DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 20, 2026.
Applicant's election with traverse of Group I in the reply filed on July 20, 2026 is acknowledged. The traversal is on the ground(s) that there is no serious search burden and the product can not be made as noted by the examiner in the Requirement for Restriction of May 20, 2026. This is not found persuasive because 1) a serious search burden exists where two different classifications are presented for the groups (shown in the Requirement for Restriction) and 2) the prior art applied below (Park) teaches production of the film by at a pressure of the process chamber 230 may be in the range from about 1 Pascal to about 800 Pascals (NOT the vacuum of Group II.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-13 are pending, claim 1 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “The present invention relates to “ is language that can be implied.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1,2, 4, 6-9 and 11-17 of copending Application No. 19201450 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claim 1 and claim 1 of ‘450, both recite a yttrium-based protective film having a peak intensity ration of Y5O4F7 in an X-ray diffraction pattern that overlaps, a porosity < 1.5 volume% and an overlapping Vickers hardness values. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding instant claim 2 and claim 2 of ‘450, both recite an overlapping content of fluorine (35-55 atom% in ‘450 and 35-60 atom% in instant claim). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding instant claim 3 and claim 4of ‘450, both recite an overlapping crystallite size (5-30nm in ‘450 and ≤30nm in instant claim). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding instant claim 4 and claim 6 of ‘450, both recite the same thickness of 0.3 micron or more. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding instant claim 5 and claim 7 of ‘450, both recite having a having width of a rocking curve of a (151) plane of Y5O4F7 of 40⁰ or less. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding instant claim 6 and claim 8 of ‘450, both recite a member comprising a substrate and the yttrium based protective film on the substrate. ‘450 does not specifically teach “a film formation surface that is a surface of the substrate”; however, where a film is formed on a substrate as in ‘450 there is necessarily a “film formation surface that is a surface of the substrate.
Regarding instant claim 7 and claims 11 and 12 of ‘450, both applications recite a member wherein the substrate comprises at least one of ceramics and metal, wherein the ceramics is at least one of glass, quartz, aluminum oxide, aluminum nitride and aluminum oxynitride, and the metal is at least one of aluminum and an aluminum alloy.
Regarding instant claim 8 and claim 9 of ‘450, both recite a film formation surface of the substrate has an overlapping Ra (‘450 of 0.01-1.2 micron and instant claim ≤0.6 micron). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding instant claim 9 and claim 13 of ‘450, both recite a film formation surface with a maximum length of 30 mm or more. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding instant claim 10 and claims 14 of ‘450, both applications recite further comprising at least one base layer between the substrate and the yttrium-based protective film, wherein the base layer comprise at least one oxide from overlapping lists.
Regarding instant claim 11 and claim 15 of ‘450, both applications recite further comprising two or more of the base layers between the substrate and the yttrium-based protective film, wherein the oxides in the adjacent base layers are different from each other.
Regarding instant claim 12 and claim 16 of ‘450, both recite wherein the substrate comprises, as the film formation surface, a first film formation surface defining the maximum length and a second film formation surface different from the first film formation surface, an angle formed by the first film formation surface and the second film formation surface is 20-120⁰, and a proportion of an area of the second film formation surface to a total area of the film formation surfaces is ≤60%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding instant claim 13 and claim 17 of ‘450, both applications recite which is used in a plasma etching apparatus or a plasma CVD apparatus.
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.
Claim(s) 1, 2, 5, 6-9, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US20200095687A1), hereinafter Park.
Regarding claims 1 and 6, Park teaches a yttrium oxide fluoride (YOF) coating film formed on a substrate ([0009]; a film formation surface) (this forms a member), where the YOF coating film has a hardness of 6-12 GPa, a porosity of 0.01-1% ([0016]), the Y:O:F ratio is 5:4:7 (Y5O4F7) ([0017]), the XRD of Y5O4F7 film is shown in the top section of Fig. 10A ([0082]-[0085]), examiner considers the YOF Orthorombic (5:4:7) in the bottom row of Fig. 10A to be a standard for this YOF molecular structure, and the peak of YOF in the top row (film) is~80% of the YOF in the bottom row (standard) (shown in Fig. 10A). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 2, Park teaches each limitation of claim 1, as discussed above, and further teaches a content of fluorine in Y5O4F7 film is 39.67 atomic % ([0085]; Fig. 10C). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 4, Park teaches each limitation of claim 1, as discussed above, and further teaches YOF coating film has a thickness of 0.5-20 micron (claim 5). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 7, Park teaches each limitation of claims 1 and 6, as discussed above, and further teaches the substrate may be a transparent window that may be a glass substrate or a quartz substrate ([0019]-[0020]).
