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 .
Election/Restrictions
Applicant's election of Group I on July 8, 2026, and cancellation of claims 21-29 in the paper date January 13, 2026, are taken as an election without traverse of the method claims. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 and 30-39 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, last line, the term “another substrate” is unclear. Is this the substrate that is part of “the series of substrates” in line 2, the substrate of line 6, or a different substrate? In the amendment dated January 13, 2026, the claim is amended to recite “wherein the another substrate is …the substrate used for in-situ diagnosis.” It is not clear that the word “not” modified the second part of the wherein clause.
In claim 31, line 6, and in claim 35, line 6, the term “a film deposited over the blank substrate” is confusing. The claim requires a blank substrate, but fails to recite a deposition step. Does the blank substrate comprise the film? It is not clear whether the film is a result of being in the chamber, e.g., due to contaminants in the chamber, or whether a purposeful deposition step is required.
In claim 31, line 9, the term “a rate of the sputtering of the film” is confusing. The claim fails to require calculating the rate, and therefore it is unclear if this rate is a stored rate from sputtering of the film for previous substrates, or whether it is a rate that is determined as part of the cited sputtering process.
Claims 2-11, 30, 32-34 and 36-39 fail to cure the indefiniteness of the base claim and are therefore also rejected.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-11 and 30-39 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claims are directed to a process, a statutory category of invention.
The analysis cannot be streamlined because when viewed as a whole, the eligibility of the claims are not self-evident. The claims recite mental steps “determining” without integrating the results of the determining into a positive step. In other words, all possible uses of the determining are preempted.
STEP 2A – Prong One
Claim 1 recites evaluation/determination which is a mental process (“determining a rate of the sputtering of the film” and “determining a usability condition of the plasma processing system for processing another substrate”). Determining is merely an observation or mental process. Mental processes are abstract ideas. MPEP 2106.04(a)(2) III.
STEP 2A – Prong Two
The claims do not recite additional elements that integrate the judicial exception into a practical application. Such integration may include reciting additional elements that apply or use the judicial exception to effect a particular treatment. Here, claim 1 determines usability, but then does not integrate the determination of usability into a practical application. Upon determining usability, the claim does not do, i.e. integrate, anything with the abstract idea. Because determining usability does not integrate the judicial exception into a practical application, the claimed “determining the rate of sputtering” also does not integrate the judicial exception into a practical application because the determining steps are dependent on one another. Thus, the claim fails to provide additional limitations that transform the nature of the claim into a patent eligible application of the judicial application. MPEP 2106.04 II.A.2.
More specifically, the additional elements in claim 1 are: processing a series of substrates by reactive ion etching (RIE), and diagnosing by loading a substrate, depositing a film, purging, generating inert gas plasma, and sputtering the film with the plasma. These additional steps are cited at a high level of generality, and merely link the use of the judicial exception to a particular technological environment or field of use, that of deposition and plasma sputter etching. MPEP 2106.05(h).
STEP 2B
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claim 1 merely recites processing to varying degrees of specificity, and processing by RIE, forming, purging, or sputtering are well-understood, routine and conventional semiconductor techniques. RIE is old and routine (Dorf et al, US 2010/0327873 A1, at paragraph [0037]). Diagnosing a plasma apparatus is known. (Ikuhara et al, US 2010/0297783 A1, see background of invention, [0006], [0007]). Processing in the chamber by loading a substrate [0046], depositing a film [0054], purging [0054], generating inert gas plasma [0048], [0054], [0051] and sputtering the film with the plasma [0048], [0054] is known (Kihara et al, US 2020/0194274 A1). Kihara also diagnoses the chamber [0067], [0068]. When considered in combination, these steps recite to sputter etch the film that was deposited and Kihara already shows that chambers that undergo these steps are diagnosed. The steps merely link the use of the judicial exception to a particular technological environment or field of use, that of deposition and plasma sputter etching, using routine and conventional techniques.
As to the remaining dependent claims and newly added claims, these also recite mental steps, or limitations that are well known in the art of deposition and etching. Claim 2 recites the mental step of “updating the RIE process condition” and processing other substrates by RIE is well known. These additional limitations generally link the use of the judicial exception to the field of use and adds the words equivalent to “apply it” by providing instructions to implement the abstract idea on a computer or to use a computer as a tool to perform the abstract idea. MPEP 2106.05(f).
