DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I, i.e., Claims 1-14, in the reply filed on November 28, 2025 is acknowledged. The traversal is on the ground(s) that “(1) all of the claims are properly presented in the same application; (2) undue diverse searching should not be required; and (3) all claims should be examined together. For the foregoing reasons, it is respectfully submitted that the election requirement should be withdrawn and an action on the merits of all the originally presented claims is respectfully solicited.” This is not found persuasive because a restriction requirement between one set of product claims and a set of process claims was issued in the Office action mailed on November 19, 2023. “Section 121 [of Title 35 USC] permits a restriction for ‘independent and distinct inventions,’ which the PTO construes to mean that the sets of claims must be drawn to separately patentable inventions.” See Applied Materials Inc. v. Advanced Semiconductor Materials 40 USPQ2d 1481, 1492 (Fed. Cir 1996) (Archer, C.J., concurring in-part and dissenting in-part). An apparatus and the process of making the product are “two independent, albeit related inventions.” See In re Taylor, 149 USPQ 615, 617 (CCPA 1966). “When two sets of claims filed in the same application are patentably distinct or represent independent inventions, the examiner is to issue a restriction requirement.” See In re Berg, 46 USPQ2d 1226, 1233 n.10 (Fed. Cir. 1998).
The examiner, in issuing a restriction requirement, must demonstrate “one way distinctiveness.” Applied Materials Inc. at 1492. As stated within the restriction requirement, “inventions are distinct if either or both of the following can be shown:
(1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)).
In this application, the examiner restricted the apparatus claims from the process claims on the grounds that “the apparatus can be used to materially different process such as etching or patterning instead of film deposition,” and that, as a result, a restriction was necessary.
In addition to one way distinctiveness, the examiner must show “why it would be a burden to examine both sets of claims.” Applied Materials Inc. at 1492. “A serious burden on the examiner may be prima facie shown if the examiner shows by appropriate explanation either separate classification, separate status in the art, or a different field of search.” MPEP 803. An explanation was provided in the restriction requirement. Specifically, in addition to being distinct, the examiner indicated that restriction is proper because the apparatus claim(s) and the process claim(s) “have acquired a separate status in the art.”
The criteria of distinctness and burdensomeness have been met, as demonstrated hereinabove. Accordingly, the restriction requirement in this application is still deemed proper and is therefore made FINAL.
Claims 15-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention, the requirement having been traversed in the response filed on November 19, 2025.
Claim Objections
Claims 1, 5, 6, 8, 9, 11, 13 and 14 are objected to because of the following informalities:
Claim 1 recites the limitation “A substrate processing method comprising: preparing a substrate, on which a high-dielectric film having a higher permittivity than a SiO2 film is formed; supplying, to the substrate, a metal solution containing a second metal element having a higher electronegativity or a lower valence than a first metal element contained in the high-dielectric film; and forming a doping layer, in which the first metal element has been substituted with the second metal element, on a surface of the high-dielectric film” in lines 1-8.
Claim 11 recites the limitation “A substrate processing method comprising: preparing a substrate, on which a high-dielectric film having a higher permittivity than a SiO2 film is formed; supplying an organic solvent having a polarity to the substrate; and adsorbing the organic solvent onto a surface of the high-dielectric film, thereby forming an adsorption layer containing the organic solvent” in lines 1-6.
However, there is a lack of clarity for “high-dielectric film” in the claims.
Normally, the term “high” or “low” used to express the degree of the dielectric constant of particular layer or film. Using the term “high” without mentioning the dielectric constant is meaningless.
As suggestion, changing “high-dielectric film” to --high-dielectric-constant film-- or --high dielectric constant film-- provides clarity and constancy throughout the claims.
Similar changes should be made in claims 5, 6, 8, 9, 13 and 14.
Applicant’s cooperation is requested in reviewing the claims’ structure to ensure proper claim construction and to correct any subsequently discovered instances of claim language noncompliance. See Morton International Inc., 28USPQ2d 1190, 1195 (CAFC, 1993).
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(s) 11-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KATO et al. (US 2019/0013195).
Re Claim 1, KATO et al. disclose a substrate processing method comprising: preparing a substrate (see Paragraph [0027]), on which a high dielectric constant film (17, i.e., metal oxide capacitor dielectric, see Fig. 3B and Paragraph [0056] and Paragraph [0069] ) having a higher permittivity than a SiO2 film is formed (i.e., HfO2 film, having higher permittivity and dielectric constant than SiO2 film); supplying an organic solvent (i.e.,H2O and CH3OH) having a polarity to the substrate (see Paragraph [0069]); and adsorbing the organic solvent onto a surface of the high-dielectric film, thereby forming an adsorption layer containing the organic solvent (see Paragraphs [0069] – [0074]).
Re Claim 12, as applied to claim 11 above, KATO et al. disclose all the claimed limitations including wherein the organic solvent includes a carbonyl compound or an amine compound (see Abstract). Re Claim 13, as applied to claim 11 above, KATO et al. disclose all the claimed limitations including wherein the high-dielectric film includes a zirconium oxide film or a hafnium oxide film (see Paragraph [0069]).
Re Claim 14, as applied to claim 11 above, KATO et al. disclose all the claimed limitations including wherein the high dielectric constant film (17) is formed on a first electrode (13), and a second electrode (18) is formed on the high dielectric constant film (see Fig. 3C and Paragraph [0056]).
Allowable Subject Matter
Claims 1-10 are allowed over prior art of record.
The following is a statement of reasons for the indication of allowable subject matter:
Prior art of record neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination, in particular, prior art of record does not teach “supplying, to the substrate, a metal solution containing a second metal element having a higher electronegativity or a lower valence than a first metal element contained in the high dielectric [constant] film; and forming a doping layer, in which the first metal element is substituted with the second metal element, on a surface of the high dielectric [constant] film,” as recited in claim 1.
Claims 2-10 are also allowed as being directly or indirectly dependent of the allowed independent base claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure Cameron et al. (US 2015/0147824) also disclose similar inventive subject matter.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BROOK KEBEDE whose telephone number is 571-272-1862. The examiner can normally be reached Monday Friday 8:00 AM 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Natalini can be reached at 571-272-2266. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BROOK KEBEDE/
Primary Examiner, Art Unit 2894
/BK/
March 4, 2026