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 .
Priority
Note that Applicant will not be able to rely upon the certified copy of the foreign priority applications to overcome any rejection herein because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-11, drawn to a structure.
Group II, claim(s) 12-14, drawn to a method.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the structure of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Iwasawa (USPub20190276368).
Specifically, Iwasawa teaches a composite structure comprising a substrate 70 and structure 10 provided on the substrate and has a surface (Figures). The structure can be that of Y4Al2O9 (0054).
While Iwasawa may not explicitly mention an indentation hardness, note that Iwasawa’s composite discussed above meets the requirements claimed. Additionally, Iwasawa’s structure is a polycrystalline ceramic (0045) which is the same as Applicants’ (see published par 0030), their average crystallize size of their structure is 3-50nm (0047) which meets that of Applicants’ (see Applicants’ claim 5, published par 0030-0031), their structure can have a thickness of 0.1-10micron (0050) meeting the thicknesses disclosed by Applicants’ (see Applicants’ Table 2) and Iwasawa’s structure can be formed by Aerosol (see 0269) which is the same method used by Applicants’ (see entire disclosure). Given the similarities, one skilled in the art would reasonably conclude the same indentation hardness (MPEP 2112).
While Iwasawa may not discuss a fluorine atom concentration after being exposed to a plasma environment under the conditions claimed, note that this is considered a conditional limitation wherein the prior art article only needs to have the claimed concentration feature upon being treated as claimed. In the instant case, as Iwasawa’s article meets that claimed for reasons above, one skilled in the art would conclude the same results to occur after being exposed as claimed (MPEP 2112).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 12-14 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
(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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Iwasawa (USPub20190276368).
Regarding claims 1-5, 9-11: Iwasawa teaches a composite structure comprising a substrate 70 and structure 10 provided on the substrate and has a surface (Figures). The structure can be that of Y4Al2O9 (0054).
While Iwasawa may not explicitly mention an indentation hardness, note that Iwasawa’s composite discussed above meets the requirements claimed. Additionally, Iwasawa’s structure is a polycrystalline ceramic (0045) which is the same as Applicants’ (see published par 0030), their average crystallize size of their structure is 3-50nm (0047) which meets that of Applicants’ (see Applicants’ claim 5, published par 0030-0031), their structure can have a thickness of 0.1-10micron (0050) meeting the thicknesses disclosed by Applicants’ (see Applicants’ Table 2) and Iwasawa’s structure can be formed by Aerosol (see 0269) which is the same method used by Applicants’ (see entire disclosure). Given the similarities, one skilled in the art would reasonably conclude the same indentation hardness (MPEP 2112).
While Iwasawa may not discuss a fluorine atom concentration after being exposed to a plasma environment under the conditions claimed, note that this is considered a conditional limitation wherein the prior art article only needs to have the claimed concentration feature upon being treated as claimed. In the instant case, as Iwasawa’s article meets that claimed for reasons above, one skilled in the art would conclude the same results to occur after being exposed as claimed (MPEP 2112).
Regarding claim 6: Iwasawa’s composite structure can be used in an environment where low-particle generation is required (see 0053)
Regarding claims 7 and 8: Iwasawa’s composite structure can be a member for a semiconductor manufacturing device (0053).
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a1 and a2) as being anticipated by Nitta (USPub2020270753).
Regarding claims 1-5, 9-11: Nitta teaches a composite structure comprising a substrate and structure provided on the substrate and has a surface (Figures). The structure can be that of Y4Al2O9 (0064).
While Nitta may not explicitly mention an indentation hardness, note that Nitta’s composite discussed above meets the requirements claimed. Additionally, Nitta’s structure is a polycrystalline ceramic (abstract) which is the same as Applicants’ (see published par 0030), their average crystallize size of their structure is 3-50nm (0026-0028) which meets that of Applicants’ (see Applicants’ claim 5, published par 0030-0031), their structure can have a thickness of 1-10micron (0017) meeting the thicknesses disclosed by Applicants’ (see Applicants’ Table 2) and Nitta’s structure can be formed by Aerosol (see 0032, 0080-0081) which is the same method used by Applicants’ (see entire disclosure). Given the similarities, one skilled in the art would reasonably conclude the same indentation hardness (MPEP 2112).
While Nitta may not discuss a fluorine atom concentration after being exposed to a plasma environment under the conditions claimed, note that this is considered a conditional limitation wherein the prior art article only needs to have the claimed concentration feature upon being treated as claimed. In the instant case, as Nitta’s article meets that claimed for reasons above, one skilled in the art would conclude the same results to occur after being exposed as claimed (MPEP 2112).
Regarding claim 6: Nitta’s composite structure can be used in an environment where low-particle generation is required (note Nitta’s layer is particle-resistant as described in abstract).
Regarding claims 7 and 8: Nitta’s composite structure can be a member for a semiconductor manufacturing device (title).
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,802,085. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims completely encompass that of the Patent.
Response to Arguments
Applicant's arguments filed January 27, 2026 have been fully considered but they are not persuasive.
In summary, Applicants amended their claims to include that the article has a specific degree of fluorination, fluorine erosion, after a plasma treatment and argue that they have discovered that there is a relationship between the hardness of a structure containing YAM as a main component and that of index of particle contamination associated with plasma corrosion. Specifically, they argue that Applicants have found that the degree of fluorination, fluorine erosion, on the surface of a structure containing YAM as a main component can be controlled and lowered by having an indentation hardness of greater than 6.0GPa and the prior art of Iwasawa and Nitta do not anticipate or reasonably suggest this.
