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 .
DETAILED ACTION
Claims 1-12 of S. Lee et al., US 18/848,179 (Mar. 17, 2023) are pending. Claims 7-12 drawn to non-elected Groups (II) and (III) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claim 3 of elected Group (I) is withdrawn from consideration as not reading on the elected species. Claims 1-2 and 4-6 are under examination on the merits and are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group (I), (claims 1-6), drawn to drawn to a thin film modification composition, without traverse, in the response filed on January 28, 2026. Claims 7-12 drawn to non-elected Groups (II) and (III) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement is made FINAL
During a telephone communication and responsive voicemail message with Feng Shan on March 4, 2026, a provisional species election was made whereby Applicant elected, chemical formula 1-1 as a species of chemical formula 1 (specification on page 61 paragraph 245) and chemical formula 3-3 as a species of amine compound (specification at page 62 paragraph 249).
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for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Claims 1-2 and 4-6 read on the elected species.1 The elected species were searched and determined to be unpatentable under § 103. The search/examination was not extended to the additional species. MPEP § 803.02 (III)(C)(2). The provisional election of species requirement is given effect and claim 3 of elected Group (I) is withdrawn from consideration as not reading on the elected species. MPEP § 803.02(III)(A).
Withdrawal Claim Rejections 35 U.S.C. 112(b)
Rejection of claim 6 pursuant to 35 U.S.C. 112(b), as indefinite is withdrawn in view of Applicant’s amendments. Claim 6 as amended recites:
6. The thin film modification composition according to claim 1, wherein the thin film modified composition is adapted for improving step coverage in a process of forming a laminated film of one or more selected from the group consisting of Al, Si, Ti, V, Co, Ni, Cu, Zn, Ga, Ge, Se, Zr, Nb, Mo, Ru, Rh, In, Sn, Sb, Te, Hf, Ta, W, Re, Os, Ir, La, Ce, and Nd.
As discussed in the interpretation below, claim 6 as amended is clear to one of skill.
The claim 6 phrase “is adapted for improving step coverage” is further considered here regarding whether it is a structural limitation. MPEP § 2111.04(I). Whether such language is interpreted as a claim limitation (and must be met by the prior art) depends on the specific facts of the case. MPEP § 2111.04(I) (citing Griffin v. Bertina, 285 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002) (finding that a "wherein" clause limited a process claim where the clause gave "meaning and purpose to the manipulative steps"); In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014) (where the court noted that a "whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited’).
The specification does not mention the terms “adapted” or “adapt”; but rather teaches that the claim 1 composition is useful, without modification, for improving step coverage in forming thin films in vapor deposition processes. Specification at page 3, [5]. The specification provides no teaching that adapting the claim 1 composition, per claim 6, requires any structural change, let alone what such structural change might be. As such, the term “is adapted” in the claim 6 context is giving its plain meaning; that is, the claim 1 composition is suited for a particular purpose, use, or environment, as recited in claim 6.
As such, the further recitations of claim 6 are not interpreted as claim limitations, but rather an intended use for claim 1 composition. 2 Claim scope is not limited by claim language that does not limit a claim to a particular structure. MPEP § 2111.04 (citing In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005) (a ‘whereby clause’ in a method claim is not given weight when it simply expresses the intended result of a process step positively recited).
Withdrawal Claim Rejections - 35 USC § 102 (AIA )
Rejection of claims 1-4, and 6 under 35 U.S.C. 102(a)(1) as being anticipated by J. Krauß et al., 83 Scientia Pharmaceutica, 1-14 (2015) (“Krauß”) is withdrawn in view Applicant’s amendment to recite the transitional phrase “consisting of”. The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. MPEP § 2111.03. The composition cited against the claims in Krauß comprises dodecanoyl chloride so there is no anticipation.
Rejection of claims 1, 2, 4, and 6 under 35 U.S.C. 102(a)(1) as being anticipated by M. Imai et al., 56 Tetrahedron, 179-185 (2000) (“Imai”) is withdrawn for the same reasons.
