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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 18, 2026, has been entered.
Specification
The objection to the title is withdrawn in view of applicants’ submission of a suitable replacement title.
Claim Rejections - 35 USC § 112
The preceding 35 U.S.C. 112(b) rejection of claims 9-15 is withdrawn in view of applicants’ arguments and claim amendment.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9-13 and 15 are is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Appl. Publ. No. 2013/0118399 to Chadwick, et al. (hereinafter “Chadwick”) in view of U.S. Patent Appl. Publ. No. 2020/0140993 to Young Kyun Noh (“Noh”) and further in view of U.S. Patent Appl. Publ. No. 2012/0091436 to Forrest, et al. (“Forrest”).
Regarding claim 9, Chadwick teaches a system for selecting materials for heteroepitaxially growing organic crystals (see the Abstract, Figs. 1-14, and entire reference which teach a system for selecting materials for heteroepitaxially growing organic crystals onto a substrate), comprising:
a template crystal (see at least Figs. 5 & 7, ¶¶[0073], and ¶[0096] which teach providing a substrate that functions as a template crystal);
receive information about a template crystal structure (see Fig. 1 and ¶¶[0028]-[0059] which teach identifying a substrate that has, inter alia, the desired unit cell parameter, space group, and functional groups for heteroepitaxial growth of a selected crystal structure); and
identify a first material that has a first plane that has lattice constants differing by no more than ±3% from the template crystal structure by comparing at least one lattice parameter of each crystal plane of the first material to an in-plane lattice parameter of the template crystal structure (see Figs. 1-6 and Examples 2-3 in ¶¶[0061]-[0078] which teach selecting a crystalline substrate with a crystallographic plane that is lattice matched to a specific polymorph of an organic compound in order to promote the nucleation and growth of that polymorph; see specifically ¶[0064] which teaches that a three-dimensional lattice match (i.e., a lattice constant difference of 0%) was targeted to promote the formation of a specific polymorph; accordingly, a PHOSITA prior to the effective filing date of the invention would be motivated to utilize a template crystal structure and a first material with a substantially 0% lattice mismatch to promote the formation of the desired polymorph); and
where the first plane of the first material has a lowest surface energy of all crystal planes of the first material (See Figs. 7-13 and Example 4 in ¶¶[0079]-[0124] which teach that there are energetically favorable crystallographic orientations between the film and substrate that are more likely to promote heteroepitaxial growth and that these lower surface energy crystallographic planes may be used to drive epitaxial growth of the desired crystal structure(s). Accordingly a PHOSITA prior to the effective filing date of the invention would be motivated to utilize a substrate which promotes the formation of a first crystallographic plane having the lowest surface energy for epitaxial growth in the deposited first material in order to promote the formation of a higher quality single crystal having the desired crystal structure (i.e., the desired polymorph). Alternatively, since Chadwick performs each and every step of the claimed process it must necessarily produce the same results, namely that the first plane of the first material that forms has a lowest surface energy of all crystal planes of the first material. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages. Mere recitation of a newly discovered function or property, that is inherently possessed by things in the prior art does not cause a claim drawn to these things to distinguish over the prior art. Therefore, the formation of a first plane in the first material which has a lowest surface energy, if not clearly envisaged, would be reasonably expected by the skilled artisan. See Leinoff v. Louis Milona & Sons, Inc. 220 USPQ 845 (CAFC 1984).).
Chadwick does not teach that the system includes at least one processor and a non-transitory computer readable storage medium containing instructions that, when executed, configures the at least one processor to execute the steps as claimed. However, in at least Figs. 1-4 and ¶¶[0051]-[0086] as well as elsewhere throughout the entire reference Noh teaches an embodiment of a system and method for controlling a thin film deposition process which utilizes one or more heated source materials (140) to deposit a thin film onto a substrate (105). As shown specifically in Fig. 2 and ¶¶[0066]-[0072] the system is controlled by an apparatus (100) which includes one or more processors (210), one or more memories (220), and a communication interface (230). The memory (220) is capable of storing data such as software which is capable of storing an operating system, correlation models, and recipes for performing thin film deposition processes according to predetermined process condition data, all of which is capable of being executed by the processor (210). Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Noh and would be motivated to implement the method of Chadwick as a software program which is stored on the memory (220) and is operated by the processor (210) in order to automate and speed up the process of locating and analyzing suitable substrates for the growth of epitaxial films of compounds having the desired crystal structure. It has previously been held that providing an automatic or mechanical means to replace a manual activity which accomplishes the same result is not sufficient to distinguish over the prior art. See In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). See also MPEP 2144.04(III).
