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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9 in the reply filed on March 6, 2026 is acknowledged.
The traversal is on the ground(s) that
- the Examiner’s characterization that Group I and Group II are related as subcombination and combination is improper because the claims sets are directed to substantially overlapping subject matter with the core structural elements of both sets being identical. As such, Applicants argue that search for prior art would necessarily uncover prior art relevant to both and no serious burden would exists.
- The different classifications of both sets as identified by the Examiner fall within the same general class and subclass relating to CVD processing and as such, prior art searched would applicable to both sets and there would be no serious burden.
The above is not found persuasive.
Initially, although the Examiner acknowledges that the claims sets may have overlap wherein the same first- and second-layer orientation is claimed in both, restriction of the Claim sets is still proper. Again, as mentioned in the restriction requirement, Group II (combination) does not require the resistance to cracking and delamination nor does it require the porosity of Group I (subcombination) and Group I (subcombination) can be used as an article that is not a chamber component as required by Group II (combination). As the above differences is all that is needed to show distinction as required by MPEP 806.05(c), the restriction is proper.
Additionally, while Applicants argue that the core structural elements of both sets being identical and as such, search for prior art would necessarily uncover prior art relevant to both and no serious burden would exists, this is not persuasive. Note that even if the same first- and second-layer orientation is recited in both Groups does not necessarily mean that the prior art search for Group I will necessarily be relevant to that of Group II and vice versa. For instance, as Group I does not require the article to be a chamber component, a search to find relevant art would not be limited to that of chamber components and relevant prior art that may be found and used to reject Group I can be a completely different type of article than a chamber component. However, in searching Group II, a completely different search would have to be performed and limited to only chamber component articles. Two different searches would be burdensome.
Further, note that Group II does not include a property of being resistance to cracking and delamination or a porosity limitation as required by Group I. As such, a search to find relevant art for Group II would not be limited to requiring the specific properties and porosity limitation components and relevant prior art that may be found and used to reject Group II can have completely different properties or have the presence of high porosity. However, in searching Group I, a completely different search would have to be performed and limited to the recited properties and being porosity free. Two different searches would be burdensome.
Regarding the argument concerning the different classifications of both identified by the Examiner falling within the same general class and subclass, there would be burden. Note that just because different subclasses may fall under the same class does not mean the same search would be done. In contrast, different subclasses would have to be searched for both sets and different subclass searches is burdensome.
The requirement is still deemed proper and is therefore made FINAL.
Examiner’s Comment
For the record that the present Application has continuity data to US Applications 17/534013, 16/734825, 15/849253 and 15/411892.
While the Examiner in US Applications 16/734825 and 15/849253 applied the Reference Sun (USPN9,869,013) as prior art, this was not proper as Sun cannot be used as prior art in any of the above Applications including the present one.
Initially, note that all of the Applications are under AIA and given the continuity data, each of the above Applications have an effective filing date of 1/20/2017.
Under AIA , for a reference to be available as prior art, it must be available under 102(a)(1) and/or 102(a)(2) which is not met by Sun.
Specifically, regarding 102(a)(1), a reference must have a prior public availability date but if it is a disclosure by the inventor, the publication date must precede the 1 year grace period (i.e. with a filing date of 1/20/2017, a reference from the same inventor must have been published prior to 1/20/2016). In the instant case, Sun (USPN9,869,013) is the same inventor as in the present Applications and as such, for it to be available under 102(a)(1), it’s publication date must precede 1/20/2016. However, Sun (USPN9,850,573) has a publication date of 12/26/2017 and therefore is not available as prior art under 102(a)(1).
Regarding 102(b)(2), to be available it must be a published US or PCT reference having an earlier filing date by another. In the instant case, although Sun (USPN9869,013) may be a published US reference with an earlier filing date of 6/23/2016, it is not by another as the inventor in Sun is that listed in the present Applications and as such, is not available as prior art under 102(b)(1).
For the above reasons, while Sun should be cited herein as relevant art, it is not prior art.
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.
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.
