DETAILED ACTION
This is the Office action based on the 18697692 application filed April 1, 2024. Claims 1-20 are currently pending and have been considered below.
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. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 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.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 7 of copending Application No. 18697669. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of copending Application No. 18697669 comprises all features of claim 1, and that claim 7 may comprise both hydrofluoric acid and one or more of hydrochloric acid, sulfuric acid, nitric acid, phosphoric acid, which all having an acid dissociation constant greater than that of the hydrofluoric acid, and that any of the acid may be considered a diluent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 16 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. The term “the patterned metal oxide layer” in claim 16 lacks antecedent basis. Although Claim 1 recite forming a patterned masking layer over the metal oxide layer and etching the metal oxide layer using a wet etching medium, it does not recite a patterned metal oxide layer. For the purpose of examining it will be assumed that this term is “a patterned metal oxide layer”.
Claim 17 rejected under 35 U.S.C. 112(b) because they are directly or indirectly dependent on claim 16.
Claim Rejections - 35 USC § 102
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..
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 1-3 and 5-6 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by Rotondaro et al. (U.S. PGPub. 20030109106), hereinafter “Rotondaro”:--Claims 1, 2, 3, 5: Rotondaro teaches a method of etching, comprisingforming a high-k dielectric layer 205 on a substrate (Fig. 1-2, [0017-0020, 0032]), wherein the high-k dielectric may be barium titanate (BaTiO3) and strontium titanate (SrTiO3) ([0021-0022]);forming a patterned resist layer over the barium titanate layer, wherein the high-k dielectric layer is exposed through an opening in the mask ([0017, 0023]);etching the exposed high-k dielectric layer ([0024], Step 103 in Fig. 1) by using an aqueous solution comprising a strong acid, such as sulfuric acid; an oxidizing agent, such as hydrogen peroxide; and a fluorine compound, such as HF ([0026]). In an embodiment, Rotondaro teaches that the aqueous solution may comprise 25-95 vol.% of the strong acid, 0-20 vol% of the oxidizing agent, 0.001-0.5 vol.% of the fluorine compound ([0027]). It is noted that sulfuric acid has an acid dissociation constant greater than HF, and hydrogen peroxide may also be considered both an oxidizer and a diluent.--Claim 6: It is noted that the 25-95 vol.% of sulfuric acid and the 0.001-0.5 vol.% of HF overlaps the range of sulfuric acid:HF ratio recited in claim 6.
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 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.
Claim 7 rejected under 35 U.S.C. 103 as being unpatentable over Rotondaro.--Claim 7: Rotondaro teaches the invention as above. Rotondaro further teaches that the etching may transversely etch a polysilicon layer underneath the patterned resist layer to form an undercut ([0032]) Although Rotondaro fails to teach that the etching is isotropic, since the etching solution and the photoresist mask/barium titanate structure taught by Rotondaro are the same as Applicant’s, the etching must form undercut etch regions in the barium titanate layer underneath the photoresist mask, as taught by Applicant.--Claim 8: Although Rotondaro fails to teach that the etching solution dissolves barium containing etching residue, since the etching solution and the photoresist mask/barium titanate structure taught by Rotondaro are the same as Applicant’s, the etching must dissolve some barium containing etching residues, as taught by Applicant. According to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”, Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”. It has been established that where an examiner has reason to believe that a characteristic or functional limitation in a claim may, in fact, be an inherent characteristic of the prior art, the examiner possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic the applicant is relying on for patentability. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210 (CCPA 1971). An examiner’s belief is reasonable where starting materials and processing of the prior art are so similar to those disclosed by the applicant that it appears that the claimed function or property would naturally result when conducting the process as taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Best, at 1255.
Claims 4 and 18 rejected under 35 U.S.C. 103 as being unpatentable over Rotondaro as applied to claim 1 above, and further in view of Xu et al. (U.S. PGPub. 20130078773), hereinafter “Xu”:--Claims 4, 18: Rotondaro teaches the invention as above, wherein Rotondaro teaches that the high-k dielectric layer may be etched by using a solution comprising HF, a strong acid and water.Rotondaro fails to teach the solution comprising ethanol. Xu, also directed to making a semiconductor device, teaches that a high-k dielectric layer ([0002]) may be etched by immersing in a solution comprising HF, HCl and water or an organic solvent, such as ethanol ([0007, 0048-0049]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use ethanol as an equivalent substitution for the water as the solvent in etching solution in the invention of Rotondaro because Xu teaches that this would be effective. It is noted that this would improve manufacturing flexibility.
Claim 9 and 15 rejected under 35 U.S.C. 103 as being unpatentable over Rotondaro as applied to claim 1 above, and further in view of Aminpur et al. (U.S. Pat. 6482726), hereinafter “Aminpur”:--Claim 9: Rotondaro teaches the invention as above. Rotondaro further teaches that the patterned resist layer is defined in a lithographically defined pattern ([0023]). Rotondaro fails to teach that the patterned resist layer comprises photoresist. Aminpur teaches a method of making a semiconductor device, comprisingforming a dielectric layers 540 and 550 over a substrate, the dielectric layers comprises a layer of barium titanate layer and a strontium titanate layer (Col. 5, Lines 32-52);forming a patterned photoresist layer 570 on the dielectric layers (Fig. 5; Col. 6, Lines 1-21);etching the exposed portion of the dielectric layers by using an acid solution (Col. 6, Lines 41-55). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use photoresist as the resist layer in the invention of Rotondaro because Rotondaro further teaches that the patterned resist layer is defined in a lithographically defined pattern and Aminpur teaches that photoresist would be effective.
Claims 10-17 rejected under 35 U.S.C. 103 as being unpatentable over Rotondaro and Aminpur as applied to claim 9 above, and further in view of Ma et al. (U.S. PGPub. 20180081204), hereinafter “Ma”:--Claims 10, 11, 12, 13, 14: Rotondaro teaches a method of etching a metal oxide layer comprising the barium titanate layer and the strontium titanate layer, as shown above. Rotondaro fails to teach that the etching the metal layer may form a waveguide layer of a Mach-Zehnder interferometer. Ma teaches a method of making a Mach-Zehnder interferometer (Fig. 5 and 8, [0055]), comprising providing a ferroelectric layer 301 comprising barium titanate and/or strontium titanate ([0023-0024, 0047]) on a substrate 306 (Fig. 3, [0067]); selectively etching a portion of the ferroelectric layer 301 to form a protrusion ([0076]); depositing metal electrodes 302 on both sides of the protrusion ([0076], Fig. 3) Since Ma is silent about a method of selectively etching a portion of the ferroelectric layer 301 to form the protrusion, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to use the etching method taught by Rotondaro for the selective etching. It is noted that since the wet etching is isotropic, the etching results in a protrusion having a tapered sidewall and horizontal portions on both sides of the protrusion. Alternately, since Rotondaro teaches that the dielectric layer may be partially etched ([0032-0033], Fig. 3), one of ordinary skill in the art at the effective filing date of the invention may use the etching method taught by Rotondaro to partially etch the ferroelectric layer 1006 to form the protrusion 1001, as shown in Fig. 10 of Ma. --Claim 15: Aminpur further teaches that the dielectric layer 550 is formed above the dielectric layer 540 (Col. 5, Lines 32-34). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to form the barium titanate layer 550 over the strontium titanate layer 540.--Claim 16, 17: It is noted that since the wet etching is isotropic, the etching results in a protrusion comprising barium titanate layer having a tapered sidewall over the remaining strontium titanate layer.
Claims 18-20 rejected under 35 U.S.C. 103 as being unpatentable over Rotondaro as applied to claim 1 above, and further in view of Kaushik et al. (U.S. PGPub. 20220238431), hereinafter “Kaushik”:--Claims 18-20: Rotondaro teaches a method of etching a dielectric layer by using an etching solution, as shown above. Rotondaro further teaches that the dielectric layer is exposed to the etching solution during the etching ([0034]), but is silent about the manner of the exposing. Kaushik, also directed to making a semiconductor device, teaches that a layer on the semiconductor device may be patterned or etched by exposing to a wet etch chemistry, such as by using a spin-coating process, a spray-coating process, an immersion-coating process, a vapor-coating process, a soaking process, combinations thereof ([0035]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to apply the etching solution to the dielectric layer by using a spin-coating process, a spray-coating process, an immersion-coating process, a vapor-coating process, a soaking process, or combinations thereof because Rotondaro teaches that the dielectric layer is exposed to the etching solution during the etching but is silent about the manner of the exposing, and Kaushik teaches that such methods would be effective.
Conclusion
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/THOMAS T PHAM/Primary Examiner, Art Unit 1713
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