DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 12-13 are cancelled. Claims 1-11 and 14-20 are pending in the instant application.
Priority
This application claims priority under 35 U.S.C. §119 to Korean Patent Application No. 10-2023-0006984, filed on January 17, 2023.
Information Disclosure Statements
Applicants’ Information Disclosure Statement, filed on 08/12/2024, has been considered. Please refer to Applicant’s copy of the PTO-1449 submitted herewith.
Response to Restriction Requirement
Applicant’s election with traverse of Group I (i.e. claims 1-9) in the reply filed by Applicant’s representative Mark A. Spinelli on 08/25/2026 is acknowledged. Applicant traverses the Restriction Requirement on the ground that the search and examination of all the claims in an application may be made without serious burden, then the examiner must examine them on the merits; and the Office would not be unduly burdened in the examination of each and every claim. Applicant’s arguments have been fully considered but are found not persuasive.
The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for making the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product as claimed could be made in a materially different process, which requires searching different criteria at different commercial databases. It would be burden for the Examiner if the application was not restricted. Therefore, the restriction requirement is maintained and made FINAL.
Status of the Claims
Claims 10-11 and 14-20 are withdrawn from further consideration by Examiner as being drawn to non-elected inventions under 37 CFR 1.142(b) responding to the restriction requirement. Claims 1-9 are under examination on the merits.
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 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 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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kaya et al., Nanoscale Horiz., (2023), v.8, p.361-367 (Pub 20 Dec 2022) in view of US2021/0123161 A1 (“the `161 publication”) to Lee et al.
Applicant’s claim 1 is drawn to an amorphous boron nitride film comprising an amorphous boron nitride (BN) compound doped with carbon atoms, wherein an sp2 BN bonding structure and an sp3 BN bonding structure are included in the boron nitride film, and an sp2/sp3 conjugated -C=C-C=C- dopant structure is distributed in 60% or less of the entire amorphous film.
Determination of the scope and content of the prior art (MPEP §2141.01)
Kaya et al. (Abstract at p.361) discloses an amorphous boron-nitride upon carbon doping. The amorphous boron-nitride upon carbon doping with varying contents of carbon from a few percent to 40%. The amorphous boron-nitride doping with 20% of carbon, the sp3/sp2 ratio reaches a maximum with a negligible graphitization effect. In addition, Kaya et al. (“5. Mechanical properties” at p.364) discloses the mechanical properties of high-quality BN (boron-nitride) thin films have been studied in microelectronic devices.
The `161 publication [0005 and 0009] discloses boron nitride layers (films) having a dielectric constant and methods of fabricating the boron nitride layers with a ratio of boron to nitrogen of the boron nitride layer may be about 0.9 to about 1.1. In addition, the `161 publication [0076 and 0087] discloses Referring to FIG. 2B, activated nitrogen N* and activated boron B* may be generated by the plasma of the reaction gas in which the carbon source, the inert gas, and the hydrogen gas are mixed and may be adsorbed onto the surface of the substrate S, which may include the Group IV semiconductor material such as Si, Ge, or Sn. Therefore, the `161 publication teaches boron nitride layers or films can be doped with carbon source (atoms).
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between present claim 1 and Kaya et al. is that the prior art does not specifically teach an amorphous boron nitride film comprising an amorphous boron nitride (BN) compound doped with carbon atoms.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
Instead, Kaya et al. (“5. Mechanical properties” at p.364) discloses the mechanical properties of high-quality BN (boron-nitride) thin films have been studied in microelectronic devices. Therefore, Kaya et al. suggests the compound of amorphous boron-nitride upon carbon doping can be used for preparing thin films. In addition, the difference is also suggested by the `161 publication [0005 and 0009], which discloses boron nitride layers (films) having a dielectric constant and methods of fabricating the boron nitride layers with a ratio of boron to nitrogen of the boron nitride layer may be about 0.9 to about 1.1, and the `161 publication [0076 and 0087] discloses Referring to FIG. 2B, activated nitrogen N* and activated boron B* may be generated by the plasma of the reaction gas in which the carbon source. Therefore, Kaya et al. in view of the `161 publication would have rendered claims 1 and 3 obvious.
