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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/11/2025 has been entered.
Status of Claims
Claims 1-20 are pending. Claims 1-6, 8-11 and 13 are amended. Claims 1 and 11 are independent claims. Claims 4-6 and 16-18 are withdrawn. Claims 1-3, 7-15, 19 and 20 are currently examined on the merits.
Claim Objections
Claims 4 and 6 are objected to because of the following informalities:
The status of claims 4 and 6 should be labeled as "Withdrawn - Currently Amended” instead of “Currently Amended”.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “random surface terminations,” “silicon 100” and “silicon 111” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 7-15, 19 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The reciting "... reacting at least a portion of the random surface terminations on the surface of the epitaxially grown silicon film in response to the contacting the surface of the epitaxially grown silicon film with the radical species … " in claim 1 is not described in the specification as originally filed. Claims 2, 3, 7-10 are rejected because they depend on claim 1.
The reciting "... using a first radical species to clean a wafer before forming the epitaxially grown silicon film on the wafer, wherein the radical species is a second radical species" in claim 9 is not described in the specification as originally filed. Claim 10 is rejected because it depends on claim 9.
The reciting "... the wafer is located within a chamber during use of the first radical species to clean the wafer, and within the chamber during the contacting the surface of the epitaxially grown silicon film with the second radical species" in claim 10 is not described in the specification as originally filed.
The reciting "... reacting at least a portion of the random surface terminations on the surface of the epitaxially grown silicon film … " in claim 11 is not described in the specification as originally filed. Claims 12-15 and 19-20 are rejected because they depend on claim 11.
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 1-3, 7-15, 19 and 20 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 pre-AIA the applicant regards as the invention.
The recited in claim 1 “…a substantially uniform distribution … reacting at least a portion of the random surface terminations on the surface of the epitaxially grown silicon film in response to the contacting the surface of the epitaxially grown silicon film with the radical species… the substantially uniform distribution of surface terminations varies by less than or equal to 10% across the surface, wherein the surface terminations are reaction products of the radical species and the random surface terminations…” constitutes an indefinite subject matter. It is not clear what “the substantially uniform distribution of surface terminations varies by less than or equal to 10% across the surface” means, and what “reaction products of the first radical species and the random surface terminations” is, for example, how the “substantially uniform distribution of surface terminations varies by less than or equal to 10% across the surface” is measured/determined/judged, and what is a baseline for measuring/determining/judging the “varies by less than or equal to 10% across the surface.” It is not clear how the random surface terminations are generated on the surface of the epitaxially grown silicon film since orientation of the epitaxially grown film is usually well-defined, while random surface terminations are apparently random. It is also not clear what “at least a portion” represents since no any minimum percentage of the portion is defined for being reacted, making the claim impossible to determine infringement and/or scope. Also, the term “random” and “substantially uniform” in claim 1 is a relative term which renders the claim indefinite. The term “random” and “substantially uniform is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the metes and bounds of claim 1 are not readily ascertainable. Clarification and/or correction are/is required. Claims 2, 3 and 7-10 are rejected because they depend on claim 1.
