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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
Priority
Receipt is acknowledged of the International Application PCT/KR2022/006893. A Notice of Acceptance of Application under 35 U.S.C. 371 and 37 CFR 1.495 was mailed 16 April 2024.
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Korea on 4 June 2021. It is noted, however, that applicant has not filed a certified copy of the KR 10-2021-0072961 application as required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted 1 December 2023 and 19 May 2025 have been considered by the Examiner.
Drawings
The original drawings received on 24 January 2024 are accepted by the Examiner.
Claim Rejections - 35 USC § 112(a) or first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. While the claims are enabled for a composition in terms of mole percentages, specifically, 100 mole percent in total, comprising the following components: 55 mole percent to 70 mole percent of SiO2, 5 mole percent to 20 mole percent of Al2O3, and 29 mole percent to 35 mole percent of MgO. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims which includes a total mole percent of components greater than 100 mole percent.
“There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.” MPEP 2164.01(a).
These factors will be considered in turn.
A) The breadth of the claims:
The claims encompass all compositions including upper limits of components which are not able to be achieved based on the lower limits of the required components which result in a plasma-resistant glass. For example, in claim 1, how is the plasma-resistant glass able to comprise the recited components in the full scope of the recited ranges for SiO2 and Al2O3 and still meet the compositional limitation of 29 mole percent to 35 mole percent MgO? For example, if the MgO and Al2O3 components are at the lowest of the recited ranges, 29 mole% and 5 mole percent, respectively, how can the SiO2 content be greater than 66 mole percent? 100-29-5=66. Additionally, if the MgO and SiO2 components are at the lowest of the recited ranges, 29 mole% and 55 mole percent, respectively, how can the Al2O3 content be greater than 16 mole percent? 100-29-55=16. Based on the required components, the upper limits of SiO2 and Al2O3 in independent claims 1 and 10 are not enabled. The below table shows the ranges which are considered enabled.
Mole percentages
SiO2
Al2O3
MgO
Claims 1 and 10
55% - 66%
5% - 16%
29% - 35%
B) The nature of the invention:
The invention relates to a plasma-resistant glass. See paragraph [0001] of the instant specification.
C) The state of the prior art:
While knowledge of glasses is extensive, there is little to no precedent for determining a composition based on mole percent ranges wherein the composition results in a total of mole percent of the components being greater than 100 mole percent without altering the compositional and property make-up of the desired product. The instant specification teaches examples where the total mole percentages of the composition total 100 mole percent. See paragraphs [0056]-[0062].
D) The level of ordinary skill:
The level of ordinary skill in the art is high. Specifically, a person having ordinary skill in the art would be a person who is a ceramic or glass scientist or engineer with at least a PhD and a number of years of research experience
E) The level of predictability in the art:
The effect of adding or removing a given component from a composition on the properties of the glass can in many cases can be somewhat predictable. However, the predictability of a glass and its properties are uncertain when the composition is altered by compositional changes without guidance which component to decrease in a composition in order to increase a different component is unpredictable.
F) The amount of direction provided by the inventor:
The inventor discloses compositional ranges that are for producing a glass which is plasma-resistant as required by the instant claims (see specification paragraphs [0006], [0008], [0025], [0027]-[0029], [0039], and [0042]). Exemplary compositions exhibiting the properties required by the instant claims are disclosed See paragraphs [0056], [0057], and [0059]-[0062]. All of the exemplary compositions have compositions falling within, or very close to, the disclosed compositional ranges and have a total mole percent of 100 mole percent. No guidance is provided for producing plasma-resistant glass exhibiting the required properties that have a composition which is greater than 100 mole percent or do not fall within the recited ranges.
G) The existence of working examples:
There are many materials with compositions falling within or similar to the composition that exhibit the required properties provided in the instant application. No examples are provided of glasses having the required properties that are dissimilar to the composition. Examples 1 and 2 in paragraphs [0056]-[0060], have compositions that fall within the scope of the ranges stated as enabled above.
