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 .
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-20 in the “Response To Restriction Requirement Under 37 C.F.R. §1.111” filed on February 18, 2026 (hereinafter the “Reply”) is acknowledged. The Reply withdrew claims 21 and 22.
Newly submitted Group IV, claim23 is directed to an invention that is independent or distinct from the invention originally claimed in elected Group I, claims 1-20 for at least the following reason. The inventions of elected Group I, claims 1-20, drawn to a method of processing a substrate, classified in C23C 16/00, and new Group IV (claim 23, drawn to a method, classified in H10P 72/0431) are directed to related processes. The related inventions are distinct if: (i) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (ii) the inventions do not overlap in scope, i.e., are mutually exclusive; and (iii) the inventions as claimed are not obvious variants. Please see, MPEP § 806.05(j) and MPEP § 802.01.
In the instant case, the elected invention as claimed in Group I is a materially different process than the invention as claimed in Group IV for at least the following reason. For example, the claimed invention of Group IV requires “wherein the fourth temperature is set to be lower than each of the second temperature and the third temperature” which the claimed invention of originally elected Group I does not require. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for at least the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and/or
(d) the prior art applicable to one invention would not likely be applicable to another invention.
In the present application, the inventions as claimed have nothing of current record to show them to be obvious variants. The claims to the different inventions require a different field of search (e.g., searching different class/subclass combinations) and/or employing different search strategies and search queries to find at least the different features listed above.
Because 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, newly added claim 23 is withdrawn from consideration as being directed to a non-elected invention. Please 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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, Applicant has amended lines 5-6 of claim 1 to include the recited limitation of “substituting at least a portion of the element X”, line 9 to include the recited limitation of “desorbing at least a portion of the element Y”, and lines 12-13 to include the recited limitation of “at least a portion of the element Y is desorbed”. Page eight (8) of the “Response Pursuant To 37 C.F.R. §1.111” filed on June 26, 2026 (hereinafter the “Response”) states: “The Amendments are supported at least by paragraphs [0041]-[0044], and [0205]-[0208] of the specification, and FIG. 4 of the present application. No new matter has been added.” However, the Examiner can find no discussion of “substituting at least a portion of the element X”, “desorbing at least a portion of the element Y”, or “at least a portion of the element Y is desorbed” in these cited portions of Applicant’s originally filed application. Rather, these cited portions of Applicant’s originally filed application appear to require all of element X and all of element Y to be respectively impacted, not just “at least a portion” thereof, as recited in amended claim 1. Additionally, Applicant’s remarks on pages ten (10)-eleven (11) of the Response appear to require all of element X to be substituted and all of element Y to be desorbed, rather than just at least a portion thereof:
As described in paragraphs [0041 ]-[0044], [0205]-[0208] and shown in FIG. 4 of the present application, the claimed invention improves surface roughness, step coverage, and shortens the incubation time during film formation by specifically substituting the element X termination with the element Y termination, and subsequently desorbing the element Y to generate dangling bonds before film formation.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claims 2-19 and 24 are also rejected under 35 U.S.C. 112(a) because they depend, directly or indirectly, from amended claim 1. The Examiner respectfully requests that Applicant please specifically indicate where the originally filed application provides support for this newly added language of amended claim 1.
Regarding claim 20, Applicant has amended line 6 of claim 1 to include the recited limitation of “substituting at least a portion of the element X”, line 9 to include the recited limitation of “desorbing at least a portion of the element Y”, and lines 11-12 to include the recited limitation of “at least a portion of the element Y is desorbed”. Page eight (8) of the “Response Pursuant To 37 C.F.R. §1.111” filed on June 25, 2026 (hereinafter the “Response”) states: “The Amendments are supported at least by paragraphs [0041]-[0044], and [0205]-[0208] of the specification, and FIG. 4 of the present application. No new matter has been added.” However, the Examiner can find no discussion of “substituting at least a portion of the element X”, “at least a portion of the element Y”, or “at least a portion of the element Y is desorbed” in these cited portions of Applicant’s originally filed application. Rather, these cited portions of Applicant’s originally filed application appear to require all of element X and all of element Y to be respectively impacted, not just “at least a portion” thereof, as recited in amended claim 1. Additionally, Applicant’s remarks on pages ten (10)-eleven (11) of the Response appear to require all of element X to be substituted and all of element Y to be desorbed, rather than just at least a portion thereof:
As described in paragraphs [0041 ]-[0044], [0205]-[0208] and shown in FIG. 4 of the present application, the claimed invention improves surface roughness, step coverage, and shortens the incubation time during film formation by specifically substituting the element X termination with the element Y termination, and subsequently desorbing the element Y to generate dangling bonds before film formation.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. The Examiner respectfully requests that Applicant please specifically indicate where the originally filed application provides support for this newly added language of amended claim 20.
