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 .
Election/Restrictions
Applicant’s election of Group I, claims 1 – 11 in the reply filed on October 16, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention group, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The title of the application has been updated to "METHOD FOR PRODUCING
CORROSION-RESISTANT MEMBER AND LASER CVD DEVICE".
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Analysis
The Examiner notes that the method claimed in present claim 1 and claims dependent on present claim 1 are directed to a method for “producing a corrosion-resistant member comprising a substrate consisting of aluminum or an aluminum alloy and an yttria coating formed on a surface of the substrate”. The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948). As the transitional phrase is found in the preamble of the method that defines the end result of the practice of the claimed method, the Examiner interprets the preamble to require that the substrate only contains aluminum or aluminum alloy, and incidental impurities.
As a general note, the Examiner notes that recited acts of the claimed methods start with a general overall act following by “step of”. The Examiner generally interprets the claim limitations after “step of” to be required substeps that the overall act comprises. If the intention is to maintain such a step-substep structure, the Examiner suggests that the claims be amended to recite e.g. “forming a [yttria] coating comprising: irradiating the substrate …” among other valid amendments to other similarly formatted steps with the proper indentation to conform to U.S. practice.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1:
Present claim 1 requires that during the recited coating formation step, the “substrate is allowed to have a temperature …in deposition for forming the yttria coating …”
As a first matter, the present wherein clause is written in passive voice and renders unclear whether the wherein clause is directed to a functionality or intention of the method as a whole, a functionality, intention or end result of a particular manipulative act positively recited by the claimed method.
Exacerbating the first matter, the verb allow generally means among its senses “to permit”, “to fail to prevent”, or to “assign as a share or suitable amount”. In each of the senses, there is either an act of judgement or a negative action, thus calling into question whether there are underlying, unrecited acts that are intended to be required by the claimed method or not. Thus, the metes and bounds of the claimed subject matter are unclear, rendering the claim indefinite.
Regarding claim 4:
Similar to the deficiencies of claim 1, the limitation “a deposition rate of 10 to 1000 μm/Hr is given for the yttria” is written in passive voice; the limitation is therefore unclear for the reasons stated above concerning passive voicing. Additionally, it is unclear whether the verb “is given” is meant to be synonymous with “allow” or closer to the other senses of “to give”.
Regarding claim 10:
The clause “…the reflectance reduction step and the coating formation step are performed in the presented order…” renders unclear the required order of the steps, particularly because the clause is found in a dependent claim and without full context of its parent claim. The coating formation step of claim 1 is recited earlier than the limitations of claim 10. Does that make the performance of the coating formation step before the performance of the reflectance reduction step? Is the order based on the recitation of the clause alone? Is the order dependent on the choice of where to incorporate the subject matter of parent claim 1 into claim 10 and thus allows for both choices? Because of the number of potential interpretations and permutations the clause allows in view of present claim 10 being a dependent claim, the clause renders the claim indefinite as there is no clear guidance in how should the clause be interpreted.
Regarding claim 11:
Present claim 11 recites the limitation "reflectance … in the reflectance reduction step". There is insufficient antecedent basis for this limitation in the claim. Claim 11 depends from claim 1, which does not establish such a step. The required antecedent basis appear to be found in present claim 10.
Dependent claims are rejected based on the deficiencies of their parent claims.
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.
Claims 10 – 11 are 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.
In view of the indefiniteness of claim 10, the claim encompasses where an intervening layer is deposited onto a member surface before the coating formation step. The formation coating step requires that the yttria coating is formed on the surface of the substrate. The scope of the recited reflectance reduction step encompasses where the reflectance reduction is due to the deposition/coating of an opacifying layer, which would encompass where the coating formation step forms the yttria coating on the surface of the opacifying layer (such as the markings produced by a marker, as exemplified in the instant specification) as opposed to on the surface of the substrate. Thus claim 10 fails to include all the limitations of the claim upon which it claims. Dependent claim 11 depends on claim 10, and therefore has the same deficiency discussed above.
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
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.
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.
The factual inquiries 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.