H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
The enabled composition described in the disclosure would allow the production of a glass exhibiting the required plasma-resistant property selected from within its bounds without the need for undue experimentation. However, blind experimentation would have to be employed by one of ordinary skill in the art to produce a glass exhibiting the required plasma-resistant property having a composition falling outside the enabled ranges where the total composition was greater than 100 mole percent.
No guidance is provided in the instant specification that would allow one of ordinary skill in the art to produce a plasma-resistant glass having the required properties outside of the compositions indicated as being enabled. Making or using a plasma-resistant glass having a composition other than that which has been indicated as enabled would require undue experimentation due to the lack of guidance provided in the instant specification. While all possible combinations of the recited ranges are not required to be within the scope of enablement, the entire range should be enabled. For example, a composition comprising 55 mol.% to 66 mol.% of SiO2, 5 mol.% to 16 mol.% of Al2O3, and 29 mol.% to 35 mol.% of MgO would be fully enable since selecting points within the given ranges are able to be in total 100 mole percent. In the instant claims, the upper limits of SiO2 and Al2O3 are not enabled.
The plasma-resistant glass composition and exemplary embodiments disclosed in the instant specification cover only a narrow fraction of the broad protection sought in the instant claims. In combination with the established unpredictability of the art, the lack of guidance would require one of ordinary skill in the art to conduct excessive blind experimentation to determine which glass combinations exhibit the required properties. The teaching set forth in the specification provides no more than an invitation for those of skill in the art to experiment searching for the required properties in compositions outside the range indicated as enabled. See, Enzo Biochem, Inc. v. Calgene, Inc., 52 USPQ2d 1129.
The scope of enablement provided to one of ordinary skill in the art by the disclosure must be commensurate in scope with the protection sought by the claims. See, AK Steel Corp. v. Solla, 68 USPQ2d 1280. The instant claims attempt to cover glass compositions that exhibit plasma-resistant properties having compositional ranges which are not achievable by one of ordinary skill in the art since the ranges include portions which would total greater than 100 mole percent. The subject matter identified as enabled by the examiner includes the entire scope of the subject matter taught by applicant as sufficient to obtain the critical properties of his invention.
In view of the enablement rejection of claim 1 and the ranges of SiO2, MgO, and Al2O3 considered enabled above, claims 2-4 contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 2 recites the limitation “a molar ratio of SiO2 and Al2O3 in a range from 6:1 to 2.5:1.” Based on the ranges of SiO2, MgO, and Al2O3 considered enabled above, the full range of the recited molar ratio of SiO2 and Al2O3 are not enabled, since it is unclear how the glass can meet the portion of the ratio range from 3.43:1 to 2.5:1. For the purposes of examination, the portion of the range that is considered enabled is from 6:1 to 3.43:1 for the molar ratio of SiO2 and Al2O3.
Claim 3 recites the limitation “a molar ratio of SiO2 and MgO in a range from 2:1 to 1.4:1.” Based on the ranges of SiO2, MgO, and Al2O3 considered enabled above, the full range of the recited molar ratio of SiO2 and MgO are not enabled, since it is unclear how the glass can meet the portion of the ratio range from 1.57:1 to 1.4:1. For the purposes of examination, the portion of the range that is considered enabled is from 2:1 to 1.57:1 for the molar ratio of SiO2 and MgO.
Claim 4 recites the limitation “a molar ratio of MgO and Al2O3 in a range from 3.5:1 to 1.5:1.” Based on the ranges of SiO2, MgO, and Al2O3 considered enabled above, the full range of the recited molar ratio of MgO and Al2O3 are not enabled, since it is unclear how the glass can meet the portion of the ratio range from 1.81:1 to 1.5:1. For the purposes of examination, the portion of the range that is considered enabled is from 3.5:1 to 1.81:1 for the molar ratio of MgO and Al2O3.
Claims 5-9 and 11-14 are rejected since they depend either directly or indirectly from independent claims 1 and 10, which are rejected as lacking enablement.
