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 .
Status of Application
Claims 1-20 are pending. Claims 5-12 and 17-20 are withdrawn. Claims 1-4 and 13-16 are presented for examination.
Election/Restrictions
Applicant’s election without traverse of claims 1-4 and 13-16 in the reply filed on 6/22/2026 is acknowledged.
Claims 5-12 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/22/2026.
Drawings
The drawings are objected to because the text in Figures 6, 11, 17 and 18 is not legible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
1. Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11898254. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 anticipates claims 1-4.
2. Claims 1-4 and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 17/955561 in view of Hee et al. (KR-102161704, reference is made to the provided English translation). Claim 4 recites an identical process except for failing to teach that the fluorination target is a yttria coated part. However, Hee teaches a similar process for fluorination wherein the substrate to be fluorinated is a yttria coated part (see Experimental Example 5, page 11). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Application No. 17/955561’s process by performing it on a yttria coated part as disclosed by Hee. One would have been motivated to make this modification as Hee teaches that these parts can then be protected and used in harsh plasma environments to provide a more durable apparatus (see Technical Field section, page 2).
This is a provisional nonstatutory double patenting rejection.
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.
3. Claims 13-16 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.
Claims 13-16 recite “non-fluorine reactive gas (O2)” and “fluorine-containing reactive gas (CF4)”. However, the parent claims do not require the gases to be O2 and CF4, rather the parent claims only require a generic non-fluorine reactive gas and a reactive gas, and not even a fluorine-containing reactive gas. Therefore, the metes and bounds of claims 13-16 are unclear. It is impossible to determine if the claims require the gases to include O2 and CF4 or rather the claims encompass any generic reactive gas and any generic non-fluorine reactive gas as required by independent claim 1. For examination purposes, any generic reactive gas and any generic non-fluorine gas will be interpreted as reading upon the claims until they are clarified.
Claim 16 recites the limitation "the LF plasma generation power". There is insufficient antecedent basis for this limitation in the claim. There is no initial recitation that the plasma is an LF plasma. Therefore, claim 16 is indefinite as it is unclear whether the plasma must be a generic plasma or an LF plasma. For examination purposes, any plasma will be interpreted as meeting the limitations of the claim until it is clarified. Additionally, claim 16 recites that the ratio between the gases can be 0:100; however, this would be impossible given that the treatment step must include non-fluorine reactive gas as required by parent claim 1. For examination purposes, the range has been interpreted as “between 90:10 and 0:100”.
Claim Rejections - 35 USC § 102(a)(1)
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.
4. Claim(s) 1-4 and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hee et al. (KR-102161704, reference is made to the provided English translation).
Regarding claims 1-4 and 13-15, Hee teaches a process for protecting a part coated with yttria for use in semiconductor manufacturing plasma environments (inherently capable of use in a semiconductor dry etching system) comprising: providing a yttria coated part (Experimental Example 6, page 12); placing the part in a process chamber (Experimental Example 6 and Figure 1); introducing a discharge gas, argon, a reactive gas, CF4, and a non-fluorine reactive gas, oxygen, into the process chamber (Experimental Example 6); and performing plasma and heat treating in the process chamber to yield a yttrium oxyfluoride layer on the yttria coated part (Experimental Example 6). Hee further teaches controlling the process by controlling the plasma generation power, the treatment time, a flow rate between the oxygen gas and the CF4 gas, and a distance between plasma and part (Experimental Example 6). Hee teaches all the limitations of claims 1-4 and 13-15; therefore, Hee anticipates the claims.
5. Claim(s) 1-4 and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu et al. (U.S. PGPUB No. 2023/0212732).
Regarding claims 1-4 and 13-15, Yu teaches a process comprising: providing a yttria coated part (0130) for a semiconductor dry etching system (0166) comprising: providing a yttria coated part (0130); placing the part in a process chamber (0060, 0130 and Figure 16); introducing a discharge gas, argon, a reactive gas, CF4, and a non-fluorine reactive gas, oxygen, into the process chamber (0064 and 0131); and performing plasma and heat treating (see 0074 and claim 5) in the process chamber to yield a yttrium oxyfluoride layer on the yttria coated part (0160). Yu further teaches controlling the process by controlling the plasma generation power (0075 and claim 4), a flow rate between the oxygen gas and the CF4 gas (0068), treatment time (0131) and a distance between plasma and part (0086). Yu teaches all the limitations of claims 1-4 and 13-15; therefore, Yu anticipates the claims.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
6. Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hee.
Regarding claim 16, Hee teaches all the limitations of claim 13 (see above), but fails to explicitly teach an example with a power, a flow rate, a treatment time and a distance as claimed. However, Hee teaches a plasma power of 0.1-5 kW (bottom of page 7), a flow rate ratio between the oxygen and CF4 in a range overlapping the range as claimed (bottom of page 7), and a distance from the substrate to the top and bottom of the plasma generating electrode is from 3.5 mm-248.5 mm (see Experimental Examples 5 and 6). Hee teaches ranges for the power, flow rate, and distance which overlap with the claimed ranges. Furthermore, overlapping ranges have been held as prima facie evidence of obviousness. Additionally, the treatment time is a result-effective variable as altering the treatment time will alter the thickness of the deposited coating. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for treatment time through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
7. Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu.
Regarding claim 16, Yu teaches all the limitations of claim 13 (see above), but fails to explicitly teach an example with a power, a flow rate, a treatment time and a distance as claimed. However, Yu teaches a plasma power up to 1 kW (0077), a flow rate ratio between the oxygen and CF4 in a range overlapping the range as claimed (0068), and a distance from the substrate to the plasma is 1-50 mm (0086). Yu teaches ranges for the power, flow rate, and distance which overlap with the claimed ranges. Furthermore, overlapping ranges have been held as prima facie evidence of obviousness. Additionally, the treatment time is a result-effective variable as altering the treatment time will alter the thickness of the deposited coating. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for treatment time through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Conclusion
Claims 1-20 are pending.
Claims 5-12 and 17-20 are withdrawn.
Claims 1-4 and 13-16 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT S WALTERS JR/
July 1, 2026Primary Examiner, Art Unit 1717
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