Claim Objections
Claims 1 and 5 are objected to for including a period in the middle of the claim. In claim 1 the objectional period is “having a boiling point of 50 to 260 °C.” and in claim 5, the objectional period is “by Chemical Formulas 4-1 to 4-9 below.”. Correction is required.
Claim 2 is objected to because it is not punctuated with a period.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under AIA 35 U.S.C. 103(a) 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.
Maintained Claim Rejections - 35 USC § 103
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 103 as obvious over W. Noh et al., US 2022/0119939 (2022) (“Noh”) in view of H. Chong-Sung et al., KR20190108281A (2019) (“Chong-Sung”) and S. Ivanov et al., US 2011/0256314 (2011) (“Ivanov”).
W. Noh et al., US 2022/0119939 (2022) (“Noh”)
Noh teaches a method for improving step coverage of a film deposited on high aspect ratio (HAR) apertures in a substrate, the method comprising:
i) sequentially or simultaneously exposing the substrate to a vapor of an inhibitor, a vapor of a precursor and a vapor of a co-reactant; and
ii) allowing the film with a desired step coverage being deposited on the surface of the HAR apertures through a vapor deposition process.
Noh teaches that the vapor deposition process is ALD, CVD or combination thereof. Noh at page 2, [0043]. Noh teaches that the organometallic precursor is selected from alkylamino and cyclopentadienyl derivatives of transition metals that contain ligands selected from alkylamines, alkoxy, amidinates, or halides, where the metal may be selected from Hf, Zr, Nb, Ti, lanthanides, rare earths, Al or Si. Noh at page 1, [0031]-[0032]. Noh teaches the particular zirconium precursor ZrCp(NMe2)3. Noh at page 2, [0033].
Noh teaches that the inhibitor may be selected from a listing that includes “nitrogen based aliphatic and aromatic inhibitors including amines”. Noh at page 1, [0019]. Noh more specifically points to demethoxyethane and triethylamine as follows:
[0027] the inhibitor being selected from tetrahydrofuran (THF), dimethoxyethane (DME) or triethylamine (TEA);
[0028] the inhibitor being THF;
[0029] the inhibitor being DME;
[0030] the inhibitor being TEA;
Noh at page 1, [0027]-[0030]. In this more narrow aspect, Noh teaches that the method comprises:
i) exposing the substrate to a vapor of an inhibitor selected from tetrahydrofuran (THF), dimethoxyethane (DME) or triethylamine (TEA);
ii) exposing the substrate to a vapor of a precursor ZrCp(NMe2)3 ;
iii) exposing the substrate to a vapor of a coreactant O3; and
iv) repeating the steps of i) to iii) until a desired step coverage of the ZrO2 film deposited on the apertures is formed through an ALD process in a temperature ranging from 200° C. to 400° C., wherein, after each exposure, excess inhibitor, excess precursor and excess co-reactant is purged and removed using N2, respectively.
Noh at page 2, [0061]-[0065]. Noh teaches that combinations of inhibitors may be employed. Noh at page 1, [0025]. In this regard, Noh teaches that “[a] neat blended precursor and a neat blended inhibitor may be introduced into a reactor, respectively, in a vapor form by conventional means, such as tubing and/or flow meters. The vapor form may be produced by vaporizing the neat blended precursor and inhibitor through a conventional vaporization step”. Noh at page 6, [0136]
Noh at page 1, [0011]-[0013]. Noh teaches that the substrate may be exposed in the sequential order of inhibitor, followed by precursor, followed by co-reactant. Noh at page 2, [0049]-[0050].
In Example 2, Noh teaches forming a zirconium oxide (ZrO2) film using precursor ZrCp(NMe2)3 and ozone (O3) as the reactive gas, where dimethoxyethane (DME, an instantly elected species) was employed as the inhibitor. Noh teaches, with reference to Fig. 6, about 100% of step coverage of an aspect ratio 25: 1 hole with the inhibitor DME. Noh at page 9, [0163].