In terms of claim 2 wherein the amorphous boron nitride film has a dielectric constant of about 2.0 to about 4.0, the `161 publication [0113] teaches the dielectric constants of the amorphous boron nitride layer a-BN and the hexagonal boron nitride layer h-BN are about 2 and 3.5, respectively, at an operating frequency of about 10 kHz.
In terms of claim 4 wherein a B:N ratio of B atoms to N atoms in the amorphous boron nitride film is in a range of about 1.2:1 to about 2:1, the `161 publication [0005 and 0009] discloses boron nitride layers (films) having a dielectric constant and methods of fabricating the boron nitride layers with a ratio of boron to nitrogen of the boron nitride layer may be about 0.9 to about 1.1.
In terms of claim 5 wherein the carbon atoms are methane carbon atoms, trimethylborazine carbon atoms, triethylborazine carbon atoms, tripropylborazine carbon atoms, tributylborazine carbon atoms, ethylene carbon atoms, acetylene carbon atoms, propylene carbon atoms, butylene carbon atoms, or a combination thereof, Kaya et al. (left column at p.362) teaches C-doped a-BN undergoes a strong modification of its thermal stability and mechanical properties as a function of carbon concentration, especially for a C concentration of 20%. It would have been obvious to use methane carbon atoms, ethylene carbon atoms, ethylene carbon atoms, acetylene carbon atoms, propylene carbon atoms, butylene carbon atoms, or a combination thereof as precursors as carbon sources.
In terms of claim 6 wherein the amorphous boron nitride film maintains an amorphous phase at a thickness of about 10 nm to about 20 nm, Kaya et al. (right column at p.361) teaches a-BN films with thickness ranging from 12 nm to 800 nm have shown a dielectric constant from 2.61 to 5.88. In addition, the `161 publication [0090] teaches the thickness of the boron nitride layer BN may be 50 nm or less. It would have been obvious-to-try the amorphous boron nitride film maintains an amorphous phase at a thickness of about 10 nm to about 20 nm because said thickness range is disclosed by Kaya et al. in view of the `161 publication.
In terms of claim 7 wherein the amorphous boron nitride film comprises carbon atoms, boron atoms, and nitrogen atoms, and a content of the boron atoms is higher than a content of the nitrogen atoms, the `161 publication [0005 and 0009] discloses boron nitride layers (films) having a dielectric constant and methods of fabricating the boron nitride layers with a ratio of boron to nitrogen of the boron nitride layer may be about 0.9 to about 1.1, which includes the ratio of boron to nitrogen of the boron nitride is about 1.1. When the ratio of boron to nitrogen of the boron nitride is about 1.1, the content of the boron atoms is higher than the content of the nitrogen atoms.
In terms of claims 8-9, wherein the absorption peak in a wavelength band of about 1400 cm-1 to about 1600 cm-1 of a Fourier transform infrared spectroscopy (FT-IR) spectrum, and of about 1300 cm-1 to about 1400 cm-1 of a Raman spectrum are considered to be inherited properties of the amorphous boron nitride film because a product is not separable from its properties. When the claimed product of the amorphous boron nitride film would have been obvious by Kaya et al. in view of the `161 publication, so does the inherited properties.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-9 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 of co-pending U.S. Patent Application No. 18/359,985 (“the `985 application”), published as US2024/0034636 A1.
Although the conflicting claims are not identical, they are not patentably distinct from each other because Applicant’s claims 1-9 and claims 1-5 of the `985 application are all drawn to an amorphous boron nitride film comprising an amorphous boron nitride (BN) compound doped with carbon atoms, wherein an sp2 BN bonding structure and an sp3 BN bonding structure are included in the boron nitride film, and an sp2/sp3 conjugated -C=C-C=C- dopant structure is distributed in 60% or less of the entire amorphous film, or the amorphous boron nitride film has a carbon content of 60 at% or less, which includes a total content of the carbon or the hydrogen is in a range of about 0.1 at% to about 35 at% of a total atomic content in the boron nitride compound of claim 1 of the `985 application. Therefore, instant claims 1-9 would have been ODP over claims 1-5 of the `985 application.
Conclusions
Claims 1-9 are rejected.
Claims 10-11 and 14-20 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
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