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 .
DETAILED ACTION
In response to an Office action mailed on 10/23/2025 ("10-23-25 OA"), the Applicant substantively amended claims 1, 9, 10, 11, 12 and 18, canceled claims 2-8, 16, 17 and 20 and added news claims 21-30 on 02/23/2026 ("02-23-26 Response").
Currently, claims 1, 9-15, 18, 19 and 21-30 are pending.
Information Disclosure Statement (IDS)
Applicant submitted two information disclosure statements on 02/19/2026 ("02-19-26 IDS") and 05/11/2026 (“05-11-26 IDS”) after the 10-23-25 OA. Since the Applicant has met the provisions of 37 CFR 1.97, the 02-19-26 IDS and the 05-11-26 IDS are in compliance and are being considered by the examiner.
Response to Arguments
Despite the Applicant’s arguments starting on page 9 of the 02-23-26 Response, the objection to the drawings has been maintained.
The Applicant argues that “There is no need for the above-noted features of claim 1 to ‘be shown or the feature(s) canceled from the claim(s),’ as asserted by the Examiner, because the originally-filed Specification provides sufficient description of the features such that a drawing is not necessary for the understanding of the claimed subject matter.” Examiner respectfully disagrees.
None of the drawings actually track what the Applicant has recited in the method claims when it comes to (i) selectively depositing a SAM on the bottom of the gap, (ii) forming a barrier layer on the bottom of the gap (that has the deposited SAM on it), (iii) selectively depositing a first metal liner on, inter alia, on the bottom, (iv) selective depositing a second metal liner on the first metal liner and then (v) removing the SAM after the (iv) step.
It is difficult to understand how the SAM layer that is at the very bottom of a sandwich of barrier layer, first metal liner and the second metal liner is selectively removed while leaving behind the barrier layer, first metal liner and the second metal liner. Fig. 1B shows a SAM 150. Fig. 1B fails to show a barrier layer 160 on the bottom 149 of the gap 146. Fig. 1C fails to show a first metal liner 170 deposited on the bottom 149 of the gap. Fig. 1D fails to show a second metal liner 180 deposited on the bottom 149. None of the Figures actually show SAM 150 that is removed after the second metal liner 180 is deposited.
What is the chemical mechanism with which the (i) the barrier layer is able to be deposited at the bottom 149 of the gap 146 with the intervening SAM layer and (ii) the SAM layer that is able to be removed after selectively depositing the second metal liner on the first metal liner and the barrier layer?
Applicant’s amendments to the independent claim 1 have overcome the prior-art rejections based on the combination of Chin, Yu and Chawla set forth starting on page 3 of the 10-23-25 OA.
Substantive-amendments to the independent claim 1 and new claims 24-30 required further consideration and updated search. New grounds of rejection are provided below.
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 “removing the SAM after selectively depositing the second metal liner on the first metal liner” of the independent claim 1 must be shown or the feature(s) canceled from the claim(s). Similar features of the independent claims 24 and 27 must also be shown. 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.
Moreover, the drawings are objected to under 37 CFR 1.83(b) because they are incomplete.
37 CFR 1.83(b) reads as follows:
When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
It is difficult to understand how the SAM layer that is at the very bottom of a sandwich of barrier layer, first metal liner and the second metal liner is selectively removed while leaving behind the barrier layer, first metal liner and the second metal liner. Fig. 1B shows a SAM 150. Fig. 1B fails to show a barrier layer 160 on the bottom 149 of the gap 146. Fig. 1C fails to show a first metal liner 170 deposited on the bottom 149 of the gap. Fig. 1D fails to show a second metal liner 180 deposited on the bottom 149. None of the Figures actually show SAM 150 that is removed after the second metal liner 180 is deposited.
What is the chemical/physical mechanism with which (i) the barrier layer is able to be deposited at the bottom 149 of the gap 146 with the intervening SAM layer and (ii) the SAM layer that is able to be removed after selectively depositing the second metal liner on the first metal liner and the barrier layer?
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 the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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, 9-15, 18, 19 and 21-30 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 first paragraph of 35 U.S.C. §112 contains a written description requirement that is separate and distinct form the enablement requirement. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2019) (en banc). The purpose of the written description requirement is to "ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification." Id. at 1353-54 (citation omitted). This requirement "ensures that the public receives a meaningful disclosure in exchange for being excluded from practicing an invention for a period of time." Id.
To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; Ariad, 598 F.3d at 1351.
The written description requirement does not demand any particular form of disclosure; however, "a description that merely renders the invention obvious does not satisfy the requirement." Ariad, 598 F.3d at 1352 (citations omitted).
Here, the independent claim 1 fails to comply with the written description requirement, because the Applicant did not have possession of the claimed invention in which the SAM layer, which is deposited at the bottom of the gap, is later selectively removed with the barrier layer, the first metal liner and the second metal liner that were deposited on top of the SAM layer.
What is the chemical/physical mechanism with which (i) the barrier layer is able to be deposited at the bottom 149 of the gap 146 with the intervening SAM layer?
Also, what is the chemical/physical mechanism with which (ii) the SAM layer is able to be removed after selectively depositing the second metal liner on the first metal liner and the barrier layer? The burden of proof is on the Applicant to show that the Applicant had possession of the claimed invention vis-a-vis (i) and (ii) above.
Claims 9-15, 18, 19 and 21-23 are rejected for depending from the rejected independent claim 1.
Independent claim 24 fails to comply with the written description requirement for the same reasons that the independent claim 1 fails to comply with the written description requirement.
Claims 25 and 26 are rejected for depending from the rejected independent
claim 24.
Independent claim 27 fails to comply with the written description requirement for the same reasons that the independent claim 1 fails to comply with the written description requirement.
Claims 28-30 are rejected for depending from the rejected independent
claim 24.
Claims 1, 9-15, 18, 19 and 21-30 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Independent claim 1 is non-enabling for two reasons:
First, what is the chemical/physical mechanism with which (i) the barrier layer is able to be deposited at the bottom 149 of the gap 146 with the intervening SAM layer?
Second, what is the chemical/physical mechanism with which (ii) the SAM layer is able to be removed after selectively depositing the second metal liner on the first metal liner and the barrier layer?
It is clear on the record that the disclosure of the present application would require undue experimentation, because the Applicant has not met their burden of proof that the claimed invention in enabling vis-a-vis (i) and (ii) above.
Section 2164.01(a) of the MPEP states:
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that “there was considerable direction and guidance” in the specification; there was “a high level of skill in the art at the time the application was filed;” and “all of the methods needed to practice the invention were well known.” 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that “it would not require undue experimentation to obtain antibodies needed to practice the claimed invention.” Id., 8 USPQ2d at 1407.
The breadth of claim 1 contains non-enabling limitations that encompass the chemical/physical mechanisms (i) and (ii) above. The present invention is directed to method of forming a microelectronic device which involves a field of physical chemistry (Factor B). The physical chemistry art is an evolving art in which new processes are discovered (Factor C). Experimenting with the methods require experimenting with different chemistries and physics of being able to selectively deposit and selectively remove deposited layers. Here, the Applicant has not demonstrated how the chemical/physical mechanisms (i) and (ii) would enable the method as recited in claim 1. One of ordinary skill in the art is presumably one with a post-graduate degree (Factor D). As stated above, the present application is directed to an unpredictable art (i.e., chemistry) (Factor E). No amount of direction is provided by the inventor (e.g., neither the drawings nor the Specification gives guidance on (i) and (ii) above (Factor F), and there are no working examples (Factor G). The amount of experimentation needed to make or use the invention based on said other species would be insurmountable (Factor H).
Despite the fact that the one of ordinary skill would possess a post-graduate degree, no amount of academic and/or industrial experience would overcome the lack of direction and no working examples for other species of the claimed genus. The weight of Factors A through H above would unduly burden one of ordinary skill in the art to make of use the claimed invention.
Claims 9-15, 18, 19 and 21-23 are rejected, because they depend from the rejected base claim 1.
Independent claim 24 is non-enabling for the same reasons that the independent claim 1 is non-enabling.
Claims 25 and 26 are rejected for depending from the rejected independent claim 24.
Independent claim 27 is non-enabling for the same reasons that the independent claim 1 is non-enabling.
Claims 28-30 are rejected for depending from the rejected independent claim 27.
The burden of proof is on the Applicant to show that the Applicant has enabled the claimed invention vis-a-vis (i) and (ii) above.
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, 9-15, 18, 19 and 21-30 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.
Section 2173.02.I. of the MPEP provides the following guidance on how pre-issuance claims under examination are construed differently than patented claims:
Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record. While "absolute precision is unattainable" in patented claims, the definiteness requirement "mandates clarity." Nautilus, Inc. v. Biosig Instruments, Inc., 527 U.S. __, 134 S. Ct. 2120, 2129, 110 USPQ2d 1688, 1693 (2014). A court will not find a patented claim indefinite unless the claim interpreted in light of the specification and the prosecution history fails to "inform those skilled in the art about the scope of the invention with reasonable certainty." Id. at 1689.
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The Office does not interpret claims when examining patent applications in the same manner as the courts. In re Packard, 751 F.3d 1307, 1312, 110 USPQ2d 1785, 1788 (Fed. Cir. 2014); In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Office construes claims by giving them their broadest reasonable interpretation during prosecution in an effort to establish a clear record of what the applicant intends to claim. Such claim construction during prosecution may effectively result in a lower threshold for ambiguity than a court's determination. Packard, 751 F.3d at 1323-24, 110 USPQ2d at 1796-97 (Plager, J., concurring). However, applicant has the ability to amend the claims during prosecution to ensure that the meaning of the language is clear and definite prior to issuance or provide a persuasive explanation (with evidence as necessary) that a person of ordinary skill in the art would not consider the claim language unclear. In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)( claims are given their broadest reasonable interpretation during prosecution "to facilitate sharpening and clarifying the claims at the application stage"); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Here, the independent claim 1 is indefinite, because it is unclear how the SAM layer, which is deposited at the bottom of the gap, is later selectively removed with the barrier layer, the first metal liner and the second metal liner that were deposited on top of the SAM layer.
What is the chemical/physical mechanism with which (i) the barrier layer is able to be deposited at the bottom 149 of the gap 146 with the intervening SAM layer?
Also, what is the chemical/physical mechanism with which (ii) the SAM layer is able to be removed after selectively depositing the second metal liner on the first metal liner and the barrier layer?
Claims 9-15, 18, 19 and 21-23 are indefinite, because they depend from the indefinite claim 1.
Independent claim 24 is indefinite for the same reasons that the independent claim 1 is indefinite.
Claims 24 and 25 are rejected for depending from the rejected independent
claim 24.
Independent claim 27 is indefinite for the same reasons that the independent claim 1 is indefinite.
Claims 28-30 are rejected for depending from the rejected independent
claim 27.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JUNG whose telephone number is (408) 918-7554. The examiner can normally be reached on 8 A.M. to 7 P.M.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eliseo Ramos-Feliciano, can be reached on (571) 272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL JUNG/Primary Examiner, Art Unit 2817 23 June 2026
Prosecution Insights