CTNF 18/836,734 CTNF 73018 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-22 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Yanagawa et al (US 10,861,708 B2) . Yanagawa discloses a method comprising: generating, by a single radio frequency (RF) generator 102 (Fig. 1A, col.5, lines 6-7), a radio frequency (RF) signal 116A (col.7, lines 8-18); and modifying the RF signal to transition among at least three states for a first time period (parameter 208B, as depicted in Fig. 2A; col. 17, lines 14-19). The preamble “for reducing variability between features of a substrate” is a statement of intended use. The method of Yanagawa is capable of providing the cited reduction in variability because it is the same method, and therefore the same results are expected. As to claim 2, Yanagawa discloses that said modifying the RF signal to transition among the at least three states includes transitioning the RF signal in a step-down manner among the at least three states (as depicted in Fig. 2A, PR4 to PR2, to PR0.1, col.18, lines 46-61), wherein said transitioning the RF signal in the step-down manner includes: transitioning the RF signal from a first power level PR4 to a second power level PR2, wherein the first power level is greater than the second power level (col.19, lines 21-23); transitioning the second power level to a third power level PR0.1 of the RF signal, wherein the third power level is less than the second power level (col.19, lines 18-22). As to claim 3, Yanagawa discloses that the RF signal is modified for transitioning the RF signal among the at least three states to etch a dielectric layer of the substrate (col.12, lines 15-28, 34-35; col. 3, lines 41-50). As to claim 4, Yanagawa discloses that the RF signal is modified for transitioning the RF signal among the at least three states to etch a mask layer 502A, 502B and a first portion of a dielectric layer 504A, 504B of the substrate (Fig. 5C, col.44, lines 44-59), wherein the at least at least three states of the RF signal etch a second portion of the dielectric layer (Fig. 5D, col. 44, line 60-col.45, line 16), wherein the second portion is located below the first portion (in order to achieve a high aspect ratio dielectric etch, col.45, lines 34-36). As to claim 5, Yanagawa discloses modifying the RF signal 456B to transition to four states S1, S2, S3, S4, Fig. 4B) for a second time period after the first time period or modifying the RF signal to increase a power level of one of the at least three states (col.46, lines 8-20), wherein the four states of the RF signal etch a third portion of the dielectric layer, wherein the third portion is located below the second portion (in order to achieve the high aspect ratio dielectric etch, Fig. 7D, col. 47, lines 39-41). As to claim 6, Yanagawa discloses that the RF signal is generated to have at least one state to etch a first portion of a dielectric layer of the substrate Fig. 5C, col. 44, lines 50-52), wherein the RF signal is modified for transitioning the RF signal among the at least three states to etch a second portion of the dielectric layer (Fig. 5D, col.44, line 60-col.45, line 16; col.46, lines 1-20), wherein the second portion is located below the first portion (in order to achieve the high aspect ratio dielectric etch, Fig. 7D, col. 47, lines 39-41). As to claim 7, Yanagawa discloses supplying the RF signal to an impedance matching circuit 106 (Fig. 1A, col. 5, lines 13-20), wherein during said supplying the RF signal to the impedance matching circuit, another RF signal is not supplied to the impedance matching circuit (contrast Fig. 1A and Fig. 1B). As to claim 8, Yanagawa discloses that the single RF generator has a single frequency of operation, wherein the single frequency is a fundamental frequency of 60 megahertz (col.6, line 44). As to claim 9, Yanagawa discloses that the at least three states includes at most four states (Fig. 4B, S1, S2, S3, S4, signal 456B, col.40, lines 32-47). As to claims 10-16, see the rejection of corresponding claims 1-9. Further, Yanagawa discloses a processor DSPS (Fig. 1A, col. 5, lines 27-28) configured to control a single radio frequency generator 102 (Fig. 1A) to generate an RF signal 116 A (col.7, lines 11-23), wherein the processor is configured to further control the RF generator to transition the RF signal to among at least three states for a first time period (col. 7, lines 11-45); and a memory device coupled to the processor (“Host Computer” Fig. 1A, col. 7, lines 2-10). As to claims 19-22, see the corresponding rejection of claims 1-2, 5, 8-9. Further Yanagawa discloses that the plasma system (Fig. 1A, col. 5, lines 4-26) comprises: a single radio frequency (RF) generator 102 (col.5, lines 6-7) configured to generate an RF signal 116A; a match 106 coupled to the single RF generator (col. 5, lines 9-11); a plasma chamber 110 coupled to the match (col. 5, lines 20-21); and a controller (“DSPS”) coupled to the single RF generator (col. 5, lines 27-30), wherein the controller is configured to: control the single RF generator to generate the RF signal (col.7, lines 11-23),; and control the single RF generator to transition the RF signal among at least three states for a first time period (col. 7, lines 11-45) . 07-15 AIA Claim s 1-22 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Yanagawa et al (US 10,504,744 B1) . Yanagawa ’744 is the parent application of Yanagawa ’708, and thus the rejection of Yanagawa ’708 applies here and is repeated here. Similar to the rejection of Yanagawa ’708, Yanagawa ’744 discloses the cited chamber, processor, matching circuit, and states S1-S4 by signal 116A (Fig. 1A, Fig. 2A, Fig. 4B, Fig. 5C-5E, Fig. 7D, and accompanying text) . Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 10,861,708 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because fully encompassed by those of the ’708 patent . 08-34 AIA Claim s 19-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-12 of U.S. Patent No. 10,504,744 B1 . Although the claims at issue are not identical, they are not patentably distinct from each other because fully encompassed by those of the ’744 patent. Further as to claim 22, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide 60 megahertz and to include a fourth state as cited because such is a standard frequency and a fourth level enables optimizing the power levels for the particular substrate being manufactured and desired results of etch depth or deposition . 08-28 AIA 08-28-fti 08-28-aia Claim s 1-22 are directed to an invention not patentably distinct from claim s of commonly assigned 10,504,744 and 10,861,708 . Specifically, the rejections above . The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 10,504,744 and 10,861,708, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement. A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm. 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, Joshua Allen can be reached at 571-270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ANITA K ALANKO/Primary Examiner, Art Unit 1713 Application/Control Number: 18/836,734 Page 2 Art Unit: 1713 Application/Control Number: 18/836,734 Page 3 Art Unit: 1713 Application/Control Number: 18/836,734 Page 4 Art Unit: 1713 Application/Control Number: 18/836,734 Page 5 Art Unit: 1713 Application/Control Number: 18/836,734 Page 6 Art Unit: 1713 Application/Control Number: 18/836,734 Page 7 Art Unit: 1713 Application/Control Number: 18/836,734 Page 8 Art Unit: 1713 Application/Control Number: 18/836,734 Page 9 Art Unit: 1713
Prosecution Insights