Claims 1, 2, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakahara et al. JP2010070854 A (machine translation and original document both of record, hereinafter “Nakahara”) in view of Waldfried US 20230386795 A1 (hereinafter “Waldfried”) and Okada JP H06248455A (machine translation and original document both of record, hereinafter “Okada”).
Regarding claims 1, 2:
Nakahara is directed to a corrosion resistant member of a semiconductor manufacturing apparatus, such as the inner wall material of a semiconductor manufacturing apparatus’s chamber ([0001] – [0002]). Nakahara discloses that their method comprises:
providing a substrate made of pure quartz, alumina or aluminum nitride onto a sample table inside of a laser CVD apparatus’s chamber ([0010], [0013], [0065] – [0066]);
ejecting a source gas and oxygen gas into the chamber and onto a surface of the substrate ([0067]); and
simultaneously with the ejecting, irradiating the surface of the substrate with a laser light from an yttrium aluminum garnet (YAG) source to deposit a film derived from the source gas ([0068]).
The deposited film is a Y2O3 film with a thickness of up to 50 µms ([0044], [0068]). In embodiments, the substrate may be heated [allowed] to specific temperatures of e.g. 200°C, 300°C, 400°C, 500°C (Table 1 of original document, 基材加熱温度 translates to “substrate heating temperature” and レーザー出力 translates to “laser power”).
Nakahara does not expressly teach:
that the substrate consists of aluminum or an aluminum alloy; and
that the provided laser light is in the form of a pulse wave (i.e. laser light from a pulsed laser source).
With regards to the substrate consisting of aluminum or an aluminum alloy:
Waldfried is directed to surface coatings for chamber components used in plasma systems (Abstract). Waldfried discloses that the surface coating may be an yttria coating (Abstract; [0028]; Claim 17). The chamber components may be made solely from quartz, solely aluminum, solely anodized aluminum and combinations thereof (Abstract; claim; claim 31).
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 Nakahara by substituting the substrate material to solely aluminum or solely anodized aluminum because Waldfried teaches that aluminum and anodized aluminum are known materials for chamber components alongside quartz, and that coating such components with yttria is known in the art. The substitution of one known component material for another yields predictable results to one of ordinary skill in the art.
With regards to the provided laser light being in the form of a pulse wave:
In analogous art, Okada is directed to a method for producing a ZrO2 film by laser assisted chemical vapor deposition (LCVD) (“FIELD OF THE INVENTION”). Okada discloses a method comprising: providing an excimer laser having a repetition rate between 1 to 100Hz [a type of pulsed laser] ([0011]); and irradiating a heated substrate with the pulsed beam generated from the excimer laser while flowing a β-diketonate of Zr [analogous to raw material gas containing yttrium] and oxygen gas ([0011]). Okada discloses that the use of a pulsed laser to heat the substrate and react precursor gases helps to reduce the amount of carbon mixed into the resultant ZrO2 film and allows for higher deposition speed of the film relative to prior chemical vapor deposition methods without damaging elements on a substrate ([0003], [0011]).
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 Nakahara by providing an excimer laser to irradiate the substrate with a laser light in the form of a pulse wave because Okada teaches the laser light from such a source allows for higher deposition speed and results in films having reduced carbon impurities included.
Regarding claim 9:
Nakahara in view of Waldfried and Okada does not expressly teach that the laser light has an average energy density of 10 to 1000 W/mm2.
However, Okada discloses that the excimer laser light preferably has a per-pulse energy density of 1 to 100mJ/cm2 ([0011]), i.e. 0.1 J/mm2 to 10J/mm2. Furthermore, Okada discloses that the excimer laser light has a repetition rate between 1 to 100 Hz ([0011]). In other words, the excimer emits a pulse 1 to 100 times in a given second. Okada therefore suggests an average power density of at minimum 0.1 W/mm2 (0.1 J/mm2 * 1 1/s [i.e. Hz]) and a maximum of 1000 W/mm2 (10 J/mm2 * 100 Hz), which is an overlapping range. 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) 3, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakahara in view of Waldfried and Okada as applied to claims 1, 2, 9 above, and further in view of Yasutomi et al. JP H07252662 A (hereinafter “Yasutomi”).
Regarding claim 3:
Nakahara also does not expressly teach that the sample stage is cooled with a liquid refrigerant for the temperature control.