The term “random” in claim 2 is a relative term which renders the claim indefinite. The term “substantially uniform” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “substantially uniform” in claim 3 is a relative term which renders the claim indefinite. The term “substantially uniform” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “random” in claim 7 is a relative term which renders the claim indefinite. The term “substantially uniform” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The recited in claim 11 “…reacting at least a portion of the random surface terminations on the surface of the epitaxially grown silicon film in response to the contacting the surface of the epitaxially grown silicon film with the radical species, and forming a substantially uniform distribution… the substantially uniform distribution of surface terminations varies by less than or equal to 10% across the surface, wherein the surface terminations are reaction products of the radical species and the random surface terminations…” constitutes an indefinite subject matter. It is not clear what “the substantially uniform distribution of surface terminations varies by less than or equal to 10% across the surface” means, and what “reaction products of the first radical species and the random surface terminations” is, for example, how the “varies by less than or equal to 10% across the surface” is measured/determined/judged, and what is a baseline for measuring/determining/judging the “varies by less than or equal to 10% across the surface.” It is not clear how the random surface terminations are generated on the surface of the epitaxially grown silicon film since orientation of the epitaxially grown film is usually well-defined, while random surface terminations are apparently random. It is also not clear what “at least a portion” represents since no any minimum percentage of the portion is defined for being reacted, making the claim impossible to determine infringement and/or scope. Also, the term “random” and “substantially uniform” in claim 1 is a relative term which renders the claim indefinite. The term “random” and “substantially uniform is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the metes and bounds of claim 11 are not readily ascertainable. Clarification and/or correction are/is required. Claims 12-15, 19 and 20 are rejected because they depend on claim 11.
The recited in claim 11 “…a surface of a wafer… a surface of the epitaxially grown silicon film… across the surface…” constitutes an indefinite subject matter. It is not clear whether “the surface” refers to the previously recited the surface of a wafer or the surface of the epitaxially grown silicon film. Therefore, the metes and bounds of claim 11 are not readily ascertainable. Clarification and/or correction are/is required. Claims 12-15, 19 and 20 are rejected because they depend on claim 11.
The term “random” in claim 13 is a relative term which renders the claim indefinite. The term “substantially uniform” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The recited in claim 13 “…silicon 100 or silicon 111…” constitutes an indefinite subject matter. It is not clear what silicon 100 or silicon 111 means/represents. Therefore, the metes and bounds of claim 13 are not readily ascertainable. Clarification and/or correction are/is required.
The term “random” in claim 14 is a relative term which renders the claim indefinite. The term “substantially uniform” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “substantially uniform” in claim 15 is a relative term which renders the claim indefinite. The term “substantially uniform” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “random” in claim 19 is a relative term which renders the claim indefinite. The term “substantially uniform” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
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 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.
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 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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-3, 7 and 8 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Tabari et al (US 20120210932 A1), or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Tabari et al (US 20120210932 A1).
Regarding claim 1, Tabari teaches a method comprising using exposing (contacting) a surface of an epitaxially grown silicon film with a plasma (radical species), wherein the surface comprises epitaxial silicon and/or non-epitaxial silicon (random surface terminations) (0042-0044), selectively etching (reacting) at least a portion of the random surface terminations (epitaxial silicon and/or non-epitaxial silicon) on the surface of the epitaxially grown silicon film in response to the contacting the surface of the epitaxially grown silicon film with the radical species (0044, 0045), same process as instantly claimed processing the surface of the epitaxial grown silicon film. Even if it is not clearly envisaged the process of Tabari “forming a substantially uniform distribution of surface terminations bound to the surface of the epitaxially grown silicon film, wherein the substantially uniform distribution of surface terminations varies by less than or equal to 10% across the surface, wherein the surface terminations are reaction products of the radical species and the random surface terminations”, this limitation still would have been reasonably expected to one skilled in the art before the effective filing date, because the same or similar process is expected to produce the same or similar results/effects. It is also axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art.
Regarding claim 2, Tabari teaches that the plasma (radical species) selectively (preferentially) etches the non-epitaxial silicon (reacts preferentially with the random surface terminations) as compared to epitaxial silicon of the epitaxially grown silicon film (Tabari 0044). It is well-established that the same or similar process is expected to produce the same or similar results/effects. It is also axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art.
Regarding claim 3, Tabari teaches that the plasma (radical species) comprises a hydrogen plasma/radical for processing the surface of the epitaxially grown silicon film (Tabari 0044 and claim 17), same process as instant claim. Even if it is not clearly envisaged that the substantially uniform distribution of surface terminations comprises Si-H moieties, it still would have been reasonably expected to one skilled in the art before the effective filing date that “the substantially uniform distribution of surface terminations comprising Si-H moieties” is within the teaching of Tabari, because the same or similar process is expected to produce the same or similar results/effects. It is also axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. It is well established that If the composition is physically the same, it must have the same properties. “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II.
