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 .
Election/Restrictions
Claims 1-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 09/24/2025.
Claim Interpretation
It is noted that “the germane decomposition” as recited by Claims 16-18 is not considered lacking clear antecedent basis in the claims, despite the term not appearing in Claim 12. In light of the context of the claims and specification, it is reasonably clear that “the germane decomposition” refers to the passive decomposition of germane within the claimed storage vessel over time, i.e., for a period of 365 days stored at ambient temperature, as recited by Claims 16-18. See, e.g., [0004], [0035] of the instant published specification.
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.
Claim(s) 12-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20150352519A1, hereinafter ‘Kim’.
Regarding Claim 12, Kim discloses a storage vessel containing an adsorbent ([0004], [0006]: the disclosed invention comprises the integration of a metal organic framework (MOF) adsorbent into a cylinder, considered a storage vessel) comprising:
zeolitic imidazolate framework (ZIF) adsorbent ([0040]: a selection of MOFs, including ZIF-8, a ZIF adsorbent, were synthesized and filled with electronic gases); and
germane adsorbed on at least a portion of the ZIF adsorbent ([0034]: MOFs within the context of the invention may have favorable performance characteristics for storage of electronic gases including those shown in Table 1 – it is noted that germane is one of the electronic gases within this table; [0041]: the invention includes the use of MOFs with storage capacities for a variety of different gases used to manufacture semiconductors, including germane. Given this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize a ZIF-8 MOF adsorbent, as discussed above, to adsorb and store germane using the methods of the disclosed invention, as one of ordinary skill in the art would have expected favorable performance in storing germane using ZIF-8 per the disclosure of Kim).
Further regarding Claim 12, with regard to the language ‘wherein the storage vessel is used for dispensing germane from the storage vessel’, it is noted that this phrase is the intended use of the claimed storage vessel. Limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II). In the instant case, Kim discloses that the inventive storage vessel is capable of such a function ([0006]: another embodiment relates to a method of using an MOF including filling an MOF-filled cylinder with an electronic gas, storing the gas in the cylinder, and dispensing the electronic gas). Therefore, the storage vessel taught by Kim is commensurately capable of providing for such intended uses in as much as recited and required herein, and therefore Kim meets this intended use limitation as claimed.
Regarding Claims 13-15, Kim makes obvious a storage vessel wherein the storage vessel has a storage capacity of at least 100 g/L, 200 g/L, and 300 g/L of germane per liter of adsorbent ([0035]: an embodiment includes providing a deliverable adsorption capacity of between 70 and 840 g/L for the adsorbed electronic gas).
Furthermore, however, it is noted that the disclosure of Kim states, regarding storage capacity, that “the metal ion and the organic ligand [of the MOF] are selected to provide a deliverable adsorption capacity of at least 70 g/L” – this implies that the particular choice of MOF and electronic gas influences the adsorption capacity, and that not every combination of adsorbent and electronic gas may be able to provide a deliverable adsorption capacity of up to 840 g/L as disclosed. Therefore, the disclosure of Kim does not explicitly disclose that a storage vessel comprising germane adsorbed on ZIF-8 may exhibit adsorption capacities of up to 840 g/L.
However, the storage vessel as suggested by Kim, including a ZIF-8 adsorbent comprising adsorbed germane, possesses a substantially identical composition to that of the instant invention. Both the instant invention and the storage vessel suggested by Kim comprise ZIF-8 (see, e.g., [0046] and [0027] of the instant published specification) having identical pore size ([0028] of the instant publication of the invention; further, [0029] of the instant published specification shows that ZIF-8 has a characteristic pore size of 3.4 Å, meaning that the ZIF-8 of Kim must also possess such a pore size; [0038] of Kim), and identical BET surface areas ([0055] of the instant published specification; [0038] of Kim). Furthermore, as discussed above, the disclosure of Kim reasonably suggests the claimed storage vessel of Claim 1, wherein germane is adsorbed upon a ZIF adsorbent. Therefore, it is clear that the composition of the storage vessel as suggested by Kim is substantially identical to that claimed.
Given the substantial similarities of the storage vessels between the prior art and the claimed invention, the instant fact pattern resembles that of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), wherein the court held that “…where the claimed and prior art products are identical or substantially identical in structure or composition…a prima facie case of either anticipation or obviousness has been established.” See also MPEP 2112.01.
Furthermore, it is noted that the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith, as held by the court in In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) – as such, determinations of properties not disclosed by the prior art are made based on a preponderance of the evidence provided in both the prior art and the instant disclosure.
Therefore, based on the preponderance of evidence found in the disclosure of Kim and the instant specification, with particular attention paid to the use of an identical electronic gas (germane) and adsorbent (ZIF-8) having nearly the same physical properties such as BET surface area and pore size, there is a reasonable prima facie basis to conclude that the storage vessel as suggested by Kim would exhibit the same or nearly the same properties as those claimed, including a storage capacity of at least 100 g/L, at least 200 g/L, and at least 300 g/L as claimed, absent evidence to the contrary. The burden of proof now shifts to the Applicant to show that the prior art products do not necessarily or inherently possess the characteristics of the claimed product - see MPEP 2112(V).
