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 .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114.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 March 17, 2026 has been entered.
Response to Amendments/Arguments
Amendments made to claims 1, 11-12, 17 and 22, the cancelation of claims 2-4, 6 and 10, the withdrawal of claims 19-20, and the addition of claim 23, as filed on March 17, 2026, are acknowledged.
The amendment filed on March 17, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the newly added limitation “wherein the first surface is not fully removed by the selective etching” in claims 17, 22 and 23. The plain meaning of a surface is the outer face or uppermost portion of a layer. Because there is no special definition of “surface” in the specification, “the first surface” is interpreted based on it plain meaning. Fig. 1C clearly illustrates that the first surface is fully removed; therefore, the newly added limitation “wherein the first surface is not fully removed by the selective etching” is not supported by the original disclosure. Applicant is required to cancel the new matter in the reply to this Office Action.
Applicant's arguments, see Remarks filed on March 17, 2026, with respect to applying Yanagida to amended claim 1 have been considered but are moot because the arguments do not apply to new ground(s) of rejection in this Office Action necessitated by the amendments made to the claims.
Applicant's arguments, see Remarks filed on March 17, 2026, with respect to applying Takayama to amended claim 1 have been fully considered but they are not persuasive.
The Applicant argues that the amended claim 1 is not anticipated by Takayama. However, Takayama does anticipate the amended claim 1, see the rejections under 35 USC 102 for more details.
The Applicant argues that “Tois fails to teach or suggest the feature of "wherein the first surface is not fully removed by the selective etching", as recited in claims 17 and 22 as amended”. However, the newly added limitation “wherein the first surface is not fully removed by the selective etching” is not supported by the original disclosure. The plain meaning of a surface is the outer face or uppermost portion of a layer. Because there is no special definition of “surface” in the specification, “the first surface” is interpreted based on it plain meaning. Fig. 1C clearly illustrates that the first surface is fully removed. In addition, it is noted that claims 17 and 22 are drawn to method claims, and the limitation “wherein the first surface is not fully removed by the selective etching” in the method claims simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
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 17-18, 22 and 23 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 claim(s) contains 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 claims 17, 22 and 23, the newly added limitation “wherein the first surface is not fully removed by the selective etching” is not supported by the original disclosure. The plain meaning of a surface is the outer face or uppermost portion of a layer. Because there is no special definition of “surface” in the specification, “the first surface” is interpreted based on it plain meaning. Fig. 1C clearly illustrates that the first surface is fully removed; therefore, the newly added limitation “wherein the first surface is not fully removed by the selective etching” is not supported by the original disclosure.
Regarding claim 18, it is dependent on claim 17.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office Action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 7, 9, 11, 15-16, 21 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takayama et al. (US5386720).
Regarding claim 1, Takayama discloses a method of selectively etching a material (lines 26-35, column 6), the method comprising: contacting a substrate having a first surface and a second surface with an etching liquid to selectively etch the first surface relative to the second surface (the exposed surface of layer 54 reads on a first surface, the surface of layer 56 reads on a second surface, buffered hydrofluoric acid reads on an etching liquid, lines 26-33, column 6; Figs. 3I and 3J), wherein the first surface comprises etchable material and the second surface is covered with a polyimide-comprising layer (silicon oxide layer 54 reads on am etchable material, polyimide layer 80 reads on a polyimide-comprising layer, lines 26-33, column 6; Fig. 3I), and wherein the etching liquid comprises HF (buffered hydrofluoric acid, lines 31-33, column 6), wherein the etching liquid is an aqueous solution (buffered hydrofluoric acid, lines 31-33, column 6), and wherein the first surface comprises silicon (silicon oxide isolation layer 54, lines 31-33, column 6).
Regarding claim 7, Takayama discloses wherein an etch ratio between the first surface and the polyimide-comprising layer is at least 10 (Figs. 3I-3J).
Regarding claim 9, Takayama discloses wherein the first surface and the second surface have a chemically different composition (the first surface of layer 54 comprises silicon oxide, the second surface of layer 56 comprises silicon, line 54, column 5; line 31, column 6; Fig. 3I).
Regarding claim 11, Takayama discloses wherein the first surface comprises SiO2 (line 31, column 6; Fig. 3I).
Regarding claim 15, Takayama discloses wherein the first surface and the second surface form different surfaces of a structure (Fig. 3I).
Regarding claim 16, Takayama discloses wherein the second surface forms a top surface of a gap (Fig. 3J).
Regarding claim 21, Takayama discloses wherein the polyimide-comprising layer is exposed to the etching liquid (lines 31-33, column 6; Fig. 3J).
Regarding claim 23, the limitation recited in the “wherein” clause in the method claim simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office Action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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.
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.
Claims 1, 5 and 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yanagida et al. (JP2001015621, a machine-translated English version is used) in view of Knotter (“The Chemistry of Wet Etching”, in Handbook of Cleaning for Semiconductor Manufacturing, edited by K.A. Reinhardt and R.F. Reidy, published by Scrivener and Wiley, year 2011, chapter 3).
Regarding claim 1, Yanagida discloses a method of selectively etching a material (paragraph 0082 and Fig. 9), the method comprising: contacting a substrate having a first surface and a second surface with an etching liquid to selectively etch the first surface relative to the second surface (the back surface of the substrate 201 reads on a first surface, the portion of the Al surface covered with polyimide film 207 reads on a second surface, an etching solution reads on an etching liquid, paragraphs 0087-0089 and 0093; Figs. 9e-9f), wherein the first surface comprises etchable material and the second surface is covered with a polyimide-comprising layer (paragraphs 0087-0088), and wherein the etching liquid comprises HF (paragraph 0093), wherein the first surface comprises silicon (the substrate 201 is a silicon wafer, paragraphs 0091 and 0093). Yanagida is silent about wherein the etching liquid is an aqueous solution. However, Yanagida discloses the etching liquid comprises HF and is used to etch silicon (paragraphs 0091 and 0093). In addition, Knotter teaches that silicon-containing materials are commonly etched with fluoride-based aqueous solutions (abstract). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use an aqueous solution, as taught by Knotter in the method of Yanagida for etching silicon, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Regarding claim 5, Yanagida discloses wherein the etching liquid comprises an accessory oxidizing agent (HNO3, paragraph 0093).