In analogous arts, Yasutomi is directed to manufacturing methods for heat-resistant parts that require high-temperature that require high-temperature resistance ([0001]). Yasutomi discloses that their method includes methods of combining laser irradiation with CVD ([0005]), including laser radiation by pulsed lasers ([0011]). The disclosed methods may be practiced in an apparatus having a substrate holder and substrate (original Fig. 1, 3). Yasutomi also discloses that substrates that are being processed by laser CVD should be cooled to prevent heat accumulation from heating by the laser ([0011]). Such cooling can be performed by water cooling or gas cooling [cooling with refrigerants]. It would be readily apparent to one of ordinary skill in the art that objects can be cooled by conduction, convention or radiation; and that cooling through holders would be cooling by conduction.
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 Nakahara in view of Waldfried and Okada by cooling the sample stage with water or a gas [refrigerants] in order to help cool a substrate by conduction and/or convection because Yasutomi teaches that cooling is required to help prevent deleterious effects on a substrate due to heat accumulation beyond a desired operating temperatures, and one of ordinary skill in the art would have been motivated to employ conventional modes of cooling to achieve such an objective.
Regarding claim 5:
Nakahara in view of Waldfried and Okada does not expressly teach that the laser light has an average output of 5 to 2000W in the coating formation step.
Yasutomi discloses that laser light output [average output] can be selected between 10 µW to 100kW ([0031]). The area of the laser can be selected between 0.1 µm2 to 1000 µm2. Furthermore, the laser light output can be selected depending on a desired operating temperature and the area of deposition ([0031]).
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.
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 Nakahara in view of Waldfried and Okada to use a laser light with an average output within the claimed range as a matter of routine experimentation in order to arrive at a desired operating temperature for laser CVD for a given desired area as taught by Yasutomi. 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) 4, 6, 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakahara in view of Waldfried and Okada as applied to claims 1, 2, 9 above, and further in view of Yasutomi and Murayama et al. US 4678536 A (hereinafter “Murayama”).
Regarding claims 4, 6, 7, 8:
As discussed above, Okada suggests a per-pulse average power density of at minimum 0.1 W/mm2 and a maximum of 1000 W/mm2. Yasutomi discloses that area of the laser can be selected between 0.1 µm2 to 1000 µm2 ([0010]). Furthermore, Yasutomi discloses that if the imparted heat (heat capacity) is too large, it becomes difficult to control deposition dimensions due to the influence of heat conduction ([0010]).
Nakahara in view of Waldfried and Okada does not expressly teach the recited characteristics of the laser light: pulse width of 1 to 1000ns, peak power of 100W to 30kW, and a pulse energy of 0.1 to 30mJ.
Murayama is directed to methods of photochemically treating material surfaces by depositing a thin film (Abstract; col 1 lines 5 – 20). Murayama discloses that material is deposited by irradiating a substrate with an exciting light in the presence of material gases (col 3 line 50 – col 4 line 21). It is preferable that the exciting source is a pulsed light source having a repetition period and a pulse width (col 4 lines 25 – 40). Murayama further discloses that the pulse width of should be equal to or greater than the reciprocal of the product of a given gas molecule’s absorption cross section and the number of light quanta emitted from the light source over a given unit area and unit time. Pulse widths greater than such a reciprocal effectively allow for the formation a thin film, including where only an atomic or molecular layer is deposited (col 4 lines 21 – 52).
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 Nakahara in view of Waldfried and Okada by selecting a pulse width within the claimed range as a matter of routine experimentation to obtain desired deposition thicknesses and consequently desired deposition rates [meeting claim 4]. 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.
Regarding the peak power and pulse energy, the Examiner notes that the instant specification defines the pulse energy to correlate to the product of the peak power and the pulse width ([0031] instant specification).
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 Nakahara in view of Waldfried and Okada to have peak power and pulse energy within the claimed amounts as a matter of routine experimentation in order to deposit a given thickness of thin film as suggested by Murayama without inducing excess heating of the substrate as suggested by Yasutomi. Such a tradeoff implies a desired deposition rate as well as such a rate is governed in part by the energy provided by the laser. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717