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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/17/2026 has been entered.
DETAILED ACTION
Claims 1 and 6-11 of S. J. Sun, et.al. US 18/135,413 (04/17/2023) are pending.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 01/21/2026 is acknowledged. Claims 6-11 drawn to non-elected Group (II) has being withdrawn from consideration in the Office action mailed on 09/25/2025 pursuant to 37 CFR 1.142(b).
Applicant’s species election without traverse of the compound of the Formula 2 in claim 3 in the claim set file on 04/17/2023 as the species of the Formula 1 of claim 1 in the reply filed on 01/21/2026 is acknowledged. No claim of the elected invention read on the elected species.
The Restriction Requirement is maintained as Final.
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Give only claim 1 directed to the elected Group (I) and it does not read on the elected species, examiner extended searching on other compounds as discussed in the 103 rejection below.
Maintained Claim Rejections - 35 USC § 103
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 1 is rejected under 35 U.S.C. 103 over S-H. Kim, et al, US20220205099A1 (published on 01/30/2022)(“Kim”).
US20220205099A1 (published on 01/30/2022)(“Kim”)
Kim teaches Group IV transition metal containing film forming compositions for a vapor deposition process comprising a precursor having the formula of M(R1R2Cp)a(L1)b, wherein, M is a Group IV transition metal selected from Zr, Hf or Ti. Kim at page 2, [0045].
Kim also teaches that each R1, R2 in the precursor M(R1R2Cp)a(L1)b can be independently H, Me, Et, nPr, iPr, tBu, sBu, iBu, nBu, or tAmyl. Kim at page 2, [0050].
Kim teaches five working examples for synthesis of precursor M(R1R2Cp)a(L1)b, and the synthesized precursors have chemical structure as indicated below. Kim Examples 1-5.
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Per Examples 6-7, Kim teaches thin-films containing Hf or Zr by deposition of the precursor Hf(Me(nPr)Cp)(NMe2)3 or Zr(Me(Et)Cp)(NMe2)3 respectively. Kim Example 6-7. One ordinary skill would be appraised that the precursors Hf(Me(nPr)Cp)(NMe2)3 and Zr(Me(Et)Cp)(NMe2)3 used by Kim for film deposition is made in the Kim Example 3 and 5 respectively.
While one of R1 or R2 in the above 5 example precursors is methyl, one ordinary skill in the art also would be appraised that the methyl in the above examples compounds all can be replaced by nPr, iPr, tBu, sBu, iBu or nBu because Kim teaches that each R1, R2 in the precursor M(R1R2Cp)a(L1)b can be nPr, iPr, tBu, sBu, iBu or nBu. Kim at page 2, [0050], which can be further supported by additional exemplary precursors taught by Kim, for example Hf(Et(nPr)Cp)(NMe2)3, Hf(Et(iPr)Cp)(NMe2)3, Hf(Et(nBu)Cp)(NMe2)3, Hf(Et(tBu)Cp)(NMe2)3, Hf(Et(iBu)Cp)(NMe2)3, Hf(Et(sBu)Cp)(NMe2)3, Zr(Et(nPr)Cp)(NMe2)3, Zr(Et(iPr)Cp)(NMe2)3, Zr(Et(nBu)Cp)(NMe2)3, Zr(Et(iBu)Cp)(NEt2)3, Zr(Et(sBu)Cp)(NEt2)3, Zr(Et(tBu)Cp)(NMe2)3. See Kim at page 5, [0107].
Difference between Kim and the instant Claim 1
Kim differs from the instant claim 1 in that Kim does not specify the substituted positions of R1 and R2 on Cp in anyone of the precursors Hf(Et(nPr)Cp)(NMe2)3, Hf(Et(iPr)Cp)(NMe2)3, Hf(Et(nBu)Cp)(NMe2)3, Hf(Et(tBu)Cp)(NMe2)3, Hf(Et(iBu)Cp)(NMe2)3, Hf(Et(sBu)Cp)(NMe2)3, Zr(Et(nPr)Cp)(NMe2)3, Zr(Et(iPr)Cp)(NMe2)3, Zr(Et(nBu)Cp)(NMe2)3, Zr(Et(iBu)Cp)(NEt2)3, Zr(Et(sBu)Cp)(NEt2)3, Zr(Et(tBu)Cp)(NMe2)3.