In Example 3, Noh teaches forming a zirconium oxide (ZrO2) film using precursor ZrCp(NMe2)3 and ozone (O3) as the reactive gas, where triethylamine (TEA) (a claimed alkylamine) was employed as the inhibitor. Noh teaches, with reference to Fig. 6, about 100% of step coverage of an aspect ratio 25: 1 hole with the inhibitor TME. Noh at page 9, [0164].
Noh teaches that the inhibitor may be combined with the precursor due to van der Waals attraction. Noh at page 8, col. 2, lines 13-15. In this regard, Noh teaches that the combination of the order and timing of the inhibitor, the precursor and the co-reactant introduced into the reactor is not limited to those shown in FIG. 4a to FIG. 4d. Noh at page 9, [0158]. And that the disclosed inhibitor deposition methods include all possible combinations of the orders and timings of the inhibitor, the precursor and the co-reactant introduced into the reactor. Noh at page 9, [0158].
Differences between Noh and Claim 1
In summary, Noh teaches, and demonstrates by working examples, that each of dimethoxyethane (DME, the instantly elected species of claim 1, chemical formula 1) and triethylamine (TMA, bp = 89 °C, therefore a claim 1 “amine compound”), function, individually, as step coverage improvers in vapor deposition of organometallic precursors on substrates. Noh is directed to the same disclosed utility. Noh is also directed to the same goal of improving step coverage by contacting the substrate with an inhibitor before thin-film vapor deposition of a metal (e.g., zirconium) precursor. See instant specification at pages 15-16, [70]-[71].
Thus, Noh differs from claim 1 to extent that, while teaching dimethoxyethane and triethylamine as excellent inhibitors individually (Noh at page 9, [00163]-[0164]), and teaching inhibitor combinations generally (see, Noh at page 1, [0025]), does specifically teach the combination of dimethoxyethane and triethylamine in a single composition, or where the triethylamine is present in a single composition in an amount of 1 to 50 parts by weight of the composition.
H. Chong-Sung et al., KR20190108281A (2019) (“Chong-Sung”)
An English-language machine language translation (Google Translate) is attached as the second half of reference Chong-Sung. Chong-Sung thus consists of 346 total pages (including the English-language portion). Accordingly, this Office action references Chong-Sung page numbers in the following format “xx of 346”.
Chong-Sung teaches a precursor composition for forming a metal film, wherein the composition comprises a precursor represented by chemical formula 1 by atomic layer deposition (ALD) or chemical vapor deposition (CVD) processes. Chong-Sung at page 174 of 346, [57]; Id. at page 180 of 346, [0001].
Chong-Sung teaches that the precursor composition may include a solvent, and may be a C1-C16 saturated or unsaturated carbon or any one of hydrogen, ketone, ether, glyme (where dimethoxyethane is known in the art as glyme), ester, tetrahydrofuran, dimethyl oxalate, or tertiary amine. Chong-Sung at page 344 of 346, [0071]. Chong-Sung teaches that when the above solvent is included, the composition is formed in an amount of 1 to 99 weight% based on the total weight of the precursor composition for forming a metal film. Chong-Sung at page 344 of 346, [0072].
Chong-Sung teaches that, for example, this liquid transfer method may be applied when dimethylethylamine (the instantly elected species) is included in an amount of 1 to 99 weight% relative to the total weight of the precursor composition. Chong-Sung at page 344 of 346, [0081]. Chong-Sung teaches that if the content of the tertiary amine is less than 1 weight%, the effect of improving the physical properties of the thin film is negligible, and if it exceeds 99 weight%, the concentration of the precursor is low, which may lead to a decrease in the effect of improving step coverage characteristics; therefore, it is desirable to use it within the above range. Chong-Sung at page 345 of 346, [0081].
Significantly, Chong-Sung’s suggested range for dimethylethylamine overlaps with the claim 1 range of “1 to 50 parts by weight of an amine compound”.
