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 .
Response to Arguments
Applicant's arguments filed 10/22/2025 have been fully considered but they are not persuasive. A: The applicant argues that the problem to be solved by Kandonaga and the instant invention is not the same. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the purpose of the invention) are not recited in the rejected claim(s). 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).
B: The applicant argues that Kadonaga does not teach periodic maintenance. Applicant’s arguments rely on language solely recited in preamble recitations. When reading the preamble in the context of the entire claim, the recitation “plasma enhanced process to do periodic maintenance” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
D: The applicant argues that Dhas teaches a pre deposition coat and not the ALD processes of the invention. The rejection is under Kadonaga in view of Dhas. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
E: The applicant argues that Dhas and Kadonaga do not solve the same problems. In response to applicant's argument that Dhas and Kadonaga is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both teach vapor phase deposition processes with similar precursors (Dhas paras 0080-0083, for example). Dhas’ process gives Kadonaga’s the advantages of a cleaning and maintenance process.
F: The applicant argues advantages of its process. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
C,G: The amended limitation requires that “if” the thickness reaches a predetermined value, the substrate is removed. The broadest reasonable interpretation of this limitation also includes the alternative limitation, that if thickness does not exceed a predetermined value, it is not removed. The amended limitation requires that “if” the thickness exceeds a predetermined value, the substrate is removed. However, the claim also includes that the carrier disk has a thickness greater than a predetermined value, so there should not be an ‘if’ that implicitly also includes the alternative of what would happen if the thickness was not exceeded. Does the claim require the thickness to be exceeded or not? Thus, it is not clear what is being claimed. New grounds of rejection are due to amendments.
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 1-10 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. The amended limitation requires that “if” the thickness exceeds a predetermined value, the substrate is removed. However, the claim also includes that the carrier disk has a thickness greater than a predetermined value, so there should not be an ‘if’ that implicitly also includes the alternative of what would happen if the thickness was not exceeded. Does the claim require the thickness to be exceeded or not? Thus, it is not clear what is being claimed.
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 (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 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.
The factual inquiries 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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kadonaga et al. (US 2009/0263975) in view of Dhas et al. (US 2015/0203967 A1) and Kang et al. (US 2017/0314128 A1)
As to claims 1-2, Kadonaga et al. teaches performing a first atomic layer deposition on a substrate on a carrier disk to form a thin film on the substrate, wherein when the first atomic layer deposition is performed (para 0089), an insulating film is formed on the carrier disk (para 0090); determining that the insulating film of the carrier disk has a thickness greater than a pre-determined value (set as a recipe in para 0042, para 0055); and performing a second atomic layer deposition on the carrier disk to form a conductive film on the insulating film of the carrier disk (para 0051). It is noted that the carrier disk is not well defined in the claim and as such Kadonaga et al. anticipates this claim.
While it may be inherent that the coating deposits on the substrate holder as broadly defined in the claims, Kadonaga does not explicitly say so. Dhas et al. teaches that ALD processes cause deposits on the chamber parts in para 0054 that periodically must be cleaned to reduce contamination in the chamber in para 0071 after a threshold of depositions is reached in para 0084 (10 microns, for example). Therefore, it would have been obvious at the time of filing to modify Kadonaga et al. to include periodically cleaning the chamber after so many ALD processes as taught by Dhas et al. in order to reduce contaminations.
Further, Dhas et al. teaches the use of a dummy wafer in para 0048 that is used as a test wafer or a sacrificial substrate for equilibrating the chamber. Khang et al. teaches a dummy wafer for the same purposes in para 0038. Khang et al. teaches an insulating film forming process, or chamber coating process, that includes using the dummy wafer on a substrate holder, performing the process to a desired completion or thickness, then removing the dummy wafer in paras 0039-0041, 0046, 0051, 0133. The insulating film is used to reduce metal contamination and flaking in para 0040. The film deposited afterward may be a metal conductive film in para 0072. Therefore, it would have been obvious to one of ordinary skill in the art to use a dummy wafer in Kadonaga to deposit the insulating film as taught by Dhas and Khang as it is used as a sacrificial substrate during a conditioning process that Khang teaches reduces further metal peeling and contamination.
As to claims 3-4, the precursors are delivered to the containing space as shown in Kadonaga et al. Figure 1. The deposition, as broadly claimed, repeats as in para 0089-0090 and Fig. 3.
As to claim 5, the insulating film thickness is greater than the conductive film as shown in Kadonaga et al. Figs. 5a-b.
As to claims 6-7, Dhas et al. teaches removing the substrate and conditioning the chamber surfaces as shown in Fig. 3, then replacing the substrate (para 0065 and may include conductive materials in para 0080.).
As to claims 8-9, Kadonaga et al. teaches that the thickness of the films depends upon device requirements and reaction conditions in paras 0072-0085. It would have been obvious to a person having ordinary skill in the art at the time the invention was made to include the claimed thicknesses, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
As to claim 10, different precursors are used as in Kadonaga et al. Figs. 6a-b.
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 KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 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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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1715
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1715