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 1-23 of C. Thivierge et al., US 18/636,090 (Apr. 15, 2024) are pending. Claims 18-23 stand withdrawn from consideration as not reading on the elected species. Claims 1-17 are under examination on the merits and stand rejected.
Request For Continued Examination
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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 23, 2026 has been entered.
Election of Species
As noted in previous Office actions, during a telephone conversation with Robert M. Lanning on January 2, 2025, Applicant respectively elected without traverse, the following species:
(1) dichlorosilane as the species of first halosilane compound;
(2) lithium iodide as the halide source; and
(3) diiodosilane as the second halosilane compound,
for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
Claims 1-17 read on the elected species. In the Reply filed on July 7, 2025, Applicant affirmed the telephonic election of species. Reply of 7/7/2025 at page 7. Applicant’s elected species were searched, and art was identified respecting all elected species as set forth in the § 103 rejection below. MPEP § 803.02. As such, the search was not extended beyond the elected species. The election of species requirement is given full effect, and claims 18-23 are maintained as withdrawn from consideration pursuant to 37 CFR 1.142(b) as not reading on the elected species. See, MPEP § 803.02.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See, MPEP § 2111; MPEP § 2106(II).
Claim interpretation is added in this Office action in view of Applicant’s amendments and accompanying arguments in the Reply of March 19, 2026 (the “Reply”).
Interpretation of the Claim 1 Term “continuous” Limitations
Claim 1 has been amended to recite continuous product collection and that the process is “semi-continuous” as follows:
Claim 1
(d) continuously collecting a product stream from the outlet of the reaction vessel as the first halosilane compound is continuously fed into the inlet of the reaction vessel, the product stream comprising the second halosilane compound
. . .
wherein the solid halide source is not continually added to the reaction vessel during the reaction; and
wherein the process is conducted as a semi-continuous reaction process.
With respect to the meaning of amended claim 1, Applicant argues that presently amended claim 1's reactor configuration is semi-continuous, where the solid halide source is already present in the reactor vessel and is not fed continuously alongside the first halosilane, which is fed continuously. Reply at page 8.
Specification working Examples 1-4 are all performed in the same manner, summarized by the Examiner as follows: (1) The reaction tube is first loaded with anhydrous lithium iodide; (2) The dichlorosilane is added either to the top or bottom tube end at rate to achieve a particular residence time, and product diiodosilane elutes and is collected from the other tube end; (3) once the internal temperature of the eluent flask reaches a specified temperature, the dichlorosilane addition and eluent collection are stopped, then the collected product is then transferred to a distillation apparatus and distilled. Specification at pages 17-20. The specification teaches that during the reaction, the halide source can be agitated within the reaction vessel while the first halosilane compound is fed through the reaction vessel to increase the reaction rate. Specification at page 12, [0018].
The subject claim 1 limitations are interpreted as follows. A “solid halide source” is first provided within a reaction vessel and then a “first halosilane” is flowed into one end of the vessel and, at the same time, the product “second halosilane” is collected as a product stream from the other end. During the flow of “a first halosilane” into the vessel, no additional “solid halide source” is input into the reaction vessel. At a designated time, the “first halosilane” flow is discontinued. The claim 1 term “semicontinuous” is interpreted as the natural result of practice of the claim 1 steps. MPEP § 2111.04(I) (claim scope is not limited by claim language that does not limit a claim to a particular structure). That is claim 1 requires collection of a product stream from a vessel outlet “as the first halosilane compound is continuously fed into the inlet of the reaction vessel”.
Claim Rejections - 35 USC § 103
The following is a quotation of AIA 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
Claims 1 and 3-17 are rejected under 35 U.S.C. 103 as being unpatentable over C. Ritter et al., WO 2017/201456 (2017) (“Ritter”) alone, or alternatively over Ritter in further view of Paul, Handbook of Industrial Mixing Science and Practice, 301-477 (2004) (“Paul”); F. Streiff et al., Don't overlook static-mixer reactors, 101 Chemical Engineering, 76-82 (1994) (“Streiff”); and/or N.G. Anderson, Practical Process & Research Development, “Chapter 13, Vessel and Mixing”, 269-289, (2000) (“Anderson-2”).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ritter and Anderson-2 as above in further view of N.G. Anderson, PRACTICAL PROCESS & RESEARCH DEVELOPMENT, “Chapter 2, Route Selection”, 27-52, (2000) (“Anderson”).
C. Ritter et al., WO 2017/201456 (2017) (“Ritter”)
Ritter teaches that halosilane chemicals find many uses in industry and that iodosilane precursors, such as diiodosilane (SiH2I2), are used to deposit a variety of silicon containing films for use in semiconductor manufacturing processes. Ritter at page 1, [0003]. Ritter teaches methods for synthesizing Si-H containing iodosilanes having the formula (1). Ritter at page 13, [0035].
Ritter Examples 1-3, 6-7, and 9-10 are directed to various modifications/optimization of the reaction between dichlorosilane (DCS) and lithium iodide to produce diiodosilane (DIS) (which are the elected species). Ritter at pages 39-45
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The foregoing Ritter reaction corresponds to each of Applicant’s elected species.
In Example 9, ¶ [00132], Ritter provides the following experimental for above reaction of dichlorosilane with lithium iodide to product diiodosilane.
[0132] A 20 L jacketed filter reactor equipped with a mechanical stirrer, condenser (regulated to -70°C), a solid addition port, an inlet tube for sub-surface dichlorosilane addition and an inlet for liquid pentane addition was charged with 15 L fresh pentane (Sigma Aldrich, >99% purity). The temperature in the reactor jacket was regulated to +35°C and the reactor condenser regulated to -70°C. The reactor was then stirred~ 200 RPM and while under an atmosphere of nitrogen, lithium iodide (9.99 kg, 74.64 mol) was then charged to the reactor. Subsequent gravimetric addition of dichlorosilane (3.88 kg, 38.42 mol) was regulated at a rate of approximately 1 kg per hour. Following completion of DCS addition, the reactor jacket remains regulated to +35°C and the condenser to -70°C. After stirring for 16 hours, stirring was stopped and the reactor contents were drained through the reactor filter into a 22 L round bottomed flask. The salts on the reactor filter were then washed with pentane (3 x 1 L) to furnish 4.96 kg of solid residue. The combined filtrate and washings were subsequently distilled at 88 kPa to furnish crude diiodosilane (8.01 kg, 86% purity). The remainder of the material comprised DCS, 0.1 %, pentane, 1.2%; SiH3I, 0.1%, SiH2CII, 4.5% and SiHl3, 0.1 % as suggested by GC analysis. This crude material is further distilled at 3.2 kPa to furnish diiodosilane (8.16 kg, 77% yield), comprising DIS, 99.7%; SiH3I, 0.01 %; SiH2CII, 0.03% and SiHI3, 0.1%).
Ritter at pages 43-44, [00132] (emphasis added).
Ritter further teaches that the reaction may also be performed in a continuous reactor by feeding the halosilane, possibly diluted in a solvent, together with the metal iodide, possibly suspended in a solvent, and passing them at a controlled residence time and temperatures in a flow through reactor. Ritter at page 26, [0074].
[0074] The reaction may also be performed in a continuous reactor by feeding the halosilane, possibly diluted in a solvent, together with the metal iodide, possibly suspended in a solvent, and passing them at a controlled residence time and temperatures in a flow through reactor.
The flow of each reagent may be controlled by metering pumps such as peristaltic pumps.
The reaction mixture may then be collected in a receiving vessel, and separated as in the batch synthesis example above.
Alternatively, the solid fraction may be removed in line, using for instance a centrifuge pump (commercially available). The product may also be separated from the solvent(s) by continuously feeding the filtered fraction to a continuous distillation unit.
Ritter at page 26, [0074] (emphasis added).
Differences Between Ritter and the Claims
Ritter’s batch process (Ritter at pages 43-44, [00132] Example 9) differs from claim 1 only in that Ritter’s batch process does not meet the claim 1 (d) limitation of:
Claim 1 . . . (d) continuously collecting a product stream from the outlet of the reaction vessel as the first halosilane compound is continuously fed into the inlet of the reaction vessel, the product stream comprising the second halosilane compound . . .
See Claim Interpretation above. However, as discussed above, Ritter teaches that the batch process is adaptable to continuous process by feeding the halosilane together with the metal iodide, and passing them at a controlled residence time and temperatures in a flow through reactor. Ritter at page 26, [0074]. However, this also does not meet the above claim 1(d) limitation.
Ritter further differs to the extent that it does not specifically point out the claim 1 limitation of “wherein the reaction vessel is maintained at about 32.5 kPa to about 210 kPa above ambient atmospheric pressure”.
Claim 2 differs as follows. Claim 2 is directed to the concept of recycling staring material (i.e., the “first halosilane”).
2. The method of claim 1, wherein the method further comprises the steps of:
(e) recovering unreacted first halosilane compound from the product stream; and
(f) feeding recovered unreacted first halosilane compound into the inlet of the reaction vessel.
However, in this regard, Ritter teaches:
Any unreacted halosilane may be vented through a distillation column as it tends to be more volatile than the product obtained, owing to the high mass of iodine vs Br or Cl. One of ordinary skill in the art will recognize that the vented halosilane may be recovered for later use or disposal.
Ritter at page 23, lines 7-10 (emphasis added). Thus, Ritter further differs from claim 2 in that it does not integrate the claim 2 step of “(f) feeding recovered unreacted first halosilane compound into the inlet of the reaction vessel” into a working example.
Paul, Handbook of Industrial Mixing Science and Practice, 301-477 (2004) (“Paul”)
Paul teaches that pipeline mixing is often used in industrial practice and in many cases the pipe, especially when equipped with static mixing internals, is a better place to mix and more economical than a vessel. Paul at page 391. Paul teaches that pipeline mixing is most useful when the process is continuous versus batch. Paul at page 391.
Paul teaches that it is very clear that the value of pipeline mixing technology in the process industry far exceeds the equipment capital cost and investment in pipeline equipment is small compared to that of in-tank dynamic agitators and other mechanical mixing devices, but is increasing. Paul at page 392, 1st paragraph. Paul teaches that this growth results largely from static mixers having proven their capability, not only in bulk blending and mixing, but also in applications involving the dispersion of immiscible fluids, heat transfer, interphase mass transfer, and establishing plug flow in tubular reactors. Paul at page 392, 1st paragraph. Paul teaches that since static mixers have no moving parts, they are low maintenance and sealing problems are nonexistent. Paul at page 392, 2nd paragraph.
Paul teaches that there are a broad variety of method and equipment options for the continuous processing of fluids in pipelines to achieve objectives in mixing, dispersion, heat transfer, and reaction and the fluid flow regime is a main determinate for equipment selection. Paul at paragraph bridging pages 396-397. Paul further teaches that the available pressure in both the main stream and additive stream are important in the selection criteria. Paul at paragraph bridging pages 396-397.
Paul teaches that static or motionless mixers are readily available and highly engineered for continuous operation and static mixers achieve predictable mixing performance through a definable pressure drop and a high degree of homogeneity can be achieved in a very short length of pipe. Paul at page 399. Paul teaches that:
Static mixers are the dominant design choice for motionless pipeline mixing. They are essential in the laminar flow regime. They are well established in turbulent processes, both single and multiphase, due to their simplicity, compactness, and energy efficiency. Properly designed static mixers offer predictable performance and operate over a broad range of flow conditions with high reliability. Static mixer design options and basic design principles are described in the following sections.
Paul at page 397, 2nd paragraph (emphasis added). Paul further teaches that static mixing devices are readily available and highly engineered for continuous operation. Paul at page 399, 2nd full paragraph. Paul teaches that very many commercial scale applications are efficiently handled with in-line static mixing equipment and suitable for homogeneous chemical reactions. Paul at page 404, 7-4 and 7-4.1.
F. Streiff et al., Don't overlook static-mixer reactors, 101 Chemical Engineering 101, 76-82 (1994) (“Streiff”)
Streiff teaches that a static mixing unit (Figure 1) consists of a series of stationary, motionless guiding elements placed lengthwise in a pipe, duct or column, where fluids are mixed by utilizing flow (pumping) energy. Streiff at page 77, col. 1.
Streiff teaches that static mixers combines the fluids thoroughly but also enhances heat and mass transfer and provides a narrow residence-time distribution and all of these features are desirable in a reactor. Streiff at page 77, col. 1.
