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 .
Claim Interpretation
In view of the fact that 1) the claims are recited using open transitional phrases and 2) even a fluorinated yttrium oxide layer can contain certain amounts of yttrium oxide (see ¶ 0017 of the specification), a layer of a particular ceramic material (e.g. “yttrium fluoride layer” and “zirconium oxide layer”) is not considered to mean a layer of exclusively said ceramic material (and optionally unavoidable impurities).
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 10 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 claim(s) 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.
The support for 80 at% or more YOF is found only in context of total of YF3, YOF, and Y2O3, and this is made only in context of surface fluorination of a Y2O3 coating. (See Spec ¶¶ 0045-0049). Nothing here suggests that ZrO2 is part of the denominator. Nowhere does the specification contemplate 80 at% or more YOF when ZrO2 is part of the denominator. While it is not contested that each element recited in the claim is indeed in the specification, that alone is not sufficient for original written description support, for the elements are drawn to separate and disparate embodiments in the specification. As such, following the rationale from Hyatt v. Dudas (492 F.3d 1365,1370), even though support for individual elements may be found in the specification, there is no support for the combination of elements, and it is this lack of support for the combination of elements that renders the limitation in question non-compliant with the written description requirement.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1-6 and 9; and claim 11 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2019/0382880 A1 (“He”).
Considering claims 1 and 3-6 and claim 11, He discloses semiconductor processing components coated with a rare earth silicate coating and a rare earth oxide coating, wherein the semiconductor processing component can be susceptors, showerheads, nozzles, and rings. (He abs. ¶¶ 0032-0038, 0047-0049, and 0063). He is analogous, as it is from the same field of endeavor as that of the instant application (susceptor having a coating containing YF3). In particular, He discloses that its coating can comprise an alternation of respective layers of Y2O3, SiO2, and ZrO2, wherein each layer has a thickness of less than a single atomic layer to a few atomic layers, and wherein each layer is deposited via ALD. (Id. ¶¶ 0077-0079). It is noted that the Instant Application deems thickness of less than a single atomic layer to be not distinct. (Spec. ¶ 0025). It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05). Furthermore, given that the Instant Application gave only an example of an indistinct layer but did not provide a definition, and as He in general discloses very thin layers, He is alternatively considered to have taught thickness needed to be indistinct with sufficient specificity (due to relatively large overlap between what is disclosed and what is required).
He further discloses that its coating may have its surface be subjected to a fluorination treatment at elevated temperatures as to form a surface portion of YOF or YF3. (He ¶¶ 0032 and 0038). He further discloses that in the fluorination treatment, oxygen is replaced with fluorine. (Id. ¶ 0037). With the original Y2O3 layers being indistinct due to low thickness, the converted YOF or YF3 coating also remains indistinct due to low thickness.
He anticipates or renders obvious claims 1 and 3-6 and claim 11.
Considering claim 2, with both YOF and YF3 disclosed in He, having a mixture of the two would be obvious, especially in view of the diffusive nature of the surface fluorination process.
Considering claim 9, as the fluorination occurs at the outermost surface, the coating of He reads on claim 9.
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.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as unpatentable over He, as applied to claim 1 above.
Considering claims 7 and 8, the overall thickness of the coating is 3 nm to 20 µm. (Id. ¶ 0082). It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness.
Response to Arguments and Additional Comments
In view of amendments to the claims the various prior art rejections over Wu have been withdrawn.
Limitation having the effect of further requiring a significantly thick bottom portion of the coating to contain only layers of ZrO2 alternating with layers of Y2O3 would overcome the rejection over He.
Concluding Remarks
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached on M-F 10:30 - 7:30 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, Frank Vineis can be reached on (571)270-1547. 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 https://ppair-my.uspto.gov/pair/PrivatePair. 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 USA OR CANADA) or 571-272-1000.
/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights