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 .
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, 3-4, 7-8, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-10, and 11 of copending Application No. 18/848153 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations in the pending claims are permutations of those in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-4, and 10-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 11-14 of copending Application No. 18/848577 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations in the pending claims are permutations of those in the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-13 are 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. The dependent claims do not cure the deficiency.
The term “thin” in claims 1, 3-4, 10 and 12 is a relative term which renders the claim indefinite. The term “thin” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, any thickness will meet the claimed limitation.
Claim 2 recites a normality (N) of a gas; however, normality is a measurement of concentration in a liquid solution. As gas concentrations are usually expressed in partial pressures or mole fractions, it is unclear what concentration of gas the claim language is directed to. For the purpose of examination, any gas concentration will meet the claimed limitation.
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.
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.
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) 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Farm (US 20220285211).
Regarding Claims 1, 11, and 13, Farm teaches a method of forming a thin film semiconductor device ([0022]), comprising: injecting a precursor compound into a chamber to adsorb the precursor compound onto a surface of a substrate (precursor, [0029]); and injecting a reducing agent into the chamber to form a deposition film (reactant, [0029], [0055]). Farm teaches embodiments wherein the reducing agent comprises one or more selected from hydrogen iodide or hydrogen bromide (reactant, [0029], [0055]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the reducing agent of Farm to be any of the taught reducing agents, including those claimed, because Farm teaches they are all suitable for use with the invention.
Regarding Claim 2, Farm teaches HI ([0055]) and teaches the gas source being alone or mixed with one or more carrier gases (i.e. inert, [0135]).
Regarding Claims 3-5 and 10, Farm teaches Cu, Au, Mo, Ag, W, Pt, Ta, Co, and Ti (Claim 4) and nitrides thereof ([0080]). Farm teaches compounds having a vapor pressure of more than 0.01 mTorr and 100 Torr or less at 25C (e.g. bis(methylbenzene)molybdenum, [0052]).
Regarding Claim 6, Farm teaches comprising injecting a precursor compound into a chamber to adsorb the precursor compound onto a surface of a substrate (precursor pulse); performing first purging of the inside of the chamber with a purge gas (purge); injecting the reducing agent into the chamber to reduce the adsorbed precursor compound (reactant pulse); and performing second purging of the inside of the chamber with a purge gas (purge) ([0146]).
Regarding Claim 7, Farm teaches further comprising injecting a nitriding agent or an additional reaction gas into the chamber to form a nitride film ([0080]).
Regarding Claim 8, Farm teaches an ALD or CVD chamber ([0064]).
Regarding Claim 9, Farm teaches heating at temperatures within the claimed range ([0093-0094]). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).” MPEP 2144.05 I. It would have been prima facie obvious to one of ordinary skill in the art to select the temperatures of Farm to be any of the taught temperatures, including those within the claimed range, because Farm teaches they are all suitable temperatures for use with the invention.
Regarding Claim 12, Farm teaches cyclical deposition ([0064]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cho (US 20100047988) teaches a CVD or ALD method of making a semiconductor device with a metal containing precursor and a hydrogen halide.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TABATHA L PENNY whose telephone number is (571)270-5512. The examiner can normally be reached M-F 8:00-5:00.
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, Michael Cleveland can be reached at 5712721418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TABATHA L PENNY/Primary Examiner, Art Unit 1712
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