Streiff teaches that static-mixer reactors are usually employed as continuous tubular reactors operating in plug-flow fashion and offer many advantages over stirred tanks, such as:
• Compactness and low capital cost
• Low energy consumption and other operating expense
• Negligible wear and no moving parts, which minimizes maintenance
• Lack of penetrating rotating shafts and seals, which provides closed-system operation
• Short mixing time, and well-defined mixing behavior
• Narrow residence-time distribution
• Performance independent of pressure and temperature
Streiff at page 77, col. 1.
N.G. Anderson, Practical Process & Research Development, “Chapter 13, Vessel and Mixing”, 269-289, (2000) (“Anderson-2”)
Anderson-2 teaches that a variation of continuous processing is the tubular flow reactor (TFR, Figure 13.2b), in which the reactants are continuously charged at one end of a tube and the products are continuously removed at the other end. Anderson-2 at page 276 (referencing Fig. 13.2b at page 273). Anderson-2 teaches that within a tubular flow reactor the reaction components are mixed both radially and axially, depending on the viscosity of the mixture, the tube diameter, and any mixing elements inside the tube.
The Anderson-2 tubular reactor is reproduced below for reference.
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Anderson-2 at page 273. The Anderson-2 tubular flow reactor meets the instant claim 1 limitation of “the inlet and the outlet being disposed substantially opposite each other with respect to the interior volume”.
N.G. Anderson, PRACTICAL PROCESS & RESEARCH DEVELOPMENT, “Chapter 2, Route Selection”, 27-52, (2000) (“Anderson”)
Respecting claim 2, Anderson teaches that cost considerations of chemical manufacture include process throughput (product produced per unit time), disposal costs, the amounts of solvents, reagents, and starting materials that can be recovered and recycled, and the amounts of intermediates and product that can be recovered as second crops. Anderson at pages 46-47 “IV. Using Cost Estimates to Assess the Ultimate Route”. Anderson fairly teaches one of ordinary skill in the art that starting materials can be recovered and recycled as part of cost considerations.
Claims 1-17 Are Obvious Over the Cited Reference Combination
Respecting claims 1 and 3-17, one of ordinary skill in the art is motivated with a reasonable expectation of success to modify Ritter’s diiodosilane synthetic Example 9 batch reaction using a reaction vessel in the shape of a tube, in a semicontinuous manner, according to the teachings of Ritter itself and/or Anderson-2, Paul or Streiff, whereby the claim 1 step of:
Claim 1 . . . (d) continuously collecting a product stream from the outlet of the reaction vessel as the first halosilane compound is continuously fed into the inlet of the reaction vessel, the product stream comprising the second halosilane compound . . .
is practiced. MPEP § 2144.04V(E) (citing In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963).1 One of ordinary skill is readily apprised that solid lithium iodide can be contained within a reaction tube and the dichlorosilane can be flowed through the tube and the product diiodosilane collected from the other reaction tube end.
Motivation to prepare diiodosilane in such a semicontinuous process, stems from Ritter’s teaching that it is useful in semiconductor manufacturing processes in view of Anderson-2’s teaching that continuous operations are generally used for large-volume products. Paul and Streiff teach the economic and practical advantages of pipeline mixing in continuous processes.
Further, Ritter specifically teaches that this reaction may also be performed in a continuous reactor. The Anderson-2 tubular flow reactor meets the instant claim 1 limitation of “the inlet and the outlet being disposed substantially opposite each other with respect to the interior volume”. Anderson-2 at page 276 (referencing Fig. 13.2b at page 273). As discussed above, Ritter fairly teaches that the metal iodide may be employed as a “solid halide source”.