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 1-20 and 24 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, lines 2-3 partially recite: “forming a layer including a surface terminated with an element X on a surface of the substrate”. This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, the meaning of “a surface terminated with an element X” is unclear. Does “a surface terminated with an element X” mean that endings have been formed on the surface of the layer that include element X? If so, then how are these endings formed and what is their structure? As another example, does “a surface terminated with an element X” mean that the surface of the layer only extends to a certain limit? If so, then what is that limit and what does element X have to do with this limit? As an additional example, does “a surface terminated with an element X” have a specific physical or chemical property? If so, then what is that physical or chemical property? Perhaps “a surface terminated with an element X” has a meaning other than these three possible interpretations. For purpose of examination, the Examiner is interpreting the above-quoted lines 2-3 of claim 1 as reciting: “forming a layer including a surface with an element X on a surface of the substrate” because of these ambiguities.
Regarding claim 1, lines 6-7 have been amended to partially recite: “to form a surface terminated with the element Y”. This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, the meaning of “to form a surface terminated with the element Y” is unclear. Does “a surface terminated with the element Y” mean that endings have been formed on the surface that include element Y? If so, then how are these endings formed and what is their structure? As another example, does “a surface terminated with the element Y” mean that the surface only extends to a certain limit? If so, then what is that limit and what does element Y have to do with this limit? As an additional example, does “a surface terminated with the element Y” have a specific physical or chemical property? If so, then what is that physical or chemical property? Perhaps “a surface terminated with the element Y” has a meaning other than these three possible interpretations. For purpose of examination, the Examiner is interpreting the above-quoted lines 6-7 of claim 1 as reciting: “to form a surface with the element Y” because of these ambiguities.
Regarding claim 1, lines 9-10 partially recite: “desorbing at least a portion of the element Y on the surface of the layer”. This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, the meaning of “desorbing at least a portion of the element Y on the surface of the layer” is unclear. For example, what does “desorbing at least a portion of the element Y” mean? Does it mean removing a portion of the element Y? If so, then how is the element Y removed and why is it removed? Perhaps “desorbing the element Y” means something else? For purpose of examination, the Examiner is interpreting the above-quoted lines 9-10 of claim 1 as reciting: “removing at least a portion of the element Y on the surface of the layer” because of this ambiguity.
Regarding claim 1, lines 12-13 partially recite: “forming a film on the layer from which at least a portion of the element Y is desorbed”. This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, what does “on the layer from which at least a portion of the element Y is desorbed” mean? Does it mean removing a portion of the element Y? If so, then how is the element Y removed and why is it removed? Perhaps “on the layer from which at least a portion of the element Y is desorbed” means something else? For purpose of examination, the Examiner is interpreting the above-quoted lines 12-13 of claim 1 as reciting: “forming a film on the layer from which at least a portion of the element Y is removed” because of this ambiguity.
Dependent claims 2-19, and 24 are also rejected under 35 U.S.C. 112(b) because they depend, directly or indirectly, on amended claim 1.
