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 .
Status of the Claims/Amendments
This Office Action Correspondence is in response to Applicant’s amendments filed 24 March 2026.
Claims 1, 3, 4, 6-11 are pending. Claims 1, 3, 10 are amended. Claims 2 and 5 are canceled. Claims 10-11 are withdrawn.
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 1, 2, 3 rejections 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paragraph, as failing to comply with the written description requirement discussed in the non-final rejection of is/are withdrawn in light of amendments to the claims filed 24 March 2026.
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 1, 2, 3 rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, discussed in the non-final rejection of is/are withdrawn in light of amendments to the claims filed 24 March 2026.
Claim Interpretation
Regarding claim 1 limitation “gas supply unit comprising a flow rate regulator and a plurality of gas inlets, wherein the gas supply unit supplies a raw material gas containing C, H, and O into the vacuum container” is interpreted to mean that the gas supply unit comprises a structure capable of introducing/supplying a gas, regulating a flow rate of a gas, and a plurality of gas inlets. As currently claimed, the claim does not require a gas source containing the raw material gas containing C, H, O.
Regarding claim 1 limitation “the flow rate regulator is configured to regulate a flow rate of the raw material gas such that a ratio of a concentration of O atoms to a total concentration of O atoms and H atoms is 10 at% or more and 60 at% or less” is interpreted at a flow rate regulator capable of regulating a flow rate of the raw materials such that a ratio of a concentration of O atoms to a total concentration of O atoms and H atoms is 10 at% or more and 60 at% or less. The limitation as currently claimed, does not require a controller programmed/configured to control the flow rate regulator to regulate a flow rate of the raw material gas such that a ratio of a concentration of O atoms to a total concentration of O atoms and H atoms is 10 at% or more and 60 at% or less.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 3, 4, 6, 8, 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ando et al. (US 2019/0373710 A1 hereinafter “Ando”) and further substantiated by Burrows et al. (US 2014/0262751 A1 hereinafter “Burrows”).
Regarding independent claim 1, preamble limitation “film forming device” is/are intended use limitations are do not receive patentable weight. However, those limitations are mapped to the prior art for the purpose of compact prosecution.
Regarding independent claim 1, Ando teaches a film forming device (comprising plasma treatment device 100, Fig. 1, para. [0077]) comprising:
a vacuum container (comprising 2, Fig. 1, para. [0079]) in which a substrate (comprising W, Fig. 1, para. [0081]) is disposed;
an antenna (comprising antenna 3, Fig. 1, para. [0079]) that generates an inductively coupled plasma (para. [0079]) in the vacuum container (comprising 2, Fig. 1) and comprises a conductor element (comprising metal pipe 31 or 31A, Fig. 1 and 16, para. [0086], [0089]) and a capacitor element (comprising capacitance element 33, Fig. 2 and 16, para. [0089]-[0089]) electrically connected in series with each other (para. [0089]), wherein the conductor element (comprising 31 or 31A, Fig. 1 and 16) comprises a plurality of metal pipes made of metal having a tubular shape (para. [0089]), wherein the antenna further comprises an insulating pipe (comprising tubular insulation element/insulation pipe 32, Fig. 1 and 16) in a tubular shape provided between the metal pipes (comprising 31, Fig. 1) adjacent to each other (para. [0089]); and wherein the capacitor element (comprising 33, Fig. 1 and 16) is provided between the metal pipes (comprising 31, Fig. 1 and 16) adjacent to each other and is electrically connected thereto in series (para. [0089]-[0090]);
a high-frequency power supply (comprising high-frequency power source 4, Fig. 1, para. [0079]) that supplies a high-frequency current to the antenna (para. [0079]); and
a gas supply unit comprising a flow regulator (comprising flow regulator not shown, Fig. 1, para. [0081]) and a plurality of gas inlets (comprising plurality of gas introduction ports 21, Fig. 1, para. [0081]) that supplies a gas into the vacuum container (comprising 2, Fig. 1),
wherein a thin film is formed on the substrate (comprising W, Fig. 1) in the vacuum container (comprising 2, Fig. 1) according to a plasma CVD method (para. [0077]) using the inductively coupled plasma (para. [0079]) that is generated in the vacuum container (comprising 2, Fig. 1) by passing the high-frequency current through the antenna (comprising 3, Fig. 1) (para. [0077]-[0079]).
