DETAILED ACTION
Claim Rejections - 35 USC § 112
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.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 recites (in lines 1-2): “the lower electrode further comprises Si”.
Claim 5 depends from claim 4, which in turn depends from claim 1. Therefore, claim 5 recites a quaternary nitride compound: TiNbSiN.
However, the applicant’s specification ly provides support for ternary nitride compounds. For example, in paragraphs 0057-0059, MM’N compound possibilities are listed. The applicant also has other paragraphs for a lower electrode material (for example paragraphs 0019 and 0056); however these paragraphs do not recite or disclose any silicon (Si) being used.
Claims 8 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for some oxides and oxynitrides (from M’O or M’ON), does not reasonably provide enablement for all elements listed within these two claims. 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 or use the invention commensurate in scope with these claims.
Several examples are listed below.
Polonium (Po) – an extremely rare and unstable element.
Francium (Fr) – extremely rare and unstable, any measurable quantity has never been seen.
Uranium (U) – known radioactive and dangerous element.
Promethium (Pm) – radioactive and unstable element.
Osmium (Os) – extremely rare element, unknown if Os can form oxynitrides (for M’ON); Osmium oxide is highly dangerous and poisonous.
Technetium (Tc) - extremely rare element and all isotopes are radioactive.
Oxygen (O) – M’ON would yield NO2 which is a gas, and as such is not a viable interfacial film for a capacitor device structure.
Oxygen (O) – M’O would yield O2 which is also a gas.
Nitrogen (N) - M’ON would yield N2O which is also a gas.
Nitrogen (N) - M’O would yield NO which is also a gas.
As shown by this list, the elements from the list (in claims 8 and 22) clearly include those elements which are entirely not feasible, either due to instability, scarcity, inherent dangers, or structural incompatibility (i.e. a gas). Therefore, claims 8 and 22 as currently written contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Due to the new grounds of rejection, this office action is Non-Final.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott B. Geyer (telephone: 571-272-1958). The examiner can normally be reached on Monday to Friday, 10AM - 4PM (ET). 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, Christine S. Kim (telephone: 571-272-8458). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (in U.S.A. or Canada) or 571-272-1000.
/SCOTT B GEYER/ Primary Examiner, Art Unit 2812
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