Obviousness Rationale of Claim 1
It would have been prima facie obvious for one skilled artisan to arrive at the instantly claimed invention based on the teachings from Kim with a reasonable expectation of success before the effective filing date of the claimed invention.
One ordinary skill in the art seeking a Hf or Zr containing film forming compositions is motivated to elect one or more of the following precursors as taught by Kim to arrive one or more compounds meeting each and every limitation of claim 1, therefore, claim 1 is obvious.
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One ordinary skill has a motivation to do so with a reasonable expectation of success because:
(i). Kim teaches exemplary precursors of Hf(Et(nPr)Cp)(NMe2)3, Hf(Et(iPr)Cp)(NMe2)3, Hf(Et(nBu)Cp)(NMe2)3, Hf(Et(tBu)Cp)(NMe2)3, Hf(Et(iBu)Cp)(NMe2)3, Hf(Et(sBu)Cp)(NMe2)3 Zr(Et(nPr)Cp)(NMe2)3, Zr(Et(iPr)Cp)(NMe2)3, Zr(Et(nBu)Cp)(NMe2)3, Zr(Et(iBu)Cp)(NEt2)3, Zr(Et(sBu)Cp)(NEt2)3, Zr(Et(tBu)Cp)(NMe2)3. See Kim at page 5, [0107]. Each of these compounds has only two assignments for the two substituents on Cp, for example Hf(Et(nPr)Cp)(NMe2)3 has two assignments for the positions of Et and nPr on Cp as indicated below.
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(ii). all the above listed compounds are homologues of the precursor Hf(Me(nPr)Cp)(NMe2)3 or Zr(Me(Et)Cp)(NMe2)3 used by Kim for film deposition (See Kim Examples 6-7), compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. MPEP 2144.09. II;
(iii). The predictability in the field of metal precursor for film deposition is high; and
(iii). rationales supporting to elect one or more of the above listed compounds is supported by “obvious to try”-choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.MPEP2143.I.(E).
Applicant’s Argument and Declaration
Applicant first argues on the ground that Kim provides no synthesis procedure, no physical property data, no thermal analysis, and no deposition performance data for compound Zr(Et(nPr)Cp)(NMe2)3 and it does not constitute a meaningful teaching that would direct a skilled artisan to select that particular compound. The last second paragraph at page 7 in the Remarks filed on 06/17/2026.
This argument has been fully considered but not persuasive. As mentioned in the previous Office action that while Kim does not provide synthesis procedure/ physical property data/ thermal analysis/ deposition performance data for compound Zr(Et(nPr)Cp)(NMe2)3, however, Kim does teaches synthesis, vapor pressure of Zr(Me(Et)Cp)(NMe2)3 that is a homolog of Zr(Et(nPr)Cp)(NMe2)3; Kim also teaches film deposition with Zr(Me(Et)Cp)(NMe2)3 and the photograph of the produced film. Given there is high predictability in the field of metal precursor for film deposition, one ordinary skill in the art seeking Zr containing film is motivated to elect Zr(Et(nPr)Cp)(NMe2)3 as a precursor because Kim teaches Zr(Et(nPr)Cp)(NMe2)3 is one exemplary precursor for Zr containing film. The rationales supporting to elect Zr(Et(nPr)Cp)(NMe2)3 is:
(i). Zr(Et(nPr)Cp)(NMe2)3 is a homologues of the Kim Zr(Me(Et)Cp)(NMe2)3 in Example 5, compounds which are homologs. MPEP 2144.09. II.
(ii). obvious to try-choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.MPEP2143.I.(E).
Applicant further argues that Kim synthesizes and characterizes only Hf compounds, Kim's actual working examples are exclusively limited to compounds in which one of the two substituents on the cyclopentadienyl ring is a methyl group and Kim never prepared, tested, or evaluated any compound in which both substituents on the cyclopentadienyl ring are C2 or higher alkyl groups. The last paragraph of page 7 to the second paragraph of page 8 in the Remarks filed on 06/17/2026.