Claim Rejections - 35 USC § 112(b) or second paragraph
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 9 and 12 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 pre-AIA the applicant regards as the invention.
Claim 9, recites “an EPD window” in lines 2 and 3. This renders the claim indefinite since the claim does not define “an EPD window” nor does the specification. “EPD” could be several things such as 1) Etch Pit Density, 2) End Point Detection, 3) Electro Phoretic Deposition, 4) Electronic Personal Dosimeter, 5) Electronic Paper Display, 6) Environmental Product Declaration, or 7) Energy Products Distribution.
Claim 12 recites the limitation "the molten plasma-resistant glass” in line 4. There is insufficient antecedent basis for this limitation in the claim. Additionally, claim 12 recites the limitation "the injected plasma-resistant glass” in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112(d) or fourth paragraph
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 2-4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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 2 recites the limitation “a molar ratio of SiO2 and Al2O3 in a range from 6:1 to 2.5:1.” This fails to further limit claim 1 from which it depends since it includes portions of the ratio which are outside the ranges of the individual components.
Claim 3 recites the limitation “a molar ratio of SiO2 and MgO in a range from 2:1 to 1.4:1.” This fails to further limit claim 1 from which it depends since it includes portions of the ratio which are outside the ranges of the individual components.
Claim 4 recites the limitation “a molar ratio of MgO and Al2O3 in a range from 3.5:1 to 1.5:1.” This fails to further limit claim 1 from which it depends since it includes portions of the ratio which are outside the ranges of the individual components.
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 Rejections - 35 USC § 102 and 35 USC § 103
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.
(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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-11 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Sato et al., U.S. Patent Application Publication, US 2003/0185738 A1.
Sato et al. disclose a glass member resistant to plasma. See Abstract and the entire specification, specifically, paragraphs [0001], [0007], and [0009]. Sato et al. disclose that the glass is a SiO2-Al2O3-MgO glass. See paragraph [0009]. Sato et al. disclose that the glass is used in semiconductor production. See paragraph [0009]. Sato et al. disclose that the glass is used as a jig material in semiconductor manufacturing. See paragraphs [0007] and [0024]. The compositional ranges of Sato et al. are sufficiently specific to anticipate the glass composition as recited in claims 1-10. See MPEP 2131.03.
Specifically, as to claim 1, Sato et al. disclose Example 2 (see Table 1), which reads on a plasma-resistant glass comprising in terms of mole percentages, 55-70 mol.% of SiO2, 5-20 mol% of Al2O3, and 29-35 mol% of MgO, as recited in instant claim 1.
As to claim 2, Sato et al. disclose Example 2 (see Table 1), which reads on a plasma-resistant glass having a molar ratio of SiO2 and Al2O3 in the range of from 6:1 to 2.5:1, as recited in instant claim 2.
As to claim 3, Sato et al. disclose Example 2 (see Table 1), which reads on a plasma-resistant glass having a molar ratio of SiO2 and MgO in the range of from 2:1 to 1.4:1, as recited in instant claim 3.
As to claim 4, Sato et al. disclose Example 2 (see Table 1), which reads on a plasma-resistant glass having a molar ratio of MgO and Al2O3 in the range of from 3.5:1 to 1.5:1, as recited in instant claim 4.
As to claim 5, since the composition of the reference is the same as those claimed herein it follows that the glasses of Sato et al. would inherently possess a glass transition temperature of 750-850 °C, as recited in claim 5. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 6, since the composition of the reference is the same as those claimed herein it follows that the glasses of Sato et al. would inherently possess a thermal expansion coefficient of from 4.0x10-6 to 6.0x10-6 m/(m°C), as recited in claim 6. See MPEP 2112.
As to claim 7, since the composition of the reference is the same as those claimed herein it follows that the glasses of Sato et al. would inherently possess an etch rate by mixed plasma of fluorine and argon of 18 nm/min or less, as recited in claim 7. See MPEP 2112.
