DETAILED ACTION
Claims 1-20 were subjected to restriction requirement mailed on 03/17/2026.
Applicants filed a response, and elected species (a), claims 1-10 and 16-20, and withdrew claims 11-15, with traverse on 04/10/2026.
Claims 1-20 are pending, claims 11-15 are rejoined, and the restriction and election requirement mailed on 03/17/2026 is withdrawn after consideration.
Claims 1-20 are rejected.
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 .
Election/Restrictions
Upon consideration of applicant’s remark, specifically,
“Applicants respectfully submit the Office has not shown the alleged Species(a) and Species(b) are mutually exclusive. Paragraph [0071] of the present application describes an embodiment where the amorphous boron nitride compound may be doped with both carbon atoms and hydrogen atoms.”, the restriction and election requirement mailed 04/10/2026 is withdrawn from record.
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6, line 2, it is suggested to amend “sp2” and “sp3” to “sp2” and “sp3” respectively, for consistency purpose.
Appropriate correction is required.
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, 11-12 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al., US 2021/0123161 A1 (Lee) (provided in IDS received on 02/27/2025).
Regarding claims 1, 11-12 and 16-17, Lee teaches a boron nitride layer (reading upon a boron nitride film), the boron nitride layer includes a boron nitride compound (Lee, Abstract);
the boron nitride layer may be amorphous (Lee, [0093]);
further, the boron nitride layer BN may contain hydrogen (reading upon doped with hydrogen), but the hydrogen content in the boron nitride layer BN may be small. For example, hydrogen may be about 10% or less (% presumably is referring to atomic percentage or mass percentage; either of which would result a range the overlaps the range of the presently claimed) (Lee, [0094]).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 18-20, as applied to claim 1, Lee further teaches the amorphous boron nitride layer or the nanocrystalline boron nitride layer enables a low temperature process and thus may be formed on the material layer of the electronic apparatus without damaging other materials of the electronic apparatus; the semiconductor devices described above may include transistors, resistors, capacitors (Lee, [0169]).
Lee further teaches FIG. 27 is a diagram illustrating a field effect transistor including a boron nitride layer (Lee, [0170]).
Lee further teaches the dielectric layer may include e.g., the amorphous boron nitride layer a-BN. When the dielectric layer 422 includes e.g., the amorphous boron nitride layer a-BN, because the dielectric layer may also perform a function of the diffusion barrier layer (Lee, [0161]).
Claim(s) 2-5, 9-10 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Jongwannasiri et al., Tribological behavior under high temperature of BCN films deposited by sputtering-PBII hybrid system, Surfaces and Interfaces, 2020 (Jongwannasiri) (provided in IDS received on 02/27/2025).
Regarding claim 2, Lee does not explicitly disclose wherein the boron nitride compound is doped with the carbon, and a content of the carbon is in a range of about 10 at% to about 20 at% of a total atomic content of the boron nitride compound.
With respect to the difference, Jongwannasiri teaches films comprising boron and nitride (Jongwannasiri, Abstract). Jongwannasiri specifically teaches the films with different carbon concentrations (from 0 to 66.7 at%) (Jongwannasiri, Abstract).
As Jongwannasiri expressly teaches, the nanohardness and Young's modulus of BCN
films increased with increasing carbon concentration (Jongwannasiri, Abstract);
Jongwannasiri is analogous art as Jongwannasiri is drawn to films comprising boron and nitride.
In light of the motivation of having carbon in films comprising boron and nitride, as taught by Jongwannasiri, it therefore would have been obvious to a person of ordinary skill in the art, to dope the amorphous boron nitride layer of Lee, with carbon, such as from 0 to 66.7 at%, in order to achieve desired film hardness and Young's modulus, and thereby arrive at a range that overlaps the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 3-5, as applied to claim 1, Lee in view of Jongwannasiri further teaches formation of B-C, C-N and C-C bonds (Jongwannasiri, page 8, right column, bottom paragraph).
Further regarding claims 4-5, as applied to claim 3, given that Lee in view of Jongwannasiri teaches an identical or substantially identical material, i.e., boron nitride film doped with carbon and/or hydrogen, with overlapping concentrations of the doped carbon and/or hydrogen, that those of the present invention (claims 1-2; specification, [0059]), therefore, it is clear that the boron nitride film doped with carbon of Lee in view of Jongwannasiri would necessarily and inherently meet the claimed limitation of wherein in the boron nitride compound, a number of the B-C bonds is greater than a number of the N-C bonds and a number of the C-C bonds; and wherein a number of the B-C bonds is less than a number of the B-N bonds.
Regarding claims 9 and 13-14, as applied to claims 1 and 2, respectively, given that Lee in view of Jongwannasiri teaches an identical or substantially identical material, i.e., boron nitride film doped with carbon and/or hydrogen, with overlapping concentrations of the doped carbon and/or hydrogen, that those of the present invention (claims 1-2; specification, [0059]), therefore, it is clear that the boron nitride film doped with carbon of Lee in view of Jongwannasiri would necessarily and inherently meet the claimed limitation of wherein the hydrogen participates in B-H bonds, N-H bonds, and C-H bonds; wherein a diffusivity of atoms of the boron nitride compound is 2 Å2/ns or less at a temperature of about 2,000 K to about 2,500 K; and wherein a diffusivity of atoms of the boron nitride compound is 1 Å2/ns or less at a temperature of about 2,000 K to about 2,500 K.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claims 10 and 15, as applied to claims 1 and 2, respectively, given that Lee in view of Jongwannasiri teaches an identical or substantially identical material, i.e., boron nitride film doped with carbon and/or hydrogen, with overlapping concentrations of the doped carbon and/or hydrogen, that those of the present invention (claims 1-2; specification, [0059]), therefore, it is clear that the boron nitride film doped with carbon of Lee in view of Jongwannasiri would necessarily and inherently meet the claimed limitation of wherein a Young's modulus, a bulk modulus, and a shear modulus of the boron nitride compound are each independently in a range of about 110 % to about 140 % as compared with another boron nitride compound that is not doped with carbon.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Alternatively, Lee in view of Jongwannasiri teaches the Young’s modulus of the film increases with increased carbon concentration (Jongwannasiri, Abstract). It therefore would have been obvious to a person of ordinary skill in the art, to vary the amount of carbon, and achieve desired Young’s modulus of the film, including the presently claimed, in order to meet product needs.
Claim(s) 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Jongwannasiri as applied to claim 2 above, and further in view of Bu et al., The role of sp2 and sp3 hybridized bonds on the structural, mechanical, and electronic properties in a hard BN framework, RSC Adv., 2019 (Bu) (provided in IDS received on 02/27/2025).
Regarding claims 6-8, Lee in view of Jongwannasiri does not explicitly disclose wherein a ratio of sp2 bonding to sp3 bonding included in the boron nitride compound is in a range of about 2 to about 5; or wherein a ratio of sp2 bonding to sp3 bonding included in the boron nitride compound is in a range of about 2 to about 3; or wherein an average coordination number of atoms in the boron nitride compound is in a range of about 2.92 to about 3.05.
With respect to the difference, Bu teaches the role of sp2 and sp3 hybridized bonds on the structural, mechanical, and electronic properties on boron nitride (Bu, Abstract). Bu specifically teaches
As Bu expressly teaches, sp3-bonded B and N atoms guarantee higher mechanical properties, while sp2-bonded atoms ensure ductility and even conductivity (Bu, page 2664, right column, 1st paragraph).
Bu is analogous art as Bu is drawn to the role of sp2 and sp3 hybridized bonds on the structural, mechanical, and electronic properties on boron nitride.
In light of the motivation of varying sp3-bonded B and N atoms and sp2-bonded atoms, as taught by Bu, it therefore would have been obvious to a person of ordinary skill in the art to vary the amounts of sp3-bonded B and N atoms and sp2-bonded atoms, in the amorphous boron nitride films doped with carbon of Lee in view of Jongwannasiri, including the claimed ratio of sp2 bonding and sp3 bonding, in order to achieve desired mechanical properties, ductility and conductivity, and thereby arrive at the claimed inventions.
Further regarding claim 8, given that given that Lee in view of Jongwannasiri teaches an identical or substantially identical material, i.e., boron nitride film doped with carbon and/or hydrogen, with overlapping concentrations of the doped carbon and/or hydrogen, and a ratio of sp2 bonding to sp3 bonding, with those of the present invention (claims 1-2; claims 6-7; specification, [0059]), therefore, it is clear that the boron nitride film doped with carbon of Lee in view of Jongwannasiri would necessarily and inherently meet the claimed limitation of wherein an average coordination number of atoms in the boron nitride compound is in a range of about 2.92 to about 3.05.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights