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 .
Response to Amendment
Applicant’s amendments, filed 8/17/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to claims, the cancellation of claims 1 and 4-17 and the addition of new claims 29-35. Claims 24-35 remain pending in the instant application.
Response to Arguments
Applicant's arguments filed 8/17/2026 have been fully considered but they are not persuasive as they are directed towards newly added claim requirements that are specifically addressed hereinafter.
In view of the arguments with respect to the 35 USC 112a rejection, the examiner has withdrawn the rejection as the specification discloses that the first precursor can be the disclosed metal halide precursors.
Applicant’s arguments with respect to the carbon content are noted, but contrary to the applicant’s position, USPP 300 does disclose the carbon content that makes obvious the claim as drafted (see 0103, “ the transition metal containing films may comprise less than about 5 atomic % carbon, or less than about 2 atomic % carbon, or less than about 1 atomic % carbon, or even less than about 0.5 atomic % of carbon.”). Additionally, the impurity concentration as claimed would generally be considered mere recognition of a latent property of following the claimed process steps. Here, as the prior art makes obvious the instant claimed process steps (see rejection below), the prior art will necessarily have a carbon content that is within the range as claimed, unless the applicant is performing other process steps that are neither claimed nor disclosed as being required to achieve the claimed results. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Here, while the prior art does not explicitly disclose the metal phosphide using the claims precursors has the claimed carbon content, the references make obvious the claimed process steps and therefore the results of performing (i.e. carbon content of deposited film) the obvious claim process steps would have flowed naturally from performing the claimed deposition cycle.
As for the temperature, USPP 300 discloses a temperature during the deposition that overlaps the range as claimed (0092, stating “In some embodiments the deposition temperature is less than about 500° C., or less than below about 400° C., or less than about 350° C., or below about 300° C. In some instances the deposition temperature can be below about 300° C., below about 200° C. or below about 100° C.”) and therefore makes obvious the claimed range as the range as taught by the prior art fully encompasses/overlaps the range as claimed. Additionally, and at the very least, USPP 300 discloses the deposition temperature is a result effective variable (see e.g. 0092 stating “the appropriate temperature window for any given cyclical deposition process, such as, for an ALD reaction, will depend upon the surface termination and reactant species involved. Here, the temperature varies depending on the precursors being used or 0104 stating “the deposition temperature during the cyclical deposition process may affect the stoichiometry of the deposited films.) As such, USPP 300 discloses the temperature is a result effective variable and it would have been obvious to one of ordinary sill in the art at the time of the invention to have determined the optimum temperature through routine experimentation to provide the desired film.
Applicant’s argument that USPP 790 makes a single reference to tris(trimethylsilyl)phosphine in relation to GaP or InP phosphine layers and therefore the Applicant argues that the examiner has used hindsight in the combination. 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).
The Applicant’s have failed to provide persuasive evidence or arguments to rebut the examiner’s proffered prima facie case of obviousness and thus has failed to meet their burden. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)
As set forth previously, USPP 300 discloses the second precursor can include phosphorus compounds such as phosphines, including PH3 and alkylphosphines as the phosphine source for cobalt phosphide film deposition via ALD. While the examiner notes that the reference fails to disclose the claimed phosphine precursors, USPP 790, also in the art of forming phosphide films on substrates via ALD process (0113) and discloses depositing phosphides using phosphorus precursors that include PH3 and alkylphosphines and also discloses a known phosphorus alternative to those precursors includes tris(trimethylsilyl)phosphine (Table 1). Therefore, taking the references collectively and all that is known to one of ordinary skill in the art at the time of the invention, it would have been obvious to one of ordinary skill in the art to have modified USPP 300 to use the known and suitable ALD phosphide precursor, including tris(trimethylsilyl)phosphine with a reasonable expectation of success. Here, The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Here both cited references discloses forming phosphide films on substrates via ALD process using phosphine sources, each explicitly discloses PH3 and alkylphosphines and USPP 300 discloses using phosphorus sources that include phosphorus and hydrogen (0065) and discloses tris(trimethylsilyl) are known ligands for ALD deposition (0065) and therefore using the tris(trimethylsilyl)phosphine would have led to predictable results in the process of USPP 300 as a known alternative for PH3 and alkylphosphines as well as a known precursor for phosphide deposition via ALD. The applicant’s have failed to provide any factual evidence that would rebut this prima facie case of obviousness and therefore the examiner maintains the prima facie case of obviousness of record.
Regardless of the above position, the examiner cites here newly uncovered prior art reference Blackman, which discloses a vapor deposition of a Titanium phosphide layer and discloses “Tristrimethylsilylphosphine (TTMSP) is a functional equivalent of phosphine (PH3)” and also discloses such is an alternative to known alkyl phosphine “TiCl4 and PH2R(R = cyclohexyl or t-butyl) have been investigated.” As such, with respect to Tristrimethylsilylphosphine as it relates to PH3 and alkylphosphines, the collection of prior art reasonably discloses that these are known and suitable phosphine precursors for vapor deposition of a metal phosphide.
As such, the examiner maintains the totality of the references reasonably suggest the claims precursors are known and suitable in the art of phosphide deposition and the applicant’s have not provided any secondary considerations that unexpected results would follow from using the known and suitable precursors for their intended use. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Claim Rejections - 35 USC § 112
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.
Claims 32 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 32 includes “from the group consisting of. HF, NH-4”; however, the period “.” after “consisting of” renders the claim indefinite.
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.
