pending. Claims 1, 3 have been amended and claim 4 has been canceled.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 § 103
The rejections of the claims under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment.
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.
Claim(s) 1 – 3 is/are newly rejected, as necessitated by amendment, under 35 U.S.C. 103 as being unpatentable over Sakurai et al. US2007/0122947 A1 (hereafter “Sakurai”) in view of Jones US 2005/0008781 A1 (hereafter “Jones”), and optionally in view of Cremers et al. “Conformality in atomic layer deposition: current status overview of analysis and modelling”. Appl. Phys. Rev. 6, 021302 (2019) https://doi.org/10.1063/1.5060967.
Regarding claims 1, 3:
Sakurai discloses a method of producing a thin film containing zirconium on a surface of a substrate by ALD [0036] comprising: a step 1 of causing a raw material gas to adsorb to the surface of the substrate [0025]; a step 2 of evacuating the raw material gas remaining unreacted [0085]; and a step 3 of causing the precursor thin-film to react with a reactive gas at a temperature of 250°C-800°C, such as 300°C, and a reaction pressure between 10 Pa to atmospheric pressure for thermal CVD methods and 10Pa to 2000Pa for plasma CVD methods; e.g. 1300 – 1400 Pa for a precursor material and a system pressure of less than 1300 Pa for reaction with a water vapor reactant ([0037], [0081]). Sakurai expressly teaches that atomic layer deposition is a type of chemical vapor deposition wherein the deposition reaction of CVD is divided into elementary reaction steps ([0036]). Sakurai discloses that the reactive gas is an oxidizing gas, such as water vapor [0086], ozone, or oxygen to form a zirconium oxide film [0032]. The raw material includes a compound represented by a general formula ([0012]):
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wherein R1, R2, R3, and R4 each represent an alkyl group having 1 to 4 carbon atoms; A represents an alkanediyl group having 1 to 8 carbon atoms; M represents a lead atom, a titanium atom or a zirconium atom; n represents 2 when M is a lead atom or 4 when M is a titanium or zirconium atom. Examples of the raw material include ([0019]):
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zirconium tetrakis (1-dimethylamino) -2- methyl -2- propanolate
Zirconium tetrakis (1-dimethylamino) -2- methyl -2- butanolate
Sakurai also discloses as a comparative compound the structure:
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Zirconium tetrakis (1-dimethylamino)-2-propanolate
where the comparative compound is the same as that recited in present claim 1. Sakurai further discloses that the comparative compound would be less suitable as a precursor chemical vapor deposition compared to the inventive compounds of Sakurai, implying that the comparative compound can be used in the process of Sakurai to produce a film by CVD1.
Sakurai generally does not teach the practice of the recited steps of the claimed method using Zirconium tetrakis (1-dimethylamino)-2-propanolate; and that the pressure of the film forming chamber at the time of causing the precursor thin-film to react with the reactive gas is at 10Pa or more and 1000Pa or less.
With regards to the practice of the recited steps of the claimed method using Zirconium tetrakis (1-dimethylamino)-2-propanolate:
Jones is directed to inter alia zirconium precursors for use in metalorganic chemical vapor deposition (MOCVD) and alternatively atomic layer deposition techniques (Abstract; [0018]). Jones discloses precursors having the general formula: M(Lx)[OCR1(R2)CH2X]4-x
Wherein M may be zirconium, L is a generic ligand, X is selected from OR and NR2 wherein R is an alkyl group or a substituted alkyl group, R1 is hydrogen or an alkyl group, R2 is an alkyl group that may be optionally substituted, and subscript x is between 0 to 3 ([0007] – [0009]). The general formula therefore encompasses, when x is 0, compounds of the formula:
M[OCR1(R2)CH2X]4
Although not specifically disclosed, the general formula encapsulates Zr[OCHMeCH2NEt2]4 (Zirconium tetrakis (1-dimethylamino)-2-propanolate, where M is Zr, x is 0, R1 is H, R2 Is a methyl (unsubstituted) group, and X is NR2 where R2 are alkyl groups) ([0007]).
Jones further discloses that a preferred ligand OCHButCH2NEt2 that is encompassed by formula [OCR1(R2)CH2X] ([0011], [0016]).
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Jones discloses that precursors encompassed by the recited general formula provide stable and volatile Zr precursors and is effective in inhibiting oligomerization in Zr alkoxide complexes ([0006]). While Jones discloses an alkoxide species where R1 of the claimed general formula would be a 4-carbon group, the Examiner notes that the Jones allows for an R2 (mapping to R1 in the present claim 1) to be a 1-carbon to 3-carbon group.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Jones to practice of the recited steps of the claimed method using Zirconium tetrakis (1-dimethylamino)-2-propanolate because Sakurai suggests the performance of such steps using Zirconium tetrakis (1-dimethylamino)-2-propanolate, Jones teaches that such precursors have enhanced stability and volatility which can inhibit precursor oligomerization, and because Jones teaches a preferred species that is chemically similar to the claimed species (e.g. where R1 is a propyl group or an ethyl group in combination of R2 being hydrogen) that would have such an enhanced stability and volatility. Where such a prior art species or subgenus is structurally similar to that claimed, its disclosure may provide a reason for one of ordinary skill in the art to choose the claimed species or subgenus from the genus, based on the reasonable expectation that structurally similar species usually have similar properties. See, e.g., In re Dillon, 919 F.2d 688, at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Deuel, 51 F.3d 1552, 1558, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995).
With regards to the pressure of the film forming chamber at the time of causing the precursor thin-film to react with the reactive gas is at 10Pa or more and 1000Pa or less.
