DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of the method claims 1-13, 26-29 in the reply filed on 7/9/26 is acknowledged.
Claim Rejections - 35 USC § 102
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 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, 28, 29 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Toda et al. (US 2015/0380268A1).
With respect to claims 1, 28, 29, Toda describes an etching method comprising: providing a wafer in a reaction chamber, the wafer comprising a silicon oxide film to be etched or target material that is to be partially or wholly etched; providing a gas mixture comprising F2 (a halogen source), an alcohol gas such as butanol (organic solvent) or water vapor, an inert gas (a carrier gas), and HF gas (an additive comprising a hydrogen fluoride complex forming chemical) (para 6, 7, 39) or claimed the gas mixture is a vapor phase; providing a high temperature including 100-300 degrees C or 150-250 degrees C to etch the silicon oxide without exposing the wafer to a plasma (para 47-51, 61).
Claim(s) 1, 3-13, 26-28 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Li et al. (5783495).
With respect to claims 1, 3, 6, 7, 28 Li teaches a method comprising: providing a substrate in a vapor chamber wherein the substrate having a silicon substrate with a native oxide 16 to be removed; providing a vapor mixture comprising HF or a halogen source, an alcohol vapor or water vapor, TEAH or TMAH or claimed additive comprising a hydrogen fluoride complex forming chemical containing an alkyl group, and a carrier gas (abs.; col. 3, lines 21-33; col. 4, line 20-32); providing a temperature from 60-to 105 degrees C to remove the native oxide 16 or claimed providing thermal energy to drive a reaction that partially or wholly etches the target material without exposing the substrate to a plasma (col. 5, lines 47-58).
Claims 4, 5, 8-13, 26 and 27 describe alternate compounds as cited in claim 3; therefore, they are considered to be optional and not necessarily part of the method claim.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda as applied to claim 1 above, and further in view of Fisher et al. (WO-2019226341A1).
With respect to claim 2, Toda doesn’t teach the method further comprising prior to providing the etching gas mixture of F2, HF, alcohol/vapor water, and carrier gas, exposing the substrate to thermal energy and a second gas mixture to drive a second reaction between the second gas mixture and the target material to form a modified target material. Fisher teaches a selective etching method for the same material including silicon oxide (para 57, 63), where a process gas and thermal energy modifies a surface prior to a subsequent process gas being used to remove the modified surface (para 79, fig. 6), wherein a process step 605 with a first gas and a first thermal energy modifies the surface prior to the steps 609 and 611 removing the modified surface. It would have been obvious for one skilled in the art before the effective filing date of the invention to modify Toda’s method by providing a step of providing a first process gas and thermal energy, in light of Fisher’s teaching, because this would provide a modified surface and facilitate Toda’s etching of the target layer with selectivity with expected results.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 1 above, and further in view of Fisher et al. (WO-2019226341A1).
With respect to claim 2, Li doesn’t teach the method further comprising prior to the etching step, exposing the substrate to thermal energy and a second gas mixture to drive a second reaction between the second gas mixture and the target material to form a modified target material. Fisher teaches a selective etching method for the same material including silicon oxide (para 57, 63), where a process gas and thermal energy modifies a surface prior to a subsequent process gas being used to remove the modified surface (para 79, fig. 6), wherein a process step 605 with a first gas and a first thermal energy modifies the surface prior to the steps 609 and 611 removing the modified surface. It would have been obvious for one skilled in the art before the effective filing date of the invention to modify Li’s method by providing a step of providing a first process gas and thermal energy, in light of Fisher’s teaching, because this would provide a modified surface and facilitate Li’s etching of the target layer with selectivity with expected results.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 28 above, and further in view of Toda et al. (US 2015/0380268).
With respect to claim 29, Li doesn’t teach that the alcohol comprising 1-butanol. However, butanol is known and used by one skilled in the in the etching process for oxide material as shown here by Toda (para 39). Therefore, it would have been obvious for one skilled in the art before the effective filing date of the invention to use an 1-butanol, in light of Toda, in order to provide an alcohol to facilitate the removal of the oxide material with expected results.
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, 26-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 9-11, 21-26, 45, 48, 52-56, 58 of copending Application No. 17/995290 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of Application No. 17/995290 describes the same steps of etching a substrate to partially or wholly removing a target material having a modification step and etching step, which uses the same vapor phase gas mixture.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13, 26-29 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,568,781. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of Patent No. 12,568,781 describes the same steps of etching to partially or wholly remove a target material having a modification step and etching step, which uses the same vapor phase gas mixture.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUY VU NGUYEN DEO whose telephone number is (571)272-1462. The examiner can normally be reached 9-5 M-F.
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/DUY VU N DEO/Primary Examiner, Art Unit 1713
7/23/2026
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