DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-7 and 15-20 in the reply filed on 01/16/2026 is acknowledged.
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.
Claims 1-7, 15, 21, 25, 29 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jurgensen (2003/0054099).
Jurgensen teaches a substrate processing system comprising:
- a process container configured to process a substrate, see 10 in Fig. 1,
- a storage container in contact with an outer wall of the process container – see storage containers 5 and 5’, housing tanks 1 and 3 [0057-58], and
- wherein the teachings include that the tanks are heated independently of the reactor [0033] to a specific temperature, it is understood that there is some type of a temperature regulator. As per MPEP 2144.01 it is proper to take into account both the explicit and implicit teachings of a reference. In this case, wherein the temperature is specifically controlled, there is necessarily a temperature regulator as claimed.
Regarding claims 2-4, it has been held that claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). Also, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In this case, the system is capable of controlling the temperature of the containers to any temperature or pressure as desired, the particular set point is an intended use based on the desired temperature and also the material within the containers.
Regarding claims 5-7, as in claims 2-4, the use of the containers to store any gas such as and including an inert gas is intended use, as is a first and second gas wherein at least one is stored in the container – but in any case further see the different materials in the different containers (5,5’) [0057-58] and inert carrier gas [0017].
Regarding claim 15, the Office initially holds that for the prior art vapor deposition system, it would be well understood that a computer system with such a program as claimed would have been used to control such a system.
The storing gas in a container at least partially in contact with an outer wall of the process container is taught as per claim 1 above (Fig. 1 of Jurgenson), and the temperature regular also as per above. In regard to the particular step of supplying gas from the container into the process container, the flow of gas from the storage container is addressed per [0057-66] (and understood as the coating process).
Regarding claim 21, the teachings include a heater [0042], and valves (i.e. flow controllers) [0034]. The arguments made above to claim 15 with regard to the computer system are equivalent to those of the claimed “controller” (i.e. each is useful to control the system in performing process steps).
Regarding claim 25, as per above, the container hold different materials, see particularly [0023, 57] in reference to different properties of different materials and different temperatures.
Regarding claims 29 and 30, the teachings include the multiple gases as described in each container– with the temperatures of the different containers controlled to different temperatures [0057] thereby teaching the plurality of heaters (i.e. to control 5 and 5’ to different temperatures it is necessary to have different heaters).
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.
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.
Claims 15-20, 22-24, 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Jurgensen (2003/0054099) in view of White (2010/0266765).
Regarding claim 15, all elements of the claim are taught as above, including:
- a process container configured to process a substrate, see 10 in Fig. 1,
- a storage container in contact with an outer wall of the process container – see storage containers 5 and 5’, housing tanks 1 and 3 [0057-58], and
- wherein the teachings include that the tanks are heated independently of the reactor [0033] to a specific temperature, it is understood that there is some type of a temperature regulator is used.
The flow of gas from the storage container is addressed per [0057-66].
To the extent that Jurgenson does not explicitly teach that a computer readable medium is used to carry out the process, the teachings of White are applied. White teaches that with an apparatus wherein a reactant gas is supplied to a substrate, see Fig. 1 and related text, also [0006], it is useful to use a computer with a storage medium to carry out control of the process steps [0048]. It would have been obvious at the effective date of the invention to use the computer control system of White with the apparatus of Jurgenson as such a control system (understood as including a computer readable medium and program) would be useful in carrying out a process, such as the step of supplying any gases.
Regarding claim 16, Jurgenson does not teach the temperature of the storage container relative to the decomposition temperature of the stored gas, but White further teaches that it is desirable to use a reactant in a vapor deposition wherein the gas is heated below the decomposition temperature of the reactant [0006]. It would have been obvious at the effective date of the invention to heat the gas in the storage container to a temperature below the thermal decomposition temperature in order to carry out a process for example as described by White.
Regarding claim 17, the system includes the supply of a purge gas to the tanks – (Jurgenson claim 7), there is a regulation valve to supply the gas into the tank. It would have been obvious at the effective date of the invention to control the pressure of the incoming gas sufficient for operation of the desired process. While Jurgenson does not teach a particular pressure to supply the gas at, because it is well settled that "where the principal difference between the claimed process and that taught by the reference is a temperature difference, it is incumbent upon applicant to establish criticality of that temperature difference", see Ex Parte Khusid 174 USPQ 59. This principle clearly is analogous to other process parameters such as flow rate (pressure) of gases. Absent evidence showing such criticality use of the same or higher pressure of supplying the gas into the storage container would have been obvious. There is no criticality demonstrated within the scope of the claim for the act of supplying gas to the container.
Regarding claim 18, an inert carrier gas is also supplied in the tanks [0058].
Regarding claim 19, the teachings of Jurgenson as noted teach supplying each (different) gas into the process chamber – wherein the teachings do not teach one gas after the other, the teachings of White are further applied and White teaches that an effective manner of providing reactants is to provide one after the other [0004-07].
Regarding claim 20, as per above, Jurgenson teaches storing two gases.
Regarding claims 22-24, as per above, the containers hold different materials, see particularly [0023, 57] in reference to different properties of different materials and different temperatures. The system includes valves on each container [0034]. In regard to the control of the valves as required by claims 22, 23 and 24, each embodiment is controlled in a different manner. The teachings of Jurgenson include a vapor deposition process and the teachings of White include a CVD and/or ALD process – to control the gases in the different orders as claimed would have been obvious in view of the control of an ALD and/or CVD process. The claims are not limiting – and per MPEP 2144.04 IV. C. a change in sequence of adding ingredients is not patentable without a showing of criticality. In this case, the disparate claims suggest a lack of criticality of the order of turning on/off the gas supplies.
Regarding claim 26, as per above, the container hold different materials, see particularly [0023, 57] in reference to different properties of different materials and different temperatures. In regard to the controller to control the temperatures relative to the decomposition temperature, that is taught by White as per claims 15 and 16 above and not repeated.
Regarding claim 27, the combined teaches of Jurgenson and White are described above, while the teachings do not explicitly embody the temperature of the storage containers lower than that of the substrate, initially, the claim requires that the controller is capable of controlling the containers to a temperature lower than that of the substrate, it would generally be understood that the controller would be capable of the same use. Further, wherein a substrate is being heated up to the desired temperature that were higher than the container temperature, the temperature would in any case be controlled lower at some point during the heating up.
Alternatively, because it is well settled that "where the principal difference between the claimed process and that taught by the reference is a temperature difference, it is incumbent upon applicant to establish criticality of that temperature difference", see Ex Parte Khusid 174 USPQ 59. In this case, it is a mere selection of substrate temperature and/or selection of the supply temperature such that the relative temperatures are as claimed.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Jurgensen.
Regarding claim 28, the teachings are silent on the aspect ratio of the containers, however, as per MPEP 2144.04 IV. A. that a selection or change of size is obvious without a showing of criticality. In this case there is no demonstration of criticality so it would have been obvious to form the containers with an aspect ratio equal to or greater than 1 as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A MILLER, JR whose number is (571)270-5825 and fax is (571)270-6825. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Cleveland, can be reached on 571-272-1418. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH A MILLER, JR/ Primary Examiner, Art Unit 1712