Claim 6 is 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. Specifically, claim 6 fails to further limit because it recites the coating uniformly covers the surface, but claim 6 depends on claim 5 which depends on claim 1 which already recited the coating uniformly covering the surface. 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 § 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.
1. Claim(s) 1-4, 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cooke (WO2015120265, rejection using corresponding English document USPub20160336210) or alternatively, in further view of either one of Sun (USPub20150311044) or Sun (USPub20140377504).
Regarding claim 1: Cooke teaches an article comprising a plasma etch resistance (see Cooke’s claim 17 for instance) surface dielectric layer coating on a surface of the article.
The coating can comprise an insulator layer comprising ALD-deposited amorphous Al2O3 with one or more dielectric layers applied thereon which can include at least one of Y2O3 and ZrO2 (note that “at least one” allows for both Y2O3 and ZrO2) (see abstract, 0006, 0008, 0029, 0031, 0051-0052, Examples for instance).
Note for the record that while the claim may recite “first” and “second” layers, these are considered merely labels for the recited layers. This in no way limits any intervening layer (s) that may be between the article surface and the Al2O3 or any intervening layers between the Al2O3 layer and the Y2O3-ZrO2 layer as the claim does not require any direct contact nor any limits that the recited first and second layers be specifically the first and second layers from the article surface. As such, as long as the prior art has a layer of Y2O3-ZrO2 overlaying a layer of amorphous Al2O3, the limitation of being first and second layers is considered to be met.
Cooke’s first layer of amorphous Al2O3 can have a thickness of 0.5 to about 2microns such as about 1 micron (see 0008, Cooke’s claim 19) meeting the claimed thickness.
Cooke teaches the overall surface dielectric layer coating having a total thickness of 1-250micron. Given that the Y2O3 and ZrO2 dielectric layer is in the coating, Cooke’s total thickness teaching is considered to allow for Y2O3 and ZrO2 dielectric layer thicknesses overlapping that claimed (MPEP 2144.05).
Cooke coating is conformal and will encapsulate (covers) the entire article (See 0012, 0029, 0051, Cooke’s claim 10). Given that Cooke provides no teaching that would indicate that the coating will not be uniform or any teaching or desire of making the coating not uniform, one skilled in the art would expect uniform coverage. Alternatively, the coating is providing plasma etch protection, etc. and it would have been well within the skill in the art to making the coverage uniform to obtain uniform protection.
Cooke teaches that it is desirable that their surface dielectric layer coating be dense and relatively pin-hole (pore) free (0029, 0051) and suggests desirable porosities being <1vol% and even < 0.5vol% (see for instance 0013, 0036, 0051) (MPEP 2144.0).
Note that Cooke’s layer including mixture of Y2O3 and ZrO2 is considered to be a solid solution of Y2O3-ZrO2 since solid solution is commonly defined in the art as a solid mixture.
Alternatively, Cooke is generally teaching the desire for a plasma etch resistant coating for use on electrostatic chucks in semiconductor processing wherein the coating can include a layer of both Y2O3 and ZrO2 in micron thickness within the range of 1-250micron.
As ‘044, who similarly teaches plasma resistance coating (entire document) for use on electrostatic chucks in semiconductor processing (0002, 0015) wherein the coating can include a layer comprised of both Y2O3 and ZrO2 (see 0014, 0016-0019) in micron thickness of less than 50, less than 20, less than 10 and even 0.5-7micron (see abstract, 0072, 0081), suggests that a layer of a ceramic compound of Y2O3-ZrO2 solid solution and Y4Al2O9 allows for plasma erosion resistance and resistance to wear during plasma processing (see 0014, 0016-0017), it would have been obvious to one having ordinary skill at the time of invention to modify Cooke to include their Y2O3 and ZrO2 layer being the layer taught by ‘044 for plasma erosion resistance and resistance to wear during plasma processing.
Note that with the above modification of utilizing the layer taught by ‘044 in Cooke, Cooke’s Y2O3 and ZrO2 layer will comprise Y2O3-ZrO2 solid solution and Y4Al2O9 and will provide even further suggestion of making said layer less than 50, less than 20, less than 10 and even 0.5-7micron in Cooke (MPEP 2144.05).
