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 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.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: how a “raw material gas processing space” relates to the invention. It is noted that there is no prior mention of a “raw material” in the claims prior to claim 15. As such, it is not apparent what a “raw material gas” is or how it relates to the other gases being provided in claim 1. Are these the raw material gases or is it another gas? If claim 15 had the content of claim 14 so as to clarify what the raw material gas source provides or where the gas goes in relation to all other parts of the invention, then there would not be a gap in elements so that the “raw material gas” and its processing space could be understood as it relates to the remainder of the method steps. However, otherwise it is unclear how the raw material gas relates to the other gases provided, if at all.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ishizaka et al. (USPGPub 2017/0092489) in view of Lakshmanan et al. (USPGPub 2015/0357650) .
Regarding claims 1, 9 and 11, Ishizaka teaches that it is known to form a titanium oxynitride film (abstract) by supplying a titanium gas along with ammonia gas (a shape control gas) and oxygen gas (Fig. 2). Ishizaka fails to teach providing the oxygen and ammonia gas simultaneously. However, Lakshmanan teaches that it is known that when using a titanium precursor gas, ammonia and oxygen to form a titanium oxynitride gas, it is known to provide the ammonia and oxygen simultaneously or in an alternating manner [0033]. Therefore, it would have been considered “obvious to try” for one of ordinary skill in the art before the effective filing date of the claimed invention to provide the titanium oxynitride of Ishizaka using both the ammonia and oxygen simultaneously or separately wherein both possibilities are described in detail by Lakshmanan and both a predictable according to Lakshmanan and therefore both would be expected to provide a reasonable expectation of success.
Regarding claims 2, 10 and 12, Ishizaka teaches wherein the amount of ammonia gas supplied as a maximum for example using the supply rates and times is smaller than the amount of oxygen gas using the same [0187-0194].
Regarding claim 3 and 6, the teachings of Ishizaka are as shown above. Ishizaka fails to teach wherein the substrate onto which the TiON coating is provided has a plurality of recesses and projections. However, this reads upon a mere change in shape of the substrate of Ishizaka wherein the Court has long held that a mere change in shape of a prior art product in the absence of a new and unexpected result arising from the provision of a newly modified shape is incapable of overcoming a prima facie case of obviousness based upon the prior art shape. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claims 4-5, as cited above [0187-0194], Ishizaka further teaches ratios that may be calculated between the flow rates and times provided that read upon the claimed ratios of oxidizing gas to shape control gas.
Regarding claims 7-8, as cited above [0187-0194], Ishizaka further teaches ratios that may be calculated between the flow rates and times provided that read upon the claimed ratios of oxidizing gas to shape control gas.
Claims 15 are rejected under 35 U.S.C. 103 as being unpatentable over Ishizaka et al. (USPGPub 2017/0092489) in view of Lakshmanan et al. (USPGPub 2015/0357650) as applied to claims 1-12 above and further in view of Kato et al. (USPGPub 2010/0055351).
Regarding claim 15, the teachings of Ishizaka in view of Lakshmanan are as shown above. Ishizaka in view of Lakshmanan fails to teach wherein a separating gas is employed to create a pressure barrier between two spaces with in the reaction chamber. However, Kato teaches that it is known to provide a successive gas coating process such as that of Ishizaka in view of Lakshmanan with a turntable style coating mechanism and a separating gas between areas of the turntable so as to prevent overlap of process gases between processing steps [0010-0013], presumably providing efficiency to the coating process. Therefore, it would have been considered obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide the turntable and separating gas mechanisms of Kato to the invention of Ishizaka in view of Lakshmanan as an application of a known method to improve similar step-wise gas coating processes in the same way wherein the results of such modification would have been predictable based upon the similarity of the coating operations of Kato and Ishizaka.
Response to Arguments
The applicants argues that Ishizaka fails to teach providing the oxygen and ammonia simultaneously. However, a secondary reference (Lakshmanan) was provided to address this deficiency.
Further the applicant argues that it would not be obvious to combine the ammonia and oxygen of Ishizaka because it would be contrary to the goals of Ishizaka and the applicant cites [0010-0011] in order to support this assertion. However, the proposed solution provided by Ishizaka is not that proposed by the applicant. Ishizaka states that providing oxygen “in the initial stage of the film formation causes poor smoothness properties in the coating [0008]. Therefore Ishizaka provides a scenario wherein multiple passes of TICl4 and NH3 are provided before any oxygen is present and it is stated that the dangling bonds are the location wherein oxygen will bond to the structure when provided in the “initial stage” of formation. For this reason, the provision of oxygen is delayed in the process of Ishizaka
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However, it is noted that after the start of providing oxidizing agents, the process is repeated a plurality of times. There is nothing provided in Ishizaka that teaches away from providing the oxygen in conjunction with ammonia at the point at which it begins to be provided in Ishizaka although it can be argued that Ishizaka teaches against using it is what are described as the “initial stages”. Further as provided above Lakshmanan clearly shows that the two gases may be supplied at the same time or separately for creating the same product. Additionally, there would be obvious advantages in time saving wherein steps are completely done away with by combining gases according to Lakshmanan. Therefore the examiner believes that there is no teaching away in Ishizaka and there is known obviousness and benefit to the modifications provided by Lakshmanan and therefore a rejection is proper.
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 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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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