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 .
The response of the application has been read and given careful consideration. Rejection of the previous action not repeated below are withdrawn based upon the amendment and arguments of the applicant. Responses to the arguments of the applicant are presented after the first rejection which they are directed to. The rejection of Wang et al. CN 109706550 and Bi et al. CN 101259960 are withdrawn as the CNT layer is not formed and then the coatings formed over the NT layer.
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 (i.e., changing from AIA to pre-AIA ) 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-14 and 17 are rejected under 35 U.S.C. 102(a)(1) as being fully anticipated by Maruyama et al. 20200399128.
Maruyama et al. 20200399128 in example 1 describes SWCNT which are vertically aligned on a substrate using alcohol catalyzed CVD, followed by coating with BNNT [0231-0244]. In example 2, a layer of randomly oriented CNTs are then coated with BNNT (BN is a two dimensional material). Images are shown in figure 4 [0244-0252]. In example 3, a horizontally oriented layer of SWCNTs with a diameter of 2 nm are coated with BNNT to form a 5 nm CNT/BN, where figure 5c shows two nanotubes which cross above the line (v) in the figure[0253-0258] (see figure 5(a) + 5(c)). In example 5, the thermal stability of the film formed in example 3 is heated and found to be stable up to about 700 degrees C. These were heated to almost 800 degrees C (in air) SWCNTs without the coated are shown to burn/decompose at about 450 degrees C in air (see figure 7). Examples 3 (figure 5 and ) and 5 revealed that a 30 minute CVD coating of BN yielded a SWCNT/BN nanotube with a diameter 3 nm greater than the bare SWCNT. Example 5 also describes SWCNT fibers of example 3 coated for 90 minutes with BN using CVD, which would inherently form a BN CVD coating which is approximately 3 times as thick as the 30 minute BN CVD coating. In example 5 where a chemical vapor deposition was used for 90 minutes to form a BN coating over SWCNT which are oriented horizontally relative to the substrate (see figure 7 and example 3) where some of the nanotubes are crossed as illustrated in figure 5c and then heated to 800 degrees C (see figure 7), which shifts the deposition of the SWCNT from 400 degrees C to about 700 degrees C and is held to result in a layer BN nanotubes without carbon nanotubes with some interconnection. Example 7 is similar to example 3, but forms MoS2 nanotubes over the aligned CNTs. Example 8 is similar to example 2, but forms a BNNT over randomly oriented CNTs and then a MoS2 (which is a two dimensional material) layer/coating.
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A structure comprising a 1st single-walled carbon nanotube is coated with a 2nd layer at least one selected from a first boron nitride, a first transition metal dichalcogenide, a second carbon, a first black phosphorus, and a first silicon. a 3rd layer, preferably a tubular 3rd layer, more preferably a tubular 3rd layer that is substantially coaxial with the 1st single-walled carbon nanotube, layered on the 2nd layer or the 2nd layer, wherein the 3rd layer may be made of at least one selected from the group B consisting of a second boron nitride, a second transition metal dichalcogenide, a third carbon, a second black phosphorus, and a second silicon, where the transition metal dichalcogenide is The transition metal dichalcogenide is a compound represented by “MCh2” where M represents a transition metal such as Mo, W, Ti, Zr, Hf, Nb, and Ta, and Ch represents a chalcogen element, S, Se, and Te, and examples thereof include MoS.sub.2, WSe.sub.2 [0027,0031-0032,0117]
In example 5 where a chemical vapor deposition was used for 90 minutes to form a BN coating over SWCNT which are oriented horizontally relative to the substrate (see figure 7 and example 3) where some of the nanotubes are crossed as illustrated in figure 5c and then heated to 800 degrees C (see figure 7), which shifts the deposition of the SWCNT from 400 degrees C to about 700 degrees C and is held to result in a layer BN nanotubes without carbon nanotubes with some interconnection. The examiner had not appreciated that the orientation in examples 3 and 5 are randomly oriented horizontally. The bare SWCNT in example 3 had a diameter of 2 nm and after coating for 30 minutes with CVD, the BN coated SWCNT had a diameter of 5 nm, so the 90 minute CVD coating is held form a conformal coating over the SWCNT/BN nanotubes which when the carbon is removed, yields a hollow BNNT with interconnected interior. The additional thickness of the coating formed after the first BN shell is formed fills a portion of the voids between (adjacent) fibers. Boron nitride is a two dimensional material, noting that claim 4 recites it as such.
In the response of 5/11/2026 and 5/27/2026, the applicant argues that the mesh is not taught. A closer look at figures 5a-d including figure 5c which shows the crossed fibers above the line (v). Examples 3 and 5 revealed that a 30 minute CVD coating of BN yielded a SWCNT/BN nanotube with a diameter 3 nm greater than the bare SWCNT. Example 5 also describes SWCNT fibers of example 3 coated for 90 minutes with BN using CVD, which would inherently form a BN CVD coating which is approximately 3 times as thick as the 30 minute BN CVD coating.
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This rejection could be overcome by adding the step of attaching the pellicle to a frame.
Claims 1-14 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Maruyama et al. 20200399128.
Maruyama et al. 20200399128 does not exemplify the testing of the embodiments where the coating is a transition metal dichalcogenide and the CNT is removed by heating or the case where random CNTs are used as the template and then removed by heating.
With respect to claims 1-10, it would have been would have been obvious to one skilled in the art to modify the process of example 5 by using the heating to test the thermal stability of embodiments where the BN coating is replaced with a transition metal dichalcogenide is a compound represented by “MCh2” where M represents a transition metal such as Mo, W, Ti, Zr, Hf, Nb, and Ta, and Ch represents a chalcogen element, S, Se, and Te, and examples thereof include MoS.sub.2 and WSe.sub.2. with a reasonable expectation of determining the thermal stability of resulting nanotubes.
With respect to claims 1-10, it would have been would have been obvious to one skilled in the art to modify the process of example 7 heating to remove the CNT templates as in example 5 with a reasonable expectation of determining the thermal stability of resulting MoS2 nanotubes.
With respect to claims 1-14 and 17, it would have been would have been obvious to one skilled in the art to modify the process of example 2 by using the heating of example 5 to test the thermal stability of embodiments where randomly oriented CNTs are used as the template with a reasonable expectation of determining the thermal stability of resulting nanotubes.
With respect to claims 1-14 and 17-18, it would have been would have been obvious to one skilled in the art to modify the process of examples 2 or 7 by using the heating of example 5 to test the thermal stability of embodiments where randomly oriented CNTs are used as the template and the coating is replaced with a transition metal dichalcogenide is a compound represented by “MCh2” where M represents a transition metal such as Mo, W, Ti, Zr, Hf, Nb, and Ta, and Ch represents a chalcogen element, S, Se, and Te, and examples thereof include MoS.sub.2 and WSe.sub.2. with a reasonable expectation of determining the thermal stability of resulting nanotubes.
With respect to claims 1-14 and 17-18, it would have been would have been obvious to one skilled in the art to modify the process of example 7 by using the heating of example 5 to test the thermal stability of embodiments where randomly oriented CNTs are used as the template with a reasonable expectation of determining the thermal stability of resulting nanotubes.
In response to the arguments of 5/11/2026 and 5/27/2026, the argued position does not apply to example 2, where random CNTs are used as the template for the BNNT, which takes place for 3 hours. The diameters of the BNNT is 4-7 nm (~1.5 nm thick) and a BNNT overcoat which is 7-15 nm (4 nm thick) . The random orientation, which is evidenced in the figures, clearly will include places where the CNT template nanotubes as in contact and the boron nitride forms around this intersection to form the bridged structure required by claims 11-14 and 17 (which are not rejected under this heading as the heating to remove the CNT template is not exemplified. Boron nitride is a two dimensional material, noting that claim 4 recites it as such.