This argument has been fully considered but not persuasive. As mentioned above that in addition to Hf containing precursor, Kim also teaches synthesis and film deposition of Zr precursor Zr(Me(Et)Cp)(NMe2)3 in Examples 5 and 7. While Kim’s working examples are limited to compounds in which one of the two substituents on the cyclopentadienyl ring is a methyl group, as Kim teaches that the working examples only provide illustration of his invention rather scope limitation of his invention. See Kim at page 9, [0140]. Given Kim teaches a series of exemplary precursors compound including Zr(Et(nPr)Cp)(NMe2)3 in which both substituents on the cyclopentadienyl ring are C2 or higher alkyl groups. Kim at page 5, [0107]. Thus, one ordinary skill in the art would be appraised that precursors comprising substituents on the cyclopentadienyl ring with C2 or higher alkyl groups such as Zr(Et(nPr)Cp)(NMe2)3 can be used as a precursor for thin film preparation.
Applicant’s Argument Regarding Unexpected Results
Applicant argues on the ground that inventor Sung Jun JI filed a declaration on 06/17/2026 (“the declaration”) and the additional experimental data provided in the declaration demonstrating that compounds in which both substituents on the cyclopentadienyl ring are C2 or higher alkyl groups (as claimed) exhibit unexpected and superior thermal stability compared to the methyl-containing compounds taught and exemplified by Kim. Page 9-10 in the Remarks filed on 06/17/2026 and the declaration filed on 06/17/20206.
Relevant Sections of the MPEP
A greater than expected result and evidence of unobvious or unexpected advantageous properties are evidentiary factors pertinent to the legal conclusion of obviousness of the claims at issue. MPEP § 716.02(a)(I)/(II). However, the burden is on Applicant to establish that the evidence relied upon demonstrates that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. MPEP § 716.02(b). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. MPEP § 716.02(b)(III).
Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support; that is, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP § 716.02(d). The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. MPEP § 716.02(d)(I).
Further, an affidavit or declaration under 37 CFR 1.132 also must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. MPEP § 716.02(e).
The Results provided in the Declaration
The following Table summarize the compared data provided in the declaration filed on 06/17/2026.
Compound
T1/2 (ºC)
Td(ºC)
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180
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228.64
>400
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237
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194
352.88
Declaration at page 5, Table A.
The Compared Results Do Not Overcome the § 103 Rejection Because Applicant Has Not Met Its Burden of Demonstrating that the Additional Compared Result Is Unexpected
While the additional data indicates [(sec-Bu)(Et)Cp]Hf(NMe2)3 has better thermal stability than that of [(nPr)(Me)Cp]Hf(NMe2)3, Applicant does not provide any evidence to show the difference is cause by two substituents on the cyclopentadienyl ring are C2 or higher alkyl groups rather different precursors have different thermal stability. For example, the filed specification discloses that the Example 1 compound [(nPr)(Me)Cp]Zr(NMe2)3, which comprise methyl as one of the two substituents, has much better thermal stability than the Comparative Example 1 compound CpZr(NMe2)3. See Table 1 at page 80 of the specification, Comparative Example 1 at [0070] of page 17 and Example 1, [0061]-[0066] at page 15-16. Applicant has provided no explanation of how this thermal stability difference from different compounds in the additional data is unexpected and unobvious and of both statistical and practical significance. MPEP § 716.02(b). Applicant has therefore not met its burden. MPEP § 716.02(b). The burden is on Applicant to establish that the evidence relied upon demonstrates that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance. MPEP § 716.02(b).
The Proffered Results Do Not Overcome the § 103 Rejection Because the Additional Compared Results are Not Commensurate in Scope with the Claims
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support; that is, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. MPEP § 716.02(d). Here, only one compound is clearly not commensurate in scope with the genera of compounds claimed by the claim 1.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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/FRANK S. HOU/Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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