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 Group 1, in the reply filed on 2/4/2026 is acknowledged. Upon further consideration. election of species requirement is hereby withdrawn to expedite the prosecution and thus claims 1-20 of Group 1 are examined.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement with respect to election of species as set forth in the Office action mailed on 12/9/25 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
It is further noticed that the instant application does not disclose any evidence of unexpected benefit or results for any the embodiments over each other.
Information Disclosure Statement
The information disclosure statement filed 8/24/23 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. English translations of the foreign references are missing. Specifically, English translations of JP 2019-507956 is required because the written opinion from the international search report relies on and refers to paragraph numbers in that document.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-14, 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xiao (2018/0122631).
Regarding claims 1, 20: Xiao teaches a method of processing a substrate comprising:
- forming an oligomer layer on a substrate with a concave portion including supplying a precursor to the substrate, flowing a first nitrogen and hydrogen and flowing a second nitrogen and hydrogen gas – see for example application of the oligomers [0040, 0052] (with reference to specific formulas) and the application of first and second hydrogen and nitrogen containing gases including a compound of Formula II is applied along with that of Formula I [0040, 0060] and (second gas) an ammonia plasma, a plasma comprising ammonia and hydrogen (or ammonia and argon) and other such mixtures [0055], wherein the steps include applying cycles and the steps may be performed in a variety of orders, such as performed sequentially or concurrently (e.g., during at least a portion of another step), and any combination thereof [0065], and
- wherein the process is performed at a substrate temperature of <100 degrees [0058],
- and a thermal post treatment at a temperature in the range of about 100 – 1000 deg C, thereby teaching the film forming at a second temperature not less than the first [0061].
Regarding claims 2-13 (various embodiments): the steps include applying cycles and the steps may be performed in a variety of orders, such as performed sequentially or concurrently (e.g., during at least a portion of another step), and any combination thereof [0065]. Further since the prior art teaches the same processing steps, the inherent characteristics of the processes are met.
Regarding claims 14, 17-19 (type of gas): the precursor gas contains the claimed elements, see particularly the examples of [0034, 0055-0056, 0063, 0069, 0070-0074].
Claim(s) 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by VERSUM (JP 2019-507956-A Machine English Translation, wherein Li (US 20190055645) is also English equivalent).
This rejection relies on English translation of the JP reference as referred to in the written opinion from the international search report.
Regarding claims 1, 20: Versum teaches a method of processing a substrate comprising: forming an oligomer layer on a substrate with a concave portion including supplying a precursor to the substrate, flowing a first nitrogen and hydrogen and flowing a second nitrogen and hydrogen gas. The description of the present application (paragraph [0060]) states, "As the second N- and H-containing gas, it would also be possible to use a gas that has the same molecular structure as the first N- and H-containing gas". Thus, invention as in claims 1, 12, 14, and 20-22 of the present application is found to encompass embodiments where "the first nitrogen- and hydrogen-containing gas" and "the second nitrogen- and hydrogen-containing gas" are the same gas.
Versum (paragraphs [0046], [0047], [0049]-[0051], [0055]-[0057], [0059]-[0068], [0071], [0074], [0075], and fig. 3; in particular, "Ex. 3" in paragraph [0075]) discloses a method for producing a semiconductor device (paragraph [0046], etc.) and a substrate processing method, method for producing a semiconductor device comprising: a step for performing, a prescribed number of times at 30°C (paragraphs [0074] and [0075]), a cycle comprising a step for supplying tetravinylsilane (corresponding to the "raw material gas" of the present application) to a substrate (fig. 3) having a recess provided in the surface thereof, a step for supplying trisilylamine (corresponding to the "first nitrogen- and hydrogen-containing gas" and the "second nitrogen- and hydrogen-containing gas" of the present application) to the substrate, and a step for causing NH3 (corresponding to the "first reformed gas" of the present application) to be excited into a plasma state and supplied to the substrate (paragraphs [0063], [0074], and [0075]), thereby causing an oligomer (paragraph [0062]) containing a reactant of the tetravinylsilane and the trisilylamine to be generated, grown, and flow on the surface of the substrate and in the recess (fig. 3) by using cyclic flowable chemical vapor deposition (paragraphs [0047] and [0062]), thus forming an oligomer-containing layer on the surface of the substrate and in the recess; and a step for annealing, at 300°C and 400°C higher than the aforementioned 30°C, the substrate on which the oligomer-containing layer has been formed, thereby curing (reforming) the oligomer-containing layer and forming a film, resulting from curing the oligomer-containing layer, that fills in the recess (paragraph [0075] and fig. 3).