For example, one of ordinary skill in the art is motivated by Ritter or Ritter in combination with Anderson-2, Paul and Streiff to pack a tubular flow reactor with solid lithium iodide, continuously feed dichlorosilane into the reaction, through the halide and continuously collect product diiodosilane from the outlet (for example at intervals or in a continuous flow manner) until the solid lithium iodide is sufficiently depleted and thereafter stop the halide flow and recover any product and/or starting materials remaining in the reaction tube2 thereby meeting claim 1 limitations (a)-(d) and ‘wherein clauses’ (as well as those of claims and 10-17) of, except the claim 1 pressure limitation is in strikeout text below because it has not yet been addressed by the Examiner:
Claim 1 . . . (a) providing a first halosilane compound, the first halosilane compound comprising a first halogen covalently bound to a silicon atom;
(b) providing a tube reaction vessel having an inlet, an outlet, and an interior volume, the inlet and the outlet being disposed substantially opposite each other with respect to the interior volume, the reaction vessel containing a solid halide source and
an optional inert filler disposed in the interior volume, the interior volume,
the halide source comprising a second halogen having a greater atomic number than the first halogen;
(c) continuously feeding the first halosilane compound into the inlet of the reaction vessel and through the interior volume of the reaction vessel so that it contacts the solid halide source and reacts to form a second halosilane compound, the second halosilane compound comprising at least one second halogen covalently bound to a silicon atom; and
(d) continuously collecting a product stream from the outlet of the reaction vessel as the first halosilane compound is continuously fed into the inlet of the reaction vessel, the product stream comprising the second halosilane compound
wherein the solid halide source is not continually added to the reaction vessel during the reaction: and
wherein the process is conducted as a semi-continuous reaction process
One of ordinary skill would be apprised that the process of Ritter is well suited for adaptation to a tubular reactor, such as disclosed by Anderson-2, because the lithium iodide remains an undissolved solid throughout the reaction3 and can be readily envisioned as present within a reactor tube, whereby the reactant dichlorosilane can flow into and through the lithium iodide to produce the desired product. One of ordinary skill is motivated to, for example, flow the dichlorosilane into the lithium iodide at about 35 °C, under pressure to maintain the dichlorosilane in liquid form, maintain a reaction time interval (or residence time) to permit reaction, optionally depressurize, and collect the product from the outlet.
The focus when making a determination of obviousness should be on what a person of ordinary skill in the pertinent art would have known at the relevant time, and on what such a person would have reasonably expected to have been able to do in view of that knowledge; regardless of whether the source of that knowledge and ability was documentary prior art, general knowledge in the art, or common sense. MPEP § 2141(II) (discussing the flexible approach of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)); see also, MPEP (V)(E) (citing In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963) (Claim directed to a method of producing a cementitious structure wherein a stable air foam is introduced into a slurry of cementitious material differed from the prior art only in requiring the addition of the foam to be continuous. The court held the claimed continuous operation would have been obvious in light of the batch process of the prior art.).
The claim 1 limitation of:
Claim 1 . . . wherein the reaction vessel is maintained at about 32.5 kPa to about 210 kPa above ambient atmospheric pressure. (emphasis added)
does not impart patentability over the cited art for the following reasons. It is a well-settled tenet that it would have been obvious for one of ordinary skill in the art to develop workable or optimum ranges for result-effective parameters. MPEP § 2144.05, see also, In re Boesch, 617 F.2d 272,276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). In this regard, one of ordinary skill apprised that the boiling point of reactant dichlorosilane is only 8 °C, where Ritter suggests a reaction temperature of 35 °C, is motivated to conduct the Ritter reaction in a tube-shaped reactor at super atmospheric conditions so as to maintain the dichlorosilane as a liquid throughout the process. Further, the pressure at which one of ordinary skill would conduct the Ritter process, modified as proposed above, is clearly a result-effective variable. MPEP § 2144.04(II)(A). In this regard, Paul teaches that the available pressure in both the main stream and additive stream are important in the selection criteria. Paul at paragraph bridging pages 396-397. Here, the pressure and temperature within the reaction tube in the proposed continuous process clearly determines of the physical state (whether liquid or vapor) and the concentration of starting material dichlorosilane (bp is 8 °C) and product diiodosilane (bp is 150 °C). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.4 MPEP § 2144.04(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ("[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”)). The specification indicates no criticality with respect to pressure. See specification at page 9, [0015] (“[t]he reaction vessel can be maintained at any suitable pressure”).5
Per above, the cited art meets each and every limitation of claim 1, which is therefore obvious pursuant to § 103.