Regarding claim 2, lines 1-4 recite: “wherein in step (a), a surface with a Si-X termination is formed as the surface terminated with the element X, and wherein in step (b), the Si-X termination on the surface of the layer is changed to a Si-Y termination.” This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, the meaning of “Si-X termination” is unclear. Does “Si-X termination” mean that endings have been formed on the surface that include silicon and the element X? If so, then how are these endings formed and what is their structure? As another example, does “Si-X termination” mean that the surface only extends to a certain limit? If so, then what is that limit and what does silicon and element X have to do with this limit? As an additional example, does “Si-X termination” have a specific physical or chemical property? If so, then what is that physical or chemical property? Perhaps Si-X termination” has a meaning other than these three possible interpretations. As a further example, what does “a Si-Y termination” mean? Does “Si-Y termination” mean that endings have been formed on the surface that include silicon and element Y? If so, then how are these endings formed and what is their structure? As another further example, does “Si-Y termination” mean that the surface only extends to a certain limit? If so, then what is that limit and what does silicon and element Y have to do with this limit? As an additional further example, does “Si-Y termination” have a specific physical or chemical property? If so, then what is that physical or chemical property? Perhaps Si-Y termination” has a meaning other than these three possible interpretations. For purpose of examination, the Examiner is interpreting lines 1-4 of claim 2 as reciting: “wherein in step (a), a surface where Si-X is formed and wherein in step (b), the Si-X on the surface of the layer is changed to a Si-Y” because of these ambiguities.
Regarding claim 3, lines 1-3 partially recite: “wherein in step (c), a Si-Y bond in the Si-Y termination on the surface of the layer is cut, and Si at the surface of the layer is made to have a dangling bond”. This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, the meaning of “the Si-Y termination on the surface of the layer” is unclear. Does “the Si-Y termination on the surface of the layer” mean that endings have been formed on the surface of the layer that include element Y? If so, then how are these endings formed and what is their structure? As another example, does “the Si-Y termination on the surface of the layer” mean that the surface of the layer only extends to a certain limit? If so, then what is that limit and what does element Y have to do with this limit? As an additional example, does “the Si-Y termination on the surface of the layer” have a specific physical or chemical property? If so, then what is that physical or chemical property? Perhaps “the Si-Y termination on the surface of the layer” has a meaning other than these three possible interpretations. As a further example, what does “is cut” mean and why is this step performed? As a still further example, how is “Si” made “at the surface of layer” and why is this step performed? What happens to element Y? As yet a still further example, how is “Si at the surface of layer” “made to have a dangling bond” and why is this step performed? Again, what happens to element Y and does it also have a dangling bond? For purpose of examination, the Examiner is interpreting the above-quoted lines 1-3 of claim 3 as reciting: “wherein in step (c), a Si-Y bond in the Si-Y on the surface of the layer” because of these ambiguities.
Regarding claim 20, lines 3-4 partially recite: “forming a layer including a surface terminated with an element X on a surface of a substrate”. This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, the meaning of “a surface terminated with an element X” is unclear. Does “a surface terminated with an element X” mean that endings have been formed on the surface of the layer that include element X? If so, then how are these endings formed and what is their structure? As another example, does “a surface terminated with an element X” mean that the surface of the layer only extends to a certain limit? If so, then what is that limit and what does element X have to do with this limit? As an additional example, does “a surface terminated with an element X” have a specific physical or chemical property? If so, then what is that physical or chemical property? Perhaps “a surface terminated with an element X” has a meaning other than these three possible interpretations. For purpose of examination, the Examiner is interpreting the above-quoted lines 3-4 of claim 20 as reciting: “forming a layer including a surface with an element X on a surface of a substrate” because of these ambiguities.
Regarding claim 20, line 7 has been amended to partially recite: “to form a surface terminated with the element Y”. This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, the meaning of “to form a surface terminated with the element Y” is unclear. Does “a surface terminated with the element Y” mean that endings have been formed on the surface that include element Y? If so, then how are these endings formed and what is their structure? As another example, does “a surface terminated with the element Y” mean that the surface only extends to a certain limit? If so, then what is that limit and what does element Y have to do with this limit? As an additional example, does “a surface terminated with the element Y” have a specific physical or chemical property? If so, then what is that physical or chemical property? Perhaps “a surface terminated with the element Y” has a meaning other than these three possible interpretations. For purpose of examination, the Examiner is interpreting the above-quoted line 7 of claim 20 as reciting: “to form a surface with the element Y” because of these ambiguities.
Regarding claim 20, line 9 partially recites: “desorbing at least a portion of the element Y on the surface of the layer”. This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, the meaning of “desorbing at least a portion of the element Y on the surface of the layer” is unclear. For example, what does “desorbing at least a portion of the element Y” mean? Does it mean removing a portion of the element Y? If so, then how is the element Y removed and why is it removed? Perhaps “desorbing the element Y” means something else? For purpose of examination, the Examiner is interpreting the above-quoted line 9 of claim 20 as reciting: “removing at least a portion of the element Y on the surface of the layer” because of this ambiguity.