Furthermore, regarding limitation "wherein the flow rate regulator is configured to regulate a flow rate of the raw material gas such that a ratio of a concentration of O atoms to a total concentration of O atoms and H atoms is 10 at% or more and 60 at% or less" is an intended use limitation dependent on the type of gas supplied and the intended film formed on the substrate.
However, Burrows substantiates that flow regulators are known structures to one of ordinary skill in the art which are capable of/ configured to adjust/regulate a flow rate of each gas introduced into a vacuum container/process chamber (para. [0043]).
Thus, the flow regulator of Ando (para. [0081]) would be considered capable of/configured to regulate a flow rate of each gas supplied to the vacuum container.
Ando further teaches the gas 7 may be any gas as long as it corresponds to the content of the treatment performed on the substrate W (para. [0081]).
Since Ando teaches all of the structural limitations as applied above, including a gas supply unit comprising a plurality of gas inlets and a flow rate regulator capable of adjusting flow rate of gases and since Ando teaches any gas can be used in the device, the apparatus of the same is considered capable of meeting the above-mentioned intended use limitations.
Regarding limitation “to form a carbon-based thin film” is an intended use limitation. Since Ando teaches all of the structural limitations of claim(s) as discussed above, the apparatus of the same is considered capable of meeting the intended use limitations.
Regarding limitation “wherein in an emission spectrum of the inductively coupled plasma, a ratio of luminous intensity of C2 radicals to a luminous intensity of Hα radicals is 30% or more and 300% or less,” is an intended us limitation that depends on the intended plasma processing performed in the film forming device. Since Ando teaches all of the structural limitations, the apparatus of the same is considered capable of meeting the intended use limitations.
Furthermore, the courts have ruled the following: a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II.
Regarding claim 3, Ando teaches all of the limitations of claim(s) 1 as applied above.
Regarding limitation “wherein the gas supply unit supplies a catalyst gas together with the raw material gas into the vacuum container, and a ratio of a flow rate of the catalyst gas to a total flow rate of all gases supplied into the vacuum container is set to 50% or more and 90% or less,” Examiner interprets “catalyst gas” in light of claim 4 and instant specification para. [0029] as comprising rare gases including Ar, He, and Ne.
Additionally, the above discussed limitation is an intended use limitation. The claim does not require a gas source containing a catalyst gas.
Since Ando teaches all of the structural limitations including a flow regulator (Ando: para. [0081]) and the gas supplied can be any gas as long as it corresponds to the content of the treatment performed on the substrate (Ando: para. [0081]), the apparatus of the same would be considered capable of meeting this limitation.
Furthermore, the courts have ruled the following: a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II.
Regarding claim 4, Ando teaches all of the limitations of claim(s) 1, 3 as applied above. Limitation “wherein the catalyst gas is an Ar gas” is an intended use limitation. Examiner explains that as currently amended, claims 1 and 3 do not require a gas source containing Ar. Additionally, since Ando teaches that the gas 7 may be any gas as long as it corresponds to the content of the treatment performed on the substrate W (para. [0081]), the apparatus of the same is considered capable of meeting the above discussed intended use limitation.
Regarding claim 6, Ando teaches all of the limitations of claim(s) 1 as applied above.
Regarding claim 6 limitation “wherein a pressure in the vacuum container during film formation is 7 Pa or more and 100 Pa or less,” this is an intended use limitation. Since Ando in teaches all of the structural limitations including a vacuum container (Ando: comprising 2, Fig. 1, para. [0080]) and further teaches an evacuation device/pump (Ando: comprising 6, Fig. 1, para. [0080]), the apparatus of the same is considered capable of meeting the intended use limitation.
