DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/20/2026 has been entered.
Claims Status
The amendment filed 08/20/2026 has been entered. Claims 1-2 and 4-5 are pending. Claim 5 remains withdrawn from further consideration as being drawn to a non-elected invention. Election was made without traverse in the reply filed 11/26/2025. In the amendment filed 08/20/2026, claim 1 was amended and no claims were newly added or canceled. Claims 1-2 and 4 are under examination on the merits.
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 Group I, claims 1-4 (apparatus) in the reply filed on 11/26/2025 is acknowledged.
Claim 5 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (method), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/26/2025.
Claim Interpretation
The claim 1 limitations “a gas mixture”, “generate a plasma”, “etch a silicon-containing film on a substrate by delivering the plasma and a fluorine-containing gas to the silicon-containing film, wherein the gas mixture contains hydrogen atoms, nitrogen atoms, and oxygen atoms” is interpreted as being directed to at least one of: the manner in which the apparatus is intended to be employed (e.g. etching, delivering plasma), the article worked upon (e.g. “silicon-containing film on a substrate”), and contents of the apparatus during operation (e.g. gas mixture containing specific elements). Regarding the manner in which the apparatus is intended to be employed, [i]t has been held that claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). Also, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Regarding the article worked upon, [i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). Regarding contents of the apparatus during operation, [e]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Where the applied prior art teaches any of the above limitations, the citations will be included for the purpose of compact prosecution on the merits. This is not an indication that the limitations are more than the above discussion has addressed.
Regarding the limitations regarding the controller configured to control oxygen gas concentration to be a set value in the accommodation chamber (see final paragraph of claim 1), it is noted that the instant specification does not disclose an oxygen concentration sensor or feedback control based on the oxygen concentration. Therefore, the broadest reasonable interpretation of the limitation is that the controller is configured to control the supply of oxygen to the accommodation chamber and to set the flow with a goal to obtain the recited chamber concentration. There is no indication the controller provides detected concentration feedback control or otherwise adaptive concentration control or otherwise represents more than a flow control with the ability to control the flow of oxygen to low values such that the accommodation chamber will have the oxygen concentration in the recited ppm range.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“gas mixture supply unit” in claim 1, 2, and 4 interpreted as structure 21 of Fig 1 including a source of gas (21A-C) and a gas line (shown not numbered in Fig 1), and equivalents thereof.
“fluorine-containing gas supply unit” in claim 1, 2, and 4 interpreted as structure 21 of Fig 1 including a source of gas (23) and a gas line (shown not numbered in Fig 1), and equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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.
Claim 1-2 and 4 is 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.
Claim 1 recites “wherein the oxygen gas concentration is a concentration of oxygen molecules in the accommodation chamber obtained by converting an amount of the oxygen atoms in the accommodation chamber into an amount of the oxygen molecules.” This limitation is unclear because it is unclear what is meant by “obtained by converting an amount of the oxygen atoms in the accommodation chamber into an amount of the oxygen molecules” and whether this is a chemical conversion (e.g. a sensor or reaction that causes the atoms to recombine to molecules) or a mathematical conversion (i.e. a basic calculation that two atoms convert to one molecule or a more advanced calculation relating the number of atoms in the plasma to the number of molecules in the plasma based on models and/or data from prior runs). The instant specification does not indicate how the conversion is done. For purpose of examination on the merits, the claim will be interpreted inclusive of the conversion is a basic calculation of two oxygen atoms will form one molecule of oxygen.
The remaining claims are included for their dependence from a claim addressed above.
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, 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.
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.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kabansky (prev. presented US 2002/0179248) in view of Park (prev. presented US 2005/0257890), Ingle (prev. presented US 2004/0083964), Smith (prev. presented US 2016/0234924), and US Patent Application Publication 2001/0050144 of Nishikawa et al., hereinafter Nishikawa.
Regarding claim 1, Regarding claim 1, Kabansky teaches an etching device (Fig. 2 and [0025]), comprising: a discharge tube (plasma tube 146 Fig 2 [0027]) irradiated with microwaves [0027]; and a gas mixture supplying unit (conventional source 148 Fig 2 with line connected to inlet 150 [0027] is a functional equivalent) configured to supply a gas mixture to the discharge tube [0026-0027]; an accommodation chamber (132 Fig 2) configured to accommodate a substrate [0025]; a fluorine-containing gas supplying unit (172 Fig 2, [0030]) arranged independently of the discharge tube and the gas mixture supplying unit (Fig 2) and configured to supply a fluorine-containing gas to the accommodation chamber (Fig 2 and [0030]); wherein the etching device is configured to generate plasma of the gas mixture in the discharge tube [0026-0027] and etch [0025] a silicon-containing film [0003] on a substrate (wafer 136 Fig 2 [0025]) by delivering the plasma [0028] and a fluorine-containing gas (see 172 Fig 2 and [0029-0030]) to the silicon-containing film (Fig 2, see wafer 136), wherein the plasma of the gas mixture contains hydrogen atoms, nitrogen atoms, and oxygen atoms [0008], and wherein the discharge tube is formed from a main component of aluminum oxide (tube 146 made of ceramic alumina or sapphire [0027]). If the conventional source 148 Fig 2 with line connected to inlet 150 [0027] for supplying gas to the tube in which plasma is generated of Kabansky is not a functional equivalent of the claimed “gas mixture supplying unit” and if the source 172 and connection line of Kabansky is not a functional equivalent of the “fluorine-containing gas supplying unit”, then in the same field of endeavor of etching apparatuses [0026] Park teaches a gas mixture supply unit includes sources of gas (140, 142 Fig 3), a gas line (shown as unnumbered line), and a valve (140b, 142b Fig 3) for supplying a gas mixture to a tube (134 Fig 3) which will be irradiated with microwaves (from 148 Fig 3) to form plasma [0078]. Park further teaches a fluorine-containing gas supply unit having a source (144 Fig 3), a valve (144b Fig 3), and supply line (shown not numbered Fig 3). