DETAILED ACTION
In the amendment filed on December 22, 2025, claims 1 – 3, 5 – 12, 14 –19 are pending. Claim 19 has been amended and claims 4, 13 have been canceled. Claim 11 has have been withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The rejection of the claim 19 under 35 USC § 112(b) in the previous Office Action is withdrawn due to Applicant amendment.
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 – 3, 5 –9, 12 –18 remain 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 2, 3, 5, 6, 7, 8, 9, 12, 13, 15, 16, 17, 18:
The claims continue to recite “wherein, in the etching, the metal oxide film formed on the recess is selectively etched with respect to the metal oxide film formed on an inner wall of the processing container”. The originally filed disclosure does not expressly recite the added claim limitation. Applicant states in their reply filed on September 20, 2018 that the claim limitations are supported by at least [0015] – [0017]. The Examiner additionally identifies paragraphs [0013] – [0014], [0036] – [0037] as the additional closest recitations in the originally filed disclosure of the subject matter encapsulated in claim 1 as amended.
While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. See MPEP 2163.02 and In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).
Paragraph [0037] discloses that their method may be practiced to deposit and etch films of HfO2 and ZrO2 in addition to the detailed embodiment concerning the deposition and etching of Al2O3 films.
Paragraphs [0015] to [0017] discloses an etching process with respect to aluminum oxide film. Furthermore, the term “selectively etched” only appears in the following statement in paragraph [0015]:
For example, in the etching process, the AlO3 film 120 is selectively etched so as to widen the opening of the recess 110. In the etching process, the substrate may be heated to the same temperature as or substantially the same temperature as the temperature in the film forming process, for example, to a high temperature of 500 degrees C or higher.
The term “with respect to the metal oxide film formed on an inner wall of the processing container” appears to be derived from the following statement in paragraph [0015]:
Further, SOCl2 and (COCl)2 have a low etching rate for the Al2O3 film 120 at a temperature less than 500 degrees C. Therefore, the film deposited on an inner wall of a processing container, which has a lower temperature than the substrate, is hardly etched, so that generation of particles due to peeling of the deposited film from the inner wall of the processing container can be prevented.
However the claim encompasses, in the practice of the etching step, a genus of metal oxides that is far greater than the provided embodiments that may be selectively etched with respect to the same metal oxide on inner walls of a processing chamber. Furthermore, the provided mechanism of selective deposition appears specific
Thus, the newly added limitation incorporates species of the etching step where only one variation of the step is disclosed in the originally filed disclosure. Such disclosure is insufficient to support the genus as a whole because it is not a representative number of species. The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).
The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]." See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615. Such an indication is not provided, and no evidence is provided that one of ordinary skill in the art can predict the selective etching of any species other than those that are disclosed.
Thus, the amendment introduces New Matter. Accordingly, there is no reasonable conveyance to one of ordinary skill in the art that the inventor or joint inventor has possession of the claimed invention at the time the application was filed.
The Examiner notes that claims 10 and 19 are not rejected under 112(a) as it requires that the metal oxide film (that is selectively etched) is an aluminum oxide film, which are commensurate in scope and reasonably conveyed by the originally filed disclosure.
Allowable Subject Matter
Claims 10 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not teach and does not reasonably suggest a method of filling a recess formed in a surface of a substrate with a metal oxide film as set forth in claims 10 and 19; in particular there is no fair teaching and no fair suggestion of the step of etching a part of an aluminum oxide film (formed in the “forming …” step) by supplying an etching gas including at least one selected from a group of SOCl2 and (COCl)2 to the aluminum oxide film, wherein, in the etching, the metal oxide film formed on the recess is selectively etched with respect to the aluminum oxide film formed on an inner wall of the processing container.
Response to Arguments
Applicant's arguments filed December 22, 2025 have been fully considered but they are not fully persuasive.
Applicant’s principal arguments are:
a.) Paragraphs [0035] to [0037] of the originally-filed specification states that the aluminum oxide (Al2O3) film is merely an example of a metal oxide film, and the description in those paragraphs is not intended to be limiting. The originally-filed specification also expressly states that the metal oxide film may include HfO2 films, ZrO2 films, or other similar materials.
In response to the applicant's arguments, please consider the following comments.
a.) With respect to the disclosure of additional species, the Examiner notes that the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus (see i)(C) above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. See Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021). Furthermore, satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed.
The originally filed disclosure discloses only one actual reduction to practice: the selective etching of aluminum oxide films based on temperature differences between a substrate heated to 500°C or higher and an aluminum oxide-coated-process chamber wall at a relatively cooler temperature below 500°C (see [0015]). Furthermore, the originally-filed disclosure discloses that HfO2 films and ZrO2 films are also examples of metal oxide films that are etched by an etching gas selected from a group of SOCl2 and (COCl)2 with good controllability (see [0037] and [0038]). The originally filed disclosure therefore provides reasonable conveyance that the interaction between HfO2 films and ZrO2 films with SOCl2 and (COCl)2 would behave in a similar manner or same matter as the selective etching mechanism described for aluminum oxide films. Applicant’s argument is therefore partially convincing with respect to HfO2 films and ZrO2 films.
In other words, the representative species are disclosed metal oxides with identified chemical properties and etching characteristic coupled with a correlation between the temperature-driven selective etching function and the chemical properties that enable etching by the recited SOCl2 and (COCl)2. The originally-filed disclosure does not provide sufficient evidence that such chemical properties and selective etching characteristic for any and all metal oxide films – which the claim encompasses – would have been recognized to be in the possession of the inventor. For these reasons, the Examiner maintains their position with regards to the broader claims.
Conclusion
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 extension fee 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 JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717