Regarding claims 2-13 (various embodiments): the steps include applying cycles and the steps may be performed in a variety of orders, such as performed sequentially or concurrently (e.g., during at least a portion of another step), and any combination thereof [0017]. Further regarding claims 12, Versum also discloses performing a process for exposing to plasma (paragraph [0068]). Further since the prior art teaches that same processing steps, the inherent characteristics of the processes are met.
Regarding claims 14-19 (type of gas): the precursor gas contains the claimed elements, see particularly the examples of [0012, 0021, 0026, 0027, 0046. 0047, 0062, 0073, 0078, 0079, 0080]. Further regarding claim 14, Versum indicates that carbon dioxide plasma, carbon monoxide plasma, a plasma containing hydrocarbons and an oxygen source, or the like may be used instead of the NH3 plasma (paragraph [0064]). Versum discloses a method of processing a substrate comprising forming an oligomer layer on a substrate with a concave portion including supplying a precursor to the substrate wherein various types of precursors such as silicon carbide (with no amino group) [0002, 0011, 0052, 0056, 0057, 0065, 0073] or organoaminodisilane (silicon-silicon bond) [0012, 0021, 0026 0027, 0073, 0078-0080].
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.
Claims 5-13 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Xiao (2018/0122631) OR over VERSUM (JP 2019-507956-A Machine English Translation, wherein Li (US 20190055645) is English equivalent).
Regarding claims 5-13: the teachings as noted include that the steps of a cycle are performed in a variety of manners including sequentially or concurrently or any combination therefore, as such, to include any combination of reactants together or in sequence as claimed would have alternatively been obvious.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have chosen sequence of applying steps in any order with the expectation of achieving substantially the same or similar results. There is no showing of criticality of any of the various claimed orders, and a change in the sequence of adding ingredients is generally not patentable without such criticality. Thus, the instant application does not disclose any evidence of unexpected benefit or results for any the embodiments over each other. Further since the prior art teaches the same processing steps, the inherent characteristics of the processes are met.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao (2018/0122631) as applied to claim 1 above, and further in view of VERSUM (JP 2019-507956-A Machine English Translation, wherein Li (US 20190055645) is English equivalent).
Regarding claims 15-16 (type of gas): Xiao disclosed the precursor gas contains the claimed elements, see particularly the examples of [0034, 0055-0056, 0063, 0069, 0070-0074]. Xiao does not explicitly disclose precursor gas not containing an amino group and contains halogen (claim 15), contains silicon-silicon bond (claim 16).
Versum discloses a method of processing a substrate comprising forming an oligomer layer on a substrate with a concave portion including supplying a precursor to the substrate wherein various types of precursors such as silicon carbide (with no amino group) [0002, 0011, 0052, 0056, 0057, 0065, 0073] or organoaminodisilane (silicon-silicon bond) [0012, 0021, 0026 0027, 0073, 0078-0080].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to choose and select a particular type of precursor with the expectation of forming a particular type of film formed on the surface of a substrate as desired.
The selection of a known material based on its suitability for its intended use is prima facie obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301.
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
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 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 and 10-19 of copending Application No. 17/897618.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the copending application teaches a substantially the same or similar method of processing a substrate comprising: forming an oligomer layer on a substrate with a concave portion including supplying a precursor to the substrate, flowing a first nitrogen and hydrogen and flowing a second nitrogen and hydrogen gas –and a plasma comprising ammonia and hydrogen (or ammonia and argon) and other such mixtures, wherein the steps include applying cycles and the steps may be performed in a variety of orders, such as performed sequentially or concurrently (e.g., during at least a portion of another step), and any combination thereof, and
wherein the process is performed at a substrate temperature of <100 degrees, and a thermal post treatment at a temperature in the range of about 100 – 1000 deg C.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Parviz Hassanzadeh whose telephone number is (571)272-1435. The examiner can normally be reached M-F 8-5.
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/PARVIZ HASSANZADEH/Supervisory Patent Examiner, Art Unit 1716
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