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
Applicant's election with traverse of group I invention and species I (claim 1-2 and 6-9) in the reply filed on 10/07/2025 is acknowledged. The traversal is on the ground(s) that different groups and different species are related by product and by process. This is not found persuasive because such invention I and II are distinct because instantly claimed precursor material can be used to form a three-dimensional oxide product, but not a coated substrate (a metal oxide film coated onto a substrate). Furthermore, such different groups inventions require different class/subclass searches, prior art applicable to one invention not necessarily applicable to another invention. Similarly different species have different material of design, for example titanium ions are distinct as compared to titanium and aluminum ions, as well as compared to copper ions only. Such different species require different search strings, different class/subclass. Therefore, such arguments are not found convincing.
The requirement is still deemed proper and is therefore made FINAL.
Claim 3-5 and 10-20 are thus withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and non-elected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/07/2025.
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.
Claim 9 is 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. In this case, claim 9 recites “the precursor solution comprises nanoparticles”, but “solution” requires all solute being all dissolved in the solvent, no solids being presented in the solvent (see https://www.britannica.com/science/solution-chemistry), but nanoparticles, solid materials presented thereof, which are not dissolved in the solvent, therefore, presence of such nanoparticles appears changing a solution to a sol or suspension or dispersion. Therefore, claim 9 recited “solution” appears being contradictory to its later-on recited “nanoparticles”. Next, one of ordinary skill in the art is uncertain about the scope of such recited “nanoparticles”, such as any solid materials having size or diameter range from 1 to 100 nm or 100-1000 nm, or 500-5000 nm? Therefore, such claimed “nanoparticles” lack of metes and bounds. Such limitations render claim indefiniteness.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In this case, claim 8 recites “photolyzable and/or pryolyzable ligand comprises one or more of hydrogen peroxides, nitrate or formic acid”, wherein such recited “nitrate” does not appear further limit its parent claim 7 recited peroxides or carboxylic acid. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In this case, claim 9 recites “the precursor solution comprises nanoparticles”, but “solution” requires all solute being all dissolved in the solvent, no solids being presented in the solvent (see https://www.britannica.com/science/solution-chemistry), but nanoparticles, solid materials presented thereof, which are not dissolved in the solvent, therefore, presence of such nanoparticles appears changing a solution to a sol or suspension or dispersion. Therefore, claim 9 seems not further limit its parent claim 1 recited “precursor solution”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-2 and 6-8 are rejected under 35 U.S.C. 103 as obvious over Facchetti et al (US2013/0196469).
Facchetti et al teaches a precursor composition comprising a fuel, and one or more oxidizing agents in a solvent or solvent mixture, wherein the oxidizing agent comprising a metal reagent, such as metal salt comprising an oxidizing anion and an inorganic oxidizing reagent wherein the oxidizing anion can be nitrates, peroxides, nitroarylcarboxylate etc. (noted such oxidizing anion reads onto the claimed photolyzable and/or pryolyzable ligand) (para. [0041]- [0044], [0051]). Facchetti et al also discloses the oxidizing agent can be in the form of an acid, e.g. nitric acid (para. [0044]), and in some embodiments when acid used as oxidizing agent, fuel is a metal reagent including a fuel anion which can be citric acid, stearic acid, ascorbic acid (noted such fuel reads onto the instantly claimed photolyzable and/or pryolyzable ligand as well) (para. [0045], [0047]). Facchetti et al further teaches the metal salt comprises metal being selected from any group 4 metal (e.g. zirconium), group 13 ions (such as aluminum, indium, gallium) (para. [0045], [0046], [0049]). Facchetti et al also teaches the precursor composition can further include one or more additives, such as surfactants, chelates (e.g., ethylenediaminetetraacetic acid (EDTA)) (para. [0052]).
As for the claimed precursor composition being solution, Facchetti et al expressly teaches precursor being used as solution-based method to deposit for obtaining a metal oxide film (para. [0006], [0007], [0039]), and specifically teaches precursor composition being formed as solution (example 1A, 1B, 4A, 5A).
Regarding claim 1, it would have been obvious for one of ordinary skill in the art “obvious to try” acid as oxidizing agent because choosing acid from a finite number of identified, predictable solutions of oxidizing agent for help obtaining a desired precursor solution would have a reasonable expectation of success (see MPEP § 2143 KSR).
Regarding claim 2 and 6, such limitations have been met as discussed above.
Regarding claim 7, Facchetti et al already teaches fuel (i.e. photolyzable and/or pryolyzable ligand) can be citric acid, stearic acid, ascorbic acid (such acids are carboxylic acid). It would have been obvious for one of ordinary skill in the art “obvious to try” such carboxylic acid as fuel because choosing carboxylic acid from a finite number of identified, predictable solutions of fuel for help obtaining a desired precursor solution would have a reasonable expectation of success (see MPEP § 2143 KSR).
Regarding claim 8, it would have been obvious for one of ordinary skill in the art “obvious to try” peroxides or nitrates as oxidizing agent because choosing peroxides or nitrates from a finite number of identified, predictable solutions of oxidizing agent for help obtaining a desired precursor solution would have a reasonable expectation of success (see MPEP § 2143 KSR). It would have been obvious for one of ordinary skill in the art to combine such well-known nitrates together with peroxides as oxidizing agent because combining known elements according to known method of forming precursor composition would yield predictable results (see MPEP § 2143 KSR).
Claim 8 is rejected under 35 U.S.C. 103 as obvious over Facchetti et al (US2013/0196469) as applied above, and in view of Koh (US2023/0383405).
In arguendo about Facchetti et al does not expressly teach peroxides being hydrogen peroxide in claim 8, Koh teaches oxygen containing compound e.g. hydrogen peroxide can be used as reactant to form hafnium containing oxide film (para. [0052]).
It would have been obvious for one of ordinary skill in the art at to adopt such well-known hydrogen peroxide as shown by Koh to practice the peroxides of Facchetti et al because adopting such well-known technique of using hydrogen peroxide as reactant to modify a well-known precursor composition for improvement would have predictable results (see MPEP § 2143 KSR).
Claim 9 is rejected under 35 U.S.C. 103 as obvious over Facchetti et al (US2013/0196469) as applied above, and in view of Warner (WO2018/222976) (for applicant’s convenience, equivalent US2020/0165730 has been used for citations hereof).
Regarding claim 9, Facchetti et al. does not expressly teach the precursor composition comprising nanoparticles.
Warner teaches metal oxide particles with size about 1 to 100 nm can be used in the precursor composition (para. [0026], [0027], example 1, 8).
It would have been obvious for one of ordinary skill in the art to adopt such well-known nanoparticles as shown by Warner to modify the precursor composition of Facchetti et al. because applying a known technique of using such nanoparticles to a known precursor composition for improvement (e.g. forming desired metal oxide film) would yield predictable result (see MPEP § 2143 KSR).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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/JUN LI/ Primary Examiner, Art Unit 1732