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kabansky to use the gas mixture supply and fluorine-containing gas supply structure of Park in place of the “conventional source 148” and the fluorine containing gas source 172 of Kabansky because this represents a simple substitution of one known structure (gas supply structures of Park) for another (gas supply structures of Kabansky) to achieve predictable results (gas supply to the tube in which plasma is formed by microwave irradiation or separate gas supply to the chamber). Kabansky fails to teach a controller and fails to teach the controller is configured to control the gas supplying unit such that an oxygen gas concentration in the accommodation chamber is maintained at 50 ppm or more and 500 ppm or less, wherein the oxygen gas concentration is a concentration of oxygen molecules in the accommodation chamber obtained converting an amount of the oxygen atoms in the accommodation chamber into an amount of the oxygen molecules. Initially regarding the controller, it is noted that Broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). Therefore, It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kabansky to include a controller because this allows for automated operation. Further, in the same field of endeavor of a remote microwave plasma system [0029], Ingle teaches a controller to control the operation of the apparatus [0010] and teaches controlling the gas supply including oxygen gas sources [0042] to control the concentration of the gas in the chamber [0010], [0052]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kabansky to include a controller and the controller configured to control the gas supplying unit such that an oxygen gas concentration in the accommodation chamber is maintained at a set value because Ingle teaches a controller with this function for automated control of a plasma process in a remote microwave plasma chamber. Regarding the specific concentration range, In the same field of endeavor of plasma apparatuses (abstract), Smith teaches controlling the oxygen in the chamber to be 1-1000ppm because this reduces erosion of the chamber walls [0058]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kabansky and the combination to include the oxygen is controlled to have a concentration of 1-1000 ppm because Smith teaches this range avoids erosion of the chamber walls [0058]. Regarding the calculation of atoms to molecules, it is noted that Smith suggests 1-1000 ppm of oxygen molecules (note the claim requires the ppm to be based on the number oxygen molecules). Although Kabansky doesn’t teach the processing (accommodating) chamber includes alumina or sapphire, in the same field of endeavor of a plasma processing apparatus [0056], Nishikawa teaches it is known to coat the processing chamber with alumina to provide plasma protection to the container [0056]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the chamber of Kabansky to include an alumina coating to provide plasma protection. Due to the alumina coating, It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to ensure the apparatus of Kabansky and the combination is operated to maintain the 1-1000 ppm amount of oxygen in the chamber also to avoid damaging the protection layer.
Regarding claim 2, Kabansky teaches the main component is formed from sapphire [0027].
Regarding claim 4, regarding the specific gases recited, the analysis remains as applied in the claim interpretation section that this is directed to the contents of the apparatus. Additionally, the apparatus of Kabansky is capable of containing the recited gases and specifically teaches oxygen gas and nitrogen gas [0008]. Further Park teaches ammonia gas as a source of hydrogen [0013].
Response to Arguments
Applicant's arguments filed 08/20/2026, hereinafter reply, have been fully considered but they are not persuasive.
Applicant argues (reply p4-5) that the amendment has clarified that the operation is a mathematical conversion. Examiner respectfully disagrees because “obtained by converting” may be inclusive of chemical reactions that occur in the chamber and/or plasma. Therefore, the amendment has not clarified the claim language.
Applicant argues (reply p5-6) that Smith teaches the concentration for the plasma generation chamber and does not specify the concentration is the same in the accommodation (substrate reaction) chamber. This is not persuasive because the gas flows from the plasma chamber into the accommodation chamber and there is no indication that the concentration will be reduced or altered beyond any inclusion of fluorine gas. It is noted that at a setting of 500 ppm oxygen in the plasma generation chamber (note this is the middle of the range of Smith), the fluorine gas may be provided at up to 90% of the chamber gas volume (i.e. a flow of 9:1 of fluorine gas to gas mixture) and still result in 50 ppm of oxygen in the chamber. Further at 1000 ppm this ratio may become 19:1 (fluorine to gas mixture) and still result in 50 ppm. Further it is noted that alumina is a conventional processing chamber coating and the additional reference Nishikawa has been applied to demonstrate the obviousness of alumina in the processing chamber also. Therefore, applicant’s arguments are not persuasive.
The argument (reply p 6-7) that applicant identified an additional advantage to the claimed oxygen concentration value is not persuasive because the prior art may have a different reason for making the modification. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument (reply p8) that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). It is additionally noted that one of the references is merely used to demonstrate that the recited structure of the gas supplying units is known and another is recited to teach a controller which also represents broadly automating a process, as explained above. Further, "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 421, 82 USPQ2d at 1397. "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle."Id. at 420, 82 USPQ2d at 1397.
For all of these reasons the arguments are not persuasive as to the patentability of the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5788778 teaches a processing apparatus with a remote chamber having microwave plasma generation (Fig 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET D KLUNK whose telephone number is (571)270-5513. The examiner can normally be reached Mon - Fri 9:30-5:30.
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/MARGARET KLUNK/Examiner, Art Unit 1716
/Jeffrie R Lund/Primary Examiner, Art Unit 1716
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