Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 1 of 54
`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 1 of 54
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`EXHIBIT C
`EXHIBIT C
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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 2 of 54
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`PATENT
`Customer No. 22,852
`Attorney Docket No. 9140.0016-01
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`A
`?lftNT&~ ~
`-.....-..--in re Application of:
`
`ZHANG, Hongmei et al.
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`Application No.: 10/954,182
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`Filed: October 1, 2004
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`For: BIASED PULSE DC REACTIVE
`SPUTTERING OF OXIDE FILMS
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`MAIL STOP AMENDMENT
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Sir:
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`Examiner: ESTRADA, Michelle
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`)
`)
`) Group Art Unit: 2823
`)
`)
`)
`)
`)
`)
`)
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`Confirmation No.: 9873
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`AMENDMENT AND RESPONSE TO OFFICE ACTION
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`In reply to the Office Action mailed March 25, 2005, the period ofresponse extended to
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`July 25, 2005, by a one month extension of time and authorization for the Commissioner to
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`charge the fee of $120.00 to Deposit Account No. 06-0916, please amend the above-identified
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`application as follows:
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`Amendments to the Claims are reflected in the listing of claims that begins on page 2 of
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`this paper.
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`Remarks/Arguments follow the amendment sections on page 9 of this paper.
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`•'
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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 3 of 54
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`AMENDMENTS TO THE CLAIMS:
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`This listing of claims will replace all prior versions and listings of claims in the
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`application:
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`Claims 1-39 (Canceled).
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`Claim 40 (Canceled).
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`Claim 41 (Currently amended): The method of elaim claims 4G 59. 60. or 85, wherein
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`the target is a metallic target and the process gas includes oxygen.
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`Claim 42 (Currently amended): The method of elaim claims 4G 59, 60, or 85, wherein
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`the target is a metallic target and the process gas includes one or more of a set consisting of N2,
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`NH3, CO, NO, C02, halide containing gasses.
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`Claim 43 (Currently amended): The method of elaim claims 4G 59, 60, or 85, wherein
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`the target is a ceramic target.
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`Claim 44 (Canceled):
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`Claim 45 (Currently amended): The method of elaim claims 4G 59, 60, or 85, wherein
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`the magnetic field is provided by a moving magnetron.
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`Claim 46 (Currently amended) The method of Glaim claims 4G 59. 60. or 85, further
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`including holding the temperature of the substrate substantially constant.
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`Claim 47 (Currently amended): The method ofG±aim claims 4G 59, 60, or 85, wherein
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`the process gas includes a mixture of Oxygen and Argon.
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`Claim 48 (Currently amended): The method of Glaim claims 4G 59, 60, or 85, wherein
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`the Oxygen flow is adjusted to adjust the index of refraction of the film.
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`-2-
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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 4 of 54
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`Claim 49 (Currently amended): The method of Gl-a:im claims 4G 59. 60, or 85, wherein
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`the process gas further includes nitrogen.
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`Claim 50 (Currently amended): The method of Gl-a:im claims 4G 59. 60, or 85, wherein
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`providing pulsed DC power to a target includes providing pulsed DC power to a target which has
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`an area larger than that of the substrate.
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`Claim 51 (Currently amended): The method of Gl-a:im claims 4G 59, 60, or 85, further
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`including uniformly sweeping the target with a magnetic field.
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`Claim 52 (Currently amended): The method of Gl-a:im claim 51 wherein uniformly
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`sweeping the target with a magnetic field includes sweeping a magnet in one direction across the
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`target where the magnet extends beyond the target in the opposite direction.
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`Claim 53 (Currently amended): The method of Gl-a:im claims 4G 59. 60. or 85, wherein
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`the target is an alloyed target.
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`Claim 54 (Currently amended): The method of Gl-a:im claim 53 wherein the alloyed
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`target includes one or more rare-earth ions.
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`Claim 55 (Currently amended): The method of Gl-a:im claim 53 wherein the alloyed
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`target includes Si and Al.