Regarding claim 8, Park teaches each limitation of claims 1 and 6, as discussed above, and further shows a surface roughness of ~0.2 micron or less for a YOF 5:4:7 film on the substrate film formation surface (Fig. 13A), Fig. 13 A shows YOF coating films formed on the substrate ([0094]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claims 9 and 13, Park teaches each limitation of claims 1 and 6, as discussed above, and further teaches the substrate on which the YOF coating film is located may be component exposed to a plasma environment, including a boat for CVD (plasma CVD apparatus) ([0101]-[0102]). One of ordinary skill in the art reasonably understands a boat for CVD includes a surface (film formation surface) with a maximum length of 30 mm or more. Examiner notes “maximum length” means the maximum length that the film formation surface has” as defined by applicant ([0047])
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 12, Park teaches each limitation of claims 1 and 6, as discussed above, and further teaches a yttrium oxide fluoride (YOF) coating film formed on a substrate ([0009]; a film formation surface) and the substrate on which the YOF coating film is located may be component exposed to a plasma environment, including a wall liner (generally understood to be rectangular) ([0101]-[0102]). Examiner notes “maximum length” means the maximum length that the film formation surface has” as defined by applicant ([0047]), therefore “the maximum length” is inherent to the substrate and has antecedent basis. Further, the first film formation surface necessarily has this maximum length.
Under broadest reasonable interpretation the first film formation surface could be some amount of the film formation surface surrounding the maximum length of the film formation surface and the second film formation could be the rest of the film formation surface on the same plane. These first and second film surfaces could be set to have the claimed angle and area proportion of claim 12. For example below the rectangle stands for whole wall liner
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Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Yumoto et al. (JP 2019147995 A, herein referring to Google Patents August 07, 2026 machine translation), hereinafter Yumoto (original of record, translation provided herewith).
Regarding claim 3, Park teaches each limitation of claim 1 as discussed above, but does not specifically teach crystalline size of 30 nm or less. Yumoto is in a similar field of endeavor of a member with a film of Y5O4F7 (claim 1), for improved plasma corrosion resistance (Abstract) and Yumoto teaches film is made of a crystal having an average crystal diameter of 2-30 nm (claim 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Park with the crystal size of Yumoto. The motivation for doing so would have been to improve plasma corrosion resistance (Pg. 3 [1]), and thereby improve the protective film of Park that is intended to have a high resistance against plasma and thereby obtain an operational advantage and extended service life (Park [0004]).
Claim(s)10 and 11 are is rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Hamaya et al. (JP 2019019413 AA, herein referring to Google Patents August 07, 2026 machine translation), hereinafter Hamaya (original of record, translation provided herewith).
Regarding claim 10, Park teaches each limitation of claims 1 and 6, as discussed above. Park does not teach further comprising at least one base layer between the substrate and the yttrium-based protective film, wherein the base layer comprises at least one kind of oxide form the group consisting of Al2O3, SiO2, Y2O3, MgO, ZrO2, La2O33, Nd2O3, Yb2O3, Eu2O3 and Gd2O3.
Hamaya is in the related field of endeavor of a Y5O4F7 coating on a substrate having excellent corrosion resistance to a plasma atmosphere (Abstract). Hamaya teaches a lower (base) layer rare earth oxide of Y or Gd with an outermost surface layer of yttrium fluoride including Y5O4F7 all on a substrate([1]; [4], [10], [11]). One of ordinary skill in the art reasonably understands “an oxide of Y” is Y2O3, and one of Gd is Gd2O3 absent a teaching to a contrary (most stable and common oxides of these elements).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Park with the lower (base) layer of Hamaya. The motivation for doing so would have improve more reliable corrosion resistance and prevent damage to the film (Pg. 3 [2]) and thereby improve the protective film of Park that is intended to have a high resistance against plasma and thereby obtain an operational advantage and extended service life (Park [0004]).
Regarding claim 11, Park in view of Hamaya teaches each limitation of claims 1, 6 and 10, as discussed above. Park does not teach further further comprising two or more of the base layers between the substrate and the yttrium-based protective film, wherein the oxides in the adjacent base layers are different from each other.
Hamaya is in the related field of endeavor of a Y5O4F7 coating on a substrate having excellent corrosion resistance to a plasma atmosphere (Abstract). Hamaya teaches a lower (base) layer rare earth oxide of Y or Gd with an outermost surface layer of yttrium fluoride including Y5O4F7 all on a substrate([1]; [4], [10], [11]) and a plurality of lower layers comprising a rare earth oxide sprayed coating (claim 9). One of ordinary skill in the art reasonably understands an oxide of Y at minimum is inclusive of Y2O3, and one of Gd is inclusive of Gd2O3 absent a teaching to a contrary. Hamaya allows for different oxides to be lower layers, and therefore the oxides in adjacent base layers can be different.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Park with the lower (base) layers of Hamaya. The motivation for doing so would have improve more reliable corrosion resistance and prevent damage to the film (Pg. 3 [2]) and thereby improve the protective film of Park that is intended to have a high resistance against plasma and thereby obtain an operational advantage and extended service life (Park [0004]).
Allowable Subject Matter
Claim 3 would be allowable if rewritten to overcome the rejection under double patenting rejections, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art to the instant claims is Park, as discussed in the above claim rejections. Park does not teach or suggest, alone or in combination with prior art, a half width of a rocking curve of a (151) plane of Y5O4F7 is ≤40⁰. Further, Park does not teach a process that is substantially identical to that of applicant. It is noted that the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic (MPEP 2112 (IV)). As Park has no teaching of the processing of applicant it can not be concluded that the claimed property is inherently met. Thus, the claim would be allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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