DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on May 6, 2026 was received. Claims 6, 8, 14 and 16 were amended. Claims 9-10 were canceled. Claims 11-13 were withdrawn. Claims 14-16 were added.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued on March 27, 2026.
Claim Rejections - 35 USC § 112
The claim rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, on claims 8 and 16 are withdrawn, because the claims have been amended.
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.
Claims 6-8 and 14-16 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Yeon (KR102138149).
Regarding claim 6, Yeon teaches a method of forming a thin film (paragraph 0001) using a metal thin film precursor, wherein the metal is molybdenum (paragraph 0051). Thus, Yeon teaches the thin film comprises molybdenum (molybdenum based thin film). Yeon teaches to inject an inhibitor to the deposition chamber to be adsorbed on the surface of the substate (paragraphs 0017, 0046 and 0090), wherein the inhibitor facilitates to improve step coverage and thickness uniformity of the thin film being formed on a substate having complex structure (paragraph 0001), which reads on the limitation of film quality improver (injecting a film quality improver into a chamber and injecting the film quality improver onto a surface of a loaded substrate). Yeon teaches the inhibitor comprises the structure of AnBmXo, wherein A is carbon or silicon, X is halogen (F, Cl, Br or I), B is hydrogen or alkyl having 1 to 3 carbon atoms, n is an integer of 1, o is an integer 1, and m is 2n+1 (paragraphs 0015-0016), which reads on the claimed limitation tert-butyl iodide (A is carbon, B is alkyl having 3 carbon:CH3, C is iodine, n is 1, o is 1 and m is 3). Yeon teaches to vaporize the inhibitor to form a protected area (shield area) on the surface of the substrate in the chamber (paragraphs 0083, 0046, 0103, figure 2) (step i-a). Yeon teaches to performing first purge of an inside of the chamber using a purge gas (paragraphs 0046, figure 2) (step ii-a), vaporizing thin film precursor (molybdenum precursor) and adsorbing the precursor to an area outside the shielding area (figure 2, paragraphs 0083 and 0046) (step iii-a), preforming second purging of the inside of the chamber using the purge gas (paragraph 0046, figure 2) (step iv-2), supplying a reaction gas into the chamber (step v-a) and preforming third purging of the inside of the chamber using the purge gas (step vi-a) to form the thin film on the surface of the substate (step vii-a) (molybdenum based thin film) (paragraphs 0103, 0046, 0051, see figure 2). Some of the recitations in Yeon uses Ti as example but would be clear to one of the ordinary skill in the art that the steps and method are applicable to all other thin film precursor as recited in paragraph 0051, including molybdenum, as Yeon’s general teaching is directed to other metal based films, including molybdenum.
Regarding claim 7, Yeon teaches the thin film is a metal oxide, metal nitride film (paragraphs 0004, 0051-0053).
Regarding claim 8, Yeon teaches the inhibitor is transferred into the atomic layer deposition (ALD) chamber by vapor flow control (VFC) or LDS (liquid delivery system) method (paragraphs 0048 and 0093).
