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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-2 and 6-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this case, instant claim 1 recites “ligand curable to form a film with metal-oxide-metal (M-O-M) linkages and without organic species when exposed to one or more of UV light or sufficient heat”, such recited limitation of the ligand being curable to form a film without organic species, is not described in the original disclosure. Rather instant specification only describes ligand curable to form a file with metal-oxide-metal (MOM) linkages (see instant filed specification page [0093], [0115]), but does not describe such ligand being curable to form a film without organic species as that instantly claimed. All claim 1’s depending claims are rejected for similar reasons.
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 a dispersion comprising nanoparticles”, it is noted that “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 a dispersion comprising nanoparticles, solid materials of nanoparticles presented in the dispersion thereof, such solid materials are not dissolved in the solvent, therefore, presence of such nanoparticles in a dispersion renders a contradictory meanings to the previously recited “solution” in claim 9. Therefore, 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 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 a dispersion comprising 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 dispersion comprising nanoparticles, solid materials presented thereof, which are not dissolved in the solvent, therefore, presence of such dispersion comprising nanoparticles cannot further limit a solution. 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2 and 6-7 are rejected under 35 U.S.C. 103 as obvious over Facchetti et al (US2013/0196469).
Facchetti et al teaches a precursor composition ( for forming a metal oxide film) 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, e.g. peroxides reads onto the claimed photolyzable and/or pryolyzable ligand) (para. [0041]- [0044], [0051], claim 1-11). 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 (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).
Facchetti et al. also teaches such precursor solution being used for forming a metal oxide film (claims 1-11) when curable.
As for the claimed “an oxygen-containing photolyzable and/or pyrolyzable ligand curable to form a film with metal-oxide-metal (M-O-M) linkages and without organic species when exposed to one or more of UV light or sufficient heat”, Facchetti et al. already teaches a same or substantially the same photolyzable and/or pyrolyzable ligand as that of instantly claimed , e.g. peroxides (OH), nitrates (NO3), and such ligand being used together with metal ion to form a metal oxide film (claims 1-11), therefore, same or substantially the same property or function, i.e. same or substantially the same “curable to form a film with metal-oxide-metal (M-O-M) linkages and without organic species when exposed to one or more of UV light or sufficient heat” as that of instantly claimed would be expected.
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 Rationale E). Furthermore, combining such well-known prior art elements, e.g. acid oxidizing agent and peroxide, nitrate oxidizing agent as ligand according to a known method of forming a desired precursor solution for obtaining metal oxide film would yield predictable results (see MPEP 2143 KSR Rationale A)
Regarding claim 2 and 6-7, such limitations have been met as discussed above.
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).
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).
Response to Arguments
Applicant's amendments filed on 04/27/2026 have been acknowledged and thus previous 112 rejections have been withdrawn.
Applicant's arguments filed on 04/27/2026 have been fully considered but they are moot in view of current rejections. In response to applicant’s arguments about Facchetti et al. disclosed fuel being organic material, it is noted Facchetti et al. already teaches a precursor composition solution comprising oxidizing agent, which reads onto the claimed ligand and being essentially the same ligand as that of instantly claimed. Since Facchetti et al teaches a same or substantially the same ligand, therefore, same or substantially the same property or function, i.e. such ligand “curable to form a film with metal-oxide-metal (M-O-M) linkages and without organic species when exposed to one or more of UV light or sufficient heat” as that of instantly claimed would be expected.
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.
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/JUN LI/ Primary Examiner, Art Unit 1732
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