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`Claim 56 (Currently amended): The method of Gl-a:im claim 53 wherein the alloyed
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`target includes one or more elements taken from a set consisting of Si, Al, Er, Yb, Zn, Ga, Ge, P,
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`As, Sn, Sb, Pb, Ag, Au, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy Ho, Tm, and Lu.
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`Claim 57 (Previously presented): The method of claim 53 wherein the alloyed target is a
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`tiled target.
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`-3-
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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 5 of 54
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`Claim 58 (Previously presented): The method of claim 57 wherein each tile of the tiled
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`target is formed by prealloy atomization and hot isostatic pressing of a powder.
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`Claim 59 (Currently Amended): A method of depositing a film on a substrate,
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`comprising:
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`providing a process gas between a target and a substrate;
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`providing pulsed DC power to the target;
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`providing a magnetic field to the target; and
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`wherein a material is deposited on the substrate, and The methea ef elaim 4 0,
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`wherein thean oxide film is formed by reactive sputtering in metallic mode.
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`Claim 60 (Currently Amended): A method of depositing a film on a substrate,
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`comprising:
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`providing a process gas between a target and a substrate:
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`providing pulsed DC power to the target;
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`providing a magnetic field to the target; and
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`wherein a material is deposited on the substrate, and The methea ef elaim 4 0, wherein
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`thean oxide film is formed by reactive sputtering in poison mode.
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`Claim 61 (Currently Amended): A method of depositing a film on a substrate.
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`comprising:
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`providing a process gas between a metallic target and a substrate:
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`providing pulsed DC power to the target;
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`providing a magnetic field to the target; and
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`The methea ef elaim 40, further inelHEling reconditioning the £!...metallic target:-;
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`wherein a material is deposited on the substrate.
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`Claim 62 (Previously presented): The method of claim 61, wherein reconditioning the
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`metallic target includes:
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`reactive sputtering in the metallic mode and then reactive sputtering in the poison mode.
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`-4-
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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 6 of 54
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`Claim 63 (Canceled).
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`Claim 64 (Currently amended): The metheel reactor of claim Q 82. 83. or 86, wherein
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`the target is a metallic target and the process gas includes oxygen.
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`Claim 65 (Currently amended): The methea reactor of claim Q 82, 83. or 86, wherein
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`the target is a metallic target and the process gas includes one or more of a set consisting of N2,
`NH3, CO, NO, C02, halide containing gasses.
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`Claim 66 (Currently amended): The methea reactor of claim Q 82. 83, or 86, wherein
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`the target is a ceramic target.
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`Claim 67 (Canceled)
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`Claim 68 (Currently amended): The methea reactor of claim Q 82. 83, or 86, wherein
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`the magnetic field is provided by a moving magnetron.
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`Claim 69 (Currently amended) The metheel reactor of Glaim claims Q 82, 83. or 86,
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`further including a temperature controller for holding the temperature of the substrate
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`substantially constant.
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`Claim 70 (Currently amended): The metheel reactor of Glaim claims Q 82, 83, or 86,
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`wherein the process gas includes a mixture of Oxygen and Argon.
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`Claim 71 (Currently amended): The metheel reactor of Glaim claims Q 82, 83, or 86,
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`further including a process gas flow controller wherein the Oxygen flow is adjusted to adjust the
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`index of refraction of the film.
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`Claim 72 (Currently amended): The methea reactor of Glaim claims Q 82. 83. or 86,
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`wherein the process gas further includes nitrogen.
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`Claim 73 (Currently amended): The methea reactor of Glaim claims Q 82, 83, or 86,
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`-5-
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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 7 of 54
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`wherein the target has an area larger than that of the substrate.
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`Claim 74 (Currently amended): The methed reactor of Gleim claims@ 82, 83, or 86,
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`wherein the magnetic field generator uniformly sweeps the target with the magnetic field.
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`Claim 75 (Currently amended): The methea reactor of Gleim claims 74 wherein when
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`the magnet field is swept in one direction across the target, the magnet field extends beyond the
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`target in the opposite direction.
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`Claim 76 (Currently amended): The methea reactor of Gleim claims @ 82, 83, or 86,
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`wherein the target is an alloyed target.