This rejection could be overcome by adding the step of attaching the pellicle to a frame.
Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable Chatterjee et al. 20200272047, in view of Maruyama et al. 20200399128 and Jung et al. 20170038676.
Chatterjee et al. 20200272047 teaches pellicle formed of planar sheets of CNTs with h-BN coated upon them (see figure 4B) [0044]. FIG. 3C illustrates the planar sheet of CNTs coated with boron nitride (BN) 312 and BN nanotubes (BNNTs) 314 forming a CNT-BN-BNNT nanocomposite pellicle 300. The coating of BN on the BN coated CNTs 312 may occur simultaneously as the BNNTs 314 grow. The BN coating on the BN coated CNTs 312 may have a thickness of about 2-5 nm. The CNT-BN-BNNT nanocomposite pellicle 300 may have a total thickness of about 30 nm or less and a length and width of about 30 nm. Each BN coated CNT 312 may be spaced from adjacent BN coated CNTs 312 or adjacent BNNTs 314. As such, the pellicle 300 may have spaces or gaps therethrough [0038] CNTs are etched by hydrogen radicals [0004]. BN is unreactive with hydrogen radicals. The BN coated CNTs 312 and the BNNTs 314 are transparent in UV light, and may have an EUV transmission of about 90% or greater. The pellicle 300 has increased thermomechanical strength [0040].
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Jung et al. 20170038676 teaches the formation of pellicles of nanowires of silicon (Si), carbon (C), nickel (Ni), platinum (Pt), gold (Au), ruthenium (Ru), indium phosphide (InP), gallium nitride (GaN), silicon nitride (Si.sub.3N.sub.4), silicon dioxide (SiO2), titanium dioxide (TiO2), yttrium barium copper oxide (YBCO), and silicon carbide (SiC), and a combination thereof [0016]. The pellicle membrane may further include a capping layer, the capping layer covering at least one surface of the porous thin film. In some example embodiments, the capping layer may cover the first surface of the porous film and a second surface of the porous film, and the first surface of the porous film and the second surface on opposing sides of the porous film. In some example embodiments, the capping layer may include a first material, and the porous film includes a second material, wherein the first material is different from the second material. The capping layer may include a first material selected from the group consisting of silicon carbide (SiC), silicon dioxide (SiO.sub.2), silicon nitride (Si.sub.3N.sub.4), silicon oxynitride (SiON), yttrium oxide (Y2O3), yttrium nitride (YN), barium carbide (BaC.sub.2), barium nitride (Ba(NO.sub.3).sub.2), molybdenum (Mo), ruthenium (Ru), and rhodium (Rh), and a combination thereof [0020].
The use of a sacrificial template is taught with respect to figures 12A-E, where a substrate (502) is coated with a sacrificial guide pattern (584/586) . This template is coated with nanowires ((NW) in a solvent) and heated to remove the solvent. The sacrificial layer is removed and the porous film may be attached to a pellicle frame [0157-0167]. FIGS. 3G to 3H, a plurality of nanowires included in the porous thin film 120 of FIG. 1 may have a structure that is equal to and/or similar to at least one selected from the group consisting of, including but not limited to, a nanowire including a nanowire NWG having a crossed structure, and a nanowire NWH having a branched structure, for example, a tetrapod structure. However, example embodiments of inventive concepts are not limited to the examples shown in FIGS. 3A to 3H, and the porous thin film 120 may include nanowires having various shapes [0079].
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Chatterjee et al. 20200272047 does not exemplify embodiments where the carbon nanotubes have been removed.
It would have been obvious to modify the formation of the pellicle taught by Chatterjee et al. 20200272047 by using the heating in air taught by Maruyama et al. 20200399128 to remove the carbon nanotubes which are taught by Chatterjee et al. 20200272047 at [0004,0040] as sensitive to degradation by hydrogen radicals and would degrade over time, while BN coated CNTs and BNNTs are not with a reasonable expectation of forming a useful pellicle membrane which is EUV transparent mounted on a frame, noting that the use of sacrificial templates is known in the pellicle art as evidenced by the teachings of Jung et al. 20170038676 with respect to figures 12A-E.