Regarding claim 7, Tabari teaches that the non-epitaxial silicon surface (random surface terminations) is formed while forming the epitaxial silicon film by using a gas including at least one of H2, HCl and Cl2, a source gas includes one of SiH4, dichlorosilane or SiCl4, and a phosphorus dopant (Tabari 0019, 0042-0044). Therefore, it still would have been reasonably expected to one skilled in the art before the effective filing date that the random surface terminations (non-epitaxial silicon) comprise combinations of two or more of silicon moieties, hydrogen moieties, chlorine moieties and phosphorous moieties, because silicon, hydrogen, chlorine and phosphorous being used in the process for forming the non-epitaxial silicon (random surface terminations). If the composition is physically the same, it must have the same properties. “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II.
Regarding claim 8, Tabari teaches that the radical species is hydrogen (Tabari 0044), same radical as disclosed in for example [0063] of instant PGPUB US 20230265582 A1, and the surface is the surface of the epitaxial grown silicon film (Tabari 0044). Therefore, it is reasonably expected to one skilled in the art before the effective filing date that “covalent bonds” between the first radical species and the surface is formed in the process of Tabari, because the same or similar process is expected to produce the same or similar results/effects. It is also axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. It is well established that If the composition is physically the same, it must have the same properties. “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tabari et al (US 20120210932 A1) as applied to claim 1 above, and further in view of Dube et al (US 20180230624 A1, “Dube”).
Regarding claim 9, Tabari teaches the radical species (a second radical species) and forming the epitaxially grown silicon film on a surface of a wafer/substrate as addressed above, but does not explicitly teach using a first radical species to clean a wafer before forming the epitaxially grown silicon film on the wafer. However, Dube teaches a method for forming an epitaxial layer/film, wherein a surface of a substrate is cleaned using a plasma/radical (first radical species) before forming the epitaxially grown silicon film on the substrate/wafer (0016, 0017 and claims 1-8). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Tabari per teachings of Dube in order to provide the deposited epitaxial firm with improved quality (Dube 0078-0080).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Tabari/Dube as applied to claim 9 above, and further in view of Olsen et al (US 20180138038 A1, “Olsen”).
Regarding claim 10, Tabari/Dube teaches use of the plasma (first radical species) to clean the wafer and use of the plasma (second radical species) contacting the surface of the epitaxially grown silicon film as addressed above, but does not explicitly teach that the wafer is located within a chamber during use of the first radical species to clean the wafer, and within the chamber during the contacting the surface of the epitaxially grown silicon film with the second radical species. However, Olsen teaches a method for epitaxial deposition, wherein a first plasma/radical etch/clean process of a surface of a substrate and a second plasma/radical etch/clean process of the surface of the substrate is performed with a same chamber (0031, 0061, 0069, claims 1 and 9) Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Tabari/Dube per teachings of Olsen in order to decrease the chance of contamination and improves the quality of the deposited epitaxial film (Olsen 0061, 0069). Regarding the chamber limitation, it is an apparatus limitation in a process claim. Unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Tarczy-Hornoch 158 USPQ 141, 150; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA).
Claims 11-15, 19 and 20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Yan et al (US 20180076031 A1, “Yan”), or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Yan et al (US 20180076031 A1, “Yan”).