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`Claim 77 (Currently amended): The methea reactor of Gleim claim 76 wherein the
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`alloyed target includes one or more rare-earth ions.
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`Claim 78 (Currently amended): The methoa reactor of Gleim claim 76 wherein the
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`alloyed target includes Si and AL
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`Claim 79 (Currently amended): The methed reactor of Gleim claim 76 wherein the
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`alloyed target includes one or more elements taken from a set consisting of Si, Al, Er, Yb, Zn,
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`Ga, Ge, P, As, Sn, Sb, Pb, Ag, Au, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy Ho, Tm, and Lu.
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`Claim 80 (Currently amended): The methoa reactor of claim 76 wherein the alloyed
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`target is a tiled target.
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`Claim 81 (Currently amended): The methea reactor of claim 80 wherein each tile of the
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`tiled target is formed by prealloy atomization and hot isostatic pressing of a powder.
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`Claim 82 (Currently Amended): A reactor, comprising:
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`a target area for receiving a target;
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`a magnetic field generator supplying a magnetic field to the target:
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`-6-
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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 8 of 54
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`a substrate area opposite the target area for receiving a substrate; and
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`a pulsed DC power supply coupled to the target,
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`wherein a material is deposited on the substrate when pulsed DC power from the pulsed
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`DC power supply is applied to the target in the presence of a process gas andThe methoa of
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`elaim 03, •NheFeiB the material is an oxide film formed by reactive sputtering in metallic mode.
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`Claim 83 (Currently Amended): A reactor. comprising:
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`a target area for receiving a target;
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`a magnetic field generator supplying a magnetic field to the target;
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`a substrate area opposite the target area for receiving a substrate; and
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`a pulsed DC power supply coupled to the target,
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`wherein a material is deposited on the substrate when pulsed DC power from the pulsed
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`DC power supply is applied to the target in the presence of a process gas and The methea of
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`elaim 03, \VBeFeiB the material is an oxide film formed by reactive sputtering in poison mode.
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`Claim 84 (Currently Amended): A reactor, comprising:
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`a target area for receiving a target;
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`a magnetic field generator supplying a magnetic field to the target:
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`a substrate area opposite the target area for receiving a substrate; and
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`a pulsed DC power supply coupled to the target,
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`wherein a material is deposited on the substrate when pulsed DC power from the pulsed
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`DC power supply is applied to the target in the presence of a process gas andThe methoa of
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`elaim 03, wheFeiB the target is reconditioned.
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`Claim 85 (New): A method of depositing a film on a substrate, comprising:
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`providing a process gas between a target and a substrate;
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`providing pulsed DC power to the target;
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`providing a magnetic field to the target; and
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`wherein a material is deposited on the substrate, and an oxide film is formed by reactive
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`sputtering in transition mode.
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`-7-
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`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 9 of 54
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`Claim 86 (New) A reactor, comprising:
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`a target area for receiving a target;
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`a magnetic field generator supplying a magnetic field to the target;
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`a substrate area opposite the target area for receiving a substrate; and
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`a pulsed DC power supply coupled to the target,
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`wherein a material is deposited on the substrate when pulsed DC power from the pulsed
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`DC power supply is applied to the target in the presence of a process gas and the material is an
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`oxide film formed by reactive sputtering in transition mode.
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`Claim 87 (New): The method according to claims 59, 60, or 85, further comprising:
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`providing a narrow-band RF filter between the pulsed DC power supply and the
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`target; and
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`providing an RF bias to the substrate.
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`Claim 88 (New): The method according to claim 87, wherein the narrow-band RF filter
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`has a bandwidth of about 100 kHz.
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`Claim 89 (New): The method according to claim 87, wherein the RF bias has a frequency
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`of about 2 MHz.
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`Claim 90 (New): The reactor according to claims 82, 83, or 86, further comprising:
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`an RF power supply coupled to the substrate to provide an RF bias; and
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`a RF filter coupled between the pulsed DC power supply and the target.
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`Claim 91 (New): The reactor according to claim 90, wherein the RF filter has a narrow
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`bandwidth of about 100 kHz.
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`Claim 92 (New): The reactor according to claim 90, wherein the RF power supply
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`provides RF power at about 2 MHz.