Chong-Sung teaches that by including a tertiary amine that exhibits low viscosity and high volatility in the solvent, the precursor composition can exhibit improved viscosity and volatility, and increase the substrate adsorption efficiency and stability of the precursor during substrate formation and shorten the process time. Chong-Sung at page 345 of 346, [0082]. Chong-Sung teaches that in addition, since the precursor material is vaporized in a diluted state in the solvent and transported into the deposition chamber in a more uniform state, it can be evenly adsorbed onto the substrate, and as a result, the uniformity and step coverage characteristics of the deposited thin film can be improved. In addition, the excess non-covalent electron pairs in the tertiary amine increase the stability of the precursor material during the substrate adsorption process, thereby minimizing chemical vapor deposition (CVD) in the ALD process. Chong-Sung at page 345 of 346, [0082].
Chong-Sung teaches the same type of zirconium, titanium, and hafnium precursors as Noh and as claimed in the same type of ALD and CVD film forming methods. Chong-Sung at page 181 of 346, [0012]; Id. at page 182, [0032].
In sum, Chong-Sung teaches that it is advantageous to include dimethylethylamine (the instantly elected species) in an amount of 1 to 99 weight% relative to the total weight of the precursor composition (which overlaps with the claim 1 range). Chong-Sung at page 344 of 346, [0081]. Chong-Sung further teaches that precursor composition may include a solvent that may be elected from glyme (where dimethoxyethane is known in the art as glyme). Chong-Sung at page 344 of 346, [0071].
S. Ivanov et al., US 2011/0256314 (20111) (“Ivanov”)
Ivanov teaches methods for forming Group 4 metal containing films such as, but not limited to, titanium oxide, doped titanium oxide, zirconium oxide, doped zirconium oxide, strontium titanate and barium strontium titanate by atomic layer deposition (ALD) that may be used, for example, as a gate dielectric or capacitor dielectric film in a semiconductor device. Ivanov at page 1, [0002].
Ivanov teaches that the metal precursors are metal amides of titanium, tantalum, tungsten, hafnium, zirconium, cerium, zinc, thorium, bismuth, lanthanum, strontium, barium, lead, and combinations thereof. Ivanov at page 5, [0046]-[0048].
Ivanov teaches that in liquid delivery formulations, the precursors described herein may be delivered in neat liquid form, or alternatively, may be employed in solvent formulations or compositions comprising same. Ivanov at page 7, [0064]. Ivanov teaches a listing of suitable solvents that includes “amines (e.g., triethylamine, tert-butylamine) and glyme solvents having from 1 to 20 ethoxy -(C2H4O)- repeat units (e.g. dimethoxyethane, 1,2-diethoxyethane and diglyme)”. Ivanov at page 7, [0064]. Ivanov teaches that the “solvent employed in solubilizing the precursor for use in a deposition process may comprise any compatible solvent or their mixture”. Ivanov at page 7, [0064].
In sum, Ivanov teaches that 1,2-dimethoxyethane (the elected species) and trialkylamines (including triethylamine as taught by NOH) and their mixtures, are known as suitable solvents for chemical deposition of thin films of the same metal-type precursors (Zr, Hf) as claimed. Ivanov does not employ these solvents in working examples, and they must be chosen from a listing. Nevertheless, Ivanov teaches one of ordinary skill that 1,2-dimethoxyethane (the elected species) and trialkylamines (encompassed by claim 3, chemical formula 3) and their mixtures, are known as suitable solvents for chemical deposition of thin films of the same metal-type precursors (Zr, Hf) as claimed.
Obviousness Rationale
Each of Noh, Chong-Sung, and Ivanov are directed to the same utility of thin metal film formation on a substrate, using the same type of zirconium, hafnium, and titanium precursors, using the same type of ALD or CVD vapor deposition techniques.
Claims 1-2 and 4-6 are obvious because one of ordinary skill seeking to deposit a zirconium, hafnium, or titanium film on a patterned substrate (having 3D microstructure, trenches), for example, in semiconductor, photovoltaic, flat panel, or LCD-TFT device manufacturing (as taught by Noh at pages 2-3, [0073]) by chemical vapor deposition (e.g., ALD or CVD) is motivated form a composition consisting of3 (1) either of triethylamine or the elected species diethylmethylamine, and (2) the elected species of dimethoxyethane (DME), for deposition on the substrate to improve the step coverage in a hole, via, trench, or gap, present in the substrate.
