Prosecution Insights
Last updated: April 19, 2026
Application No. 18/381,282

SILANE PRECURSORS AND RELATED METHODS

Non-Final OA §102§112§DP
Filed
Oct 18, 2023
Examiner
HOU, FRANK S
Art Unit
1692
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Entegris Inc.
OA Round
1 (Non-Final)
71%
Grant Probability
Favorable
1-2
OA Rounds
3y 2m
To Grant
99%
With Interview

Examiner Intelligence

Grants 71% — above average
71%
Career Allow Rate
82 granted / 115 resolved
+11.3% vs TC avg
Strong +32% interview lift
Without
With
+31.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
49 currently pending
Career history
164
Total Applications
across all art units

Statute-Specific Performance

§101
0.9%
-39.1% vs TC avg
§103
33.7%
-6.3% vs TC avg
§102
24.2%
-15.8% vs TC avg
§112
22.3%
-17.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 115 resolved cases

Office Action

§102 §112 §DP
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. DETAILED ACTION Claims 1- 20 of S. II. Han, et al. US 18 / 381 , 282 ( 10/18/2023 ) are pending. Claims 17-20 are withdrawn directed to non-elected Group II. Claims 1 - 16 are under examination on merits and are rejected. Specification The disclosure is objected to because only part of chemical structure is disclosed in [00138] at page 31 of the specification. Appropriate correction is required. Requirement for Election of Invention There are two criteria for a proper requirement for restriction between patentably distinct inventions: (A) The inventions must be independent or distinct as claimed; and (B) There would be a serious burden on the examiner if restriction is not required. MPEP § 803(I). In the instant case, restriction to one of the following inventions is required under 35 U.S.C. 121: Invention Election Restriction to one of the following inventions is required under 35 U.S.C. 121: Claims 1- 16 , drawn to a precursor , classified in C07F 7/ 10 ; and Claims 17-20 , drawn to a method for forming a precursor , classified in C07F 7/1 26 . Distinctness Among Inventions I and II Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case , the claimed process can be used to make a materially different products , for example, Begum teaches that the claimed method can be used to prepare the compound of Which is structurally different with the claimed precursor in claim 1 and claim 8. See R. Begum, et al, 4.1 Journal of Scientific Research 109-109 (2012)(“ Begum ”) at page 111, 2.2. Synthesis of HEt 2 SiSiMe 2 NEt 2 . Search Burden There would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: The inventions have acquired a separate status in the art in view of their different classification; The inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). In the instant case, the claimed inventions leading to generally complicated searching within multiple data bases, such as CAPLUS and CASREACT (See https://www.cas.org ) and Similarity for the claimed compound and the claimed method; further, a keyword searches in Google Scholar, general literature and books regarding the starting materials, solvent and reductant in the claimed method. Patents need not be cited to show different fields of search. MPEP § 808.02. Burden and Traversal of the Restriction Requirement Applicant is advised that the reply to this requirement to be complete must include ( i ) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention . The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention. Joint Inventors Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17( i ). Potential Rejoinder The examiner has required restriction between product claims and process claims. Where applicant elects claims directed to the product, and all product claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01. Election over the Phone Examiner discussed the Restriction/ Election requirement during the phone interview with Eric D. Nielson on 03/16/2026 . Pursuant to the restriction requirement, Applicant elected Group I (claims 1-16 ), without traverse , during the phone interview on 03/16/2026 . Claims 17-20 drawn to non-elected Group(I I ) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Applicant is required to confirm the election in the reply to this Office action. Rejections 35 U.S.C. 112(b) 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. Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp ., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a). Claims 2-5 and 9-12 are rejected under 35 U.S.C. 112(b) as indefinite because there is insufficient antecedent basis for the limitation of each of these claims, for example, claim 2 recites the limitation of “ The precursor of claim 1, wherein the alkyl is a C 1 -C 4 alkyl.” Given each of R 1 , R 2 , R 3 and R 4 in the precursor compound claimed by claim 1 can be an alkyl, one ordinary skill does not know which of R 1 , R 2 , R 3 and R 4 in the precursor compound claimed by claim 1 is a C 1 -C 4 alkyl as claimed by claim 2? There is the same issue for claims 3 -5 and 9-12 . Claim Rejections - 35 USC § 102 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. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 35 U.S.C. 102 Rejection over Dubowchik Claims 1-3 and 6-7 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by G. M. Dubowchik , et al. 104.15 Journal of the American Chemical Society 4211-4214 (1982) (“ Dubowchik ”) . Dubowchik teaches compound 1 -( d imethylamino )-2-chlorotetramethyldisilane that has a structure as indicated below. Dubowchik at page 4212, left col. Experimental Section, 1-( d imethylamino )-2-chlorotetramethyldisilane . The Dubowchik compound 1-( d imethylamino )-2-chlorotetramethyldisilane maps the precursor compound of claims 1-3 and 6-7 as: X is Cl; Each of R 1 and R 2 is -CH 3 that is C 1 -C 4 a linear alkyl group; Q is a bond; and A is N(CH 3 ) 2 wherein each of R 5 and R 6 is -CH 3 that is a C 1 -C 4 linear alkyl group . Which meets each and every limitation of claims 1-3 and 6-7 , therefore, claims 1-3 and 6-7 are anticipated. 35 U.S.C. 102 Rejection over Wheeler Claims 8-16 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by D. Wheeler, D., et al. Advances in Resist Technology and Processing XII. Vol. 2438. SPIE, ( 1995 )(“ Wheeler ”) . Wheeler teaches compound N,N-dimethylamino-1,2-dimethyldisilane ( DMADMDS ) that has a chemical structure as indicated below. Wheeler at page 764, paragraph 4, line 2-3; and page 770, Equation 4. The Wheeler compound N,N-dimethylamino-1,2-dimethyldisilane maps the precursor compound of claim s 8 and 13-14 as: Each of R 1 and R 2 is hydrogen atom ; Q is a bond; and A is N(CH 3 ) 2 wherein each of R 5 and R 6 is -CH 3 that is a n alkyl group. Which meets each and every limitation of claims 8 and 13-14 , therefore, claims 8 and 13-14 are anticipated. C laims 9-12 are anticipated because for the limitation of R 1 and R 2 in the precursor compound of claim 8, alkyl is an alternative of hydrogen atoms, further limitation of the structure of alkyl does not limit its alternative. Claim 15 is anticipated because the N,N-dimethylamino-1,2-dimethyldisilane ( DMADMDS ) does not comprise a halide. Claim 16 is anticipated because the Wheeler N,N-dimethylamino-1,2-dimethyldisilane ( DMADMDS ) is a liquid at 20-30º C at normal pressure as Wheeler teaches that boiling point of DMADMDS is 125 ºC . Wheeler at page 765, paragraph 3 , line 6. Subject Matter Free of the Art Subject to the 112(b) rejection above, claims 4-5 are free of the art recorded. The closest prior art of record is G. M. Dubowchik , et al. 104.15 Journal of the American Chemical Society , 4211-4214(1982). G. M. Dubowchik , et al. 104.15 Journal of the American Chemical Society, 4211-4214(1982) As detail discussed above in the 102 rejection above that Dubowchi teaches compound 1-( d imethylamino )-2-chlorotetramethyldisilane meeting each and every limitation of claim 1. Different between Dubowchi and the instant claim s 4-5 The Dubowchi compound differs from the instant claim s 4-5 in that none of R 1 and R 2 in the Dubowchi compound 1-( d imethylamino )-2-chlorotetramethyldisilane is a C 3 -C 4 branched alkyl or a C 3 -C 6 cycloalkyl . Claim s 4-5 are not Obvious Obviousness of a claimed compound can also be supported where there is motivation to substitute particular chemical moieties in a prior art compound for others so as to arrive at a claimed compound. MPEP § 2143(I)(B). For example, in the pharmaceutical arts, the rational is stated as motivation to select a known compound and also motivation to structurally modify the selected compound in a particular way to achieve a claimed compound. MPEP § 2143(I)(B) (see for example, MPEP § 2143(I)(B) Example 9, citing Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd. , 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008). Claim s 4-5 are not obvious because neither Dubowchi or Dubowchi in view a second art to motivate one ordinary skill to modify the Dubowchi prior art compound 1-( d imethylamino )-2-chlorotetramethyldisilane by replacing at least one -CH 3 bound to silicon with a C 3 -C 4 branched alkyl or a C 3 -C 6 cycloalkyl to arrive at the claimed compound. Further, Dubowchi nor prior art teaches specific utility of the Dubowchi prior art compound . If the prior art does not teach any specific or significant utility for the disclosed compounds, then the prior art is unlikely to render structurally similar claims prima facie obvious in the absence of any reason for one of ordinary skill in the art to make the reference compounds or any structurally related compounds. MPEP2144.09(IV). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Enter examiner's name" \* MERGEFORMAT FRANK S. HOU whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1802 . The examiner can normally be reached FILLIN "Work schedule?" \* MERGEFORMAT 6:30 am-2:30 pm Eastern on Monday to Friday . 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, FILLIN "SPE Name?" \* MERGEFORMAT Scarlett Goon can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571)2705241 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center ( EBC ) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /FRANK S. HOU/ Examiner, Art Unit 1692 /ALEXANDER R PAGANO/ Primary Examiner, Art Unit 1692
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Prosecution Timeline

Oct 18, 2023
Application Filed
Mar 16, 2026
Examiner Interview (Telephonic)
Mar 16, 2026
Non-Final Rejection — §102, §112, §DP (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
71%
Grant Probability
99%
With Interview (+31.8%)
3y 2m
Median Time to Grant
Low
PTA Risk
Based on 115 resolved cases by this examiner. Grant probability derived from career allow rate.

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