Regarding claim 11, Yan teaches a film deposition method comprising within a chamber for example chamber 408/416 (first chamber) using a plasma (first radical species) to remove an oxide from a surface of a substrate/wafer (0066-0069); transferring the substrate/wafer to a chamber for example chamber 410/412/414 (second chamber) (0069); within the second chamber, epitaxially growing a layer comprising silicon (silicon film) on the surface from which the oxide was removed, thus forming an epitaxially grown silicon film, wherein a surface of the epitaxially grown silicon film comprises absorbed/trapped species surface of a crystalline silicon (random surface terminations) (0017, 0035, 0068-0069 and claim 1); transferring the wafer, having the epitaxially grown silicon film thereon, back to the chamber 408/416 (first chamber) (0069); and within the chamber 408/416 (first chamber), contacting the surface of the epitaxially grown silicon film with a second plasma (second radical species), thus removing (reacting) absorbed or trapped species (at least a portion of the random surface terminations) on the surface of the epitaxially grown silicon film (0038, 0049, 0058, 0069, 0070, claims 1, 13 and 16), same process as instant claimed. Even if it is not clearly envisaged the process of Yan “forming a substantially uniform distribution of surface terminations bound to the surface of the epitaxially grown silicon film, wherein the substantially uniform distribution of surface terminations varies by less than or equal to 10% across the surface, wherein the surface terminations are reaction products of the second radical species and the random surface terminations”, this limitation still would have been reasonably expected to one skilled in the art before the effective filing date, because the same or similar process is expected to produce the same or similar results/effects. It is also axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. Furthermore, it is noted that the claimed invention calls for process claims, wherein the steps of the process are met by the applied prior art. It is well established that unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Tarczy-Hornoch 158 USPQ 141, 150; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA).
Regarding claim 12, Yan teaches the transferring the wafer to the second chamber and the transferring the wafer back to the first chamber are performed using robot/robotics (0066, 0069). Furthermore, it is noted that the claimed invention calls for process claims, wherein the steps of the process are met by the applied prior art. It is well established that unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Tarczy-Hornoch 158 USPQ 141, 150; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA).
Regarding claim 13, Yan teaches that the random surface terminations comprise crystalline silicon (e.g., Si <100> or Si <111>) (0017), reading on at least one of silicon 100 or silicon 111. Further, it is well-established that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also see MPEP 2144.07.
Regarding claim 14, Yan teaches the second radical species reacts preferentially with the absorbed or trapped species (random surface terminations) without damaging or etching the substrate with the epitaxially deposited layer comprising silicon (as compared to epitaxial silicon of the epitaxially grown silicon film) (0035. 0038, 0049, 0058). It is well-established that the same or similar process is expected to produce the same or similar results/effects. It is also axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art.
Regarding claim 15, Yan teaches that the second radical species comprises a plasma of hydrogen-containing precursor (hydrogen radical) (fig 2, 0040, 0041, 0058, claims 1 and 7), Therefore, it is reasonably expected to one skilled in the art before the effective filing date that “the substantially uniform distribution of surface terminations comprising Si-H moieties” is within the teaching of Yan, because the same or similar process is expected to produce the same or similar results/effects. It is also axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. It is well established that If the composition is physically the same, it must have the same properties. “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II.
Regarding claim 19, Yan teaches that the growth process of epitaxial layer is performed with dichlorosilane, phosphorous-containing gas, arsenic-containing gas, hydrogen chloride or combination thereof (0035-0037). Therefore, it still would have been reasonably expected to one skilled in the art before the effective filing date that the random surface terminations comprise combinations of two or more of silicon moieties, hydrogen moieties, chlorine moieties phosphorous moieties and arsenic moieties, because silicon, hydrogen, chlorine, phosphorous and arsenic being used in the process for forming the random surface terminations of the epitaxial silicon layer. If the composition is physically the same, it must have the same properties. “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II.
