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 .
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.
Claims 1-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 and 10 refer to “a nearest neighbor distance, which is a distance between atoms closest to each other in a lattice plane parallel to a surface of the intermediate layer.” However, claim 1 fails to describe whether the referenced lattice plane is in the outermost portion of the intermediate layer or the innermost portion of the ScAlN thin film. For purposes of examination, the referenced lattice plane is assumed to be the outermost lattice plane of the intermediate layer.
Claims 2-9 and 11-12 are rejected for failing to correct the deficiencies of claims 1 and 10.
Claim Rejections - 35 USC § 102 and 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
Claims 1 and 9-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lubomirsky et al. (US 2024/0229221 A1).
US 2024/0229221 A1 qualifies as prior art under 102(a)(2) based upon the foreign priority claim to application IL 283142 for the subject matter disclosed in IL 283142. See MPEP 2152.05 and 35 U.S.C. 102(d). IL 283142 was filed 12 May 2021 which is before the U.S. effective filing date of the instant application.
The disclosure of US 2024/0229221 A1 (US’221) and IL 283142 (IL’142), will be cited below.
Lubomirsky et al. discloses laminate and a method of making a laminate. See the abstract of US’221 and paragraph [00100] of IL’142. The laminate comprises a substrate, a layer of TiN (i.e., an intermediate layer) and a ScAlN film formed on the TiN layer. See paragraphs [0011]-[0014] of US’221 and [00100] of IL’142. The TiN layer is formed in a (111) orientation. See paragraphs [0151] and [0270] of US’221 and paragraph [00114] of IL’142. The nearest neighbor distance on the surface of the TiN layer is inherently 2.995 Å as evidenced by Figure 1D of US ‘221.
The a-axis length of AlN is 3.1 Å. See instant Figure 8. The addition of any amount of Sc increases this lattice constant. Id. Therefore, a nearest neighbor distance of 2.995 Å as taught by Lubomirsky et al. will be less than the a-axis of any ScAlN film.
As to claim 9, Lubomirsky et al. discloses the laminate is used in a MEMS device. See paragraph [0340] of US’221 and claim 28 of IL’142.
Claims 2, 4, 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lubomirsky et al. (US 2024/0229221 A1) as applied to claim 1.
Lubomirsky et al. anticipates claims 1 and 10 for the reasons recited above.
Lubomirsky et al. differs from claims 2, 4 and 5 by failing to teach a Sc content in the film in an anticipatory example or a range that is sufficiently specific to anticipate the claimed range.
However, Lubomirsky et al. teaches the ScAlN film may have a composition of AlxSc1-xN, where x is between 0.57 to 1. See paragraph [0127] of US’221 and [0060] of IL’142. This corresponds to a Sc content of 0 to 43% based upon the content of aluminum and scandium. A Sc content of 0 to 43% overlaps the range recited in claims 2, 4 and 5. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Lubomirsky et al. differs from claim 8 by failing to teach a thickness in an anticipatory example or a range that is sufficiently specific to anticipate the claimed range.
However, Lubomirsky et al. teaches the ScAlN film may have a thickness of between 100 nm and 5 µm. See paragraph [0163] of US’221 and paragraph [00104] of IL’142. This range of thickness overlaps the range recited in claim 8.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Allowable Subject Matter
Claims 3, 6, 7 and 11-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As to claims 3 and 11-12, the prior art fails to disclose or suggest a ScAlN layer containing more than 59 mol% Sc with respect to Sc and Al in combination with the limitations of instant claims 1 and 10.
As to claims 6 and 7, the prior art fails to disclose or suggest an intermediate layer having a nearest neighbor distance 3.41 to 3.71 Å in combination with the limitations of claim 1.
As to claims 3 and 11-12, Lubomirsky et al. (US 2024/0229221 A1) does not teach or suggest forming a ScAlN layer containing more than 59 mol% Sc with respect to the total of Sc and Al.
As to claim 6 and 7, Lubomirsky et al. teaches employing a TiN intermediate layer with a (111) orientation. The (111) plane of TiN has a nearest neighbor distance of 2.995 Å, which is outside the claim 6 range of 3.41 to 3.71 Å.
As to claims 3 and 11-12, Teshigahara et al. (US 2020/0357976 A) does not teach or suggest forming a ScAlN layer containing more than 59 mol% Sc with respect to the total of Sc and Al.
As to claim 6 and 7, Teshigahara et al. (US 2020/0357976 A) fails to teach the combination of a nearest neighbor distance of 3.34 to 3.71 Å and a nearest neighbor distance of the intermediate layer that is shorter than the a-axis length of the ScAlN film. Teshigahara et al. specifically discloses the nearest neighbor distance of the intermediate layer should be longer than the a-axis length of the ScAlN film. See paragraphs [0093]-0095] and [0100].
Shang et al. (CN 111599915 A) teaches YN may be employed as intermediate layer in the formation of a ScAlN layer. See paragraph [0067] of the translation filed by applicants with the IDS of 13 May 2025. As to claims 3 and 11-12, Shang et al. does not disclose the resultant composition of the ScAlN layer. As to claims 6 and 7, Shang et al. does not disclose the orientation of the YN layer. Without the YN orientation, it is unclear what the nearest neighbor distance is for the intermediate layer or how that nearest neighbor distance compares to the resultant a-axis of the ScAlN film.
Conclusion
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/David Sample/Primary Examiner, Art Unit 1784