Regarding claim 20, lines 11-12 partially recite: “forming a film on the layer from which at least a portion of the element Y is desorbed”. This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, what does “on the layer from which at least a portion of the element Y is desorbed” mean? Does it mean removing a portion of the element Y? If so, then how is the element Y removed and why is it removed? Perhaps “on the layer from which at least a portion of the element Y is desorbed” means something else? For purpose of examination, the Examiner is interpreting the above-quoted lines 11-12 of claim 20 as reciting: “forming a film on the layer from which at least a portion of the element Y is removed” because of this ambiguity.
Claim Rejections - 35 USC § 102
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 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, 3-6, 10-12, 14-16, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0125828 A1 (Horita).
Regarding claim 1, Horita discloses, A method (FIG. 4; [0038]) of processing a substrate (substrate (200); FIG. 1; [0017]), comprising:
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(a) forming a layer including a surface terminated with an element X ([0066]--Si) on a surface of the substrate (200) by supplying an element X-containing gas ([0064] and [0022]—HCDS gas is Si2Cl6 which is an Si-containing gas) to the substrate (200) which is set to have a first temperature ([0053], [0060], and [0061]);
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(b) substituting at least a portion of the element X on the surface of the layer with an element Y ([0066]—Cl) to form a surface terminated with the element Y by supplying an element Y-containing gas ([0066] and [0022]—HCDS gas is Si2Cl6 which is a Cl-containing gas) to the substrate (200) which is set to have a second temperature ([0053], [0060], and [0061]);
(c) desorbing at least a portion of the element Y on the surface of the layer ([0070]) by setting the substrate (200) to have a third temperature ([0053], [0060], and [0061]); and
(d) forming a film on the layer from which at least the portion of the element Y is desorbed, by supplying a film-forming gas ([0097]) to the substrate (200) which is set to have a fourth temperature ([0095]).1
Regarding claim 3, Horita discloses, The method of Claim 2, wherein in step (c), a Si-Y bond in the Si-Y termination on the surface of the layer (a Si-Y bond is an inherent property of the Si-Y on the surface of the layer; please see, MPEP 2112 and 2112.01) is cut, and Si at the surface of the layer is made to have a dangling bond.2
Regarding claim 4, Horita discloses, The method of Claim 1, wherein the second temperature ([0053], [0060], and [0061]) is set to be higher than the first temperature ([0053], [0060], and [0061]), and
wherein the third temperature is set to be higher than the first temperature ([0053], [0060], and [0061]—Horita discloses that the first, second, and third temperatures may be set within a range of 350 to 450 degrees Celsius which discloses that these temperatures may be set differently such that the second temperature is set to be higher than the first temperature, and the third temperature is set to be higher than the first temperature, as recited in claim 4).
Regarding claim 5, Horita discloses, The method of Claim 4, wherein the fourth temperature is set to be equal to or lower than the first temperature ([0053] and [0060]—first temperature may range between 350 to 450 degrees Celsius and [0106]—fourth temperature may range between 450 to 550 degrees Celsius which discloses that the fourth temperature is set to be equal to the first temperature).
Regarding claim 6, Horita discloses, The method of Claim 4, wherein the fourth temperature (0095]) is set to be higher than the first temperature ([0053], [0060], and [0061]).
Regarding claim 10, Horita discloses, The method of Claim 7, wherein in step (a), a halosilane-based gas is supplied to the substrate (200) as the element X-containing gas ([0022]).
Regarding claim 11, Horita discloses, The method of Claim 7, wherein in step (a), a chlorosilane-based gas is supplied to the substrate (200) as the element X-containing gas ([0022]).
Regarding claim 12, Horita discloses, The method of Claim 10, wherein in step (a), a silicon hydride-based gas is further supplied to the substrate (200) ([0021]).
Regarding claim 14, Horita discloses, The method of Claim 9, wherein in step (b), at least one selected from the group of a hydrogen gas and a deuterium gas is supplied to the substrate (200) as the element Y-containing gas ([0023]).
