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 Interpretation
Claim 1: Claim 1 recites “one type of solvent” and the term is not defined in the original disclosure. Applicant argues that a multi-solvent system cannot read on “one type of solvent” but at the same time claim 9 recites that “the solvent is an organic solvent” which implies that the types can be aqueous or organic and therefore an multi-solvent system wherein the solvents are all organic would read on a solution consisting of “one type of solvent”. Similarly, hydrophobic vs hydrophilic would also different types of solvents.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9 & 10 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9: Claim 9 recites the limitation "the solvent" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9: Claim 9 is rejected as being indefinite because it is unclear if “the solvent” limits the claim to a single solvent or if “the solvent” is further defining “the one type of solvent” of claim 1 and therefore one of ordinary skill in the art would not be able to ascertain the metes and bounds of the limitation.
For the purpose of examination, either interpretation will be considered to read on the limitation and therefore claim 9 is open to multiple solvents of a single type selected from organic solvents.
Claim 10: Claim 10 depends from claim 9 and does not remedy the issues of claim 9 and is therefore rejected as being indefinite.
Additionally, claim 10 recites “the organic solvent is selected from the group consisting of esters, ethers, ketones, alcohol-based solvents, and polyhydric alcohol derivatives” and thus it is apparent that claim 10 reads on multi-solvent systems wherein each of the solvents are selected from esters, ethers, ketones, alcohol-based solvents, and polyhydric alcohol derivatives as long as all of the solvents are chosen from a single group.
Claim 10: Claim 10 recites the limitation “alcohol-based solvents” which renders the claim indefinite because it is unclear what the metes and bounds of “based” is in regards to alcohol given that adding “based” to alcohol makes it appear that the group is larger than just alcohols but there is no guidance where the limit is.
For the purpose of examination, if the solvent can be derived from an alcohol it will be considered to be “alcohol-based”.
Claim 10: Claim 10 recites the limitation “polyhydric alcohol derivatives” which renders the claim indefinite because it is unclear what the metes and bounds of “derivatives” is in regards to what polyhydric alcohols derivatives are limited to.
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 1-7, 9-10, 12-13, 15, 17, & 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US PG Pub 2020/0020580; hereafter ‘580).
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 phosphonic acid 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.
Claim 2: The organic substance of formula (1) can be octadecylphosphonic acid (ODPA, ¶ 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: An octadecylphosphonic acid SAM is formed on the metal regions and the inorganic oxide regions are free of a SAM (see ¶s 18-25 & Fig. 1H).
The Examiner notes that a ODPA SAM will produce a SAM with a contact angle on the metal region greater than 10º than the inorganic region without said SAM.
‘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 ODPA (¶ 18).
Claim 6: The metal region can be copper (¶ 22).
Claim 7: The inorganic region can be SiO2 (¶ 22).
Claim 9: The solvent is an organic solvent (¶ 16).
Claim 10: The solvent can be selected from alcohol-based solvents (the solvent system can be PGME and PGMEA which are an alcohol and an ester derived from the alcohol so therefore alcohol-based; ¶ 19).
Claims 12, 13, & 17: The compound is octadecylphosphonic acid (¶ 18).
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 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 8 & 21 are rejected under 35 U.S.C. 103 as being unpatentable over ‘580.
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 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 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 Arguments
Applicant's arguments filed 9/19/25 have been fully considered but they are not persuasive.
In regards to applicant’s argument that “one type of solvent” excludes the multi-solvent system of ‘580 because ‘580 requires an alcohol and an ester; the Office does not find this argument convincing because as discussed above in the claim interpretation section, “one type of solvent” is never defined in the original disclosure except possibly by further limitation in claims 9 & 10 and claim 9 makes it clear that “type” can be organic and non-organic. Thus, it is apparent that the multi-solvent system of ‘580 consists of one type of solvent at least in terms of organic solvent vs non-organic solvent. Additionally, as discussed above, claim 10 recites that the solvent is alcohol-based which is ambiguous because it is unclear how “based” broadens the term “alcohol” and the broadest reasonable interpretation is the solvent system must be “alcohol-based” to read on the claims and as noted PGMEA is based off of PGME which is an alcohol so the system PGMEA/PGME is an alcohol-based system.
Conclusion
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.
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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