DETAILED ACTION
In the amendment filed on December 23, 2025, claims 1 – 20 are pending. Claims 1, 13 have been amended. Claims 15 – 16 have been withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The rejections of the claims under 35 USC § 112 in the previous Office Action are withdrawn due to Applicant amendment.
Claim Rejections - 35 USC § 102
The rejections of the claims under 35 USC § 102 in the previous Office Action are withdrawn due to Applicant amendment.
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.
Claim(s) 1, 2, 3, 4, 5, 7, 8, 9, 10, 17, 19 is/are (either maintained or as necessitated by amendment) rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. US 20170140924 A1 (hereinafter “Suzuki”).
Regarding claims 1, 2, 3, 4, 5, 7, 8, 9, 19:
Suzuki is directed to methods for depositing SiOCN films onto substrates comprising e.g. graphene [a 2-dimensional material, and therefore necessarily a layer] or amorphous carbon layers (Abstract; [0080]). Suzuki discloses that their method comprises:
providing a substrate that may comprise graphene [meeting claim 2] ([0080], [0081]);
and directly depositing a layer of SiOCN [dielectric protective layer, meeting claims 3, 4, 19] onto the substrate by plasma enhanced atomic layer deposition [meeting claim 5] (PEALD) (Fig 1; [0052] – [0055]), wherein the SiOCN layer comprises between 0% to 60% atomic oxygen ([0052]).
Suzuki does not expressly teach a step of depositing a second layer onto the protective layer in a second plasma deposition process.
However, under the broadest reasonable interpretation, a second layer may be the same composition as the protective layer using the same process. The claims then encompass an embodiment where the second layer is a mere duplication of the protective layer and produced by the same steps [meeting claims 7, 8, 9].
Accordingly, a court-recognized prima facie case of obviousness exists where the difference between the prior art of record and the claimed invention are mere duplications of steps from the repetition/splitting of steps taught by the prior art.
In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin 128 USPQ 159 (PO BdPatApp 1959). See also In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Additionally, Suzuki discloses that during deposition, the deposition parameters may be varied across one or more deposition cycles in order to obtain films with desired characteristics ([0056], [0065]). Such changes also may be construed as different films deposited by different deposition parameters to one of ordinary skill in the art that is motivated in producing gradient films.
Regarding claims 10 and 17:
Suzuki discloses that in embodiments, the SiOCN film may have k-values [dielectric constants] from about 3.9 to about 10, and including embodiments where the k-value is less than about 5.5 ([0154]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Claim(s) 6, 11, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki as applied to claims 1, 2, 3, 4, 5, 7, 8, 9, 10, 17, 19 above, and further in view of Fukazawa et al. US 20140017414 A1 (hereinafter “Fukazawa”).
Regarding claims 6, 11 and 18:
Suzuki does not expressly teach that the protective layer and the second layer are formed from different materials.
Fukazawa is directed to a method of forming conformal films of aluminum oxide with substrates having a patterned underlying layer by plasma enhanced ALD. The conformal aluminum oxide serves to encase underlying films of e.g. amorphous carbon, silicon oxide, silicon nitride, photoresist or silicon ([0017]). Fukazawa further discloses the deposition precursors may be selected from precursors following Al(CxHy)2(OCzHa), Al(CxHy) (OCzHa)2, and Al(CxHy)2(NCzHa), wherein x, y, z, and a are integers ([0018]). Fukazawa further discloses setting reactor conditions such as temperature, coreactants such as oxygen gas, argon gas, and plasma power settings (e.g. 30 to 100W) [related to low energy plasma] ([0016], [0018] – [0020], [0031] – [0038]) are set in order to minimize damage to underlying layers ([0040]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Suzuki by substituting an initial amount of the SiCON film for an aluminum oxide layer directly on the graphene material by atomic layer deposition because Fukazawa teaches that such a procedure and film are known dielectrics that can encapsulate underlying patterned material with minimal damage.
Furthermore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Sims in view of Fukazawa to deposit using a low energy plasma1 as a matter of routine experimentation in order to successfully deposit an aluminum oxide film while minimizing damage to the underlying patterns. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Claim(s) 12 – 14, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over D1 as applied to claims 1, 2, 3, 4, 5, 7, 8, 9, 10, 17, 19 above, and further in view of Sims et al. US 20200066987 A1 (hereinafter “Sims”).