As discussed above, Sakurai discloses that the reaction pressure during a CVD reaction, including ALD reactions, may be between 10 Pa to atmospheric pressure for thermal CVD methods and 10Pa to 2000Pa for plasma CVD methods. In an example embodiment, Sakurai discloses that the system pressure during reaction of a previously-deposited CVD precursor with a water vapor reactant may be any pressure under 1300 Pa ([0037], [0081]).
Additionally, Sakurai discloses that the reaction pressure affects deposition rates via material feed conditions, including the material feed condition of reactive gases ([0037]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. 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.
Additionally, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have implemented an embodiment of Sakurai in view of Jones or otherwise have modified the method of Sakurai in view of Jones to set the pressure of the film forming chamber at the time of causing the precursor thin-film to react with the reactive gas at 10Pa or more and 1000Pa or less as a matter of routine experimentation in order to establish, in conjunction with the number of deposition cycles, the deposition rate of the full coating, and therefore time spent depositing material.
Optionally and additionally, Cremers is directed to the general knowledge of one of ordinary skill in the art concerning conformality in ALD (Abstract; 021302-3). Cremers discloses that the pressure regime for ALD deposition can range from 10-4 Pa to near-atmospheric pressure depending on reactor design (page 021302-4) 2nd col – page 7 1st col). Cremers additionally discloses that the reactor pressure plays a crucial role in ALD processes since it determines the impinging flux of reactant molecules on a given substrate; reactant exposure is a function of both the reactor pressure and the amount of time a substrate is exposed to a given reactant (page 021302-5). Total exposure is optimized to allow for effective deposition and conformality while compensating for substrate-dependent diffusion limitations and the particular reaction mechanisms and sticking probabilities between a given reactant-substrate interaction (page 021302-5 to 021302-6, page 02302-15, page 021302-19 2nd column).
Additionally and optionally as taught by Cremers, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. 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.
Additionally and optionally as taught by Cremers, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have implemented an embodiment of Sakurai in view of Jones or otherwise have modified the method of Sakurai in view of Jones to set the pressure of the film forming chamber at the time of causing the precursor thin-film to react with the reactive gas at 10Pa or more and 1000Pa or less as a matter of routine experimentation in order to optimize material deposition and conformality of the deposited material for a given ALD reactor design as taught by Cremers.
Regarding Claim 2:
Sakurai discloses that step 1 is performed under a substrate temperature of 250°C-800°C [0037], such as 300°C [0081].
Response to Arguments
Applicant's arguments filed on December 2, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) Sakurai discloses CVD reactions at 300°C and 1300 Pa as depicted in paragraphs [0081] and [0086] of Sakurai. In combination with the recited pressure of 1300 Pa, Sakurai fails to reasonably suggest the presently required reaction conditions of step 3.
b.) The technical problems faced by Sakurai clearly differ from the technical problems of the presently claimed invention.
c.) Jones does not disclose the claimed reaction pressures and temperatures, and clearly utilizes CVD reaction, which is not the same reaction as what proceeds under ALD.
d.) The rejection is based on impermissible hindsight as one could not have reasonably arrived at the presently required temperature and reaction pressure ranges in which the ALD reaction proceeds.
In response to the applicant's arguments, please consider the following comments.
a.) As a first matter, the Examiner respectfully disagrees with Applicant’s assertion that the specific embodiment disclosed in paragraph [0081] – [0087] of Sakurai is a CVD reaction; the assertion is a misrepresentation of the teachings of Sakurai. Sakurai teaches that their disclosure is directed to CVD and that CVD includes ALD processes ([0003], [0023]). In other words, in the context of Sakurai, ALD reaction processes is a species of the broader CVD processes. Sakurai teaches that such processes allow for excellent step coverage, compositional controllability ([0003]). Sakurai also teaches that the key characteristics of the ALD process, among the broader class of CVD, is the division of the steps of CVD into elementary reaction steps “so as to build up a film stepwise on a molecular level” ([0036]). ALD is also described as a cyclic process ([0037]). Such a description is consistent with the characterization of ALD within the instant specification. See paragraph [0008] of the instant specification and in particular the emphasis on repetitive performance of elementary steps, purging and resultant stacking of atomic layers.
In view of such general and explanatory teachings, it would have been readily apparent to one of ordinary skill in the art that the process described in paragraphs [0081] – [0087] is an ALD reaction, in the parlance of the Applicant. That the material precursor is described as a CVD material does not lead a way from such recognition because ALD is a species of CVD; the general teachings of Sakurai are therefore pertinent to the disclosed species of CVD processes in Sakurai, including ALD. The pressure disclosed in the embodiment is also consistent with the general pressure ranges disclosed in paragraph [0037] of film forming conditions. With regards to the difference between the claimed pressures and the specific reaction pressure of 1300 Pa in the specific embodiment of paragraphs [0081] – [0087], disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
b.) In response to applicant's argument that technical problems faced by Sakurai clearly differ from the technical problems of the presently claimed invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
c.) The claimed reaction pressures and temperatures are rendered obvious by the teachings derived from Sakurai and optionally Cremers. Furthermore, "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). This includes Jones’s teachings that the recited precursors are suitable for ALD as discussed above.
d.) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention filed, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As discussed above, the limitations of the claimed invention are met with the knowledge available to those of ordinary skill in the art at the time the application was filed. The Examiner also notes that the argued goal of having reduced carbon content does not have corresponding limitations within the claims. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., reduced carbon content or limitations defining a carbon content) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
1 "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)