Regarding claim 15, Horita discloses, The method of Claim 1, wherein in step (c), at least one selected from the group of supplying an inert gas ([0073] and [0048]—N2 is an inert gas) to the substrate (200) and evacuating a space in which the substrate (200) exists is performed.
Regarding claim 16, Horita discloses, The method of Claim 1, wherein in step (d), at least one selected from the group of a germanium-containing gas and a silicon-containing gas is supplied to the substrate (200) as the film-forming gas ([0097] and [0021]).
Regarding claim 19, Horita discloses, The method of Claim 1, wherein a processing time in step (b) is equal to or longer than a processing time in step (c) ([0078]—Horita discloses that the processing time for steps (b) and (c) may range between 0.5 to 2 minutes).
Regarding claim 20, Horita discloses, A method (FIG. 4; [0038]) of manufacturing a semiconductor device ([0002]), comprising:
(a) forming a layer including a surface terminated with an element X ([0066]--Si) on a surface of a substrate (substrate (200); FIG. 1; [0017]) by supplying an element X-containing gas ([0064] and [0022]—HCDS gas is Si2Cl6 which is an Si-containing gas) to the substrate (200) which is set to have a first temperature ([0053], [0060], and [0061]);
(b) substituting at least a portion of the element X on the surface of the layer with an element Y ([0066]—Cl) to form a surface terminated with the element Y by supplying an element Y-containing gas ([0066] and [0022]—HCDS gas is Si2Cl6 which is a Cl-containing gas) to the substrate (200) which is set to have a second temperature ([0053], [0060], and [0061]);
(c) desorbing at least a portion of the element Y on the surface of the layer ([0070]) by setting the substrate (200) to have a third temperature ([0053], [0060], and [0061]); and
(d) forming a film on the layer from which at least the portion of the element Y is desorbed, by supplying a film-forming gas ([0097]) to the substrate (200) which is set to have a fourth temperature ([0095]).3
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.
Claims 2, 12, 13, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Horita.
Regarding claim 2, Applicant may argue that Horita does not explicitly disclose,
wherein in step (a), a surface with a Si-X termination is formed as the surface terminated with the element X, and
wherein in step (b), the Si-X termination on the surface of the layer is changed to a Si-Y termination.4
However, Horita does disclose that step (a) causes the surface of substrate (200) to include silicon (Si) ([0066]). Horita also discloses that step (b) causes the surface of substrate (200) to include silicon (Si) ([0071]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention having the teachings of Horita before him/her that, a surface with a Si-X termination is formed as the surface terminated with the element X and the Si-X termination on the surface of the layer is changed to a Si-Y termination because formation of Si-X and formation of Si-Y are result effective variables which can be controlled through routine experimentation with a reasonable expectation of success by, for example, selecting the supply of the element X-containing gas to substrate (200) and/or the supply of the element Y-containing gas to substrate (200). Please see, MPEP 2144.05(II).
Regarding claim 12, Applicant may argue that Horita does not explicitly disclose, The method of Claim 10, wherein in step (a), a silicon hydride-based gas is further supplied to the substrate (200).
But, Horita discloses that a silicon hydride gas helps ensure that the crystal state of the Si film at the completion of the Si film formation is amorphous ([0108]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention having the teaching of Horita before him/her that in step (a), a silicon hydride-based gas is further supplied to the substrate (200), as taught by Horita, to help ensure that the crystal state of the Si film at the completion of the Si film formation is amorphous. Please see, MPEP 2144(IV)—Rational Different From Applicant’s Is Permissible—The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.
Regarding claim 13, Applicant may argue that Horita does not explicitly disclose, wherein in step (a), the halosilane-based gas and the silicon hydride-based gas are alternately supplied to the substrate.
However, Horita does disclose that the gas cycle may be repeated a predetermined number of times (n times, where n is an integer of 1 or more) ([0074]). As noted above, Horita also discloses that halosilane-based gas and silicon hydride-based gas may be utilized in step (a). Horita additionally discloses that the thickness of the layer formed on substrate (200) can be adjusted by controlling processing conditions such as the number of times processing is repeated (0075]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention having the teachings of Horita before him/her that the type of gas utilized and sequence of application thereof are result effective variables which can be chosen through routine experimentation with a reasonable expectation of success which could include that the halosilane-based gas and the silicon hydride-based gas are alternately supplied to the substrate (200) to control thickness of the layer formed on substrate (200). Please see, MPEP 2144(IV), above, and MPEP 2144.05(II).
