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 .
Claim Rejections - 35 USC § 102
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 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 1-10, 12-17, & 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wojtecki et al. (US PG Pub 2019/0322812; hereafter ‘812).
Claim 1: ‘812 is directed towards a selective film deposition method (title & abstract), comprising:
exposing a substrate having a structure on which a first surface region containing a metal element and a second surface region containing a nonmetal inorganic material are exposed (abstract & ¶s 98-99), to a solution consisting of a SAM-forming compound and a single solvent (see ¶ 100 which states that the solvents can be used singularly; see also ¶s 129, 132, & 133) to deposit a film of the SAM-forming compound on the first surface region selectively over the second surface region (see ¶s 91-94),
wherein the SAM-forming compound can be one of the compounds taught in Table 2, pgs 9-10; these compounds read on formula (1) as claimed.
Claim 2: See Table 2.
Claim 3: The substrate is exposed to the solution to obtain a substrate in which a contact angle with water is higher in the first surface region than in the second region (see Table 3).
Claim 4: See Table 3.
If ‘812 does not explicitly teach water contact angles for the two surfaces as claimed, it is reasonable to presume that the difference is taught because the same materials and process are practiced; it is reasonable to presume the results are obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 5: See the structures of Table 2.
Claim 6: The metal element containing portion is CuO/CuO2 (¶s 91-94).
Claim 7: The nonmetal inorganic material is silicon oxide (¶s 91-94).
Claim 8: The concentration of the SAM-forming compound in the solution is 0.1-5 mass% (¶ 100).
Claim 9: The one solvent is an organic solvent (¶ 100).
Claim 10: The organic solvent is selected from the group consisting of esters, ethers, ketones, alcohols, and polyhydric alcohol derivatives (¶ 100).
Claim 12: The SAM-forming compound can be OPDA (Fig. 3), or stearic acid (Table 2).
Claim 13: The SAM-forming compound can be OPDA (Fig. 3 and Table 2).
Claim 14: The SAM-forming compound can be a thiol compound (¶ 51) wherein the tail group is a C6-C1—monovalent hydrocarbon group containing a heteroatom (see ¶s 38-58).
Claim 15: The SAM-forming compound can be a stearic acid (Table 2).
Claim 16: The tail group can be fluorinated (¶ 59).
Claim 17: The SAM-forming compound can be ODPA (Table 2).
Claim 19: The substrate is washed with a solvent after the film of the organic substance of formula (1) is selectively deposited on the substrate (¶ 132).
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.
Claims 1-10, 12-13, 15, 17, & 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US PG Pub 2020/0020580; hereafter ‘580) in view of ‘494.
Claim 1: ‘580 is directed towards a selective film deposition method (title & abstract), comprising:
exposing a substrate having a structure o which a first surface region containing a metal element and a second surface region containing a nonmetal inorganic material are exposed (abstract & ¶ 22), to a solution consisting of an organic substance represented by blocking compound comprising a head group selected from thiols and and a tail comprising a C10-C18 alkyl group and one type of solvent (the multi-solvent consists of organic solvents, ¶ 19) to deposit a film of the organic substate on the first surface region selectively over the second region (abstract, ¶s 18).
The Examiner notes that the organic substance and the organic solvent mixture are the only required components of the solution and everything else is listed as optional.
‘580 does not teach that the organic solvent mixture consists of the organic substance and one solvent.
However, ‘494, which is also directed towards a selective film deposition method (see title & abstract) comprising: exposing a substrate having a structure on which a first surface region containing a metal element and a second surface region containing a nonmetal inorganic material are exposed (abstract & ¶s 98-99), to a solution consisting of a SAM-forming compound and a single solvent (see ¶ 100 which states that the solvents can be used singularly; see also ¶s 129, 132, & 133) to deposit a film of the SAM-forming compound on the first surface region selectively over the second surface region (see ¶s 91-94), wherein the SAM-forming compound can be one of the compounds taught in Table 2, pgs 9-10; these compounds read on formula (1) as claimed (these compounds overlap the compounds of ‘580).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘494 into ‘580 and use a single solvent in place of the multisolvent system of ‘580 because it is an art recognized alternative that has been recognized for its suitability for depositing the SAM selectively on the desired region and would have predictably produced the desired results in ‘580.
Claim 2: The organic substance of formula (1) can be a C10-C18 thiol (¶ 18).
Claim 3: The organic substance of formula (1) comprises a hydrophobic tail group (¶ 25) and forms a patterned self-assembled monolayer on the metal portion of the substrate (first region, see ¶ 22 & Fig. 1H) and thus it is apparent that the process of ‘580 increases the contact angle of the first region to greater than the second region.
‘580 teaches the claimed invention but fails to explicitly teach relative contact angles for both regions. Since the same materials and process are practiced; it is reasonable to presume the results are obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 4: A SAM is formed on the metal regions and the inorganic oxide regions are free of a SAM (see ¶s 18-25 & Fig. 1H).
‘580 teaches the claimed invention but fails to explicitly teach relative contact angles for both regions. Since the same materials and process are practiced; it is reasonable to presume the results are obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 5: The treatment agent is thiol (i.e. -SH; ¶ 18).
Claim 6: The metal region can be copper (¶ 22).
Claim 7: The inorganic region can be SiO2 (¶ 22).
Claim 8: The concentration of the organic substance of formula (1) is 1mM to 5mM and a concentration sufficient to provide the desired coverage (¶ 20).
