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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/17/26 has been entered.
Response to Arguments
Applicant argues that Kulshreshtha fails to teach the claimed cleaning step because Kulshreshtha teaches that the halogen (NF3) is used to remove stray carbon deposits on the processing chamber and not the chucking surface. This is not persuasive. Kulshreshtha teaches that the cleaning process also removes coating material on the substrate support (¶ 0051).
Applicant also argues that Kulshreshtha fails to teach the claimed thickness when the coating is formed in situ. This is persuasive. Kulshreshtha teaches that the seasoning formed in situ has a thickness less than the claimed thickness at ¶ 0040. A new rejection is presented below in response to this amendment.
Applicant also argues that Kulshreshtha fails to teach the claimed multi-layered film with a top layer of SiO2 and another layer of SixNy. This is not persuasive. Kulshreshtha teaches that the seasoning coating is multilayered (¶ 0043) and that each of the layers can be SiO2 or SixNy. Thus, Kulshreshtha teaches a configuration with one layer of SiO2 and another of SixNy.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Kulshreshtha et al. (US 2016/01064264) in light of Ye et al. (US 2016/0049323).
Claims 1 and 2: Kulshreshtha teaches a method of forming a multilayer seasoning coating (i.e. a coating with a top and bottom layer) of silicon oxide and silicon nitride on an electrostatic chuck (ESC) (¶¶ 0038-0047).
Kulshreshtha teaches that a substrate is chucked to the coated chuck and the substrate is processed in a chamber with a temperature held at 300-800˚C (¶ 0057). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a temperature of 400-650˚C with the predictable expectation of success.
Kulshreshtha also teaches that the seasoning coating is formed in situ (¶ 0040) and that the purpose of the coating is to electrically insulate the chuck (¶ 0021), but fails to teach the claimed thickness of 1-5 µm. Ye teaches a process for providing an in situ insulating coating on a chuck (Abst.; ¶ 0059) and explains that the thickness of the coating can be controlled to achieve a desired isolation over time (¶ 0059). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a thickness of 1-5µm for the in situ seasoning of Kulshreshtha depending on the desired durability of the seasoning.
Claims 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kulshreshtha and Ye in light of Clark et al. (US 2008/0242077).
Claims 3-6: Kulshreshtha teaches that the silicon nitride and silicon oxide layers are formed by chemical vapor deposition (i.e. claimed chemical vapor deposition and claimed exposing the chucking surface to the chemical vapor deposition) (¶ 0047) with silane or TEOS as the silicon precursor (¶ 0043), oxygen as a reactant and ammonia as a reactant (¶ 0043), but fails to teach that the type of CVD is plasma CVD. Clark teaches a process of forming silicon nitride films and explains that the CVD used to form the films can be traditional CVD or plasma enhanced CVD (¶ 0019). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected plasma enhanced CVD as the CVD used in Kulshreshtha with the predictable expectation of success.
Claim 7: Kulshreshtha is silent regarding the sequence of reactants. However, Clark explains that the various gases can be introduced sequentially (¶ 0092, e.g.). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have introduced the reactants sequentially in Kulshreshtha with the predictable expectation of success.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kulshreshtha and Ye in light of Parkhe (US 2017/0256431).
Claim 9: Kulshreshtha is silent regarding the type of ESC. Parkhe teaches an ESC and explains that typical ESCs are either Johnsen-Rehbek or Coulombic (¶ 0028). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, because Kulshreshtha is silent regarding the type of ESC and because Parkhe teaches that either Johnsen-Rehbek or Coulombic are suitable types of ESC, it would have been obvious to one of ordinary skill at the time of filing to have selected either Johnsen-Rehbek or Coulombic as the ESC in Kulshreshtha with the predictable expectation of success.
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.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 11,086,233 in view of Kulshreshtha. The ‘233 Patent claims the same subject matter as claims 1-3 of the instant application except for the steps of chucking and processing. However, Kulshreshtha explains that the coated chuck is used by chucking a substrate and then processing the substrate at the claimed processing conditions (Abst.; ¶ 0057). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have used the chuck of the ’233 Patent in the manner disclosed in Kulshreshtha with the predictable expectation of success.
Conclusion
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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