Claim 2 is obvious over Ritter and Anderson-2 as above in further view of Anderson. It would be obvious to one of ordinary skill in the art to recover unreacted dichlorosilane for recycle to the reaction vessel in view of Anderson’s teaching that synthetic processes can be optimized by recovering and recycling starting materials. One of ordinary skill in the art would be motivated to so recycle the unreacted dichlorosilane in order to increase conversion efficiency thereby reducing reaction costs in a manufacturing process as taught by Anderson. When considering obviousness of a combination of known elements, the operative question is thus whether the improvement is more than the predictable use of prior art elements according to their established functions. MPEP § § 2141(I) (citing KSR International Co. v. Teleflex Inc.).
Respecting instant claim 3, dichlorosilane is a fluid at ambient conditions having a boiling point of 8 [Symbol font/0xB0] C. Matheson Dichlorosilane Safety Data Sheet (2014) (page 4 of 8). Ritter Example 9 thus clearly meets the limitation of “wherein the first halosilane compound is fluid when fed into the inlet of the reaction vessel”.
Respecting instant claims 4-7 Ritter teaches the use of lithium iodide in anhydrous form. Ritter at page 19, [0045].
Respecting claims 8 and 96, Ritter Example 9 is performed at 35 °C, which one of ordinary skill would consider a suitable starting point for optimization. As discussed above, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. MPEP § 2144.04(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In sum, claims 8 and 9 recite temperature ranges that are an obvious variation of the proposed § 103 rational.
The limitations of claim 10 are met because Ritters dichlorosilane (Cl2SiH2, DCS, the elected species) is, per claim 10 a “chlorosilane”.
The limitations of claim 11 are met because Ritters dichlorosilane (Cl2SiH2 or Si1H2R0X2, the elected species) falls within the claim 11 Markush genus of formula (I).
The limitations of claim 12 are met because Ritters dichlorosilane (Cl2SiH2 or Si1H2R0X2, the elected species) falls within the claim 11 Markush genus of formula (I) and b is 2.
The limitations of claim 13 are met because claim 13 only modifies Formula (X) of claim 11 and the rejection is based on claim 11 Formula (I).
The limitations of claim 14 are met because claim 14 only modifies Formula (XX) of claim 11 and the rejection is based on claim 11 Formula (I).
The limitations of claims 15 and 16 are met because Ritters dichlorosilane (Cl2SiH2 or Si1H2R0X2, the elected species) falls within the claim 11 Markush genus of formula (I) when c is 0. That is, the Markush genus of formula (I) (base claim 11) does not require an R group.
The limitation of 17 are met because Ritter teaches dichlorosilane (Cl2SiH2, DCS, the elected species).
Applicant’s Argument
Applicant argues that claim 1 has been amended to recite continuous product collection and that the process is “semi-continuous” as follows:
Claim 1 . . . (d) continuously collecting a product stream from the outlet of the reaction vessel as the first halosilane compound is continuously fed into the inlet of the reaction vessel, the product stream comprising the second halosilane compound
. . .
wherein the solid halide source is not continually added to the reaction vessel during the reaction: and
wherein the process is conducted as a semi-continuous reaction process.
Applicant argues that Ritter provides only a general reference to a continuous process in paragraph [0074], and this reference refers only to a fully continuous reactor configuration where both the halosilane and metal iodide (possibly a solid halide) are fed continuously. Reply at page 8. Applicant argues that, in contrast, in contrast, amended claim 1 's reactor configuration is semi-continuous, where the solid halide source is already present in the reactor vessel and is not fed continuously alongside the first halosilane, which is fed continuously.
In response, the differences between Ritter and claim 1 are noted but do not distinguish over the cited art. The thrust of Applicant’s argument is that claim 1 requires the solid halide to be positioned in the reaction vessel such that claim 1(d) can be practiced:
Claim 1 . . . (d) continuously collecting a product stream from the outlet of the reaction vessel as the first halosilane compound is continuously fed into the inlet of the reaction vessel, the product stream comprising the second halosilane compound . . .
However, these differences relate to reactant sequence/design choice of performing the continuous process suggested by Ritter. See MPEP § 2144.04 (VI)(C); MPEP § 2144.04 (IV)(B). The reaction is well characterized by Ritter and one of ordinary skill can readily envision practice of Ritter by first containing the lithium iodide in in a reaction tube and flowing the dichlorosilane therethrough while collecting the product according to claim 1(d). One of ordinary skill can readily envision that solid lithium iodide particles are uniquely adaptable to practice of Ritter as proposed and would realize flow-through mixing as taught by Paul and Streiff.