Thus, ‘580 teaches that the concentration is a result-effective variable based on the desired coverage of the SAM and it is prima facie obvious to optimize result-effective variables.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the concentration of the blocking agent to obtain the desired coverage because the concentration is a result-effective variable and it is prima facie obvious to optimize result-effective variables.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 9: The one solvent is an organic solvent (¶ 100, ‘494).
Claim 10: The organic solvent is selected from the group consisting of esters, ethers, ketones, alcohols, and polyhydric alcohol derivatives (¶ 100, ‘494).
Claims 12, 13, & 17: The compound is octadecylphosphonic acid (¶ 18, ‘580 and Table 2 of ‘494).
Claim 15: The compound can have a thiol head group and a C10-C18 tail (¶ 18).
Claim 19: The substrate is washed after SAM formation (¶ 25).
Claim 20: At least two separate blocking layers with multiple steps performed in between on the substrate to form various layers (i.e. two solutions are provided and the substrate is sequentially exposed to the solutions; ¶48).
Claim 21: ‘580 does not teach the compositions of the two solutions used for the sequentially exposure.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to use ODPA as the blocking agent in both solutions because ‘580 teaches that it is a suitable blocking agent and it is already taught.
Claims 14, 16, & 18 are rejected under 35 U.S.C. 103 as being unpatentable over ‘580 & ‘494 as applied above and further in view of Gleskova et al. (WO2013021149; hereafter ‘149).
Claim 14: ‘580 does teach that the blocking agent can comprise a head group comprising a thiol, phosphonic acid, and silane functionality (¶ 18).
‘580 does not teach a blocking compound which reads on formula (8).
However, ‘149, which is directed towards self-assembled monolayers (title, abstract, and pg 1) discloses that thiol & thiolacetyl head groups are suitable head groups for forming SAMs on metal surfaces (see pg 22-24, ‘149).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a blocking agent comprised of a thioacetyl head group in place of the thiol head group of ‘580 because ‘149 teaches that the are art recognized alternatives and it is prima facie obvious to use art recognized alternatives for the same purpose.
Thus, the combination teaches a an R-S-CO2H structure.
Additionally, ‘580 discloses that octadecyl is an suitable tail group as discussed above (¶ 18).
It would have been obvious to one of ordinary skill in the art at the time of filing to use octadecylthiolacetyl as the particular compound because ‘580 recognizes that octadecyl is a suitable tail group for the process and it would have predictably provided the desired results.
Claim 16: ‘580 teaches that the tail group should be hydrophobic (¶15) but does not teach that the tail group is fluorinated.
However, ‘149, which is directed towards self-assembled monolayers on metal surfaces (title, abstract, and pg 1) discloses that it is known to use fluorinated and non-fluorinated tail groups for SAMs on metal surfaces (pg 24).
The Examiner notes that fluorinated tail groups will render the surface more hydrophobic.
It would have been obvious to one of ordinary skill in the art at the time of filing to use fluorinated tail groups during the process of ‘580 because fluorinated and non-fluorinated tail groups are art known alternatives for the same process – render the surface hydrophobic.
Claim 18: ‘580 does not disclose tail groups of formula (11).
However, ‘149, which is directed towards self-assembled monolayers on metal surfaces (title, abstract, and pg 1) discloses that alkyl tail groups and tail groups for formula (11) for SAMs on art alternatives for forming a SAM on metal surfaces (pgs 24-25).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a tail group of formula (11) in place of an alkyl group during the process because they are art recognized alternatives which would have predictably produced the same desired result.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 4/8/26 is insufficient to overcome the rejection of claim 1 based upon ‘580 as set forth in the last Office action because:
the experimental results are not fully commiserate with the scope of the claims – only ODPA is presented with only one single solvent whereas the claim is directed to an infinitely large number of surfactants and any solvent;
the claims do not require no deposition but instead selective deposition and it is noted that the surfactant deposited on the SiOx surface in the comparative experiment does not provide evidence that the deposition is selective because the contact angle on the silicon oxide surface is still significantly less than the contact angle on the metal surface which implies selective deposition;
there is no evidence that claimed result is present on other metals and nonmetal inorganic substrates.
Response to Arguments
Applicant's arguments filed 4/8/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that one of ordinary skill in the art would not use a single solvent in place of the claimed multi-solvent system of ‘580 because the modification would have render the invention of ‘580 unsatisfactory; the Office does not find this argument convincing because ‘494 teaches that a single solvent will provide the same desired results and neither the claims or ‘580 require no surfactant molecules on the silicon oxide surface but instead selective deposition which preferential deposition is selective. Additionally, as discussed above, ‘494 anticipates the majority of the surfactant systems and ‘580 in view of ‘494 additionally renders obvious all of the surfactants other than ODPA.
In regards to applicant’s argument that the declaration is evidence that it would not be obvious to modify ‘580 to use a single solvent; the Office does not find this argument convincing because as discussed above, only one surfactant, one solvent, one metal/metal oxide, and one nonmetal inorganic oxide is presented whereas the claims recite different types of surfactants and different solvents which are expected to interact differently with different substrate materials and there is no evidence that the same result is expected to occur on any other combination and thus it is still obvious to modify ‘580 to a single solvent in light of ‘494 for all other surfactants other than ODPA and ‘494 anticipates a single solvent for ODPA as discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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