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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on January 6, 2023. It is noted, however, that applicant has not filed a certified copy of the 2023-801 application as required by 37 CFR 1.55.
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.
Claims 1 and 6-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for metal (Ti, Hf, or Zr) compounds of general formula (A) having a silicon-containing group represented by general formula (2) and a ligand represented by general formula (1) in which W is represented by a crosslinking group represented by general formula (W-1), does not reasonably provide enablement for any metal (Ti, Hf, or Zr) alkoxide compounds having a ligand represented by general formula (W-1). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. Factors to be considered when determining whether the claimed invention would require undue experimentation are given in MPEP 2164.01 (a). In re Wands, 858 F. 2d 731,737; 8 USPQ 2d 1400, 1404 (Fed. Cir. 1988), only the relevant factors will be addressed for determining undue experimentation of the presently claimed invention. The relevant factors are: the breadth of the claims, the nature of the invention, the level of one of ordinary skill, the level of predictability in the art, the amount of direction provided by the inventor, and the existence of working examples.
Breadth of the claims: Claim 1 (and claims 6-18) is extremely broad as it relates to all possible metal (Ti, Zr, or Hf) compounds having a crosslinking ligand represented by general formula (W-1). However, the specification only provides direction for obtaining metal (Ti, Hf, or Zr) alkoxide compounds of general formula (A) having a silicon-containing group represented by general formula (2) and a ligand represented by general formula (1) in which W is represented by a crosslinking group represented by general formula (W-1). Page 37 of the specification recites “the compound for forming a metal-containing film is manufactured from metal alkoxide or acetylacetonate (acac) [of the above groups]. Alkoxide or acac metal allows an SiOH-containing compound to react to generate a silicon-containing organic group of the general formula (2), and then reacts with an anhydride, a cyclic anhydride or a carboxylic acid to generate an organic group of the general formula (1)” while the examples on pages 94-97 demonstrate compounds only prepared by such a method. Additionally, the comparative compounds only differ in the anhydride used to prepare the metal compound, i.e. a metal alkoxide and silanol compound are used. Thus, the compounds of claim 1 are much broader in scope than the compounds described in the specification.
Nature of the invention: Claim 1 relates to any metal (Ti, Zr, or Hf) compound having a crosslinking ligand represented by general formula (W-1). While the claim also recites “for forming a metal-containing film to be contained in a composition for forming a metal-containing film” this is directed to the use of the compound and therefore holds no patentable weight. Thus, claim 1 is merely directed to a metal compound. While the specification on page 6 associates the technical effect of the invention to the crosslinking groups represented by general formula (W-1), the effect is only proven for metal (Ti, Hf, or Zr) alkoxide compounds of general formula (A) having a silicon-containing group represented by general formula (2) and a ligand represented by general formula (1) in which W is represented by a crosslinking group represented by general formula (W-1). There is no proof that any metal (Ti, Zr, or Hf) compound having a crosslinking ligand represented by general formula (W-1) can achieve the technical effect.
Level of one of ordinary skill: The specification is not enabling to a person skilled in the art to carry out the invention as claimed in claim 1. One of ordinary skill in the art would need to perform additional experiments to determine if any metal (Ti, Zr, or Hf) compound having a crosslinking ligand represented by general formula (W-1) could achieve the technical effects of the invention. Metal compounds can be used for a wide variety of applications and thus the level of skill needed to confirm the currently claimed invention achieves the desired technical effects far exceeds that of one of ordinary skill in the lithographic art. Thus, one of ordinary skill in the art could not predict a metal (Ti, Zr, or Hf) compound having no silicon-containing group would achieve the same desired technical effects.
Level of predictability in the art: Metal compounds can be used for a wide variety of applications which allows for a high level of unpredictability. The specification has failed to provide direction for obtaining any metal (Ti, Zr, or Hf) compound having a crosslinking ligand represented by general formula (W-1) other than those derived from a metal alkoxide, silanol, and carboxylic acid having the crosslinking group. Thus, the level of predictability to confirm the invention of claim 1 achieves the desired technical effects far exceeds the level of one of ordinary skill in the lithographic art.
Amount of direction provided by the inventor: The specification has failed to provide direction for obtaining any metal (Ti, Zr, or Hf) compound having a crosslinking ligand represented by general formula (W-1). Page 37 of the specification recites “the compound for forming a metal-containing film is manufactured from metal alkoxide or acetylacetonate (acac) [of the above groups]. Alkoxide or acac metal allows an SiOH-containing compound to react to generate a silicon-containing organic group of the general formula (2), and then reacts with an anhydride, a cyclic anhydride or a carboxylic acid to generate an organic group of the general formula (1)” while the examples on pages 94-97 demonstrate compounds only prepared by such a method. The specification has not provided enough direction to obtain compounds having a crosslinking ligand without a silanol group.
Existence of working examples: While pages 94-97 provide examples of how to make metal (Ti, Hf, or Zr) alkoxide compounds of general formula (A) having a silicon-containing group represented by general formula (2) and a ligand represented by general formula (1) in which W is represented by a crosslinking group represented by general formula (W-1), the specification fails to provide examples of compounds without a silanol linking group. It is unclear from the specification how to obtain a metal (Ti, Hf, or Zr) compound having only a ligand including a crosslinking group represented by general formula (W-1).
The instant disclosure does not disclose enabling information for one of ordinary skill in the art to make the claimed metal (Ti, Zr, or Hf) compound having a crosslinking ligand represented by general formula (W-1). Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claim 1 (and claims 6-18). Thus, the claims are not enabled because one of ordinary skill in the art would have to perform undue experimentation due to the lack of guidance for the full scope of the claimed invention.
To overcome the 112(a) rejection, the Examiner suggests amending claim 1 to include the subject matter of dependent claim 2, canceling claim 2, and amending claims 3 and 5 to depend from claim 1.
Allowable Subject Matter
Claims 2-5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. As noted above, the limitations of claim 2 resolve the 112(a) rejection of claim 1 and so are being indicated as being allowable.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not teach or provide motivation to make/use a metal (Ti, Hf, or Zr) alkoxide compound of general formula (A) having a silicon-containing group represented by general formula (2) and a ligand represented by general formula (1) in which W is represented by a crosslinking group represented by general formula (W-1). Closest prior art Yao et al. (U.S. 2015/0064904) teaches a metal compound having ligands including at least one silicon group [0027-0031] obtained by a reaction including a metal alkoxide, a silanol, and an anhydride [0060-0066] but does not teach the ligand comprises at least one crosslinking group represented by general formula (W-1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 6:30-3:00 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anna Malloy/Examiner, Art Unit 1737
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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