As to claim 3, generating a control signal based on the abstract idea also links the use of the judicial exception to the field of use and adds the words equivalent to “apply it” by providing instructions to implement the abstract idea on a computer or to use a computer as a tool to perform the abstract idea.
As to claim 4, merely repeats steps that were already discussed with respect to claim 1 and are old, cited at a high level of generality, link the abstract idea to a field of use, and are conventional.
As to claim 5, cleaning is a routine step in the art (Hashimoto et al US 2022/0172934 A1, abstract) and does not add significantly more or integrate the judicial exception into a practical application.
As to claims 6-8, providing more detail to old steps fails to integrate the judicial exception into a practical application.
As to claim 9, OES and analysis is old and routine (Ikuhara, [0113]; Chen, US 10,453,653 B2, abstract). This claim is directing to determining the rate, and not to using the determination of usability to produce something more. Thus, this fails to integrate the judicial exception into a practical application.
As to claims 10-11 and 30, providing routine detail to old steps fails to integrate the judicial exception into a practical application.
Claims 31-39 are broader in scope than claims 1-11, and also directed to an abstract idea without significantly more for the same reasons as claims 1-11. Further, claim 32, introduces the mental step of “updating the RIE process condition … based on the usability condition” which is a judicial exception for the same reasons as corresponding claim 2.
As to claim 33, see the rejection of claim 3.
As to claim 34, claim 34 includes repeating steps, changing a process parameter, and comparing sputtering rates. However, this merely adds more detail to the sputtering step without integrating the judicial exception into something more.
As to claim 35, see the rejection of claim 9.
As to claim 36, this claim provides routine details to old steps, and fails to integrate the judicial exception into a practical application.
As to claim 37, this claim provides routine details to old steps because monitoring OES works by monitoring an element in the products that are produced by etching, and fails to integrate the judicial exception into a practical application.
As to claim 38, this claim includes a further abstract idea of “updating the RIE process condition …based on the usability condition” and also fails to add significantly more.
As to claim 39, see the rejection of claim 34.
For the reasons described above, claims 1-11 and 30-39 are not eligible subject matter under 35 USC 101.
Allowable Subject Matter
Claims 1-11 and 30-39 are rejected under 35 USC 101, 112, but if those rejections were overcome, the claims would be allowable over the prior art.
Response to Arguments
Applicant's arguments filed January 13, 2026, have been fully considered but they are not persuasive.
As to the35 USC 112 rejection, part of the rejection is withdrawn in view of applicant’s amendment. However, as explained above in the rejection, it is not cleat that the term “not” also modifies the last part of the added phrase “the substrate used for in-situ diagnosis.” The phrase could recite - - not the substrate used for in-situ diagnosis - - to overcome the rejection.
As to the 35 USC 101 rejection, applicant’s remarks have been considered but are not persuasive. On page 2, applicant argues that the office’s assertion that “this can be performed ‘by human using paper/pen/calculator’ ignores the physical reality of plasma diagnostics and spectroscopic analysis in semiconductor manufacturing environments.” In response, as explained in the rejection, the abstract idea is not integrated into something more, and the process steps of sputtering or OES are well understood, routine and conventional.
On pages 3-4, applicant argues about physical process steps. However, these steps are well understood, routine and conventional (see rejection above) and are not sufficient to somehow take the judicial exception and integrate it into something more. The claims also do not cite a particular practical application of the determining steps.
On page 6, applicant argues that “the fact that claim 1 does not explicitly recite the subsequent processing steps does not mean the determination lacks practical application.” This is beside the point, the claims do not recite what to do with the determination of usability.
On pages 7-8, applicant argues that the specific steps implement “a particular diagnostic approach that leverages the physics of inert gas sputtering with spectroscopic analysis to obtain information about system condition” – which is therefore not an abstract monitoring. In response, it is not asserted that obtaining information about the system is an abstract idea. Rather, the extra steps recited in the claims merely generally link the abstract idea to the field of endeavor.
Conclusion
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/Primary Examiner, Art Unit 1713
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