As to claim 8, Sato et al. disclose that the plasma-resistant glass is used in the manufacture of semiconductors. Sato et al. disclose the glass is suitable for a jig since the glass is resistant to plasma corrosion. See paragraph [0001], which reads on a Chamber interior part for semiconductor manufacturing method comprising the plasma-resistant glass, as recited in instant claim 8.
As to claim 9, Sato et al. disclose a glass used as a jig in semiconductor production (see paragraphs [0001] and [0007]), which reads on a chamber interior parts are any one of a focus ring, an edge ring, a cover ring, a ring shower, an insulator, an EPD window, an electrode, a view port, an inner shutter, an electro static chuck, a heater, a chamber liner, a shower head, a chemical vapor deposition (CVD) boat, a wall liner, a shield, a cold pad, a source head, an outer liner, a deposition shield, an upper liner, an exhaust plate, or a mask frame, as recited in instant claim 9. A jig reads on several items including but not limited to a focus ring, an edge ring, a cover ring, and an electro static chuck.
As to claim 10, Sato et al. disclose a method of making a glass comprising components mixed to form a mixture and then heating in a furnace and melting the mixture to a temperature of 1750 °C, and then cooling the mixture to form a glass, (see paragraph [0015]), Sato et al. disclose an Example 2 (see Table 1), which reads on a method of manufacturing plasma-resistant glass, comprising: melting a composition including SiO2 in an amount ranging from 55 mol% to 70 mol%, Al2O3 in an amount ranging from 5 mol% to 20 mol%, and MgO in an amount ranging from 29 mol% to 35 mol% to form a molten composition; and cooling the molten composition, as recited in instant claim 10.
As to claim 11, since the composition of the Sato et al. (see Example 2, Table 1) is the same as those claimed herein it follows that the glasses of Sato et al. would inherently possess a melting temperature of 1400-1700 °C, as recited in claim 11. See MPEP 2112.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Olechnowicz et al., U.S. Patent Application Publication US 2008/0016684 A1 in view of Sato et al., U.S. Patent Application Publication, US 2003/0185738 A1.
Olechnowicz et al. teach a magnesium aluminosilicate glass used in semiconductor manufacturing. See Abstract and the entire specification, specifically, paragraphs [0002], [0009], [0014], [0058], and [0095]. Olechnowicz et al. teach the glass material is made by mixing the powder into a mixture, adding the mixture in to a Pt crucible and heated to 1400°C for 1 hour, then poured into a mold and then annealed from 680°C then cooled to room temperature in 12 hours. See paragraphs [0107].
Olechnowicz et al. fail to teach the specific plasma-resistant glass composition as recited in claims 12-14.
Sato et al. disclose a glass member resistant to plasma. See Abstract and the entire specification, specifically, paragraphs [0001], [0007], and [0009]. Sato et al. disclose that the glass is a SiO2-Al2O3-MgO glass. See paragraph [0009]. Sato et al. disclose that the glass is used in semiconductor production. See paragraph [0009]. Sato et al. disclose that the glass is used as a jig material in semiconductor manufacturing. See paragraphs [0007] and [0024].
As to claim 12, it would have been obvious to one of ordinary skill in the art before the effective filing date to have a method of manufacturing chamber interior parts for a semiconductor manufacturing process, comprising melting the plasma-resistant glass, injecting the molten plasma-resistant glass into a mold, and annealing the injected plasma-resistant glass as taught to by Olechnowicz et al. using the plasma-resistant glass of Sato et al.
As to claim 13, since the composition of the reference is the same as those claimed herein it follows that the glasses of Sato et al. would have the same melting temperature of 1400-1700 °C, as recited in claim 13.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 14, since the composition of the reference is the same as those claimed herein it follows that the glasses of Sato et al. would have the same annealing temperature of 400-900 °C, as recited in claim 13.
Conclusion
The additional references cited on the 892 have been cited as art of interest since they are considered to be cumulative to or less than the art relied upon in the rejections above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
21 July 2026
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