Applicants assert that there is no focused disclosure in the references of YAM for reducing particle generation, no description of hardness and a person skilled in the art would not be able to understand from Iwasawa and Nitta that for YAM structures, a specific indentation hardness can control the degree of chemical fluorination, erosion by fluorine in the surface. Additionally, Applicants assert that the plasma conditions disclosed in the references are evaluating physical erosion and Applicants’ claimed conditions are evaluating chemical erosion.
None of the above is persuasive. Initially, the Examiner notes for the record that the newly added limitation a fluorine atom concentration after being exposed to a plasma environment under the conditions claimed is a conditional limitation wherein the prior art article only needs to have the claimed concentration feature after being treated as claimed.
In the instant case, as discussed in the Office Action, as both Iwasawa’s and Nitta’s article meets that claimed, one skilled in the art would conclude the same results to occur after being exposed to a plasma under the conditions claimed (MPEP 2112).
Further, it appears that Applicants are asserting unexpected results that by having an article containing YAM as a main component with an indentation hardness of greater than 6GPa, that one can achieve controlled and lower fluorine contamination after a plasma treatment as claimed but this is not persuasive.
Specifically, as discussed in the Office Action, the claims were rejected under 102 as both Iwasawa and Nitta anticipate an article containing YAM as a main component with an indentation hardness of greater than 6GPa and any evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973).
Further note that 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).
Additionally, regarding the argument the plasma conditions disclosed in the references are evaluating physical erosion and Applicants’ claimed conditions are evaluating chemical erosion, this is not persuasive. Regardless of whether or not a reference teaches the same plasma conditions or method of evaluating erosion is irrelevant as long as the reference’s product meets the limitation claimed. In the instant case, as discussed above, as both Iwasawa’s and Nitta’s article meets that claimed, one skilled in the art would conclude the same results to occur after being exposed to a plasma under the conditions claimed (MPEP 2112).
Applicants go on to argue that the Office’s presumption under MPEP 2112 regarding equivalent structures having equivalent characteristics does not apply in the present situation because the references fail to disclose a specific indentation hardness for their structures let alone a hardness as claimed but the references also fail to disclose or suggest that fluorine erosion in the surface can be suppressed when exposed to plasma.
This is not persuasive. Initially, athough the Examiner agrees that the references do not explicitly mention a hardness as claimed, the claimed hardness was taken to be inherent within both Iwasawa and Nitta. Specifically, see below.
“While Iwasawa may not explicitly mention an indentation hardness, note that Iwasawa’s composite discussed above meets the requirements claimed. Additionally, Iwasawa’s structure is a polycrystalline ceramic (0045) which is the same as Applicants’ (see published par 0030), their average crystallize size of their structure is 3-50nm (0047) which meets that of Applicants’ (see Applicants’ claim 5, published par 0030-0031), their structure can have a thickness of 0.1-10micron (0050) meeting the thicknesses disclosed by Applicants’ (see Applicants’ Table 2) and Iwasawa’s structure can be formed by Aerosol (see 0269) which is the same method used by Applicants’ (see entire disclosure). Given the similarities, one skilled in the art would reasonably conclude the same indentation hardness (MPEP 2112).”
“While Nitta may not explicitly mention an indentation hardness, note that Nitta’s composite discussed above meets the requirements claimed. Additionally, Nitta’s structure is a polycrystalline ceramic (abstract) which is the same as Applicants’ (see published par 0030), their average crystallize size of their structure is 3-50nm (0026-0028) which meets that of Applicants’ (see Applicants’ claim 5, published par 0030-0031), their structure can have a thickness of 1-10micron (0017) meeting the thicknesses disclosed by Applicants’ (see Applicants’ Table 2) and Nitta’s structure can be formed by Aerosol (see 0032, 0080-0081) which is the same method used by Applicants’ (see entire disclosure). Given the similarities, one skilled in the art would reasonably conclude the same indentation hardness (MPEP 2112).”
Further, while the references may not discuss that fluorine erosion in the surface can be suppressed when exposed to plasma, the references do not have to. Instead, references only need to have the claimed feature after undergoing the plasma conditions claimed. In the instant case, as discussed above, as both Iwasawa’s and Nitta’s article meets that claimed wherein the claimed hardness is inherent therein, and it is noted for the record that Applicants argue the claimed hardness is what allows for the suppressed fluorine erosion after the claimed plasma treatment, one skilled in the art would conclude the same results to occur after being exposed to a plasma under the conditions claimed (MPEP 2112).
Again, 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).
Applicants argue against the Obviousness Type Double Patenting rejection over US Patent 11,802,085 in view of the presently amended claims but this is not persuasive.
While Applicants may have amended the claims to include a fluorine concentration after a plasma treatment which is not explicitly recited in the conflicting Patent claims, the following is noted.
Again, the newly added limitation in the present Application of a fluorine atom concentration after being exposed to a plasma environment under the conditions claimed is a conditional limitation wherein the conflicting Patent only needs to have the claimed concentration feature after being treated as claimed.
In the instant case, as the article recited in the Patent meets that presently claimed including a hardness as presently claimed, and it is noted for the record that Applicants main argument is that the claimed hardness is what allows for the suppressed fluorine erosion after the claimed plasma treatment, one skilled in the art would conclude the same results to occur after being exposed to a plasma under the conditions claimed (MPEP 2112).
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).
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 LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784