In other words, rather than employing the amine alone or the dimethoxyethane alone to coat the substrate before applying the precursor (as taught in Noh working Examples 2 and 3, at page 9, [0163]-[0164), one of ordinary skill is motivated to first coat a substrate by preparing and using a composition comprising both the amine and the dimethoxyethane.4
One of ordinary skill is motivated to employ the proposed composition, for example, in the following general procedure of Noh:
A neat blended precursor and a neat blended inhibitor may be introduced into a reactor, respectively, in a vapor form by conventional means, such as tubing and/or flow meters. The vapor form may be produced by vaporizing the neat blended precursor and inhibitor through a conventional vaporization step such as direct vaporization, distillation, by bubbling, or by using a sublimator. The neat blended precursor and inhibitor may be fed in a liquid state to a vaporizer where it is vaporized before it is introduced into the reactor
Noh at page 6, [0136] (emphasis added). One of ordinary skill is so motivated because: (1) Noh teaches that both of triethylamine and dimethoxyethane are useful as substrate modifiers/inhibitors to improve step coverage with such precursors (see footnote 4). Noh at page 9, [00163]-[0164]; (2) Noh teaches that combinations of inhibitors may be employed. Noh at page 1, [0025]; (3) Noh teaches that the substrate may be exposed in the sequential order of inhibitor, followed by precursor, followed by co-reactant. Noh at page 2, [0049]-[0050]; and (4) both Chong-Sung and Ivanov teach that dimethoxyethane and tertiary amines (e.g., diethylmethylamine) are suitable ALD/CVD precursor solvents. Furthermore, one of ordinary skill is motivated to include the diethylmethylamine within the claim 1 range of “1 to 50 parts by weight of an amine compound” because Chong-Sung teaches that it is advantageous to include dimethylethylamine (the instantly elected species) in an amount of 1 to 99 weight% relative to the total weight of the precursor composition (which overlaps with the claim 1 range). Chong-Sung at page 344 of 346, [0081]. 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).5
Note that either of the cited amine and dimethoxyethane could be considered by one of ordinary skill simply as a solvent to deliver the other to the substrate per the teachings of Noh. Ivanov at page 7, [0064]. Ivanov teaches a listing of suitable solvents in chemical deposition processes that includes “amines (e.g., triethylamine, tert-butylamine) and glyme solvents having from 1 to 20 ethoxy -(C2H4O)- repeat units (e.g. dimethoxyethane, 1,2-diethoxyethane and diglyme)”. Ivanov at page 7, [0064].
Each and every limitation of claims 1-2 and 4-6 is clearly met by the above-proposed practice of the cited art by combining the two instantly elected species in a single composition.
APPLICANT’S ARGUMENT
Argument Regarding Failure of the Cited Art to Teach All Claim Elements
Applicant argues that Noh fails to teach or suggest the thin film modification composition of claim 1. Noh discloses the inhibitor can be "combination of a)-g)." Noh, paragraph 0025. Noh, however, does not teach or suggest any combination of inhibitors in the experimental section. Furthermore, Noh does not teach or suggest the specific combination of "50 to 99 parts by weight of a step coverage improver that is a compound represented by Chemical Formula 1 below and 1 to 50 parts by weight of an amine compound" without any additional component as required by claim1. Reply at page 8.
Applicant further argues that Chong-Sung and Ivanov do not cure the deficiency of Noh, as Chong-Sung and Ivanov also fail to teach or suggest the specific combination of "50 to 99 parts by weight of a step coverage improver that is a compound represented by Chemical Formula 1 below and 1 to 50 parts by weight of an amine compound" without any additional component as required by claim 1. Reply at page 8.