Claim(s) 24-30 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 20190249300 by Hatanpӓӓ et al., hereinafter USPP 300 taken collectively with US Patent Application Publication 20130202790 by Li et al., hereinafter USPP 790 Or Blackman (Dual-source chemical vapour deposition of titanium(III) phosphide from titanium tetrachloride and tristrimethylsilylphosphine)
Claim 24: USPP 300 discloses a method for forming a layer comprising metal phosphide on a substrate, the method comprising providing a substrate into a reaction chamber; executing at least one deposition cycle, wherein the deposition cycle comprises: providing a metal halide precursor in vapor phase into a reaction chamber (0034-0035, see ALD delivery); and providing a second precursor in vapor phase into a reaction chamber to form a layer comprising metal phosphide on a substrate (0065,0034, 0029, “cobalt phosphides”, 0055 related to transitional metal phosphide). US 300 discloses cobalt dichloride tetramethylethylenediamine (0090).
USPP 300 discloses the second precursor can include phosphorus compounds such as phosphines, including PH3 and alkylphosphines; however, fails to disclose the second precursor comprises alkyl silyl phosphine or silyl phosphine. However, USPP 790, also in the art of forming phosphide films on substrates via ALD process (0113) and discloses depositing phosphides using phosphorus precursors that include PH3 and alkylphosphines and also discloses a known phosphorus alternative to those precursors includes tris(trimethylsilyl)phosphine (Table 1).
Additionally, Blackman, which discloses a vapor deposition of a Titanium phosphide layer and discloses “Tristrimethylsilylphosphine (TTMSP) is a functional equivalent of phosphine (PH3)” and also discloses such is an alternative to known alkyl phosphine “TiCl4 and PH2R(R = cyclohexyl or t-butyl) have been investigated.” As such, with respect to Tristrimethylsilylphosphine as it relates to PH3 and alkylphosphines, the collection of prior art reasonably discloses that these are known and suitable phosphine precursors for vapor deposition of a metal phosphide.
Therefore, taking the references collectively and all that is known to one of ordinary skill in the art at the time of the invention, it would have been obvious to one of ordinary skill in the art to have modified USPP 300 to use the known and suitable ALD phosphide precursor, including tris(trimethylsilyl)phosphine with a reasonable expectation of success. Here, The claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
As for the temperature, USPP 300 discloses a temperature during the deposition that overlaps the range as claimed (0092, stating “In some embodiments the deposition temperature is less than about 500° C., or less than below about 400° C., or less than about 350° C., or below about 300° C. In some instances the deposition temperature can be below about 300° C., below about 200° C. or below about 100° C.”) and therefore makes obvious the claimed range as the range as taught by the prior art fully encompasses/overlaps the range as claimed. Additionally, and at the very least, USPP 300 discloses the deposition temperature is a result effective variable (see e.g. 0092 stating “the appropriate temperature window for any given cyclical deposition process, such as, for an ALD reaction, will depend upon the surface termination and reactant species involved. Here, the temperature varies depending on the precursors being used or 0104 stating “the deposition temperature during the cyclical deposition process may affect the stoichiometry of the deposited films.) As such, USPP 300 discloses the temperature is a result effective variable and it would have been obvious to one of ordinary sill in the art at the time of the invention to have determined the optimum temperature through routine experimentation to provide the desired film.
With respect to the carbon content are noted, USPP 300 does disclose the carbon content that makes obvious the claim as drafted (see 0103, “ the transition metal containing films may comprise less than about 5 atomic % carbon, or less than about 2 atomic % carbon, or less than about 1 atomic % carbon, or even less than about 0.5 atomic % of carbon.”). Additionally, the impurity concentration as claimed would generally be considered mere recognition of a latent property of following the claimed process steps. Here, as the prior art makes obvious the instant claimed process steps (see rejection below), the prior art will necessarily have a carbon content that is within the range as claimed, unless the applicant is performing other process steps that are neither claimed nor disclosed as being required to achieve the claimed results. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Here, while the prior art does not explicitly disclose the metal phosphide using the claims precursors has the claimed carbon content, the references make obvious the claimed process steps and therefore the results of performing (i.e. carbon content of deposited film) the obvious claim process steps would have flowed naturally from performing the claimed deposition cycle.
Claim 25: US 300 discloses the precursors are provided into the reaction chamber in an alternate and sequential manner (0034-0035, 0055).
Claims 26: US 300 discloses the deposition is performed at a temperature that overlaps and makes obvious in the range of 180-320° C or below 300° C (0092).
Claim 27: The prior art discloses and makes obvious the claimed process steps (supplying metal halide precursor and then the claimed halide, where the halide precursor is undefined and is the same material as the first precursor) and the instant claim is merely a result of those process steps and therefore the prior art would necessarily have the same results unless the applicant is performing different process steps that are undisclosed or unclaimed as being required to achieve the claimed intermediary MX on the substrate surface.
Claim 28: US 300 discloses the precursors are provided into the reaction chamber in pulses and the reaction chamber is purged between consecutive precursor pulses (0034-0035).
Claim 29-30 and 34: These claims are made obvious for the reasons set forth above regarding carbon content and temperature above.
Allowable Subject Matter
Claims 31, 33 and 35 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 32 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, 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: None of the prior art cited or reviewed by the examiner, alone or in combination, reasonably discloses or makes obvious the claimed compounds wherein the cobalt dichloride tetramethylenediamine is supplied and the providing a halide precursor comprising fluorine (per claim 31), or the claimed compounds of claim 32, to provide MX on the substrate, where X is halide from the halide precursor as instantly claimed to deposit the metal phosphide.
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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/ Primary Examiner, Art Unit 1718
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