Furthermore, the courts have ruled the following: a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II.
Regarding claim 8, Ando teaches all of the limitations of claim(s) 1 as applied above.
Limitation “wherein the carbon-based thin film is a diamond film” is an intended use limitation and does not receive patentable weight. Furthermore, the courts have ruled the following: a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II
Regarding claim 9, Ando teaches all of the limitations of claim(s) 1, 8 as applied above. Regarding claim limitation “wherein in a Raman spectroscopic analysis with 325 nm excitation, a peak intensity of diamond of the diamond film in the vicinity of 1333 cm -1 is more than 20% of a peak intensity of a G band in the vicinity of 1550 cm-1” relates to the analysis results of a film intended to be deposited on the substrate/article worked upon and not related to the apparatus. Thus, claim 9 limitations does not receive patentable weight. Additionally, or alternatively, since Ando teaches all of the structural limitations of claim(s) 1, 8 as applied above the apparatus of the same is considered capable of meeting the intended use limitations.
Furthermore, the courts have ruled the following: a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II
Further, the courts have ruled the following: "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ando et al. (US 2019/0373710 A1 hereinafter “Ando”) and further substantiated by Burrows et al. (US 2014/0262751 A1 hereinafter “Burrows”) as applied above in claims 1, 3, 4, 6, 8, 9 and further in view of Ando (previously cited in non-final rejection WO2020188809A1 hereinafter “Ando ‘809” and referring to English Machine Translation).
Regarding claim 7, Ando teaches all of the limitations of claim(s) 1 as applied above. Ando further teaches wherein the antenna (comprising 3, Fig. 1) is linear/straight-line in shape (para. [0079]).
Ando as applied above does not explicitly teach the length of the antenna being 20 cm or more.
However, Ando ‘809 teaches a film forming device (100, Fig. 2) including a straight-line shaped antenna (comprising 3, Fig. 2 and 4, para. [0028]), wherein the antenna has a length of several tens of centimeters or more (para. [0028]). Ando ‘809 teaches that such a length of an antenna is a suitable length for efficiently generating inductive coupled plasma (para.[0028]- [0030]). Examiner notes that taught range of several tens of centimeters or more and claimed range of “20 cm or more” overlap.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to size the length of the antenna to be several tens of centimeters or more because Ando ‘809 teaches that such a length of an antenna is suitable for efficiently generating inductively coupled plasma in a film forming device (Ando ‘809: para. [0028]-[0030]).
Furthermore, the courts have held that 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, 191 USPQ 90 (CCPA 1976)(See MPEP § 2144.05(I).
Response to Arguments
Applicant's arguments filed 24 March 2026 have been fully considered but they are not persuasive as further discussed below.
Applicant argues (remarks upper page 8) regarding U.S.C. 103 rejection of independent claim 1, prior art fails to teach or suggest the synergistic hardware-chemical coupling essential for large-area diamond growth in an RF-ICP environment of the subject matter in amended claim 1.
Examiner responds that Ando does teach “wherein the conductor element comprises a plurality of metal pipes made of metal having a tubular shape, wherein the antenna further comprises an insulating pipe in a tubular shape provided between the metal pipes adjacent to each other; and wherein the capacitor element is provided between the metal pipes adjacent to each other and is electrically connected thereto in series” (see Ando: para. [0089]-[0090]) and a gas supply unit comprising a flow rate regulator and a plurality of gas inlets, as discussed in detail in claims rejections above. Examiner further notes that “large-area diamond growth” is not commensurate with the claims.