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`-8-
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`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 10 of 54
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`REMARKS
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`Claims 40-84 are pending in the above identified application. The Examiner has rejected
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`claims 40-58 and 63-81 and objected to claims 59-62 and 82-84. In this Amendment, claims 40,
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`44,63, and 67 have been canceled, without prejudice or disclaimer. Claims 41-43, 45-66, and
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`68-84 have been amended. New claims 85-92 have been added.
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`Claim Objections
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`The Examiner objected to claims 40 and 59-61 in order to correct typographical errors.
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`In response, Applicants amend the claims to correct these typographical errors. Claim 40 has
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`been canceled from this application. Claims 59 and 60 have been amended so that "the oxide" is
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`replaced with "an oxide." Claim 61 has been amended so that "the metallic" is replaced with "a
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`metallic." Therefore, Applicants request that the Examiner remove the objections to the claims.
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`Claim Rejections under 35 U.S.C. § 102
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`The Examiner has rejected claims 40, 44, 45, 47, 49, 51, 52, 63, 67, 68, 70, 72, 74, and 75
`
`under 35 U.S.C. 102(b) as being anticipated by Smolanoff et al. (U.S. Patent No. 6,117,279;
`
`hereafter "Smolanoff'). Without acquiescing to any of the Examiner's comments regarding the
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`prior art or comparisons of the teachings of the prior art with the claimed invention, Applicants
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`has amended the application to include only claims that are currently allowed by the Examiner
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`and claims that depend from those allowed claims. Applicants reserve the right to pursue the
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`originally filed claims in a separate application.
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`Claims 40, 44, 63, and 67 have been canceled.
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`-9-
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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 11 of 54
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`Claims 47, 49, and 51-52 have been amended to depend, directly or indirectly, from
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`claims 59, 60, and 85. Claims 59 and 60 have been allowed by the Examiner. Claim 85,
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`although a newly added claim, is allowable as is discussed below.
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`Claims 68, 70, 72, and 74-75 have been amended to depend, directly or indirectly, from
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`claims 82, 83, or 86. Claims 82 and 83 have been allowed by the Examiner. Claim 86, although
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`a newly added claim, is allowable as is discussed below.
`
`Therefore, claims 45, 47, 49, 51, 52, 68, 70, 72, 74, and 75 are currently allowable.
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`Claim Rejections under 35 U.S.C. § 103
`
`Applicants respectfully traverse the rejection of claims 41, 42, 46, 48, 50, 64, 65, 69, 71,
`
`and 73 under 35 U.S.C. § 103(a) as allegedly being unpatentable over Smolanoff in view of Chen
`
`et al. (U.S. Publication No. 2004/0077161; hereafter"Chen").
`
`Claims 41, 42, 46, 48, and 50 have been amended to depend from claims 59 or 60, which
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`have been allowed by the Examiner, or claim 85, which is allowable as discussed below. Claims
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`64, 65, 69, 71, and 73 have been amended to depend from claims 82 or 83, which have been
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`amended by the Examiner, or claim 86, which is allowable as is discussed below. Therefore,
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`claims 41, 42, 46, 48, 50, 64, 65, 69, and 71, as amended, are allowable. Applicants do not
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`acquiesce in the Examiner's characterization of the claims or prior art and reserve the right to
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`l'ursue the claims in their original scope in a separate application.
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`The Examiner has rejected claims 43, 53-58, 66, and 76-81under35 U.S.C. § 103(a) as
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`allegedly being unpatentable over Smolanoff in view ofMilonopoulou et al. (U.S. Publication
`
`No. 2003/0175142; hereafter "Milonopoulou").
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`-10-
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`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 12 of 54
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`Claims 43 and 53-58 have been amended to depend, directly or indirectly, from claims 59
`
`or 60, which have been allowed by the Examiner, or claim 85, which is allowable as discussed
`
`below. Claims 66 and 76-81 depend, directly or indirectly, from claims 82 or 83, which have
`
`been allowed by the Examiner, or claim 86, which is allowable as discussed below. Therefore,
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`claims 43, 53-58, 66, and 76-81, as amended, are allowable. Applicants do not acquiesce in the
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`Examiner's characterization of the claims or prior art and reserve the right to pursue the claims in
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`their original scope in a separate application.
