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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/11/2026 has been entered.
Election/Restrictions
Newly submitted claims 20-21 are directed to an invention that is independent or distinct from the invention elected in the restriction requirement of 03/18/2025 for the following reasons:
Claim 20 is drawn to a method of using the molybdenum oxychloride of Claim 2, and would be properly restricted from the invention of Claim 2 as a method of using the product thereof.
Claim 21 is drawn to a thin film that was produced using the compound of Claim 2 as a precursor material, which would be properly restricted from the invention of Claim 2 as being an unrelated product claim. Particularly, while Claim 21 references the compound of Claim 2, it does not require any of the limitations thereof, being drawn to a product-by-process.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, Claims 20-21 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 10-13 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 05/14/2025.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 2, 4-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (WO2020021786A1), hereinafter ‘Takahashi’.
All references to the above foreign language document made herein are made according to the English equivalent of said publication, US20210009436A1.
Regarding Claim 2, Takahashi does not disclose a molybdenum oxychloride compound characterized in having a purity of 99.9999 wt % or higher.
However, Takahashi discloses a molybdenum oxychloride having a purity of 99.999 wt% or above ([0029]), which significantly overlaps with the instantly claimed range, and also discloses that it is also possible to simultaneously reduce impurities and improve the purity of said molybdenum oxychloride such that it is possible to improve the operability of deposition and chemical reaction, as well as improve the performance and characteristics of the produced thin film and compound ([0030]) – it is also noted that particular materials contemplated by Takahashi, such as MoO2Cl2, have high utility value as a raw material of CVD or ALD ([0040]), wherein such thin films are formed.
Given the overlapping range of purity between the prior art and the instant claimed invention, and given that Takahashi disclose advantages associated with improved purity such as improved operability of deposition and chemical reaction, as well as improved performance and characteristics of the produced thin film and compound, one of ordinary skill in the art before the effective filing date of the claimed invention would have found obvious the instant claimed range, as one of skill in the art would have been motivated to further refine a molybdenum oxychloride beyond the minimum 99.999 wt% disclosed by Takahashi in order to achieve optimum operability of deposition and performance and characteristics of the produced thin film and compound, resulting in a molybdenum oxychloride compound having the purity claimed. As set forth in MPEP 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claims 4-8, while it is noted that Takahashi, as discussed above, aims to produce an ultra-pure molybdenum oxychloride compound having a purity of 99.999 wt% or higher, and further embodies molybdenum oxychloride compounds having 99.9995 wt% purity, which would comprise only 5 ppm impurities, Takahashi does not disclose suitable amounts of tungsten (W), iron (Fe), sodium (Na), or potassium (K) that may be permitted in the disclosed oxychloride compound, and accordingly does not disclose that a W content is less than 5 wt ppm (Claim 3), 1 wt ppm (Claims 4 and 14), or 0.1 wt ppm (Claim 5 and 15), a content of Fe is less than 0.1 wt ppm (Claim 6 and 16), an Na content is less than 0.1 wt ppm (Claim 7 and 17), or a K content is less than 1 wt ppm (Claim 8 and 18).
However, Takahashi does disclose that impurity elements anticipated in the present invention are Be, Mg, Al, K, Ga, Ge, As, Sr, Ba, W, Ti, U, Ag, Na, Co, Fe, In, Mn, Ni, Pb, Zn, Cu, Cr, Tl, Li, Th, Sc, Se, Hf, Ta, and Bi – this finite list of anticipated impurities includes all the impurities of the instant claims. Further, given that these elements are anticipated as impurities in the present invention, refining molybdenum oxychloride compounds past 99.999 wt% as disclosed by Takahashi would involve reducing amounts of these impurities to a point at which these impurities no longer contribute to the purity of the resulting compound – as disclosed by Takahashi, the purity of molybdenum oxychloride in the present invention is defined as a value obtained by analyzing the elements that are anticipated as being contained as impurities in the molybdenum oxychloride, and subtracting the total content of elements that appeared in a content above the detection limit from 100 wt % ([0048]). Further, Takahashi discloses that the content of the detection limit used in the analysis of the present invention is 0.1 ppmw for all elements indicated above except Ni and Se, and that the impurity elements of a content less than the measurement limit are deemed not to be substantially contained upon calculating the purity ([0049]), such that their presence would not be considered in calculation of purity as set forth by Takahashi.
Given the goal of Takahashi of producing an ultra-high purity molybdenum oxychloride compound for use in chemical vapor and atomic layer deposition, that impurities such W, Fe, Na, and K are expected impurities from a finite list of impurities that would need to be reduced in order to achieve the disclosed 99.999 wt% or higher purity requirement of Takahashi, and that the methods disclosed in Takahashi are directed to the reduction of such impurities, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to reduce the amounts of all expected impurities in synthesizing molybdenum oxychloride compounds by the refinement methods as disclosed by Takahashi, including W, Fe, Na, and K, in order to maximize the achieved purity of the produced molybdenum oxychloride compounds. Further, given that amounts of these compounds below the detection limit of 0.1 ppmw are disclosed to not lower the effective purity of the resulting high-purity molybdenum oxychloride, thereby implying that such amounts of these impurities do not result in adverse effects in applications for which such high-purity materials are intended, one of skill in the art would have been motivated to reduce such impurities to an amount below or as close as possible to such a detection limit, ensuring such impurities are ‘substantially absent’ from the composition, such that their presence would not influence the properties of thin films produced from such compounds.
Regarding Claim 9, Takahashi discloses molybdenum oxychloride includes one type among MoOCl2, MoOCl3, MoOCl4, and MoO2Cl2 ([0040]: the molybdenum oxychloride may be one of molybdenum dichloride dioxide (VI) (MoO2Cl2), molybdenum trichloride oxide (V) (MoOCl3), and molybdenum tetrachloride oxide (VI) (MoOCl4)).
Response to Arguments
Applicant’s arguments, filed 04/11/2026, are acknowledged.
With respect to arguments in regard to prior art rejections under section 103, Applicant’s arguments have been fully considered but are not persuasive. These rejections, as repeated above, are maintained.
Applicant argues that the method utilized by Takahashi makes achieving a molybdenum oxychloride as claimed impossible without undue experimentation. Particularly, applicant argues that purification by sublimation/reaggregation as taught by Takahashi makes it difficult to reduce impurities such as W and Fe, which have high vapor pressures and are hard to separate by sublimation (Remarks, Page 7), and that, consequentially, the technique of Takahashi cannot sufficiently reduce impurities that are physically difficult to separate without the use of techniques described by the instant invention, such as the implementation of impurity traps and temperature control (Remarks, Page 8 and 9).
These arguments are not persuasive because there exists no factual evidence on the record to show that such considerations, such as temperature control and impurity traps, would improve the purity of the resulting product beyond what is achievable using the methods described by Takahashi alone. The arguments only point out differences in the production method between the instant invention and the prior art without conclusively proving such differences result in a product materially different from that which is claimed. Applicant has provided no factual showing that these considerations or their absence necessarily make achieving the claimed purity within the prior art impossible, or even improbable, by routine experimentation within the prior art conditions. Arguments of counsel cannot take the place of factual evidence when such is required - see MPEP 2145.
Further, Applicant argues that examples produced by the method required by Takahashi have purity only up to 5N5, not the > 6N as required by Claim 2 (Page 6-7, 9 of remarks). This argument is not persuasive because the argument narrowly considers only the results of specific examples rather than considering the disclosure of Takahashi as a whole. “Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
In this case, while it is true that the examples of Takahashi do not disclose embodiments wherein the purity of the resulting compound is greater than 5N5, this fails to consider the broader teaching of Takahashi that aims to produce a molybdenum oxychloride having a purity of 99.999 wt% or above, which clearly encompasses the purity as required by Claim 2. Takahashi explicitly discloses that the purity of the produced molybdenum oxychloride will have a purity of…(5N) or higher ([0048]). Worked examples do not necessarily limit a broader express teaching, especially when the reference discloses a range of purity which includes that which is claimed. Without evidence, this conclusion is amounts to argument without factual evidence where such evidence is required.
Further, as held in In re Cofer, 354 F.2d 664, 148 USPQ 268 (CCPA 1966), factors to be considered in determining whether a purified form of an old product is obvious over the prior art include whether the claimed chemical compound or composition has the same utility as closely related materials in the prior art, and whether the prior art suggests the particular form or structure of the claimed material or suitable methods of obtaining that form or structure. See also MPEP 2144.04 (VII).
In the instant case, the claimed chemical compound or composition has the same utility as closely related materials in the prior art. Namely, both the claimed chemical compound and the compound of the prior art can be suitably applied to a material for vapor phase growth of thin films in methods such as chemical vapor deposition and atomic layer deposition for use in electronics (Takahashi, [0002]-[0005]; instant published specification, [0002]-[0005]).
Further, the prior art suggests the particular form or structure of the claimed material or suitable methods of obtaining that form or structure. In the instant case, the particular form/structure of the claimed material is not further defined outside of the claimed purity range – the claim does not require any other particular structure or form outside said purity, which is suggested by the prior art. Looking to the specification, it is clear that both the products of the instant application and the prior art may take the form of a film, as discussed above.
In view of these facts, and absent evidence to the contrary, there exists a prima facie case of obviousness over the claimed product in view of Takahashi. In order to persuasively show non-obviousness, Applicant is encouraged to submit factual evidence showing the considerations cited in the remarks, including the use of impurity traps, temperature control, sublimation, reaggregation, and other means of controlling the process for producing the claimed product, necessarily differentiate the claimed product from that of the prior art.
Conclusion
All claims in this continued examination request are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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 LOGAN LACLAIR whose telephone number is (571)272-1815. The examiner can normally be reached M-F, 7:30-5:30 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./ Examiner, Art Unit 1736
/ANTHONY J ZIMMER/ Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights