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
Claims 1-20 are pending in the application. Amended claim 1 is noted.
The amendment dated 12/03/2025 has been entered and carefully considered. The examiner appreciates the amendments to the claims.
Claim Rejections - 35 USC § 102
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 18 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Weidman (2007/0190362).
Weidman discloses depositing ruthenium containing layers which also contain metals such as titanium and zinc [0093]. This is substantially an identical product that would be expected to be formed by the process of claim 1.
Claim 19 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weidman (2007/0190362).
Weidman discloses a CVD apparatus including sources of all the gases required to be used in the method of claim 1 [0063] as well as a plasma generating system. The disclosed apparatus has all of the components necessary to perform the process of claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 1-9, 12, 14-16, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Weidman (2007/0190362) in view of Lubguban Jr et al (8,574,675) and Pore et al. (9,129,897) alone or when taken in view of Paranjpe et al. (2003/0003635).
Weidman discloses a method of depositing a ruthenium-containing film (Fig. 9) on a substrate by a cyclical deposition process [0086] comprising: contacting the substrate with a first vapor phase reactant comprising a metalorganic precursor comprising a metal, such as titanium, aluminum, or zinc [0086-0088]; and contacting the substrate with a ruthenium tetroxide [0090]; wherein the ruthenium-containing film comprises at least one of a ternary ruthenium oxide [0093]. The metalorganic precursor may be oxidized in step 904 prior to introduction of the ruthenium precursor (Fig. 9) to form a metal oxide layer at a temperature of about 100°C using a reactant such as water vapor [0088]. The reference fails to teach contacting the substrate with a third vapor phase reactant comprising an organic precursor.
Lubguban discloses depositing a metal oxide, such as titanium oxide, barium oxide, aluminum oxide, etc. to act as a nucleation layer for ruthenium deposition (Col. 3, line 60-Col. 4, line 5), wherein the metal oxide may be formed using ozone, water, or an alcohol as a reactant (Col. 5, lines 60-65). It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to use an alcohol as suggested by Lubguban as the oxidizing reactant in the process of Weidman since it was a known alternative to water vapor for forming metal oxide by ALD.
In addition, the references fail to teach the organic precursor being an aldehyde or carboxylic acid. Pore teaches an ALD method of forming a metal films (col.2 lines 43-49) using a reactive organic compound as a reducing agent containing alcohol, aldehyde, or carboxylic acid (col.9 lines 34-56). It would have been obvious to utilize aldehyde to form the ruthenium film in Weidman with the expectation of success because Pore teaches of using an organic precursor such as aldehyde as a reducing agent.
With respect to the limitation of the additional processing step occurring after the first reactant and before the second reactant, the references fail to teach same. However, it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04 section C and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930).
Regardless, Paranjpe teaches an ALD method for fabricating thin films (title) in which the order in which precursors are introduced does not affect the resulting layer (0050). It would have been obvious to vary the order of the precursor introduction in Weidman with the expectation of success because Paranjpe teaches that precursor order doesn’t affect the resulting ALD layer.
Newly added limitation
With respect to the newly added limitation of “the ruthenium-containing film is a metal alloy or a ternary ruthenium oxide”, it is noted that Weidman teaches “one or more layers of ruthenium oxide … together with … another metal oxide such as titanium dioxide” (0081), which meets the limitation of a ternary ruthenium oxide.
Regarding claim 2, Weidman teaches platinum and palladium (0038).
Regarding claim 3, Weidman teaches repeating (0077, 0092).
Regarding claim 4, Weidman teaches trimethylaluminum and a silicon dioxide substrate (0087-0088).
Regarding claim 5, Weidman teaches a metalorganic precursor comprising a metal (0086-0088) and Pore teaches an aldehyde (col.9 lines 34-56). Since the appropriate materials are taught, the increase of the ruthenium content would be another known benefit as the mere observation of still another beneficial result of an old process cannot form the basis of patentability.
Regarding claim 6, Pore teaches an aldehyde (col.9 lines 34-56).
Regarding claim 7, Pore teaches OHC-R4CHO (col.24 line 64).
Regarding claim 8, Pore teaches R3CHO (col.24 line 53).
Regarding claim 9, Pore teaches R5COOH (col.25 line 9).
Regarding claim 12, Weidman teaches TDMAT (0088).
Regarding claims 14-15, the applicant requires specific precursors. It is noted that Weidman teaches that other metal oxides may be deposited with the ruthenium oxide to form ternary oxides as an alternative to titanium, such as aluminum and zinc (0086-0093). Although Weidman does not explicitly disclose the claimed precursors, it would have been obvious to one of ordinary skill in the art to use conventional aluminum or zinc precursors to form ternary zinc ruthenium oxide and aluminum ruthenium oxide as suggested by Weidman as an alternative to titanium ruthenium oxide in the absence of a showing of criticality.
Regarding claim 16, Weidman discloses conventional precursors including metal ethoxides and metal butoxides (0088).
Regarding claim 20, Weidman teaches cobalt (0038).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Weidman (US 2007/0190362) and Lubguban Jr et al (US 8,574,675) and Pore et al. (9,129,897) and Paranjpe et al. (2003/0003635) and further in view of Hamalainen et al (2011/0020546). The combination of Weidman/Lubguban/Pore/Paranjpe fails to teach the appropriate precursor.
