DETAILED ACTION
Claims Status
The amendment filed 4/13/2026 has been entered. Claims 1-2 and 4-5 are pending. Claim 5 is withdrawn from further consideration as being drawn to a non-elected invention. In the amendment filed 04/13/2026, claims 1-2 and 4-5 were amended and claim 3. 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Claim 5 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (method), there being no allowable generic or linking claim.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.
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 supply unit” in claim 1 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.
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 in line 9 “the gas mixture contains hydrogen atoms, nitrogen atoms, and oxygen atoms”. This limitation is unclear because it is unclear if the limitation of line 9 is referring to the gas mixture when supplied to the discharge tube or the gas mixture after plasma formation. Consistent with the instant specification, the limitation of line 9 of claim 1 is interpreted inclusive of referring to the gas mixture after plasma generation. Applicant is kindly requested to amend the claim for clarity such as by amending the claim to recite “the plasma of the gas mixture contains hydrogen atoms, nitrogen atoms, and oxygen atoms;”.
Claim 1 recites “wherein the oxygen gas concentration is a concentration of oxygen molecules in the accommodation chamber when 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 “when 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 (i.e. a sensor that causes the atoms to recombine to molecules and measures the 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), US Patent Application Publication 2004/0083964 of Ingle et al., hereinafter Ingle, and US Patent Application Publication 2016/0234924 of Smith et al., hereinafter Smith (prev. cited).
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 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], 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 supplying unit”, then in the same field of endeavor of etching apparatuses [0026] Park teaches a gas supply unit includes a source 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]. 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 supply structure of Park in place of the “conventional source 148” of Kabansky because this represents a simple substitution of one known structure (gas supply structure of Park) for another (gas supply structure of Kabansky) to achieve predictable results (gas supply to the tube in which plasma is formed by microwave irradiation). 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 10 ppm or more and 1000 ppm or less, wherein the oxygen gas concentration is a concentration of oxygen molecules in the accommodation chamber when 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 which would be 2-2000 ppm oxygen atoms using a conversion of 2 oxygen atoms to 1 oxygen molecule (see rejection of claim 1 under 35 U.S.C. 112(b) above).
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 04/13/2026, hereinafter reply, have been fully considered but they are not persuasive.
Applicant argues (reply p6) that while Kabansky teaches the claimed discharge tube materials, the reference does not recognize applicant’s identified advantage and prefers using a cheaper material. In response to applicant's argument that sapphire mitigates nitrogenization of the discharge tube, 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).
The argument (reply p7) that Kabansky or Kabansky in view of Park do not teach the controller as amended (reply p6-7) is moot in view of the new grounds of rejection including additional references to teach the controller and claimed oxygen concentration. Therefore the arguments are not persuasive as to the allowability of the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2010/0247805 teaches a microwave plasma apparatus with oxygen supply, concentration control [0010], and a controller [0014] (Fig 1). US 2010/0093111 teaches a control unit for controlling chamber gas concentration (Fig 2 and [0016]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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
/KEATH T CHEN/Primary Examiner, Art Unit 1716
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