Regarding claims 12, 13, 14, 20:
Sims does not expressly teach that prior to the step of depositing a protective layer, depositing a protective layer onto a second substrate in the first deposition chamber, removing the second substrate from the first deposition chamber, and providing the first substrate in the first deposition chamber.
Sims is directed to methods and apparatus for forming encapsulation bilayers over chalcogenide [2-dimensional layer] materials (Abstract). The details of their method is discussed in the previous Office Action filed on October 25, 2025.
Sims discloses that their method may be practiced over a multitude of substrates within a multi-station processing tool ([0164]). One or more stations may be configured to perform PP-PECVD [relating to the creation of a protective layer] or PEALD [of a recited second layer], or both. Sims further discloses steps of loading and unloading chambers with different substrate wafers with a robot ([0179], [0182]). Sims therefore suggests complete processing and unloading of a given substrate by the method of a previously entered substrate [second substrate] and then loading of a new substrate requiring processing [first substrate] in an apparatus that performs all the steps of the method.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Suzuki to further comprise, prior to the step of depositing a protective layer on an ultimate [first] substrate, depositing a protective layer onto a penultimate [second] substrate in the first deposition chamber, removing the penultimate substrate from the first deposition chamber, and providing the ultimate [first] substrate in the first deposition chamber in order to maintain workflow throughput of multiple substrates as suggested by Sims.
Likewise regarding claim 13 in the case where the first deposition chamber is the second deposition chamber [meeting claim 20], it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Suzuki to further comprise, prior to the step of depositing a second layer on an ultimate [first] substrate, depositing a protective layer onto an antepenultimate [third] substrate in the first deposition chamber, removing the antepenultimate substrate from the first deposition chamber, providing the penultimate substrate and subsequent removal of the penultimate substrate, and providing the ultimate [first] substrate in the first deposition chamber in order to maintain workflow throughput of multiple substrates as suggested by Sims.
Response to Arguments
Applicant's arguments filed December 23, 2025 have been fully considered but they are not fully persuasive.
Applicant’s remaining principal arguments are:
a.) One of ordinary skill in the art, in view of Suzuki's teachings, would not equate a SiOCN film to a protective layer for, for example, the purpose of protecting a 2-dimensional layer of graphene, borophene, or silicene. Suzuki does not teach or suggest the use of a SiOCN thin film as a "protective layer", as explicitly required in amended claim 1.
In response to the applicant's arguments, please consider the following comments.
a.) During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit' s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
However, when an Applicant acts as their own lexicographer and sets forth a special definition that is different from its ordinary and customary meaning(s), the special definition controls the broadest reasonable interpretation of such a defined claim limitation. In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994).
No such a special definition is set forth for the term “protective layer”; thus, the term “protective layer” is interpreted according to the plain meaning of the term consistent with the specification.
The Examiner notes that the adjective “protective” establishes a functional limitation of the recited structure “layer” that is the result of the recited “depositing a protective layer …” step. Functional limitations define features by "by what it does rather than by what it is" In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). So long as a layer deposited is capable of providing a protective function, the limitation is met, regardless of whether or not the prior art of record expressly discloses the intended function of such a deposited layer and/or discloses damaging conditions.
The Examiner takes the position that so long as a deposited layer covers an underlying 2-dimensional layer, it provides at least some protective function by virtue of encapsulating the underlying layers from a larger environment. Such a position is consistent with the specification, which indicates that a protective layer may be e.g. a semiconductor nitride, semiconductor carbide, or semiconductor carbonitride and/or be a dielectric. SiOCN may be regarded as either a semiconductor carbonitride (especially in the embodiments of D1 where the deposited SiOCN has ~ 0% oxygen on an atomic basis, i.e. is substantially SiCN; see paragraph [0052]), reasonably close to a semiconductor carbonitride due to the inclusion of oxygen in the structural identity of the film, and/or a dielectric material. See page 5 line 19 – page 6 line 26 of the instant specification. Under the plain meaning in light of the specification, it would have been readily apparent to one of ordinary skill in the art that the deposited SiOCN film of D1 would have been recognized as a protective layer, and thus meet the claimed limitation “protective layer”.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
1 “Low energy” is defined in the instant specification as plasma that is applied at a power of 100W or less as defined on page 8 line 30 to page 9 line 10 of the instant specification
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