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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 6/17/2026 has been entered.
Allowable Subject Matter
Prosecution on the merits of this application is reopened on claims 1, 3-4 and 13 considered unpatentable for the reasons indicated below:
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2004509127 A5 (hereafter the ‘127 patent), in view of Lei et al. (US 20190318925).
Regarding claims 1
The ‘127 patent disclose a composition comprising (trichlorosilyl)(dichloroboryl) methane in hexane (i.e., an alkyl hydrocarbon solvent) (example 4).
Although the ‘127 patent does not discloses the claimed solvents, the ‘127 patent does disclose the use of hexane. However, Lei discloses that when forming silicon based films that octane is functionally equivalent with hexane (para 0069). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to substitute octane for hexane, with a reasonable expectation of success in forming a useful film forming composition, absent evidence of new or unexpected results.
Regarding claim 3
As the combination of references discloses thew claimed composition it would be expected to have the same properties. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 4
The ‘127 patent does not use any materials that would have any of the claimed ions, as such these ions would be present at less than 5 ppm.
Regarding claim 13
The ‘127 patent discloses the composition and its use in a reaction which would require a reactor. Although, the ‘127 patent does not disclose that the container is a stainless steel container, the use of a container of any suitable material is seen as obvious, absent evidence of new or unexpected results.
Further, the use of pressurized containers having a valve and fitting being connectable to a container/reactor is convention in the art and does not further define the composition, or make a patentable contribution over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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