Applicant argues the declaration of inventor Robbie W.J.M. Hanssen under Rule 1.132 (July 7, 2025) (the “Hassen Declaration” or “Hassen Affidavit”) states that firstly, at a general level, halide exchange reactions for the purpose of generating input materials for the semiconductor industry, where purity is at a premium, is a fine chemicals operation. Applicant argues that as Anderson 2 notes in Table 13.3, continuous processes are rarely if ever used for the production of fine chemicals (as distinguished from bulk chemicals) and the production of fine chemicals is typically conducted by batch processing operations to enable better control of reaction conditions and purity/yield outcomes. Reply at page 9 (citing Anderson 2 at p. 274). Applicant argues that this alone would drive a person of skill in the art away from the continuous tube flow reactor of Anderson 2. Reply at page 9 (citing Hassen Declaration at ¶ 11).
This argument is not persuasive for the following reasons. One of ordinary skill would have no basis to surmise from the art of record that adopting the batch process of Ritter to a semicontinuous process, as proposed in the § 103 rational, would somehow affect the purity of the product diiodosilane or that such adaptation would lead to poor reaction control. Indeed, Ritter’s reaction involves only two reaction components (solid lithium iodide and pressurized liquid dichlorosilane). And Ritter specifically suggests the use of a continuous flow reactor. Ritter at page 26, [0074] (emphasis added).
Applicant further argues that Ritter is further deficient at least in that it does not disclose either the condition that the reactor in question must be in a tube reactor configuration or that the reaction vessel is maintained at about 32.5 kPa to about 210 kPa above ambient atmospheric pressure and the claimed invention as a whole should be compared to the prior art. Reply at page 10 (citing Hanssen Affidavit at paragraphs 13 – 15 for the concept that dichlorosilane is an ambient gas that needs to contact the lithium iodide for a sufficient time for the reaction to proceed and chloride salt formation would affect the column flow path and dichlorosilane flow).
This argument is not persuasive because it assumes that the reaction between dichlorosilane and lithium iodide requires extended reaction times and that one of ordinary skill cannot simply adjust the residence time of dichlorosilane within the reactor to account for the reaction time; for example, by adjusting the reaction tube dimensions and/or the lithium iodide particle size or packing. Further, as stated above, one of ordinary skill apprised that the boiling point of reactant dichlorosilane is only 8 °C, where Ritter suggests a reaction temperature of 35 °C, is motivated to conduct the Ritter reaction (modified as proposed above in a tubular reactor in a continuous fashion) at super atmospheric conditions so as to maintain the dichlorosilane as a flowing liquid throughout the process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 The court in In Re Dilnot adopted the Board of Appeals reasoning that “[a]ppellant apparently relies upon continuous operation to differentiate over the Jahjah batch process. It is, however, well within the expected skill of the technician to operate a process continuously”. In re Dilnot, 319 F.2d 194.
2 So conducting the proposed flow-through reaction until the solid lithium iodide is depleted meets the claim 1 limitation of “wherein the process is conducted as a semi-continuous reaction process”.
3 Ritter teaches that “Both Lil and LiCI remain as solids during this reaction”. Ritter at page 17, [0041].
4 To establish unexpected results (i.e., criticality) over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP § 716.02(d) (citing In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)).
5 The highlighted terms “about” with the claim 1 recitation of “maintained at about 32.5 kPa to about 210 kPa”, also indicate a lack of criticality. Further, the proposed modification of Ritter reads on the claimed pressure limitation, without any needed explanation by the Examiner, because there was nothing in the specification or the prior art to provide any indication as to what range of specific range is covered by the claim 1 term "about”. MPEP § 2173.05(b)(III)(A) (citing Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991).
6 Ritter’s Example 9 temperature of 35 [Symbol font/0xB0]C is considered to meet the claim 9 range of “about 20 °C to about 30 °C”. The specification does not specifically define the term “about” in this context. As such, the term claim term “about 30 °C” is considered to encompass the Ritter Example 9 temperature of 35 [Symbol font/0xB0]C. MPEP § 2173.05(b)(III)(A).