DETAILED ACTION
This is the Office action based on the 18398146 application filed December 28, 2023, and in response to applicant’s argument/remark filed on December 30, 2025. Claims 1, 3-8 and 10-21 are currently pending and have been considered below.
Election/Restrictions
Applicant’s election, without traverse, of the invention of Group I, claims 1-18, drawn to a method, in the reply filed on November 5, 2025 is acknowledged. Claims 19-20, drawn to an apparatus, withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Newly submitted claim 21, which is drawn to an apparatus, is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1 and 4-6 rejected under 35 U.S.C. 103 as being obvious over Ota et al. (U.S. PGPub. No. 20130256267), hereinafter “Ota”, and as evidenced by Leem et al. (U.S. PGPub. No. 20250391765), hereinafter “Leem”, or Okumura et al. (U.S. PGPub. No. 20230282473), hereinafter “Okumura”:--Claims 1, 4, 5, 6: Ota teaches a method of etching, comprisingi) loading a substrate comprising a silicon oxide film and a silicon nitride film into a process chamber ([0089], Fig. 3 and 6A);ii) supplying a silylating agent to the substrate to silylate the surface of the substrate and form a protective layer on the surface of the silicon oxide film ([0092], Fig. 3 and ), the silylating agent may be BSTFA (N,O-bis[trimethylsilyl]trifluoroacetamide), MSTFA (N-methyl-N-trimethylsilyl-trifluoroacetamide), or MTMSA (N,O-bis(trimethylsilyl)trifluoroacetamide) ([0058]);iii) supplying HF vapor to the substrate while heating the substrate to 30-100C ([0069-0072, 0077]), wherein the silicon nitride film is etched ([0098]) while the silicon oxide film is “hardly lost” ([0093]). It is noted that the BSTFA, MSTFA or MTMSA are silylating agent having a C-F bond, and that the silicon oxide film is also etched by a small amount, i.e. “hardly lost”. Since the silicon nitride layer is also exposed to the silylating agent, the silylating agent is also deposited onto the exposed surface of the silicon nitride layer at least by some amount, as evidenced by Leem or Okumura. Leem teaches that a silane compound, such as BSTFA, may be deposited on an insulation film, such as silicon nitride ([0102, 0114-0115, 0145-0146]), and Okumura teaches that a silylating agent ([0038, 0045]), such as MSTFA or BSTFA ([0113-0116, 0171]; Table 1-1, 1-2 and 2) may be deposited on a silicon nitride surface ([0057]) by spin coating ([0083, 0191]) It is noted that the specification discloses that silylating agent comprising C-F bond may be deposited onto a silicon-containing film ([0030]), then the silicon-containing film is etched by a reaction between the silicon-containing film and fluorine atoms contained in the silylating agent ([0030-0031]), wherein the reaction may be promoted by heating the silicon-containing film ([0033]) to 100C ([0092]). Therefore, although Ota is silent about an amount of the etching is resulted from a reaction between the fluorine atoms contained in the silylating agent and the silicon nitride film and the silicon oxide film, since Ota teaches to deposit the silylating agent containing C-F bond onto the silicon nitride film and the silicon oxide film then heating the films to 100C, as taught by the specification, at least some amount of the etching of the silicon nitride film and the silicon oxide film in the invention of Ota is resulted from a reaction between the fluorine atoms contained in the silylating agent and the silicon nitride film and the silicon oxide film, as taught in the specification. According to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”, Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”.
Allowable Subject Matter
Claim 7-8 and 10-18 are allowable. Please refer to statement of reasons for the indication of allowable subject matter in the previous Office action.
Claim 3 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: With respect to claim 3, none of the cited prior arts teaches the feature “the reaction is promoted by first plasma generated from a first process gas containing at least one gas selected from the group consisting of an inert gas and an oxygen-containing gas” in the context of claim 3.
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 submission should be clearly labeled “Comments on Statement of Reasons for Allowance”.
Response to Arguments
Applicant's arguments filed February 2, 2023 have been fully considered as follows:-- Claim 1 has been amended to add an additional step. It is noted that the amended claim 1 has a different scope than the original claim 2 because it recites a substrate, which is a new feature. Therefore, the amended claim 1 is prosecuted as an amended claim, and is rejected based on existing prior arts, as shown above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (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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/THOMAS T PHAM/Primary Examiner, Art Unit 1713
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