Examiner’s Response
This argument is not persuasive for the following reasons. First, Applicant is improperly arguing these references individually where the rejections are based on combinations of references. MPEP § 2145(II)(IV). It was already noted in the previous Office action, Noh differs from claim 1 to extent that, while teaching dimethoxyethane and triethylamine as excellent inhibitors individually (Noh at page 9, [00163]-[0164]), and teaching inhibitor combinations generally (see, Noh at page 1, [0025]), does specifically teach the combination of dimethoxyethane and triethylamine in a single composition, or where the triethylamine is present in a single composition in an amount of 1 to 50 parts by weight of the composition. However, Noh teaches that combinations of inhibitors may be employed. Noh at page 1, [0025]. And Noh teaches that the substrate may be exposed in the sequential order of inhibitor, followed by precursor, followed by co-reactant. Noh at page 2, [0049]-[0050]. As such, one of ordinary skill is motivated by Noh to employ a mixture of amine and dimethoxyethane as a separate composition from the precursor, thereby meeting the claim 1 “consisting of” language. See footnote 4. One of ordinary skill is motivated to include the diethylmethylamine within the claim 1 range of “1 to 50 parts by weight of an amine compound” because Chong-Sung teaches that it is advantageous to include dimethylethylamine (the instantly elected species) in an amount of 1 to 99 weight% relative to the total weight of the precursor composition (which overlaps with the claim 1 range). Chong-Sung at page 344 of 346, [0081]. 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)
As argued by Applicant, Chong-Sung teaches compositions of amine/dimethoxyethane that also include the precursor, and thus do not meet the claim 1 “consisting of” language.6 Notwithstanding, one of ordinary skill seeking to employ a mixture of dimethylethylamine and dimethoxyethane, per Noh in view Chong-Sung, is motivated to mix these solvents together before adding to the precursor, simply as a convenient addition sequence, or perhaps to ship the solvents as mixtures for use with a precursor at another location. One of ordinary skill thereby arrives at the claimed composition “consisting of” only the claimed amine and claimed dimethoxyethane.
Argument Regarding Unexpected Results
Applicant argues that the claimed invention achieves superior and unexpected results as shown in specification Table 1, Examples 1 and 2, where non-uniformity using the claimed composition was significantly improved over that of Comparative Examples 1 to 3 in which the claimed thin film modification composition was not used. Reply at page 8.
The following compositions were tested in specification Examples 1 and 2 and Comparative Examples 1 to 3 in the atomic layer deposition (ALD) deposition according to FIG. 1. Specification at page 61.
Compositions Tested in the Specification Examples
Inhibitor
Composition
Chemical formula 1-1
Chemical formula 1-2
Chemical formula 3-3
Example 1
composition
90 parts
none
10 parts
Example 2
composition
none
90 parts
10 parts
Comparative Example 1
none
none
none
Comparative Example 1
100 parts
none
none
Comparative Example 1
none
100 parts
none
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The experiments were performed by a first vapor deposition of the respective inhibitor composition onto an unidentified substrate. Specification at pages 62-63, [0254]-[255]. Next the precursor (trimethylaluminum) was vapor deposited onto the substrate. Specification at page 63, [0256]. Next, reactive gas O3 was introduced to the heated substrate, and this cycle was repeated 100 to 400 times to form a self-limiting atomic layer thin film with a thickness of 10 nm. Specification at pages 63-64, [257]-[258]. The deposition parameters and film properties are summarized in Table 1. Specification at pages 66-67 (Table 1).
Applicant proffers that in Examples 1 and 2 in which the thin film modification composition of the present invention was used, non-uniformity was significantly improved over that of Comparative Examples 1-3. Reply at page 8. Applicant argues that as shown in specification FIG. 2 (and summarized in Table 1), in Examples 1 and 2 using the thin film modification composition of the present invention, the non-uniformity was less than 1 %. Reply at page 8. On the other hand, in Comparative Examples 2 and 3 without using the amine compound, the non-uniformity was 3 % or more, and reached up to 7 %. Reply at page 8. Applicant argues that this result is unexpected.