Alternatively, as ‘504 who similarly teaches plasma resistance coating (entire document) for use on electrostatic chucks in semiconductor processing (0003, 0013) wherein the coating can include a layer comprised of both Y2O3 and ZrO2 (see abstract, 0013, 0037, 0042) in micron thickness of less than 20, and even 0.5-7micron (see abstract, 0035), suggests that a layer of a ceramic compound of Y2O3-ZrO2 solid solution and Y4Al2O9 allows for plasma erosion resistance and resistance to wear during plasma processing (see title, 0013, 0037, 0042), it would have been obvious to one having ordinary skill at the time of invention to modify Cooke to include their Y2O3 and ZrO2 layer being the layer taught by ‘504 for plasma erosion resistance and resistance to wear during plasma processing.
Note that with the above modification of utilizing the Y2O3 and ZrO2 layer taught by ‘504 in Cooke, Cooke’s Y2O3 and ZrO2 layer will comprise Y2O3-ZrO2 solid solution and Y4Al2O9 and will provide even further suggestion of making said layer less than less than 20 and even 0.5-7micron in Cooke (MPEP 2144.05).
Regarding the properties of being plasma resistant to cracking and delamination at up to 350oC, given that Cooke’s coating meets that claimed, the same properties would be expected to result (MPEP 2112).
Regarding claim 7: Cooke teaches their article being an electrostatic chuck, which is a chamber component of a plasma generation unit or a chamber wall or a gas channel or gas pipe (see 0002, 0026, Figures).
Regarding claims 2-4 and 8: Cooke’s Y2O3 and ZrO2 layer being the layer taught by ‘044 or alternatively, that of ‘504 will provide for compositional amounts overlapping that recited in claims 2-4 and will include Y4Al2O9 as required by claim 8 (see 0017 in ‘044 and 0037 in ‘504).
Regarding claim 9: While Cooke may not disclose the additional presence of Er2O3 as required by claim 9, not only do ‘044 and ‘504 each disclose Er2O3 and a ceramic of Y2O3-ZrO2 solid solution and Y4Al2O9 can be used for the same purpose of plasma protection ( see 0014-0022 in ‘044 and abstract, 0012-0013, 0037) and "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose as [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) but both even suggests that a ceramic of Y2O3-ZrO2 solid solution and Y4Al2O9 can include trace amounts of Er2O3 (0021 in ‘044 and 0037 in ‘504). As such, it would have been obvious to one skilled in the art to modify Cooke to include additional Er2O3 as desired for plasma protection.
2. Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cooke (WO2015120265, rejection using corresponding English document USPub20160336210) or alternatively, Cooke and either one of Sun (USPub20150311044) or Sun (USPub20140377504) as applied to claim 1 above in view of Kuo (USPUb20170140969).
Regarding claim 5: A gas channel surface of the article can have the plasma coating thereon (See Figures).
While Cooke may not teach the gas channel surface aspect ratio, Cooke is directed to gas channels for an electrostatic chuck.
Given that Kuo teaches gas channels of electrostatic chucks can have an aspect ratio length to width of 10:1 to 50: 1 (0025) for control of wafer temperature distribution (0014), it would have been obvious to one having ordinary skill at the time of invention to modify Cooke to include their gas channel surface having an aspect ratio length to width of 10:1 to 50: 1 for control of wafer temperature distribution.
Regarding claim 6: As already mentioned above, the coating is considered to uniformly cover the surface.
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 1-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. USPN11,251,023. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope. Specifically, while the present claims recite an “article” and the Patent clams recite a “method”, the same structure is in both sets of claims.
Claims 1-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. USPN11,251,023. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in scope. Specifically, while the present claims recite an “article” and the Patent clams recite a “method”, the presently claimed structure is being recited in the Patent claims
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/ Primary Examiner, Art Unit 1784
Prosecution Insights