In the response of 2/24/2026, the applicant argues that Chatterjee et al. teaches away from removing the CNTs. The examiner points out that Chatterjee at [0002-0006] describes the susceptibility of CNTs to etching by hydrogen radicals and that they need to be protected by a coating to prevent this. While the BN coating does render the composite nanotubes resistance to hydrogen etching, Maruyama et al. 20200399128 clearly establishes instability of the BN/CNTs when heated and Jung et al. 20170038676 establishes the pellicle are susceptible to damage from heating during the EUV exposure [0197] and establishes that the use of templates in the pellicle art is known. The CNTs of Chatterjee et al. 20200272047 and Maruyama et al. 20200399128 are clearly templates which control the deposition of the BN. The rejection stands.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/766358 (20250328070). Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 1 recites: A method of manufacturing a pellicle, comprising: forming a membrane comprising a plurality of carbon nanotubes over a filter; attaching the membrane to a frame; forming an inorganic nanotube surrounding each of the carbon nanotubes, wherein the inorganic nanotubes are made of a different material than the carbon nanotubes; and at least partially removing the carbon nanotubes.
Claim 3 recites: The method according to claim 1, wherein the different material includes one or more of boron nitride, hexagonal boron nitride (h-BN), SiC, MoS.sub.2, MoSe.sub.2, WS.sub.2, WSe.sub.2, SnS.sub.2, SnS, ZrO.sub.2, ZrO, and TiO.sub.2.
Claim 4 recites: The method according to claim 1, wherein the carbon nanotubes are at least partially removed by oxidizing the carbon nanotubes.
Claim 5 recites: The method according to claim 4, wherein oxidizing the carbon nanotubes includes heating the carbon nanotubes at a temperature ranging from 500° C. to 700° C.
Claim 6 recites : The method according to claim 4, wherein the carbon nanotubes are completely removed.
Claim 8 recites: A pellicle, comprising: a membrane including a plurality of inorganic nanotube bundles, wherein each of the plurality of inorganic nanotube bundles includes a plurality of first inorganic nanotubes surrounded by a second inorganic nanotube, wherein the first and second inorganic nanotubes independently include one or more of boron nitride, hexagonal boron nitride (h-BN), SiC, MoS.sub.2, MoSe.sub.2, WS.sub.2, WSe.sub.2, SnS.sub.2, SnS, ZrO.sub.2, ZrO, and TiO.sub.2; and a frame disposed over the membrane.
It would have been obvious to one skilled in the art to modify the process recited in claim 1 by completely removing the carbon nanotubes as in claim 6 and using two dimensional materials boron nitride, MoS.sub.2, MoSe.sub.2, WS.sub.2, WSe.sub.2, SnS.sub.2, SnSe.sub.2 as in claims 3 and 8 with a reasonable expectation of forming a useful pellicle. Further, it would have been obvious to use the heating in the presence of oxygen recited in claims 4 and 5 to facilitate that removal with a reasonable expectation of success. Other claims including claim 8 combined with the process claims render the articles claims 19 and 20 of the instant application obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
This rejection which is made to prevent dual ownership in the future rather than a time-wise extension of patent term, may be withdrawn. The applicant has not pointed out specific differences in the claims of the two applications. This may be withdrawn if this application becomes allowable, while the co-pending application is no.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Martin J Angebranndt whose telephone number is (571)272-1378. The examiner can normally be reached 7-3:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yu (Coris) Fung can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MARTIN J. ANGEBRANNDT
Primary Examiner
Art Unit 1737
/MARTIN J ANGEBRANNDT/Primary Examiner, Art Unit 1737 June 22, 2026
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