DETAILED ACTION
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-18, drawn to method, classified in C23C16/52.
II. Claims 19 and 20, drawn to control system, classified in C23C16/45544.
The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process can be performed manually.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
- the inventions have acquired a separate status in the art in view of their different classification,
- the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and
- the inventions require a different field of search (e.g. different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mr. Finnan on January 9, 2026 a provisional election was made without traverse to prosecute the invention of Group 1, claims 1-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19 and 20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 already requires that the fourth layer is thinner than the second layer – the fourth layer is the film formed in (b) and the second layer is the film formed in (a). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
It is noted that claim 1 requires a number of steps to form a first layer and a number of steps to form a second layer. It is noted that, for example, a reference that teaches forming a film using a cyclical (i.e. ALD) process meets the requirements by randomly assigning any number of the cycles/portions of the process as the first film and another number of cycles/portions as the second film. There are no further claim requirements to differentiate the two.
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.
Claims 1-6 and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karim (2017/0314129).
Karim teaches a method of:
- forming a film with a predetermined element with first and second films:
- forming a first film by performing a number of steps comprising forming and modifying a first layer, see wherein an ALD process is performed, particularly [0039],
- and forming the second film by again performing the same cycles (any number of the cycles comprise the second film),
wherein the first condition and second condition are set so that the thickness of the fourth layer is smaller than that of the second layer – see particularly per [0002] wherein a deposition in a first station produces a certain thickness but then is altered to further produce a thinner layer in a subsequent cycle. The subsequent cycles meet the requirement of the forming of the second film, thinner than the first film.
Regarding claim 1 and 15, the claims are broadly written such that ANY number of times (cycles) of the process meet the first number of times and any other number of times (cycles) of the process meets the requirements of the second number of times (i.e. if the prior art process is carried using seven cycles, 4 cycles are carried out and considered the first numbers of times and 3 cycles is the second number of times – there are no further limitations in regard to the process as claimed).
Regarding claims 2 and 3, the deposition conditions do not change as described other than the speed/amount of deposited material, so the composition is the same.
Regarding claim 4, the “conditions” are broadly claimed – in any case the first conditions is carried out during the forming the first layer which includes step (a-1) and the second condition during the second layer which includes step (b-1). Wherein the process is described as an ALD process wherein a monolayer is adsorbed in step b-1 and reacted in step b-2 – the second condition necessarily requires that the thickness of the third layer to be less than a thickness of the first layer in order for the thickness of the fourth layer to be less than that of the second layer.
Regarding claims 5 and 6, Karim teaches reducing or stopping (i.e. reduced flow time) the flow of the precursor [0004].
Regarding claim 7 Karim teaches changing a concentration [0051-52].
Regarding claim 14, as per above, the thickness of the second film is smaller than the first film.
Regarding claim 16, as per the teachings, (b) is after (a), thereby forming the second film on the first.
Regarding claim 17, further to claim 15, since any number of cycles constitutes a first and second film the requirement is automatically met as the layers are selected randomly to meet the claim requirement.
Regarding claim 18, the process forms a device [0001]
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 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Karim.
Regarding claims 7-9 Karim teaches changing a concentration [0051-52] but does not explicitly teach the further requirements of controlling the concentration in the manner of claims 8 and 9, however, as the teachings generally include reducing the thickness, there are a limited number of methods of limiting thickness, but decreasing the precursor concentration within the carrier gas would be well understood as one further method of decreasing the thickness (particularly wherein Fig. 1 represents a mixture of the materials).
Regarding claim 10, Examiner takes Official Notice that supplying gases through different inlets is well-known in the art and would have been an obvious modification.
Regarding claim 11, as per Fig. 1, the carrier gas is mixed and then delivered.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Karim in view of Lee (2008/0132069).
The teachings of Karim are described above – the teachings include a source and valve but not a tank as claimed. Lee teaches that it is useful to control a flow of gas into a system for an ALD process [0005-08] using a buffer tank to hold a certain amount of precursor and carrier gas [0058]. It would have been obvious at the effective date of the invention to apply the buffer tank of Lee in the method and apparatus of Karim as it would help control the amount of precursor supplied to the process.
Regarding claim 13, the arguments over the flow rate ratio (i.e. concentration) are addressed above in regard to claims 7-9 and not repeated.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Karim in view of Fiedler (2020/0063257).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Karim in and Lee (2008/0132069) in view of Fiedler.
In regard to claims 7-9 and 13, Karim teaches changing a concentration [0051-52] but does not explicitly teach the further requirements of controlling the concentration except by adjusting height of the substrate (i.e. concentration at the surface) and not concentration within the source gas, and while the Office holds that it is understood from the teachings, Fiedler is further applied in alternative. Fiedler teaches that control of the thickness of a vapor deposited layer by controlling the concentration of precursor in the source gas [0037]. It would have been obvious at the effective date of the invention to modify the concentration of the precursor in the source material as taught by Fiedler in the method of Karim as a manner of controlling thickness (which is desired by Karim as per above). The control of the precursor within the source gas is understood to include a non-precursor gas and therefore meets the requirements of claims in regard also to the ratio of the inert gas to the precursor gas.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kamakura (2016/0322212) teaches a method (noted in the JP action) that includes varying film thickness [0114].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A MILLER, JR whose number is (571)270-5825 and fax is (571)270-6825. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael Cleveland, can be reached on 571-272-1418. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH A MILLER, JR/Primary Examiner, Art Unit 1712