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`Allowable Subject Matter
`
`Applicants thanks the Examiner for indicating that claims 59-62 and 82-84 would be
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`allowable if they included the features of the claims 40 and 63, respectively. Applicants has
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`amended claims 59-62 and 82-84 to be in independent form and to include the features of the
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`claims 40 and 63. Therefore, as indicated by the Examiner, claims 59-62 and 82-84 are
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`allowable over the prior art.
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`New Claims
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`New claims 85-91 have been added. Claims 85 and 86 are independent claims similar in
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`scope to allowed claims 59 and 82, respectively, except that the new claims claim the transition
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`mode operating region instead of the metallic mode or poison mode regions. Such operation is
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`discussed in the specification, for example, in paragraph [0114]. Claims 85 and 86 are allowable
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`over the prior art for at least the same reasons as is claims 59 and 82.
`
`The subject matter of claims 87 and 90 is shown, for example, in Figure IA and
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`discussed, for example, in paragraph [0050].
`
`The subject matter of claims 88-89 and 91 is discussed, for example, in paragraph [0054].
`
`-11-
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`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 13 of 54
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`Conclusion
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`In view of the foregoing amendments and remarks, Applicants respectfully requests
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`reconsideration and reexamination of this application and the timely allowance of the pending
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`claims.
`
`Please grant any extensions of time required to enter this response and charge any
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`additional required fees to Deposit Account No. 06-0916.
`
`Respectfully submitted,
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`Date: July 25, 2005
`
`EXPRESS MAIL LABEL NO.
`EV 727732357 US
`
`-12-
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`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 14 of 54
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addn:ss: COMMISSIONER FOR PATENTS
`P.O. Box l4SO
`Alexandria, Virginia 223 l3-14SO
`www .uspt0.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCK.ET NO.
`
`CONFIRMATION NO.
`
`10/954,182
`
`10/01/2004
`
`Hongmei Zhang
`
`09140-0016-01000
`
`9873
`
`22852
`7590
`10/25/2005
`FINNEGAN, HENDERSON, FARABOW, GARRETI & DUNNER
`LLP
`901 NEW YORK A VENUE, NW
`WASHINGTON, DC 20001-4413
`
`EXAMINER
`
`ESTRADA, MICHELLE
`
`ART UNIT
`
`2823
`
`PAPER NUMBER
`
`DATE MAILED: I 012512005
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`

`

`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 15 of 54
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`10/954,182
`
`Examiner
`
`ZHANG ET AL
`
`Art Unit
`
`~
`
`.....
`
`2823
`Michelle Estrada
`•• The MAILING DA TE of this communication appears on the cover sheet with the correspondence address ••
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE~ MONTH{S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum staMory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`•
`• Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`Status
`
`1 )[gl Responsive to communication(s) filed on 25 July 2005.
`2a)0 This action is FINAL.
`2b)[gl This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)[gl Claim(s) 41-62.64-66 and 68-92 is/are pending in the application.
`4a) Of the above claim(s) 64-66.68-84.86 and 90-92 is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[gl Claim(s) 41-62.85 and 87-89 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`10)0 The drawing{s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some* c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachmant(s)
`1) 0 Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) 0 Information Disclosure Statement(s) (PT0-1449 or PTO/SB/08)
`Paper No(s)/Mail Date __ .
`
`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application (PT0-152)
`6) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 7-05)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20051017
`
`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 16 of 54
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`Application/Control Number: 10/954, 182
`Art Unit: 2823
`
`Page2
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`DETAILED ACTION
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`Nevv:ly submitted claims 64-84, 86 and 90-92 are directed to an invention that is
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`independent or distinct from the invention originally claimed for the following reasons:
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`these claims are directed to an apparatus and the originally examined claims are
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`directed to a process.
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`Since applicant has received an action on the merits for the originally presented
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`invention, this invention has. been constructively elected by original presentation for
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`prosecution on the merits. Accordingly, claims 64-84, 86 and 90-92 are withdrawn from
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`consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and
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`MPEP § 821.03.
`
`Claim Rejections - 35 USC§ 112
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112:
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`The specification shall contain a written description of the invention, and of the manner and process of
`making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the
`art to which it pertains, or with which it is most nearly connected, to make and use the same and shall
`set forth the best mode contemplated by the inventor of carrying out his invention.
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`Claims 41-62, 85 and 87-89 are rejected under 35 U.S.C. 112, first paragraph, as
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`failing to comply with the written description requirement. The claim(s) contains subject
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`matter which was not described in the specification in such a way as to reasonably
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`convey to one skilled in the relevant art that the inventor(s), at the time the application
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`was filed, had possession of the claimed invention.. There is no description in the
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`specification as originally filed of what is a "metallic mode", a "poison mode" and a
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`"transition mode".
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`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 17 of 54
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`Application/Control Number: 10/954, 182
`Art Unit: 2823
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`Page 3
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`Claims 41-62, 85 and 87-89 are rejected under 35 U.S.C. 112, first paragraph, as
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`failing to comply with the enablement requirement. The claim(s} contains subject matter
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`which was not described in the specification in such a way as to enable one skilled in
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`the art to which it pertains, or with which it is most nearly connected, to make and/or use
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`the invention. There is no description of what is a "metallic mode", a "poison mode" and
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`a "transition mode" as discussed above and therefore insufficient guidance to enable
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`one of ordinary skill in the art to determine suitable conditions to achieve the instant
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`invention.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Michelle Estrada whose telephone number is 571-272-
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`1858. The examiner can normally be reached on Monday through Friday.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Matthew Smith can be reached on 571-272-1907. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`Any inquiry of a general nature or relating to the status of this application or
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`proceeding should be directed to the receptionist whose telephone number is 571-272-
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`2800.
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`Information regarding the status of an application may be obtained from the
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`Patent Application
`
`Information Retrieval (PAIR) system.
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`Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 18 of 54
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`Application/Control Number: 10/954, 182
`Art Unit: 2823
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`Page4
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free).
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`c@E~
`
`Patent Examiner
`Art Unit 2823
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`ME
`October 17, 2005
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`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 19 of 54
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`~Y."' /
`
`PATENT
`Customer No. 22,852
`Attorney Docket No. 9140.0016-01
`
`IN THE UNITED ST ATES PATENT AND TRADEMARK OFFICE
`
`)
`)
`) Group Art Unit: 2823
`)
`) Examiner: ESTRADA, Michelle
`)
`)
`) Confirmation No.: 9873
`)
`)
`
`In re Application of:
`
`ZHANG, Hongmei et al.
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`Application No.: 10/954,182
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`Filed: October 1, 2004
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`For: BIASED PULSE DC REACTIVE
`SPUTTERING OF OXIDE FILMS
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`MAIL STOP AMENDMENT
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`AMENDMENT AND RESPONSE TO OFFICE ACTION
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`In reply to the Office Action mailed October 25, 2005, please amend the above-identified
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`application as follows:
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`Amendments to the Ciaims are reflected in the listing of claims that begins on page 2 of
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`this paper.
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`Remarks/Argumen.ts follow the amendment sections on page 6 of this paper.
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`

`

`...
`
`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 20 of 54
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`AMENDMENTS TO THE CLAIMS:
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`This listing of claims will replace all prior versions and listings of claims in the
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`application:
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`Claims 1-39 (Canceled).
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`Claim 40 (Canceled).
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`Claim 41 (Previously presented): The method of claims 59, 60, or 85, wherein the target
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`is a metallic target and the process gas includes oxygen.
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`Claim 42 (Previously presented): The method of claims 59, 60, or 85, wherein the target
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`is a metallic target and the process gas includes one or more of a set consisting of N2, NH3, CO,
`NO, C02, halide containing gasses.
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`Claim 43 (Previously presented): The method of claims 59, 60, or 85, wherein the target
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`is a ceramic target.
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`Claim 44 (Canceled):
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`Claim 45 (Previously presented): The method of claims 59, 60, or 85, wherein the
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`magnetic field is provided by a moving magnetron.
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`Claim 46 (Previously presented) The method of claims 59, 60, or 85, further including
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`holding the temperature of the substrate substantially constant.
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`Claim 47 (Previously presented): The method of claims 59, 60, or 85, wherein the
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`process gas includes a mixture of Oxygen and Argon.
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`Claim 48 (Previously presented): The method of claims 59, 60, or 85, wherein the
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`Oxygen flow is adjusted to adjust the index of refraction of the film.
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`-2-
`
`

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`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 21 of 54
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`Claim 49 (Previously presented): The method of claims 59, 60, or 85, wherein the
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`process gas further includes nitrogen.
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`Claim 50 (Previously presented): The method of claims 59, 60, or 85, wherein providing
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`pulsed DC power to a target includes providing pulsed DC power to a target which has an area
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`larger than that of the substrate.
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`Claim 51 (Previously presentep): The method of claims 59, 60, or 85, further including
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`uniformly sweeping the target with a magnetic field.
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`Claim 52 (Previously presented): The method of claim 51 wherein uniformly sweeping
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`the target with a magnetic field includes sweeping a magnet in one direction across the target
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`where the magnet extends beyond the target in the opposite direction.
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`Claim 53 (Previously presented): The method of claims 59, 60, or 85, wherein the target
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`is an alloyed target.
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`Claim 54 (Previously presented): The method of claim 53 wherein the alloyed target
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`includes one or more rare-earth ions.
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`Claim 55 (Previously presented): The method of claim 53 wherein the alloyed target
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`includes Si and Al.
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`Claim 56 (Previously presented): The method of claim 53 wherein the alloyed target
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`includes one or more elements taken from a set consisting of Si, Al, Er, Yb, Zn, Ga, Ge, P, As,
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`Sn, Sb, Pb, Ag, Au, Ce, Pr, Nd,' Pm, Sm, Eu, Gd, Tb, Dy Ho, Tm, and Lu.
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`Claim 57 (Previously presented): The method of claim 53 wherein the alloyed target is a
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`tiled target.
`
`-3-
`
`

`

`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 22 of 54
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`Claim 58 (Previously presented): The method of claim 57 wherein each tile of the tiled
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`target is formed by prealloy atomization and hot isostatic pressing of a powder.
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`Claim 59 (Previously presented): A method of depositing a film on a substrate,
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`comprising:
`
`providing a process gas between a target and a substrate;
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`providing pulsed DC power to the target;
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`providing a magnetic field to the target; and
`
`wherein a material is deposited on the substrate, and
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`an oxide film is formed by reactive sputtering in metallic mode.
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`Claim 60 (Previously presented): A method of depositing a film on a substrate,
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`comprising:
`
`providing a process gas between a target and a substrate;
`
`providing pulsed DC power to the target;
`
`providing a magnetic field to the target; and
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`wherein a material is deposited on the substrate, and an oxide film is formed by reactive
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`sputtering in poison mode.
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`Claim 61 (Previously presented): A method of depositing a film on a substrate,
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`comprising:
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`providing a process gas between a metallic target and a substrate;
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`providing pulsed DC power to the target;
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`providing a magnetic field to the target; and
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`reconditioning a metallic target;
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`wherein a material is deposited on the substrate.
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`Claim 62 (Previously presented): The method of claim 61, wherein reconditioning the
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`metallic target includes:
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`reactive· sputtering in the metallic mode and then reactive sputtering in the poison mode.
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`-4-
`
`

`

`Case 6:20-cv-00636-ADA Document 145-4 Filed 12/10/21 Page 23 of 54
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`Claims 63-84 (Canceled).
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`Claim 85 (Currently amended): A method of depositing a film on a substrate,
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`comprising:
`
`providing a process gas between a target and a substrate;
`
`providing pulsed DC power to the target;
`
`providing a magnetic field to the target; and
`
`wherein a material is deposited on the substrate, and an oxide film is formed by reactive
`
`sputtering in traesitiee meae a mode between a metallic mode and a poison mode.
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`Claim 86 (Canceled).
`
`Claim 87