Examiner Response
The presence of an unexpected property of a claimed composition, not possessed by the closest the prior art is evidence of nonobviousness. MPEP § 716.02(b); MPEP § 716.02(e). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. MPEP § 716.02(b)(III). Applicant bears the burden of establishing a nexus between the objective evidence of nonobviousness and the claimed invention. MPEP § 716.01(b); see also, In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (“[f]or objective evidence [of nonobviousness] to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention”). In particular, the objective indicia “must be tied to the novel elements of the claim at issue” and “be reasonably commensurate with the scope of the claims.”; Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013).
Here, the proffered results are not probative of non-obviousness because there is not a sufficient nexus between the proffered results and the claims since dimethylethylamine (chemical formula 3-3) was not tested as an inhibitor by itself. MPEP § 716.01(b). The novel aspects of the claims are that the composition comprises both the amine compound and the ether of chemical formula 1, but the amine compound was not tested as an inhibitor alone. For example, the proffered improved uniformity, in the claimed compositions of Examples 1 and 2, may simply be due to the properties of the dimethylethylamine (chemical formula 3-3). Dimethylethylamine (chemical formula 3-3) alone is taught by cited art Noh as a step coverage improver, for instance, in Example 3, Noh teaches forming a zirconium oxide (ZrO2) film using precursor ZrCp(NMe2)3 and ozone (O3) as the reactive gas, where triethylamine (TEA) (a claimed alkylamine) was employed as the inhibitor. Noh teaches, with reference to Fig. 6, about 100% of step coverage of an aspect ratio 25: 1 hole with the inhibitor TME. Noh at page 9, [0164].
The proffered results are also not persuasive of non-obviousness because they are not commensurate with the claim scope. MPEP § 716.02(d). No examined claim is directed to the proffered composition 1 consisting of 10% dimethylethylamine and 90 % dimethoxyethane or the proffered composition 2 consisting of 10% dimethylethylamine and 90 % chemical formula 1-2. Rather the narrowest examined claims 2 and 4 recite several species of chemical formula 1 and several species of amine compound, where their respective ratios may vary widely. The proffered results, directed to specific species and percentage compositions, are clearly not commensurate in scope with examined claims 1-2 and 4-6.
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 ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.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, Scarlett Goon can be reached at 571-270-5241. 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.
ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 In the previous Office action claim 5 was withdrawn as not reading on the elected species. Upon reconsideration, claim 5 does read upon the elected species because the claim alternative of “alkyl amines” is incorporated into claim 5 per § 35 U.S.C. 112(d). In the previous Office action claim 3 was not withdrawn. However, claim 3 clearly does not read upon the elected species of dimethylethylamine because it requires that “one or more of R3, R4, and R5 are linked to each other to form a ring structure”.
2 Note that no § 112(d) rejection is made of claim 6 respecting its further limitation of base claim 1. The claim 1 language “is adapted” appears to be of questionable significance as a further limitation of base claim 6. However, “the requirements of 35 U.S.C. 112(d) are related to matters of form”. MPEP § 608.01(n)(III). Even though the instant claim 6 language does not substantively limit claim 1, it can still meet the formal requirements of 112(d). MPEP § 2103(I)(C).
3 The claim 1 transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. MPEP § 2111.03.
4 It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art. MPEP § 2144.06 (I) (citing In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted); see also, In re Couvaras, 70 F.4th 1374, 1378-79, 2023 USPQ2d 697 (Fed. Cir. 2023) (holding that the two claimed types of active agents, GABA-a agonists and angiotensin II receptor blocker, were known to be useful for the same purpose—alleviating hypertension—alone can serve as a motivation to combine), for its legal principle.
5 Furthermore, here a very broad amine range is claimed, per claim 1, “1 to 50 parts by weight of an amine compound” and the specification teaches no criticality associated with this broad range. Generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. MPEP § 2144.05(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ("[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation").
6 Chong-Sung teaches that it is advantageous to include dimethylethylamine (the instantly elected species) in an amount of 1 to 99 weight% relative to the total weight of the precursor composition (which overlaps with the claim 1 range). Chong-Sung at page 344 of 346, [0081]. Chong-Sung further teaches that precursor composition may include a solvent that may be elected from glyme (where dimethoxyethane is known in the art as glyme). Chong-Sung at page 344 of 346, [0071].
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