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 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on December 12, 2025 has been entered.
Status of the Claims
By amendment filed December 12, 2025, claim 1 has been amended and claim 2 has been cancelled. Claims 1 and 3 through 5 are currently pending.
Response to Arguments
Applicant's arguments filed December 12, 2025 have been fully considered but they are not persuasive.
Applicant’s argument that the claimed hafnium compound was critical to achieving superior step coverage is not persuasive because the data provided by applicant is not commensurate with the scope of the claims. As was discussed in previous Office Actions, the data provided in the declaration was only for forming a thin film on a substrate comprising a hole of about 200 nm in diameter and a depth of about 600 nm. This substrate is not required by the claims and therefore applicant’s argument of unexpected results is not persuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP section 716.02(d).
Furthermore, applicant has not provided sufficient evidence that the claimed formula no. 4, which corresponds to formula/compound no. 12 of Seto, was superior to the other hafnium compounds taught by the prior art. Applicant has provided data regarding step coverage for formula no. 16 and 7, which correspond to compounds no. 16 and 13, respectively, of Seto, but applicant has not shown that claimed formula no. 4/compound 12 was superior to the other hafnium compounds taught by Sato. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978). See MPEP section 716.02(e). Furthermore, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Therefore, applicant has not provided sufficient evidence that compound no. 12/formula no. 4 was the best hafnium compound from the group taught by Seto for achieving a superior step coverage of a substrate comprising a hole of about 200 nm in diameter and a depth of 600 nm.
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.
Claims 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al (U.S. Patent # 7,714,155) in view of Myo et al (U.S. Patent # 8,282,992).
In the case of claim 1, Sato teaches a method for producing a thin-film containing a hafnium atom on a surface of a substrate by atomic layer deposition using an alkoxide precursor having the same formula as required by claim 1 (Abstract, Column 2 Lines 38-41 and Column 4 Line 50 through Column 4 Line 5). Specifically, Sato teaches Compound No. 12 (Column 4 Lines 49-51) which has the same structure as formula no. 4 of the claims. The method of Sato comprised vaporizing the alkoxide precursor and allowing the vaporized precursor to adsorb on the surface of the substrate followed by causing the adsorbed precursor to react with a reactive gas to form the thin-film containing a hafnium atom on the surface of the substrate (Column 12 Lines 9-28). Sato further teaches that the reaction was conducted at a temperature in the range of 200 to 800 ℃ (Column 12 Lines 41-45), which overlapped with the claimed range. 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, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
As for the limitation that the thermal decomposition starting temperature of the hafnium compound obtained with a differential scanning calorimeter is 300 ℃ or more Sato teaches alkoxide precursors which are the same as the hafnium compounds required by the claims and therefore would inherently have the claimed thermal decomposition starting temperature. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP section 2112.01.
Though Sato teaches having deposited the thin-film by atomic layer deposition Sato does not teach a specific step of evacuating the raw material gas/alkoxide precursor that was not reacted.
Myo teaches an atomic layer deposition process used to deposit a hafnium containing-material on a substrate (Abstract and Column 4 Lines 35-53) wherein between the step of cause a raw material gas/hafnium precursor being adsorbed on the surface of the substrate and adsorbed precursor being reacted with an oxidizing/reactive gas a step of purging/evacuating residual hafnium precursor was performed (Column 4 Line 54 through Column 5 Line 10).
Based on the teachings of Myo, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have performed a step of evacuating unreacted raw material gas in the method of Sato in order to remove residual alkoxide precursor prior to reacting the adsorbed precursor with the reactive gas.
As for claim 3, as was discussed previous the deposition process of Sato was conducted at a temperature in the range of 200 to 800 ℃, which overlapped with the claimed range.
As for claims 4 and 5, Sato teaches that the reactive gas included oxidizing gases such as water vapor, oxygen and ozone (Column 12 Lines 21-25) and that thin-films formed included hafnium oxide (Column 12 Line 65 through Column 13 Line 5).
Conclusion
Claims 1 and 3 through 5 have been rejected. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712