Regarding claim 7, Yanagida discloses wherein an etch ratio between the first surface and the polyimide-comprising layer is at least 10 (Figs. 9e-9f).
Regarding claim 8, Yanagida discloses wherein the polyimide-comprising layer is substantially not etched (Figs. 9e-9f).
Regarding claim 9, Yanagida discloses wherein the first surface and the second surface have a chemically different composition (the first surface comprises silicon, the second surface comprises Al, paragraphs 0087 and 0091; Fig. 9e).
Regarding claim 11, Yanagida discloses wherein the first surface comprises SiO2 (paragraph 0087, an exposed silicon surface comprises a native silicon oxide).
Regarding claim 12, Yanagida discloses wherein the second surface comprises a metal (Al, paragraph 0087).
Regarding claim 13, Yanagida discloses wherein the metal is aluminum (Al, paragraph 0087).
Regarding claim 14, Yanagida discloses wherein the second surface comprises an elemental metal (Al, paragraph 0087).
Regarding claim 15, Yanagida discloses wherein the first surface and the second surface form different surfaces of a structure (Fig. 9e).
Claims 17 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tois et al. (US20170352550) in view of Knotter (“The Chemistry of Wet Etching”, in Handbook of Cleaning for Semiconductor Manufacturing, edited by K.A. Reinhardt and R.F. Reidy, published by Scrivener and Wiley, year 2011, chapter 3).
Regarding claim 17, Tois discloses a method of selectively etching material from a first surface of a substrate relative to a second surface of the substrate (paragraph 0147), the method comprising: providing a substrate having a first surface comprising an etchable material, and a second surface, in a reaction chamber (the surface of the second layer reads on a first surface, the surface of the exposed first layer reads on a second surface, paragraphs 0143-0144; and stage 607, Fig. 6); selectively depositing a layer comprising polyimide on the second surface by a cyclic deposition process, wherein the cyclic deposition process comprises: providing pyromellitic dianhydride and a diamine into the reaction chamber alternately and sequentially (paragraphs 0059 and 0145; stage 608, Fig. 6); and providing the substrate in an etching space, wherein the etching space comprises an etchant (HF) to selectively etch the first surface relative to the layer comprising polyimide, wherein the etchant comprises an acid (HF reads on an acid, paragraph 0147 and stage 610, Fig. 6), and wherein the first surface comprises SiO2 (paragraph 0143). Tois is silent about the etchant HF is in an etching liquid, wherein the etching liquid is an aqueous solution. However, Knotter teaches that HF-based liquids (DHF or BHF solutions), are commonly used for etching SiO2 (2nd paragraph on page 101). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known etching liquid comprising HF, such as DHF or BHF solutions, as taught by Knotter in the method of Tois for etching SiO2, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A). It is noted that claim 17 is drawn to a method claim, and the limitation “wherein the first surface is not fully removed by the selective etching” in the method claim simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Regarding claim 22, Tois discloses a method of selectively etching material (paragraph 0147), the method comprising: contacting a substrate having a first surface and a second surface with an etching liquid to selectively etch the first surface relative to the second surface (the surface of the second layer reads on a first surface, the portion of the surface of the first layer covered with polyimide reads on a second surface, HF reads on an etchant, paragraph 0147; and stages 609-610, Fig. 6), wherein the first surface comprises an etchable material and the second surface is covered with a polyimide-comprising layer (paragraphs 0143 and 0145; stage 609, Fig. 6), wherein the etchant comprises an acid (HF reads on an acid, paragraph 0147 and stage 610, Fig. 6), and wherein the first surface comprises SiO2 (paragraph 0143). Tois is silent about the etchant HF is in an etching liquid. However, Knotter teaches that HF-based liquids (DHF or BHF solutions) are commonly used for etching SiO2 (2nd paragraph on page 101). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known etching liquid comprising HF as taught by Knotter in the method of Tois for etching SiO2, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A). It is noted that claim 22 is drawn to a method claim, and the limitation “wherein the first surface is not fully removed by the selective etching” in the method claim simply expresses the intended result of the recited process; therefore, it is not accorded patentability weight. See MPEP 2111.04.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Tois et al. (US20170352550) in view of Knotter (“The Chemistry of Wet Etching”, in Handbook of Cleaning for Semiconductor Manufacturing, edited by K.A. Reinhardt and R.F. Reidy, published by Scrivener and Wiley, year 2011, chapter 3) as applied to claim 17 above, and further in view of Shimada et al. (US20010052576).
Regarding claim 18, Tois in view of Wen is silent about wherein the reaction chamber and the etching space are in the same processing assembly. However, Tois in view of Knotter discloses that the process apparatuses are used for semiconductor device manufacturing (Tois, paragraph 0139; Knotter, 2nd paragraph on page 101). In addition, Shimada teaches that apparatuses used in semiconductor device manufacturing, including film formation apparatus and etching apparatus are placed in the same processing assembly (paragraph 0070 and Fig. 10). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to place the reaction chamber (film formation apparatus) and the etching space (etching apparatus) in the same processing assembly, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (571)270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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