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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/6/2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group 1 claims 1-12, and Compound B, specifically 2-isopropoxy-2,4,6,8-tetramethylcyclotetrasiloxane in the reply filed on 12/17/2024 is acknowledged.
Claims 6, 8, 10 and 13-22 are withdrawn.
Response to Amendment
The amendment filed 4/6/2026 is entered and fully considered.
The amendment changes the transitional language from “comprising” to “consisting essentially of”. The new language excludes additional components that would “materially affect the basic and novel characteristics” of the claimed invention. However, applicant has not argued what additional components in the prior art would materially change the characteristics of the composition. According to MPEP 2111.03.III, applicant has the burden of showing that the introduction of additional step or components would materially change the characteristics of the invention.
Response to Arguments
Applicant argues the OGASAWARA reference is too broad and encompasses too many species to teach the specific elected compound. The examiner is not persuaded by the argument because the reference is generically describing cyclosiloxanes in the simplest way possible. It is further noted that the reference specifically states that 2,4,6,8-tetramethylcyclotretrasiloxane is a preferred compound [0016]. From this preferred compound there is only one change in substituent to arrive at the elected compound. The examiner further notes that the comparative properties of the compounds is determined by computer modeling which indicates that they are entirely predictable.
Applicant argues that the MAYORGA reference does not remedy deficiencies of OGASAWARA. However, the rejection over MAYORGA stands on its own. Applicant also argues the compound of MAYORGA are not used for FCVD. However, the claim is a composition and is not limited by its intended use. Applicant finally argues the MAYORGA reference does not state any advantages of the compounds used. However, this is not a requirement when determining the scope and content of the reference when compared to the claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5, 7, 9, 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over OGASAWARA et al. (US 2007/0232821).
Regarding claims 1-5 and 7,
OGASAWARA teaches a stabilizing compound abstract that can be cyclic [0012] shown in general formula I:
PNG
media_image1.png
202
204
media_image1.png
Greyscale
The “n” group can be 3 corresponding to the 8 member ring of the elected species [0012]. Formula clearly shows 1 required H group which is also required in applicant’s compounds. The remaining R groups are hydrogen, C1-8 alkyl or alkoxy groups overlapping and homologs to the C1-10 groups claimed [0012]. When the R groups are methyl groups (C1 alkyl), hydrogen (H) and a single alkoxy group (C3 isopropoxy) the generic formula corresponds to the elected species.
The reference does not expressly teach the C3 as a branched (isopropoxy) alkyl. However, when teaching a C1-4 alkoxy group, the straight chain and branched alkyls are considered prima facie obvious as isomers, MPEP 2144.09.II.
Regarding claims 9, 11 and 12,
As described above, the reference teaches the compounds corresponding to claimed formula B. Looking more broadly at the reference, the “n” group could also be 2 or 4 corresponding to the non-elected species. Accordingly, the reference teaches each of the general formulas A-C. The reference does not teach mixing compounds together. However, the same reference is teaching the same generic formula that corresponds to each of the formula A-C. Accordingly, the compounds are each considered equivalents of each other according to the reference. The combination of equivalents known for the same purpose is prima facie obvious, MPEP 2144.06.
Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over MAYORGA et al. (EP 1321469).
Regarding claims 1-5 and 7,
MAYORGA teaches a compound used for stabilizing a precursor for CVD process abstract. The compound has formula:
PNG
media_image2.png
216
224
media_image2.png
Greyscale
In the formula, R1-7 are hydrogen, a C1-10 alkyl, or C1-4 alkoxy group [0013].
The generic formula corresponds to the elected 2-isopropoxy-2,4,6,8-tetramethylcyclotetrasiloxane -- when placed together:
PNG
media_image3.png
180
154
media_image3.png
Greyscale
PNG
media_image2.png
216
224
media_image2.png
Greyscale
The generic formula on the right corresponds to the elected species, when;
R1, R3, R5, and R7 are methyl (C1 alkyl group);
R2 and R6 are hydrogen; and
R4 is C3 alkoxy.
The reference does not expressly teach the C3 as a branched (isopropoxy) alkyl. However, when teaching a C1-4 alkoxy group, the straight chain and branched alkyls are considered prima facie obvious as isomers, MPEP 2144.09.II.
Looking at the other species in claim 7, each of the R groups from MAYORGA can similarly be selected to make each compound. Each alkoxy group are C1-4 in claim 7 as described in the reference. The remaining R groups are methyl (C1) and hydrogen (H). Looking further to the sub-genus Compound B. The examiner further notes that although the generic claim 1 can use alkoxy groups of up to 10 carbons (C10) the increasing length of carbon chains (homologs) may also be considered obvious over the same section of the MPEP.
The reference does not provide a single example in which the particular R group choices described above are made. However, the reference may be relied upon for all that it teaches. In this case, one of ordinary skill in the art is taught how to make a large number of compounds while staying within the disclosure. Each of the compounds is considered prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUSTIN MURATA/Primary Examiner, Art Unit 1712
Prosecution Insights