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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-4 in the reply filed on 9/2/26 is acknowledged. Claim 4 was amended to change it from an apparatus to a method which depends from claim 1 and therefore is considered as part of the elected group depending from claim 1.
Claims 5-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected composition and composition evaluation method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/2/26.
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 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for “the sublimable substance is selected from the group consisting of o-acetanisidide, N-ethyl-p-toluenesulfonamide, 4-chlorophenylacetic acid, 4-methoxyphenylacetic acid, 2-chlorophenylacetic acid, and dimethyl isophthalate”, does not reasonably provide enablement for all substances with “a maximum positive partial charge of 0.22 or more and less than 0.34”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
As noted, the specification is not enabled for all substances with “a maximum positive partial charge of 0.22 or more and less than 0.34” wherein the "maximum positive partial charge of the sublimable substance" is defined as a value obtained based on the chemical structure of the sublimable substance using MaxPartialCharge which is a descriptor of RDKit. RDKit is software in the field of chemo-informatics (see ¶ 8, Specification) because:
the claimed process includes any substance with a maximum positive partial charge with the claimed range but it is not evident how large the genus is nor can the size of the genus be determined without first determining the maximum positive partial charge of every compound known and unknown;
& (c) the concept of using a sublimable substance as claimed is known but the maximum positive partial charge is not a recognized or used means of classifying the compounds;
though one ordinary skill in the art would be a person working in the field of semiconductor fabrication they would not know the maximum positive partial charge of a compound but instead would have to determine by one of at least 8 different methods including qualitative methods, empirical/iterative methods, or quantum mechanical and electrostatic position methods wherein it is unclear if the values obtained would be sufficiently similar to the RDKit MaxPartialCharge result; nor has applicant provided the specific version of the software suite used nor the parameters/settings used to obtain the values to determine if a compound falls within the claimed range and additionally, there is no way to determine if the degree of rounding during the calculations would result in a compound falling inside or outside the claimed range;
there is insufficient evidence that the results are predictable given that 2-fluorobenzoic acid has a maximum positive partial charge of 0.34 results in a 48.75% feature collapse whereas 4-chlorophenylacetic acid and 2-chlorophenylacetic acid both have the same 0.30 maximum positive partial charge and yet the former results in 3.14% collapse and the later results in 1.93% collapse such that materials with the same maximum positive partial charge provide different results (see Fig. 12);
applicant has provided only 6 example compounds from a genus with a possible size of millions which does not provide any guidance beyond the range; and
based on the size of the genus and it is unclear what an acceptable amount of feature collapse there would be undue experimentation to use the invention.
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.
Claims 1-4 are 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: Claim 1 recites the limitation “a maximum positive partial charge of 0.22 or more and less than 0.34” wherein maximum positive partial charge is defined as “the "maximum positive partial charge of the sublimable substance" is defined as a value obtained based on the chemical structure of the sublimable substance using MaxPartialCharge which is a descriptor of RDKit. RDKit is software in the field of chemo-informatics” which renders the claim indefinite because one of ordinary skill in the art would not be able to ascertain the metes and bounds of the claim. It is unclear the claim encompasses all compounds that have a maximum positive partial charge in the claimed range calculated by any method or only when the value is calculated by the RDKit descriptor MaxPartialCharge nor is it clear if the version used of RDKit will change the value obtained or if there is even a requirement to calculate the value.
For the purpose of examination, if the prior art teaches a sublimable compound which would have a maximum positive partial charge within the range calculated by any means will be considered to read on the compound.
Claims 2-4: Claims 2-4 are rejected for being indefinite because they depend from claim 1 and do not remedy the issues of claim 1.
Claim 4: Claim 4 recites “a substrate treating apparatus” twice in claim 4 at lines 2 & 3 which renders the claim indefinite because it is unclear both refer to the same apparatus or if a second apparatus is being recited.
For the purpose of examination, the second “a substrate treating apparatus” is being interpreted as “the substrate treating apparatus”.
Claim 4: Claim 4 recites “a sublimable substance” in line 6 of the claim which renders the claim indefinite because it is unclear if a second sublimable substance is being introduced or if the second recitation refers to the sublimable substance in claim 1.
For the purpose of examination, the second “a sublimable substance” is being interpreted as “the sublimable substance”.
Claim 4: Claim 4 recites “a solvent” in line 6 of the claim which renders the claim indefinite because it is unclear if a second solvent is being introduced or if the second recitation refers to the solvent in claim 1.
For the purpose of examination, the second “a solvent” is being interpreted as “the solvent”.
Claim 4: Claim 4 recites “a substrate” in line 4 of the claim which renders the claim indefinite because it is unclear if a second substrate is being introduced or if the second recitation refers to the substrate in claim 1.
For the purpose of examination, the second “a substrate” is being interpreted as “the substrate”.
Claim Rejections - 35 USC §§ 102 & 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 (i.e., changing from AIA to pre-AIA ) 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 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.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kagawa et al. (US PG Pub 2017/0040154; hereafter ‘154).
Claims 1-3: ‘154 is directed towards a substrate treatment method for treating a substrate on which a pattern is formed (abstract & ¶s 45-46), the substrate treating method comprising:
a treatment liquid supply step of supply a treatment liquid containing a sublimable substrate and a solvent to the substrate (see abstract, Figs. 4A-4C, and ¶s 45-46 & 59);
a solidified film forming step of forming a solidified film containing the sublimable substance on the substrate by evaporating the solvent from the treatment liquid on the substrate (abstract & ¶s 45-46); and
a sublimation step of sublimating the solidified film (abstract & ¶s 45-46), and
the sublimable substance being
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200
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wherein R1 and R2 are a methyl ester group (-COO-CH3) (see Formula (IIc), pg 9 and ¶s 89 & 91; i.e. dimethyl isophthalate which has a maximum positive partial charge of 0.33 as evidenced by Fig. 12 of the instant application).
As noted above, ‘154 teaches the use of dimethyl isophthalate.
If however, it is determined that ‘154 does not explicitly teach dimethyl isophthalate, it would have been obvious to one of ordinary skill in the art at the time of filing to use dimethyl isophthalate as the sublimable compound during the process because the species claim is anticipated (rendered obvious) no matter how many other species are additionally named (Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990)) and a prior art’s disclosure of possible combinations renders all combinations obvious (See Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of over 1200 possible combinations rendered all possible formulations obvious)).
Claim 4: ‘154 teaches performing the substrate treating method using a substrate treating apparatus (abstract), wherein
the substrate treating apparatus comprises:
a substrate holder configured to hold a substrate (see Fig. 2 and ¶s 40 & 55-56); and
a treatment liquid supply unknit configured to supply a treatment liquid containing a sublimable substance and a solvent to the substrate held by the substrate holder (see Fig. 2 and ¶s 40 & 55-56).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/James M Mellott/ Primary Examiner, Art Unit 1759
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