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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 6, 2026 has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al. (US 2011/0281090) in view of the evidence of Chemical Book (2-Bromo-2-methylpropane, Chemical Safety Data Sheet MSDS/SDS, 2025).
Considering Claim 1 and 2: Watanabe et al. teaches tert-butyl bromide/ a compound of chemical formula 1 where A is carbon, n is 1, B is an alkyl group with one carbon atom, X is a halogen with a bond dissociation of 292.86 (See Table 1 of the original specification), o is 1, and i and j are zero (¶0115). The compound is used in preparing thin films (Abstract).
As shown by Chemical Book, tert-butyl bromide is liquid at room temperature, has a density of 1.22 g/mL, a vapor pressure of 179.9 hPa/135 mmHg, and is insoluble in water.
Watanabe et al. teaches the identical claimed chemical structure of chemical formula I, and teaches the claimed liquid state, density, vapor pressure, solubility, and bond dissociation energy. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. While Watanabe et al. does not teach the claimed interactions with the thin film, these interactions do not change the structure of the compound itself, which is controlled by Chemical Formula 1.
Watanabe et al. does not teach that the compound is a growth inhibitor. However, this is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Considering Claim 4: Watanabe et al. does not teach that the compound is used in an atomic layer deposition process. However, this is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Response to Arguments
Applicant's arguments filed March 18, 2026 have been fully considered but they are not persuasive, because:
The applicant’s argument that Watanabe et al. does not teach the claimed interactions with the thin film is not persuasive. Watanabe et al. teaches the identical claimed chemical structure of chemical formula I, and teaches the claimed liquid state, density, vapor pressure, solubility, and bond dissociation energy. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. While Watanabe et al. does not teach the claimed interactions with the thin film, these interactions do not change the structure of the compound itself, which is controlled by Chemical Formula 1.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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