Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Interview Summary
As the only issue preventing allowance of the Application is presence of Claim 5, Examiner inquired whether Counsel would be amenable to cancelling claim 5 so that the Application would be passed to issuance.
Examiner attempted to demonstrate how even if, arguendo, the claimed at% were indeed relative proportions as Counsel alleges, claim 5 would still contradict certain limitations of claim 1. Namely, Examiner noted that claim 1 is concerned with relative content of elements summing up to 100 at%, whereas claim 5 as phrase is concerned with relative subscripts summing up to 100 at%. Noting that claim 1 requires content of N in MobNy to be at least 35 at%, Examiner noted that there are various situations of (Mox)c(Nu)d (an empirical formula within the range recited in claim 5) in which content of N is below the 35 at% threshold.
Examiner noted how the proviso in claim 5 that c/d=3, with c/d being the relative content of Mo to N, effectively means that N is at most 25 at%, and is as such outside the range of 35 to 45 at% required in claim 1. Furthermore, because claim 5 is recited to require sum of the subscripts to sum up to 100 at%, this subportion of the empirical formula in which no other elements are included does not sum up to 100 at%, because it would require each of subscripts x and u to be 25 at%. Were the subscripts instead 50 at% for each (as to satisfy the proviso in claim 5 that x + u = 100 at%), the actual content would then be 150% of Mo to 50% N, which contradicts the statement that relative atomic content summing up to 100%, not to mention relative ratio is still greater than the high bound of 65:35.
Even assuming Applicant somehow intended claim 5 to mean total content of metallic elements to be at most 65 at% and total content of non-metallic elements to be at least 35 at% (as to stay within the proviso of claim 1), this would still contradict requirement of claim 5 that c/d =3, because this ratio of c/d fixes total relative content of non-metallic elements to be 25 at% at most.
Counsel stated that due to the stoichiometric calculations involved, no agreement can be reached.
Election/Restrictions
Claim 1 is directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 14 and 15, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 26 December 2023 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Allowable Subject Matter
Claims 1-3, 6-13, 16, and 17; and claims 14 and 15 are allowed.
The following is an examiner’s statement of reasons for allowance: each prior art reference of record does not teach or suggest, either per se or in combination, all limitations of claim 1. The most pertinent prior art, deemed to be the combination of Park, JP ‘962, and Ramm, fails to teach portions of claim 1 originally found in claim 4.
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.
Claim 5 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 5 is indefinite, for it seeks to broaden the meanings of MoaNx and MobNy as already set forth in claim 1. Specifically, the inclusion of any additional element (which is expressly required) contradicts the proviso of nitrogen content and molybdenum content summing up to 100 at%.
Next, the claim is further indefinite for attempting to provide two definitions of “x”, as (MoxMz) as recited seeks to redefine “x” that is already associated with “x” of MoaNx layer.
Even if the claimed at% were indeed relative proportions as Counsel alleges, claim 5 would still contradict certain limitations of claim 1, thereby making claim 5 indefinite due to presence of contradiction(s). Namely, with the ratio c/d in claim 5 being the relative content of metallic elements (which includes Mo) to non-metallic elements (which includes N), c/d= 3 effectively means that content of N is at most 25 at% (when neither C nor O is present). Such a value is always outside the range of 35 to 45 at% required for the MobNy layer in claim 1. It also is outside the range for overwhelming proportion of 25 to 55 at% required for the MoaNx layer in claim 1. This is even more of an issue when either C or O is present, as content of N would be further diluted.
It is further noted that the above situation described in ¶ 14, value of “x” in Mox (from claim 5) is at its minimum 25 at%, which trebles to 75 at% in terms of content. The content ratio of 75:25 as defined by claim 5 exceeds the upper limit of 65:35 in claim 1. Any increase in value of “x” (in claim 5) only serves to further increase content of Mo.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As discussed in ¶¶ 12-15 above, claim 5 a) broadens the meanings of MoaNx and MobNy as already set forth in claim 1 and b) further allows values outside the bounds recited in claim 1 even if the claimed at% values were indeed relative proportions. As such, claim 5 is not a proper dependent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
As Counsel did not acknowledge the ramifications of the proviso in claim 5 that c/d=3 on content of Mo to N, Counsel’s arguments are not persuasive. These issues apply even if the claimed at% values were indeed relative proportions as alleged by Counsel.
Next, on whether the claimed at% values were indeed relative proportions, contrary to Counsel’s contentions, no indication is found in the specification stating that the claimed at% are relative proportions. The specification is simply silent on this.
As an aside that addresses Counsel’s tangential points, Counsel selectively elided pertinent and dispositive discussion on claim interpretation, such elision a recurring feature of Counsel’s gainsaying in a series of responses. For Counsel’s benefit, discussions regarding intrinsic evidence on claim interpretation can be located at items 3-6 of the Non-Final Office Action of 24 November 2025. Interpretation for claimed subject matter is drawn solely from the specification as filed, as discussed at items 3-6 of the Non-Final Office Action of 24 November 2025.
Concluding Remarks
THIS ACTION IS MADE FINAL. 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 Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached on (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights