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 .
DETAILED ACTION
Claims 13-25 are pending in this application, which is a 371 of PCT/JP2022/017517.
The preliminary amendment dated 10/20/2023 adding new claims 13-25 and canceling claims 1-12 has been entered.
Election/Restrictions
Applicant’s election without traverse of claims 13-24 in the reply filed on 03/27/2026 is acknowledged.
Claim 25 is withdrawn from consideration as being directed to a nonelected invention.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
It is noted that the claimed invention is directed solely to a method. The examiner suggests amending the title to reflect same.
Claim Rejections - 35 USC § 112
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 16-17 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.
In claim 16, from which claim 17 depends, the limitation “exposing the substrate to plasma generated from a halogen gas or exposing the substrate to plasma generated from a non-halogen gas” appears to be not further limiting. Is there any plasma gas not within the realm of the claimed limitation? The examiner suggests its deletion.
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.
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 13-21, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (2020/0017968).
Kato teaches a deposition method (title) which includes forming an adsorption inhibiting region on a substrate and adsorbing a raw material gas on an adsorption site which is not a non-adsorption inhibiting region and reacting said raw material gas with a reactant gas by a plasma (abstract). The adsorption inhibiting region is formed using an adsorption inhibiting gas (0034) and the nitride film can be formed in a fine recess on a substrate surface (0003). In one embodiment, the plasma is used to activate a nitride gas (0006) which is reacted with a silicon containing gas used as a raw material gas (0034) to form a silicon nitride film (0037). The nitride gas can be ammonia (0034) used along with an inert gas (0084) in which both flow rates are controlled (0058). However, the reference fails to teach a nitrogen containing gas having a greater flow rate than the inert gas.
It is noted that the reference clearly teaches a nitride gas whose flow rate is controlled by a flow controller and that a mixture of ammonia and argon is used and that each can be supplied separately (0058). A teaching of supplying ammonia and argon separately inherently means that a flow rate of each is utilized. To use more ammonia would have been obvious given such a teaching in the absence of a showing of unexpected results.
Regarding claim 14, Kato teaches repeating (0120).
Regarding claim 15, Kato teaches ammonia and argon (0084).
Regarding claim 16, Kato teaches plasma and chlorine (0034-0038).
Regarding claims 17-18, the applicant requires sequential exposure to plasma. Kato teaches a plasma (0034-0036). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959)
Regarding claim 19, the applicant requires repeating and sequential exposure to plasma. Kato teaches repeating (0120) and a plasma (0034-0036). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes.
Regarding claim 20, the applicant requires a mixed gas and sequential exposure to plasma. Kato teaches a mixed gas (0037)) and a plasma (0034-0036). In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes.
Regarding claim 21, Kato teaches chlorine (0037).
Regarding claim 24, Kato teaches chlorine (0037).
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (2020/0017968) in view of JP 2018-523753 (see English Translation). Kato fails to teach modifying gas plasma.
JP’753 teaches a method for depositing silicon nitride films (title) in which a precursor is reacted in the presence of a plasma (abstract). In one embodiment, a post-deposition plasma treatment can be utilized (paragraph bridging pp.11-12). To utilize a post-deposition plasma in Kato would have been obvious to one skilled in the art with the expectation of success because JP’573 teaches of using a post-deposition plasma after forming a silicon nitride film.
Regarding claim 23, the applicant requires a flow rate ratio. It is noted that JP’753 clearly teaches the use of a hydrogen/argon plasma. Such a teaching inherently means that a ratio of hydrogen and argon exists. To utilize the claimed ratio would have been obvious given such a teaching in the absence of a showing of unexpected results.
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 13-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 17/931936 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the elimination of a dose amount is an obvious variation.
Otsuki et al. (2023/0077599) teaches a film forming method of forming a film in a recess formed on a surface of a substrate, the film forming method comprising: forming an adsorption-inhibiting region by supplying an adsorption-inhibiting gas to the substrate; adsorbing a silicon-containing gas to a region other than the adsorption-inhibiting region by supplying the silicon-containing gas to the substrate; and forming a silicon nitride film by exposing the substrate to a nitrogen-containing gas so that the nitrogen-containing gas reacts with the adsorbed silicon-containing gas, wherein the adsorbing the silicon-containing gas includes controlling a dose amount of the silicon-containing gas to be supplied to be equal to or greater than an adsorption saturation amount of the silicon-containing gas to be adsorbed on the substrate on which no adsorption-inhibiting region is formed (claim 1), which is similar to pending claim 13. To eliminate the dose amount would have been obvious with its corresponding loss of function/benefit.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRET CHEN whose telephone number is (571)272-1417. The examiner can normally be reached M-F 8:30-8:30 MT.
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, Gordon Baldwin can be reached at (571) 272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRET P CHEN/Primary Examiner, Art Unit 1718 04/13/2026
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