Chadwick also does not teach a physical vapor deposition subsystem or that that the at least one processor is further configured to control the physical vapor deposition subsystem to grow the first material on top of the template crystal structure. However, in at least Figs. 1-4 and ¶¶[0051]-[0086] as well as elsewhere throughout the entire reference Noh teaches an embodiment of a system and method for controlling a thin film deposition process which utilizes one or more heated source materials (140) to deposit a thin film onto a substrate (105) by physical vapor deposition (PVD). As shown specifically in Fig. 2 and ¶¶[0066]-[0072] the system is controlled by an apparatus (100) which includes one or more processors (210), one or more memories (220), and a communication interface (230). The memory (220) is capable of storing data such as software which is capable of storing an operating system, correlation models, and recipes for performing thin film deposition processes according to predetermined process condition data, all of which is capable of being executed by the processor (210). Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Noh and would be motivated to utilize a physical vapor deposition system which includes, inter alia, a processor (210) which is capable of operating the PVD apparatus such that the desired thin film is deposited onto the corresponding substrate in order to automate and perform the film growth process in a repeatable and reproducible manner.
Even if it is assumed arguendo that Chadwick does not teach the first plane of the first material has a lowest surface energy of all crystal planes of the first material, the use of the lowest surface energy plane would have been obvious in view of the teachings of Forrest. In Fig. 1(b), ¶¶[0033]-[0035], Table 1, and ¶¶[0054]-[0058] as well as elsewhere throughout the entire reference Forrest teaches an analogous system and method for the heteroepitaxial growth of multilayered organic crystalline materials (I) and (II) on a lattice-matched crystalline substrate. Forrest specifically teaches that surface energies are important in wetting phenomena and that surface energy matching is an important factor in inducing wetting and, hence, ordered growth across heterointerfaces to obtain smooth and ordered crystalline films through multiple layers. As shown in Table I, in at least some instances this may involve the use of lowest energy surfaces of a particular crystalline material in order to produce the desired effect from surface energy matching. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to utilize a substrate having the lowest surface energy which promotes the heteroepitaxial growth of a first material thereupon whose first plane also has the lowest surface energy of all crystal planes of the first material with the motivation for doing so being to better match the surface energies of each layer and thereby promote the growth of smooth and ordered crystalline films having the desired materials properties. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Regarding claim 10, Chadwick teaches that identifying the first material includes estimating relative surface energies of the first material by applying first principles methods or Bravais-Friedel-Donnay-Harker law to determine a largest area of a crystal morphology, the largest area having a lowest energy surface (see ¶¶[0040]-[0046] which teach that the Cambridge Structural Database is searched in order to identify substrates which have a complimentary functional group, complimentary space group, and complimentary unit cell dimensions in order to deposit an epitaxial layer having the desired crystal structure which necessarily involves using first principles methods to determine the largest crystallographic planes with the lowest surface energy for epitaxial growth; see also Figs. 7-13 and Example 4 in ¶¶[0079]-[0124] which teach that there are energetically favorable crystallographic orientations between the film and substrate that are more likely to promote heteroepitaxial growth and, consequently, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to utilize first principles methods to identify and utilize these lower surface energy crystallographic planes to drive epitaxial growth of the desired crystal structure(s)).
Regarding claim 11, Chadwick teaches that the information about the template crystal structure comprises a material of the template crystal structure or a code representative of the material (see, for example, Fig. 1, ¶[0040], ¶[0060] of Example 1, and ¶[0065] of Example 2 which teaches that in order to find suitable candidate substrate the Cambridge Structural Database is searched to determine, inter alia, which materials have a unit cell parameter within a certain range and possess the desired space group).
Regarding claim 12, Chadwick teaches that the information about the template crystal structure comprises in-plane lattice parameters of the template crystal structure (see, for example, Fig. 1, ¶[0040], ¶[0060] of Example 1, and ¶[0065] of Example 2 which teaches that in order to find suitable candidate substrate the Cambridge Structural Database is searched to determine, inter alia, which materials have a unit cell parameter within a certain range and possess the desired space group).
Regarding claim 13, Chadwick teaches identifying in-plane lattice parameters of the template crystal structure (see, for example, Fig. 1, ¶[0040], ¶[0060] of Example 1, and ¶[0065] of Example 2 which teaches that in order to find suitable candidate substrate the Cambridge Structural Database is searched to determine, inter alia, which materials have a unit cell parameter within a certain range and possess the desired space group), but does not teach that the processor is configured to perform the recited step. However, as noted supra with respect to the rejection of claim 9, in Fig. 2 and ¶¶[0066]-[0072] Noh specifically teaches an embodiment of a thin film deposition system which is controlled by an apparatus (100) that includes one or more processors (210), one or more memories (220), and a communication interface (230). The memory (220) is capable of storing data such as software which is capable of storing an operating system, correlation models, and recipes for performing thin film deposition processes according to predetermined process condition data, all of which is capable of being executed by the processor (210). Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Noh and would be motivated to implement the method of Chadwick as a software program which is stored on the memory (220) and is operated by the processor (210) in order to automate and speed up the process of locating and analyzing the in-plane lattice parameters of suitable substrates for the growth of epitaxial films of compounds having the desired crystal structure.