Regarding claim 20, Yan teaches that the second plasma/radical species comprises hydrogen, and the surface is the surface of the epitaxial grown silicon film (Yan 0041, 0058, claims 1, 7, 16 and 19). Therefore, it is reasonably expected to one skilled in the art before the effective filing date that “covalent bonds” between the first radical species and the surface of the epitaxially grown silicon film is formed in the process of Yan, because the same or similar process is expected to produce the same or similar results/effects. It is also axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. It is well established that If the composition is physically the same, it must have the same properties. “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Applicant’s arguments that “There is no disclosure in Tabari about the surface of an "epitaxially grown silicon film [(Tabari’s 302)]… wherein the surface comprises random surface terminations; [and] reacting at least a portion of the random surface terminations on the surface of the epitaxially grown silicon film in response to the contacting the surface of the epitaxially grown silicon film with the radical species … Tabari does not disclose "forming a substantially uniform distribution of surface terminations bound to the surface of the epitaxially grown silicon film wherein the surface terminations are reaction products of the radical species and the random surface terminations” have been considered, but not found persuasive. It should be firstly noted that “random surface terminations” is as broad as infinite surface terminations. Given the broadest reasonable interpretation, the instantly claimed “random surface terminations” can be interpreted any surface of an epitaxially grown silicon film. It is well established that 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). Furthermore, as addressed above, Tabari explicitly teaches an epitaxially grown silicon film and the epitaxially grown silicon film exposing/contacting with a plasma/radical species (0042-0044). Even if the applicant’s specified “Tabari’s 302” is considered, it is noted that 302 of Tabari explicitly represents an “epitaxial silicon” which is contact with a plasma (radical species) (0036-0037). Since Tabari explicitly teaches a same/similar process/step of contacting a surface of an epitaxially grown silicon film with a radical species, why the surface of the epitaxially grown silicon film of Tabari does not comprise “random surface terminations?” and why the process/step of contacting the epitaxial grown silicon film with the radical species of Tabari does not “reacting at least a portion of the random surface terminations on the surface of the epitaxially grown silicon film in response to the contacting the surface of the epitaxially grown silicon film with the radical species” and “forming a substantially uniform distribution of surface terminations bound to the surface of the epitaxially grown silicon film wherein the surface terminations are reaction products of the radical species and the random surface terminations?” It is well-established that the same or similar process is expected to produce the same or similar results/effects. It is also axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art.
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 was made, 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).
Applicant’s arguments that “Applicant is claiming a method including films and compounds that have specifically-claimed structures. Tabari does not teach the methods including such films and compounds with the claimed structural elements,” have been considered, but not found persuasive. it is firstly noted that Tabari explicitly teaches a method including silicon layers (film) as addressed above. Furthermore, nowhere in claim 1 recites “compounds that have specifically-claimed structures.” It is well established that 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). It is also well established that Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, consult In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Also, the transitional term “comprising” is used in the instant claim. Therefore, any additional features/elements/structures can be included Tabari. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (see MPEP 2111.03). It is further noted that the instantly claims are directing to a method, not a product.
Applicant’s arguments that “Yan does not teach Applicant's claimed "random surface terminations" comprised on the surface of the epitaxially grown silicon film, nor that a "substantially uniform distribution of surface terminations" remains on the surface that are "reaction products of the second radical species and the random surface terminations … Yan discloses treating an epitaxial silicon film with two radical species” have been considered, but not found persuasive. It is firstly noted that the instant claim does not exclude two radical species. Furthermore, Yan explicitly teaches the process/steps of “… using a first radical species to remove an oxide from a surface of a wafer; transferring the wafer …epitaxially growing a silicon film on the surface; transferring the wafer…contacting the surface of the epitaxially grown silicon with a second radical species…,” why Yan does not comprises “random surface terminations" on the surface of the epitaxially grown silicon film?” and why "substantially uniform distribution of surface terminations" does not remain on the surface that is "reaction products of the second radical species and the random surface terminations? It is well established that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it is examiner’s position that an anticipation case or/and a prima facie case of obviousness is well-established per teachings/combination of the instantly cited references.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hua Qi whose telephone number is (571)272-3193. The examiner can normally be reached 9am-6pm.
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/HUA QI/ Primary Examiner, Art Unit 1714