Regarding claim 17, Horita discloses, wherein the second temperature and the third temperature are set to 400 degrees C or higher and 520 degrees C or lower. ([0053] and [0060]—Horita discloses that the second and third temperatures may be set within a range of 350 to 450 degrees Celsius which overlaps with 400 degrees C or higher and 520 degrees C or lower). Please see, MPEP 2144.05(I)—“ In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”
Regarding claim 18, Horita discloses, wherein a pressure in a space in which the substrate (200) exists is set to 500 Pa or more in step (b) and step (c) ([0080]—Horita discloses that the pressures in a space in which the substrate (200) exists in steps (b) and (c) of claim 1 range from 277 to 1,200 Pa with overlaps with 500 Pa or more). Please see, MPEP 2144.05(I), above.
Allowable Subject Matter
Claims 7-9 and 24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form both: (i) to overcome the rejections of claim 1 under 35 U.S.C. 112(a) and 112(b), as detailed above in this Final Office Action, and (ii) to include all of the limitations of claim 1 from which they currently depend.
The following is an Examiner’s statement of reasons for allowance:
Regarding claim 7, Horita, in combination with the other recited elements of claim 1, does not appear to explicitly disclose, the element X includes halogen;
Regarding claim 8, Horita, in combination with the other recited elements of claim 1, does not appear to explicitly disclose, the element X includes chlorine;
Regarding claim 9, Horita, in combination with the other recited elements of claim 1, does not appear to explicitly disclose, wherein the element Y includes hydrogen or deuterium; and
Regarding claim 24, Horita, in combination with the other recited elements of claim 1, does not appear to explicitly disclose, in step (d), a germanium-containing gas is supplied to the substrate as the film-forming gas.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Amendments and Arguments
Applicant’s amendment of claims 2, 3, 10-16, 18, and 19 and remarks on pages eight (8)-nine (9) in the Response have overcome the objection to claims 2, 3, 10-16, 18, and 19 in the Office Action dated March 27, 2026 (hereinafter the “Office Action”). Regarding the rejection of claims 1-20 under 35 U.S.C. 112(b) in the Office Action, page nine (9) of the Response states:
Regarding the terms "terminated" and "termination" in Claims 1-3, the Examiner asserted that these terms are unclear. However, in the field of semiconductor processing, "surface terminated" and "surface termination" are well-established technical terms referring to a state in which dangling bonds on a substrate surface are saturated by specific atoms or species, thereby terminating the bonds. Furthermore, the specification clearly describes the step of substituting the element X with the element Y, which premises that the terms describe chemical bonding states. Therefore, the meanings of these terms are clear to those skilled in the art without any ambiguity.
The Examiner respectfully disagrees that the portion of the originally filed specification mentioned in the above-quoted Response clarifies the meaning of “surface terminated” and “surface termination”. The Examiner can also find no definition in Applicant’s originally filed specification for the meaning of such terms. Additionally, the Examiner respectfully notes that Applicant has not provided any written third-party evidentiary support for its assertion that “in the field of semiconductor processing, ‘surface terminated’ and ‘surface termination’ are well-established technical terms referring to a state in which dangling bonds on a substrate surface are saturated by specific atoms or species, thereby terminating the bonds.” The Examiner further respectfully notes that only part of the rejection of claim 3 under 35 U.S.C. 112(b) in the Office Action appears to have been specifically addressed in the remarks of the Response.
The Examiner has, therefore, maintained the rejection of claims 1-19 and also amended claim 20 under 35 U.S.C. 112(b), as detailed above in paragraphs 18-28 of this Final Office Action. For clarity of the written record and to remove these rejections, the Examiner respectfully requests that Applicant please provide written evidence in the form of a prior art document that supports its asserted meaning of “surface terminated” and “surface termination”, as quoted above, and that Applicant please also address the remaining rejections of claims 1-20 under 35 U.S.C. 112(b), as detailed above in this Final Office Action.
