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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested:
System for growing a lattice matched, multilayer, organic crystal heterostructure onto a template crystal by physical vapor deposition
Claim Rejections - 35 USC § 101
The 35 U.S.C. 101 rejection of claims 9-15 is withdrawn in view of applicants’ arguments and claim amendments.
Claim Rejections - 35 USC § 112
Except as detailed infra, some of the preceding 35 U.S.C. 112(b) rejections of claims 9-15 are withdrawn in view of applicants’ arguments and claim amendments.
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 9 recites, inter alia, the step of “identifying a first material that is lattice matched to a template crystal structure.” However, the term “lattice matched” is a relative term which renders the claim indefinite. Since the amount by which the lattice parameter of the first material may differ from the lattice parameter of the template crystal structure while still being considered as “lattice matched” is not defined by the claim and the specification does not provide a standard for ascertaining whether there is a lattice match, its recitation in claim 9 is therefore considered to be indefinite.
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 is lattice matched to 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); 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 person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to utilize the crystallographic plane having the lowest surface energy for epitaxial growth in order to promote the formation of a higher quality single crystal having the desired crystal structure).
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 utilize a first material having a first plane that has the lowest surface energy of all crystal planes of the first material for heteroepitaxial growth of the desired organic material thereupon with the motivation for doing so being to match the surface energies of each layer and thereby promote the growth of smooth and ordered crystalline films. 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 March 4, 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’ arguments regarding the title are noted, but it is pointed out that the elected claims are directed to an apparatus rather than to a method. A proposed replacement title has been supplied by the Examiner.
It appears applicants have not rebutted the Examiner’s 35 U.S.C. 112(b) indefiniteness rejection over the use of the term “lattice matched” in claim 9 and, consequently, the rejection is maintained. For conventional heteroepitaxial growth there is some degree of mismatch between the film and substrate as the lattice parameter of each is not exactly the same. Thus, it is the Examiner’s position that the term “lattice matched” as recited in claim 9 is indefinite since it is unclear how closely the values for the lattice parameter of the first material and the template crystal must be to each other in order to be considered as “lattice matched.”
Applicants then argue that Chadwick only teaches the relative orientation and positioning of two already-selected crystal faces that minimizes the energy of their interaction and does not teach or suggest selecting the lowest surface energy plane. See applicants’ 3/4/2026 reply, pp. 10-11. Applicant’s argument is noted, but it is pointed out that the present rejection is under 35 U.S.C. 103 and 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. It therefore is the Examiner’s position that it would have been within the capabilities of a PHOSITA to select the lowest energy surface on a specific substrate in order to drive the nucleation and growth of a crystal having the desired materials properties. Alternatively, applicants’ amendment to the claim necessitated the introduction of U.S. Patent Appl. Publ. No. 2012/0091436 to Forrest, et al. to teach the revised claim limitations.
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 KENNETH A BRATLAND JR whose telephone number is (571)270-1604. The examiner can normally be reached Monday- Friday, 7:30 am to 4:30 pm EST.
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714
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