Regarding claim 14, Yeon teaches a method of forming a thin film (paragraph 0001) using a metal thin film precursor, wherein the metal is molybdenum (paragraph 0051). Thus, Yeon teaches the thin film comprises molybdenum (molybdenum based thin film). Yeon teaches to inject an inhibitor to the deposition chamber to be adsorbed on the surface of the substate (paragraphs 0017, 0046 and 0090), wherein the inhibitor facilitates to improve step coverage and thickness uniformity of the thin film being formed on a substate having complex structure (paragraph 0001), which reads on the limitation of film quality improver (injecting a film quality improver into a chamber and injecting the film quality improver onto a surface of a loaded substrate). Yeon teaches the inhibitor comprises the structure of AnBmXo, wherein A is carbon or silicon, X is halogen (F, Cl, Br or I), B is hydrogen or alkyl having 1 to 3carbon atoms, n is an integer of 1, o is an integer 1, and m is 2n+1 (paragraphs 0015-0016), which reads on the claimed limitation tert-butyl iodide (A is carbon, B is alkyl having 3 carbon:CH3, C is iodine, n is 1, o is 1 and m is 3). Yeon teaches to inject and vaporize a thin film precursor and adsorbing the precursor on the surface of the substrate in the chamber (molybdenum precursor) (paragraphs 0103, 0046, 0051, figure 2) (step i-b), Yeon teaches to perform first purge of an inside of the chamber using a purge gas (paragraph 0046, figure 2) (step ii-b). Yeon teaches to vaporize and injecting the inhibitor onto the surface of the substrate in the chamber (paragraphs 0103 and 0046, figure 2) (step iii b), preforming second purging of the inside of the chamber using the purge gas (paragraph 0046, figure 2) (iv-b). Yeon teaches to supply a reaction gas into the chamber (paragraph 0046, figure 2) (step v-b). Yeon teaches to preform third purging of the inside of the chamber using the purge gas (step vi-b) and forming the thin film (molybdenum based thin film) on the surface of the substate (step vii) (paragraphs 0103, 0046, 0051, see figure 2). Some of the recitations in Yeon uses Ti as example but would be clear to one of the ordinary skill in the art that the steps and method are applicable to all other thin film precursor as recited in paragraph 0051, including molybdenum, as Yeon’s general teaching is directed to other metal based films, including molybdenum.
Regarding claim 15, Yeon teaches the thin film is a metal oxide, metal nitride film (paragraphs 0004, 0051-0053).
Regarding claim 16, Yeon teaches the inhibitor is transferred into the atomic layer deposition (ALD) chamber by vapor flow control (VFC) or LDS (liquid delivery system) method (paragraphs 0048 and 0093).
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 6-8 and 14-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11746411 in view of Yeon (KR102138149). Claims 6-8 and 14-16 overlaps with claims 1-12 of U.S. Patent No. 11746411, except the film is Ti based film and some of the method steps. However, titanium and molybdenum in forming ALD thin film using inhibitor are considered as functionally equivalent as evidenced thin film material by Yeon (paragraph 0051). Therefore, it would have been obvious to one of ordinary skill in the art to substitute molybdenum for titanium as the thin film material in the method as disclosed claims 6-8 and 14-16. The other recited method steps are disclosed by Yeon (see rejections above).
Claims 6-8 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No.12252788 in view of Yeon (KR102138149). Claims 6-8 and 14-16 overlaps with the scope of claims 1-11 U.S. Patent No.12252788, except some method steps. However, those method steps are disclosed by Yeon (see rejections above).
Claims 6-8 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12421599 in view of Yeon (KR102138149). Claims 6-8 and 14-16 overlaps with claims 1-5 of U.S. Patent No. 12421599 (tert-butyl bromide reads on chemical formula 1), except the film is Mo based film and some of the method steps. However, Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051). Therefore, it would have been obvious to one of ordinary skill in the art to form the molybdenum based thin film as suggested by Yeon in the method as disclosed by claims 1-15 of U.S. Patent No. 12421599 because Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051). The other recited method steps are disclosed by Yeon (see rejections above).
Claims 6-8 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 9 and 11-13 of copending Application No. 17512724 in view of Yeon (KR102138149). Claims 6-8 and 14-16 overlaps with claims 7, 9 and 11-13 of Applicant No. 17512724 (at least tert-butyl chloride reads on chemical formula 1), except the film is Mo based film and some of the method steps. However, Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051). Therefore, it would have been obvious to one of ordinary skill in the art to form the molybdenum based thin film as suggested by Yeon in the method as disclosed by claims 7, 9 and 11-13 of Application No. 17512724 because Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051).one of ordinary skill in the art to substitute molybdenum for titanium as the thin film material in the method as disclosed claims 6-8 and 14-16. The other recited method steps are disclosed by Yeon (see rejections above).
This is a provisional nonstatutory double patenting rejection.