Applicant argues (remarks page middle page 8) regarding U.S.C. 103 rejection of independent claim 1, the rejection relies on hindsight and fails to recognize that the O/(O+H) ratio of 10-60% at % is a criticality discovered specifically for the claimed LC antenna. The present invention requires the specific tubular segmented LC antenna structure, comprising alternating metal pipes and insulating pipes with series-connected capacitors, to generate the precise electromagnetic field distribution necessary to active the raw material gas within this narrow 10-60 at% window.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Furthermore, independent claim 1 rejection has been modified as necessitated by Applicant’s amendments to the claims. Claim 1 is rejected under U.S.C. 102(a)1 as being anticipated by Ando. Examiner explains that applicant’s amended claim limitation “gas supply unit comprising a flow regulator and a plurality of gas inlets, wherein the gas supply unit supplies a raw material gas containing C, H, and O into the vacuum container” as currently claimed does not require a gas source containing, as explained in Claim Interpretation section above. Additionally, limitation “wherein the flow rate regulator is configured to regulate a flow rate of the raw material gas such that a ratio of a concentration of O atoms to a total concentration of O atoms and H atoms is 10 at% or more and 60 at% or less,” as currently claimed is an intended use limitation see discussion in Claim Interpretation section above. Since Ando teaches all of the structural limitations including a flow regulator configured to control flow rates, the apparatus of the same is considered capable of meeting the above-mentioned intended use limitations. Furthermore, Ando does teach the claimed antenna structure comprising the tubular shaped insulating pipe, metal pipes, and capacitor element as explained in detail in claims rejections above.
Applicant argues (remarks bottom page 8 to upper page 9) regarding U.S.C. 103 rejection of independent claim 1, Sahmuganathan is directed to microwave plasma systems, which operate at fundamentally different energy densities and physical principles compared to the RF-ICP system of the present invention and a person having ordinary skill in the art would have no reasonable expectation of success in applying gas chemistry optimized for a microwave environment to an RF system as the different excitation mechanisms would likely result in graphite or DLC instead of crystalline diamond.
Examiner responds claim 1 rejection has been modified as necessitated by Applicant’s amendments to the claims. Sahmuganathan is not cited in the current rejections. Therefore, Applicant’s arguments directed toward Sahmuganathan are moot. Furthermore, Examiner notes that Sahmuganathan does teach an embodiment including an inductively coupled plasma source (para. [0030]).
Applicant argues (remarks page 9) regarding U.S.C. 103 rejection of independent claim 1, the claimed spectral C2/Hα ratio (30-300%) represents a substantive physical limitation on the devices configuration in combination with the segmented tubular mechanical structure, amended claim 1 provides a unique technical solution that is neither taught nor suggested by Ando or the other references.
Examiner responds that “wherein in an emission spectrum of the inductively coupled plasma, a ratio of luminous intensity of C2 radicals to a luminous intensity of Hα radicals is 30% or more and 300% or less,” is an intended us limitation that depends on the intended plasma processing performed in the film forming device. In response to applicant's argument that the prior art fails to teach the claimed spectral C2/Hα ratio (30-300%), a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Examiner further explains that the segmented tubular mechanical structure of the antenna as required by claim 1 is already taught by Ando. Since Ando teaches all of the structural limitations, the apparatus of the same is considered capable of meeting the intended use limitations. Furthermore, the courts have ruled the following: a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP §2114. II.
Applicant argues (remarks page 9) regarding U.S.C. 103 rejection of claim 7, Ando '809 fails to remedy the deficiencies concerning the specific hardware structure of the gas supply unit and the critical plasma spectral intensity ratios.
Examiner responds Ando ‘809 is not cited to teach the limitations of claim 1.
In light of the above, independent claim 1 is rejected. Additionally, in view of Examiner’s remarks regarding independent claims 1, the dependent claims 3, 4, 6-9 are also rejected, as detailed above.
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 LAUREEN CHAN whose telephone number is (571)270-3778. The examiner can normally be reached Monday-Friday 8:30AM-5:30PM EST.
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, PARVIZ HASSANZADEH can be reached at (571)272-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREEN CHAN/Examiner, Art Unit 1716 /RAM N KACKAR/Primary Examiner, Art Unit 1716
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