Regarding claim 15, Chadwick teaches determining the growth conditions for growing the first material on top of the template crystal structure (see, for example, Examples 1-4 in ¶¶[0060]-[0124] which teach that conditions suitable for the growth of the desired crystal structure on top of the selected substate are determined and then utilized to produce said crystal), but does not teach that the growth conditions are stored and/or transmitted by storing the growth conditions on the non-transitory computer readable storage medium; storing the growth conditions on a second, removable non-transitory computer readable storage medium; sending the growth conditions to a remote device; or a combination thereof. However, as noted supra with respect to the rejection of claims 9 and 13-14, in at least Figs. 1-4 and ¶¶[0051]-[0086] as well as elsewhere throughout the entire reference Noh teaches an embodiment of a system and method for controlling a thin film deposition process which utilizes one or more heated source materials (140) to deposit a thin film onto a substrate (105). As shown specifically in Fig. 2 and ¶¶[0066]-[0072] the system is controlled by an apparatus (100) which includes one or more processors (210), one or more memories (220), and a communication interface (230). The memory (220) is capable of storing data such as software which is capable of storing an operating system, correlation models, and recipes for performing thin film deposition processes according to predetermined process condition data, all of which is capable of being executed by the processor (210). Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Noh and would be motivated to utilize a physical vapor deposition system which includes, inter alia, a processor (210) and a memory (220) which stores instructions for operating the PVD apparatus such that the desired thin film is deposited onto the corresponding substrate in order to automate and perform the film growth process in a repeatable and reproducible manner.
Response to Arguments
Applicant's arguments filed June 18, 2026, have been fully considered, but they are not persuasive and are moot in view of the new grounds of rejection set forth in this Office Action.
Applicants argue that Chadwick is discussing approaches which lower the free energy barrier to nucleation and the formation of the lowest interaction energy, that the present claims treat each plane independently such that the second layer’s plane has the lowest surface energy independent of the template’s plane, and that Chadwick does not teach the use of both lattice matching and the use of the lowest surface energy plane. See applicants’ 6/18/2026 reply, p. 6. Applicants’ arguments are noted, but are unpersuasive. Initially it is again pointed out that the teachings of Chadwick are relevant for all that they reasonably suggest to a person of ordinary skill in the art. As explained specifically in ¶¶[0118]-[0122] of Chadwick, the substrate functionality (i.e., surface energy) is another important factor that drives crystal nucleation as it plays a role in determining the manner in which crystals nucleate on the surface and the rational design of crystalline surfaces for heteroepitaxy is a necessity in the manufacture of materials with controllable properties. Consequently, a PHOSITA would be motivated to select the lowest energy surface on a specific substrate which also is lattice matched to the targeted film (i.e., is lattice matched to a specific polymorph) in order to promote the nucleation and growth of a crystal having the desired materials properties.
It is also noted that applicants’ argument appears to be based on features which are not claimed. Claim 9 does not appear to recite a second layer’s plane which has the lowest surface energy independent of the template’s plane. At most, claim 9 merely recites “where the first plane of the first material has a lowest surface energy of all crystal planes of the first material.” Since the first plane of the first material that forms on the template as a result of heteroepitaxial growth is driven by or controlled by the crystal structure and surface energy of the template surface, the resulting first plane of the first material will necessarily have the lowest energy surface as arriving atoms migrate to their lowest energy site during film growth. Stated in other words, since the cited prior art performs each and every step of the claimed process it must necessarily produce the same results, namely where the first plane of the first material has a lowest surface energy of all crystal planes of the first material. It is also noted that the above-referenced clause in claim 9 appears to be the same as a wherein clause which recites the intended result of performing PVD growth of a first material that is lattice-matched to a template crystal. In this case the limitation does not carry patentable weight as it merely recites the intended result of the process. The Federal Circuit has previously held (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id. See MPEP 2111.04.
Applicants then argue that Forrest does not remedy any deficiencies in Chadwick because Forrest teaches surface energy matching in order to drive heteroepitaxy and allege that the present claims require that the second layer’s plane must be the lowest surface energy of any of its other planes regardless of whether it matches the first layer’s surface energy. See applicants’ 6/18/2026 reply, pp. 6-7. Applicants’ argument is noted, but remains unpersuasive. First, since the growth process is via heteroepitaxial growth using PVD, the surface plane and crystal structure of the deposited layer (i.e., the first material) is influenced by the crystal structure and arrangement of atoms on the surface of the underlying substrate (i.e., the template crystal). Thus, in heteroepitaxial growth the film and substrate are not independent of each other. The teachings of Forrest show that by using the crystallographic plane of the substrate which has the lowest surface energy this results in surface energy matching by driving the formation of a film with a predetermined surface energy thereupon, including a lowest surface energy of the film itself. Accordingly, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to utilize a substrate having the lowest surface energy which promotes the heteroepitaxial growth of a first material thereupon whose first plane also has the lowest surface energy of all crystal planes of the first material with the motivation for doing so being to better match the surface energies of each layer and thereby promote the growth of smooth and ordered crystalline films having the desired materials properties.
Conclusion
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714
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