Regarding Claims 16-18, Kim does not disclose the degree of degradation of germane adsorbed for a period of 365 days stored at ambient temperature.
However, the storage vessel as suggested by Kim, including a ZIF-8 adsorbent comprising adsorbed germane, possesses a substantially identical composition to that of the instant invention. Both the instant invention and the storage vessel suggested by Kim comprise ZIF-8 (see, e.g., [0046] and [0027] of the instant published specification) having identical pore size ([0028] of the instant publication of the invention; further, [0029] of the instant published specification shows that ZIF-8 has a characteristic pore size of 3.4 Å, meaning that the ZIF-8 of Kim must also possess such a pore size; [0038] of Kim), and identical BET surface areas ([0055] of the instant published specification; [0038] of Kim). Furthermore, as discussed above, the disclosure of Kim reasonably suggests the claimed storage vessel of Claim 1, wherein germane is adsorbed upon a ZIF adsorbent. Therefore, it is clear that the composition of the storage vessel as suggested by Kim is substantially identical to that claimed.
Given the substantial similarities of the storage vessels between the prior art and the claimed invention, the instant fact pattern resembles that of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), wherein the court held that “…where the claimed and prior art products are identical or substantially identical in structure or composition…a prima facie case of either anticipation or obviousness has been established.” See also MPEP 2112.01.
Furthermore, it is noted that the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith, as held by the court in In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) – as such, determinations of properties not disclosed by the prior art are made based on a preponderance of the evidence provided in both the prior art and the instant disclosure.
Therefore, based on the preponderance of evidence found in the disclosure of Kim and the instant specification, with particular attention paid to the use of an identical electronic gas (germane) and adsorbent (ZIF-8) having nearly the same physical properties such as BET surface area and pore size, there is a reasonable prima facie basis to conclude that the storage vessel as suggested by Kim would exhibit the same or nearly the same properties as those claimed, including exhibiting germane decomposition of less than 2%, 0.5%, and 0.1% of the amount of germane adsorbed for a period of 365 days stored at ambient temperature as claimed, absent evidence to the contrary. The burden of proof now shifts to the Applicant to show that the prior art products do not necessarily or inherently possess the characteristics of the claimed product - see MPEP 2112(V).
Response to Arguments
Applicant’s arguments, filed 01/07/2026, 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.
Particularly, Applicant argues that Kim discloses numerous MOF types, over 40 electronic gases, and dozens of metal ions-yielding thousands of possible combinations, that Kim is silent as to whether ZIF-8 would be effective for germane storage, that Kim does not evaluate ZIF-8 with any electronic gas, and that Kim's experimental work focuses on entirely different combinations than those claimed, such that the claimed invention would not be reasonably obvious over Kim.
This is not persuasive – firstly, ZIF-8, as claimed, is a preferred embodiment ([0040]). Figure 1(j) of Kim shows the use of ZIF-8 and synthesis thereof. It is clear that Kim openly and readily considers ZIF-8 to be a preferred MOF within the context of the claimed invention for the storage and discharge of any of the gases recited by Table 1, which includes 60 members including germane. Given that ZIF-8 is preferred by Kim, the number of choices for use with such a preferred MOF is limited to a selection of a gas from Table 1. While this table presents many possible electronic gases, the number of possible choices in this case is 60, which is much less than the “dozens of metal ions-yielding thousands of possible combinations” asserted by Applicant. It is asserted that the number of possible choices presented by Kim do not provide an
Further, Applicant’s arguments with regard to the application of the holdings in In re O’Farrell to the instant case are not persuasive, particularly because there is no evidence that the disclosure of Kim “gave no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful.” Kim discloses that “[s]imulation results indicate that MOFs with gravimetric surface areas ranging between 1,000-14,500 m2/g and pore sizes ranging from 2-25 Å between an operating pressure range of 0-760 torr may have favorable performance characteristics for the storage of the electronic gases, including, but not limited to the list shown in Table 1.” Kim also discloses that “the ability to tune pore volumes and pore sizes, in addition to surface area, illustrate the ability to control and maximize arsine adsorption. These findings were clearly evident in the UiO series of MOFs (FIGS. 6a-6c) as deliverable capacity of arsine increases with increasing pore sizes, pore volumes, and gravimetric Surface areas starting with UiO66 (70 g/L, 8 and 10 A, 0.13 cm/g, and 1680 m/g respectively) until the arsine deliverable capacity reached a maximum in UiO68 (775g/L, 15 and 8 A, 1.1 cm/g, and 4300 m/g respectively).” It is clear from these passages that Kim provides a reasonable degree of indication of which parameters are critical for adsorption and release of electronic gases which are also independent of the particular choice of MOF. Therefore, this line of reasoning is not persuasive.
Conclusion
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.
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LOGAN LACLAIR
Examiner
Art Unit 1736
/L.E.L./ Examiner, Art Unit 1736
/DANIEL C. MCCRACKEN/ Primary Examiner, Art Unit 1736
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