Claims 6-8 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-10 of copending Application No. 18012086 in view of Yeon (KR102138149). Claims 6-8 and 14-16 overlaps with claims 7-10 of copending Application No. 18012086 (claim 7 chemical formula 1 with i and j equal to zero, reads on chemical formula 1 of instant claim 6), except the film is Mo based film and some of the method steps. However, Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051). Therefore, it would have been obvious to one of ordinary skill in the art to form the molybdenum based thin film as suggested by Yeon in the method as disclosed by claims 7-10 of copending Application No. 18012086 because Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051).one of ordinary skill in the art to substitute molybdenum for titanium as the thin film material in the method as disclosed claims 6-8 and 14-16. The other recited method steps are disclosed by Yeon (see rejections above).
This is a provisional nonstatutory double patenting rejection.
Claims 6-8 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-15 of copending Application No. 18691435 in view of Yeon (KR102138149). Claims 6-8 and 14-16 overlaps with claims 7-15 of copending Application No. 18691435, except the film is Mo based film and some of the method step. However, Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051). Therefore, it would have been obvious to one of ordinary skill in the art to form the molybdenum based thin film as suggested by Yeon in the method as disclosed by claims 7-15 of copending Application No. 18691435because Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051).one of ordinary skill in the art to substitute molybdenum for titanium as the thin film material in the method as disclosed claims 6-8 and 14-16. The other recited method steps are disclosed by Yeon (see rejections above).
This is a provisional nonstatutory double patenting rejection.
Claims 6-8 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-13 and 16 of copending Application No. 18910856 in view of Yeon (KR102138149). Claims 6-8 and 14-16 overlaps with claims 7-13 and 16 of copending Application No.18910856, except the film is Mo based film and some of the method steps. However, Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051). Therefore, it would have been obvious to one of ordinary skill in the art to form the molybdenum based thin film as suggested by Yeon in the method as disclosed by claims 7-13 and 16 of copending Application No.18910856 because Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051).one of ordinary skill in the art to substitute molybdenum for titanium as the thin film material in the method as disclosed claims 6-8 and 14-16. The other recited method steps are disclosed by Yeon (see rejections above).
This is a provisional nonstatutory double patenting rejection.
Claims 6-8 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-13 and 16-18 of copending Application No. 18950715 in view of Yeon (KR102138149). Claims 6-8 and 14-16 overlaps with claims 7-13 and 16-18 of copending Application No. 18950715, except the film is Mo based film and some of the method steps. However, Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051). Therefore, it would have been obvious to one of ordinary skill in the art to form the molybdenum based thin film as suggested by Yeon in the method as disclosed by claims 7-13 and 16-18 of copending Application No. 18950715 because Yeon teaches molybdenum based film is the film material in forming ALD thin film using inhibitor as claimed (paragraph 0051).one of ordinary skill in the art to substitute molybdenum for titanium as the thin film material in the method as disclosed claims 6-8 and 14-16. The other recited method steps are disclosed by Yeon (see rejections above).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed on May 6, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Yeon teaches the film quality improver being 2-chloro-2methylbutane et al on paragraph 0130, table 2.
In response to Applicant’s arguments, please consider the following comments:
Yeon teaches the inhibitor comprises the structure of AnBmXo, wherein A is carbon or silicon, X is halogen (F, Cl, Br or I), B is hydrogen or alkyl having 1 to 3 carbon atoms, n is an integer of 1, o is an integer 1, and m is 2n+1 (paragraphs 0015-0016), which reads on the claimed limitation tert-butyl iodide (A is carbon, B is alkyl having 3 carbon:CH3, C is iodine, n is 1, o is 1 and m is 3). It is well settled that nonpreferred and alternative embodiments constitute prior art and disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NGA LEUNG V LAW whose telephone number is (571)270-1115. The examiner can normally be reached M-F 8 am - 5 pm.
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, Dah-Wei Yuan can be reached at 5712721295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NGA LEUNG V LAW/Examiner, Art Unit 1717
Prosecution Insights