Hamalainen discloses forming a noble metal film by ALD (title) wherein a palladium precursor such as Pd(thd)2 is used (0083). It would have been obvious to form a ruthenium-containing layer of Weidman using a palladium metal organic precursor as suggested by Hamalainen as an alternative to titanium, aluminum, etc. since they were known to be suitable for forming palladium films by ALD.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Weidman (US 2007/0190362) and Lubguban Jr et al (US 8,574,675) and Pore et al. (9,129,897) and Paranjpe et al. (2003/0003635) and further in view of Marsh (2002/0008270). The combination of Weidman/Lubguban/Pore/Paranjpe fails to teach the appropriate precursor.
Marsh discloses forming a platinum ruthenium alloy layer by CVD (0031) wherein the platinum precursor may be Pt(acetylacetonate)2 or Pt(F3)4 (0039). It would have been obvious to form a ruthenium-containing layer of Weidman using a platinum metal organic precursor as suggested by Marsh as an alternative to titanium, aluminum, etc. since they were known to be suitable for forming platinum-ruthenium alloy films by vapor deposition.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Weidman (US 2007/0190362) and Lubguban Jr et al (US 8,574,675) and Pore et al. (9,129,897) and Paranjpe et al. (2003/0003635) and further in view of Hatanpaa et al (2007/0148347). The combination of Weidman/Lubguban/Pore/Paranjpe fails to teach the appropriate precursor.
Hatanpaa discloses that multicomponent bismuth-containing oxide films may be deposited by ALD using metalorganic precursors comprising bismuth, such as [(dmb)2Bi-O-Bi(dmb)2]2 (0016). It would have been obvious to form a ruthenium-containing layer of Weidman using a bismuth metal organic precursor as suggested by Hatanpaa as an alternative to titanium, aluminum, etc. since they were known to be suitable for forming multicomponent oxide bismuth films by ALD.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Weidman (US 2007/0190362) and Lubguban Jr et al (US 8,574,675) and Pore et al. (9,129,897) and Paranjpe et al. (2003/0003635) and further in view of Gatineau et al. (2009/0242852). The combination of Weidman/Lubguban/Pore/Paranjpe fails to teach ternary ruthenium oxide.
Gatineau teaches the deposition of ternary oxide films containing ruthenium and alkali earth metals (title). It would have been obvious to deposit ternary ruthenium oxide films in the combination with the expectation of success because Gatineau teaches of depositing ternary oxide films.
Double Patenting
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,685,991. Although the claims at issue are not identical, they are not patentably distinct from each other because although they differ in scope, the ‘991 claims meet every limitation of the instant claims.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,685,991 as applied above in view of Lubguban Jr et al (US 8,574,675). Lubguban discloses forming metal oxide using metal selected from barium (Col. 3, line 58). It would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to form a ruthenium-containing layer of the ‘991 claims using a barium metal organic precursor as suggested by Lubguban since they were known to be suitable for forming metal oxide films.
Response to Arguments
Applicant's arguments filed 12/03/2025 have been fully considered but they are not persuasive.
Applicant first argues that the references fail to teach co-flowing two vapor phase reactants (p.6 last paragraph).
The examiner agrees in part. While the examiner concurs that the references fail to teach co-flowing two vapor phase reactants, it is noted that independent claim 1 as presently written does not require co-flowing two vapor phase reactants. It is specifically noted that such a limitation is not currently recited in the independent claim. Furthermore, the applicant requires a “cyclical deposition process” (claim 1 line 2), which generally means that one precursor is introduced and purged before the introduction of a second precursor. This position seems to be supported in claim 1 last three lines which requires introducing a third vapor phase reactant after the first vapor phase reactant and before the second vapor phase reactant (emphasis added).
Applicant next argues that Pore cannot be combined with Weidman as Pore is directed to forming a metal film (p.7 first full paragraph).
The examiner disagrees. It is noted that Pore is directed to a method of making metal silicide and metal germanide (title) and even metal oxide films (abstract), which are metal containing films. Metal containing films are different from metal films as noted in the newly added claim limitation.
Applicant next argues that Paranjpe teaches that the precursor order affects the ALD layer (p.7 second full paragraph).
The examiner disagrees. There is no evidence of record in Paranjpe which states that precursor order is important and produces a significantly different film. The examiner is unable to find such evidence in the prior art reference.
Applicant next argues that claims 2-20 are patentable for the same reasons as claim 1 (p.7 last paragraph). Applicant also argues that the other cited references Hamalainen, Marsh, and Hatanpaa fail to teach the limitations of claim 1 (p.8). Applicant further argues that the ODP rejection fails to teach the limitations of claim 1 (paragraph bridging pp.8-9).
The examiner disagrees for the reasons stated above.
Applicant’s arguments have been considered but are not deemed persuasive.
THIS ACTION IS MADE FINAL. 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 BRET CHEN whose telephone number is (571)272-1417. The examiner can normally be reached M-F 8:30-8:30 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached on (571) 272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRET P CHEN/Primary Examiner, Art Unit 1718 02/23/2026