Applicant’s amendment of claim 1 and remarks on page nine (9) of the Response regarding the amendment of “a substrate” to “the substrate” have overcome the rejection of claim 1 under 35 U.S.C. 112(b) based on “a substrate” in the Office Action. However, Applicant’s amendment of claims 1 and 20, and following remarks on page nine (9) of the Response have failed to overcome the rejection of claim 1 and 20 under 35 U.S.C. 112(b), as detailed above in paragraphs 20, 21, 27, and 28 of this Final Office Action:
Regarding the language "desorbing the element Y" and "forming a film on the layer from which the element Y is desorbed" in Claim 1, Applicant has amended the claim to recite "desorbing at least a portion of the element Y" and "forming a film on the layer from which at least the portion of the element Y is desorbed."
Applicant’s amendment of claim 20 and remarks on page ten (10) of the Response have overcome the rejection of claim 20 under 35 U.S.C. 112(d) in the Office Action.
Regarding the rejection of claim 1 under U.S.C. 102(a)(1) as being anticipated by Horita, page 11 of the Response states:
In contrast, the Examiner interpreted Horita's CI as the element X and H as the element Y. However, Horita merely discloses supplying H2 gas to a surface terminated with CI and forming a film on the surface from which CI is desorbed (paragraphs [0064]- [0070]). Horita fails to disclose or suggest the specific consecutive steps of (i) substituting CI on the surface with H to form an H-terminated surface, (ii) desorbing H, and then (iii) forming a film on the surface from which H is desorbed.
The mechanism of simply desorbing CI to form a seed layer as taught by Horita is different from the reaction path of the present invention, which involves substituting the element X with the element Y and then desorbing the element Y. Therefore, Horita does not anticipate the method of amended Claim 1.
The Examiner respectfully disagrees for at least the following reasons. For example, as detailed above, the Examiner respectfully notes that the Final Office Action is relying on Si as the element X and Cl as the element Y, rather than Cl as the element X and H as the element Y. As another example, as also detailed above, the Examiner respectfully submits that Horita does disclose the specific recited steps of claim 1. As an additional example, the Examiner respectfully notes that amended claim 1 does not recite “substituting the element X with the element Y and then desorbing the element Y.” Rather, amended claim 1 requires that only at least a portion of the element X be substituted with the element Y and that only at least a portion of element Y be desorbed.
Regarding amended claim 20, page 11 of the Response states: “Claim 20 incorporates the limitation of claim 1, and is allowable for the same reasons discussed above.” The Examiner respectfully disagrees at least for the reasons detailed above in this Final Office Action.
On page 12 of the Response, Applicant requests rejoinder of claims 21 and 22. The Examiner respectfully submits that rejoinder is premature at this time because none of originally elected claims 1-20 are allowable. Please see MPEP 821.04.
Notwithstanding the above, to advance prosecution and as requested by Applicant on page eight (8) of the Response, the Examiner respectfully requests that Applicant please consider scheduling an interview with the Examiner to discuss proposed claim amendments and written evidence for submission to overcome the rejections of the claims, as detailed above, prior to filing a written response to this Final Office Action. The Examiner would welcome such a discussion and is available at the telephone number provided below.
Conclusion
THIS ACTION IS MADE FINAL. 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 Erik A. Anderson whose telephone number is (703) 756-1217. The Examiner can normally be reached Monday-Friday 8:30 a.m.-4:30 p.m. (Pacific Time Zone).
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, William B. Partridge, can be reached at (571) 270-1402. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/ERIK A. ANDERSON/Examiner, Art Unit 2812
/William B Partridge/Supervisory Patent Examiner, Art Unit 2812
1 Please see the rejections of claim 1 under 35 U.S.C. 112(b), above, for how the language of claim 1 is being interpreted for purpose of examination.
2 Please see the rejections of claim 3 under 35 U.S.C. 112(b), above, for how the language of claim 3 is being interpreted for purpose of examination.
3 Please see the rejections of claim 20 under 35 U.S.C. 112(b), above, for how the language of claim 20 is being interpreted for purpose of examination.
4 Please see the rejections of claim 2 under 35 U.S.C. 112(b), above, for how the language of claim 2 is being interpreted for purpose of examination.
Prosecution Insights