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 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 3 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. Claim 3 recites, “A method of producing a thin-film, comprising forming a thin-film containing a molybdenum atom on a surface of a substrate through use of the thin-film forming raw material of claim 1” (emphasis added), however, given that the claim does not clearly recite what is meant to be encompassed by the claimed “through use of” limitation or how “the thin-film forming raw material of claim 1” is actually being used in the method of claim 3, e.g., directly as in dependent claims 4-5 to form the thin-film or indirectly such as in a separate reaction to produce a target material that is then vapor deposited to form the thin-film, or as the substrate, etc., one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 6 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. Claim 6 recites, “A molybdenum-containing thin-film, which is produced by using the thin-film forming raw material of claim 1” (emphasis added), however, given that claim 6 does not clearly recite how the thin-filming forming raw material of claim 1 is being used to produce the molybdenum-containing thin-film of claim 6, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.)
It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Similarly, when reading a preamble in the context of an entire claim, if the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations, then the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Lastly, it is noted that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.” In re Thorpe, 227 USPQ 964,966 (Fed. Cir. 1985.)
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson (Volatile Perfluoro-t-butoxides of oxo molybdenum (VI), hereinafter referred to as “Johnson 1979”). Johnson 1979 discloses a volatile alkoxide of molybdenum (VI) with a chemical formula of MoO(OC4F9)4 reading upon the claimed molybdenum compound represented by formula 1 of instant claims 1-2 when n=4 and R1 represents a fluorine atom-containing alkyl group having 9 fluorine atoms and 4 carbon atoms falling within the claimed 1 to 5 carbon atoms range (Entire document, particularly first paragraph); and given that the instantly claimed “thin-film forming raw material, comprising” the molybdenum compound as recited in instant claim 1 does not differentiate the claimed “raw material” from the “molybdenum compound” and appears to be simply directed to the intended end use of the molybdenum compound, wherein the molybdenum compound disclosed by Johnson 1979 is a capable of the same intended end use, the Examiner takes the position that the molybdenum compound disclosed by Johnson 1979 anticipates instant claims 1-2.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson (Crystal and Molecular Structure of Tetra (Tert-Perfluoro Butoxy) Oxo Mo(VI), hereinafter referred to as “Johnson 1980”) or Tafazolian (Synthesis of Molybdenum (VI) Neopentylidene Neopentylidyne Complexes). Each of Johnson 1980 and Tafazolian discloses a molybdenum (VI) compound having the chemical formula of MoO[OC(CF3)3]4 reading upon the claimed molybdenum compound represented by formula 1 of instant claims 1-2, when n=4 and R1 represents a fluorine atom-containing alkyl group having 9 fluorine atoms and 4 carbon atoms falling within the claimed 1 to 5 carbon atoms range (Johnson 1980: Entire document, particularly Abstract, Introduction; Tafazolian: Abstract), and given that the claimed “thin-forming raw material, comprising” the molybdenum compound as recited in instant claim 1 does not differentiate the claimed “raw material” from the “molybdenum compound” and appears to be simply directed to the intended end use of the molybdenum compound, wherein the molybdenum compound disclosed by Johnson 1980 or Tafazolian is a capable of the same intended end use, the Examiner takes the position that the molybdenum compound disclosed by Johnson 1980 or Tafazolian anticipates instant claims 1-2.
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pandharkar (Synthesis and Characterization of Molybdenum Back Contact Using Direct Current-Magnetron Sputtering for Thin Film Solar Cells). Pandharkar discloses a molybdenum thin film formed on a surface of a substrate by DC-magnetron sputtering utilizing a 99.98% pure Mo target, with examples ranging in thickness from 2.3 to 5.5 µm (Entire document, particularly Abstract, Experimental, and Results and Discussion), and although Pandharkar does not disclose that the Mo thin film “is produced by using the thin-film forming raw material of claim 1” which comprises “a molybdenum compound represented by” the instantly claimed general formula (1), the Examiner takes the position that the claimed “which is produced by using” limitation is a process limitation in the product-by-process claim that as broadly recited does not provide any additional material or structural limitations to the claimed “molybdenum-containing thin-film” of instant claim 6 to differentiate the claimed “molybdenum-containing thin-film” from the Mo thin film disclosed by Pandharkar, particularly given the lack of clarity of the claimed “produced by using” limitation as discussed in detail above (as well as Applicant’s working examples). Hence, the Examiner takes the position that Pandharkar anticipates instant claim 6.
Claims 1-3 and 6-7 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Rau (WO2021/197597A1, also printed as US2023/0295203A1, please refer to the WO document for the below cited sections). Rau discloses molybdenum and tungsten compounds of the formula [Mo(O)(OR)4] or [W(O)(OR)4] for deposition of a molybdenum or molybdenum-containing layer, or a tungsten or tungsten-containing layer, respectively, on a surface of a substrate, such as a semiconductor element, photovoltaic cell, or automotive exhaust gas catalyst; and a process for producing a coated substrate by depositing the layer thereon, such as by chemical vapor deposition or a sol-gel process; wherein “R is selected from the group consisting of a linear, branched or cyclic alkyl group (C5 - C10), a linear, branched or cyclic partially or fully halogenated alkyl group (C5 - C10), an alkylene alkyl ether group (RE-O)n-RF, a benzyl group, a partially or fully substituted benzyl group, a monocyclic or polycyclic arene, a partially or fully substituted monocyclic or polycyclic arene, a monocyclic or polycyclic heteroarene and a partially or fully substituted monocyclic or polycyclic heteroarene, wherein - RE are independently from each other selected from the group consisting of a linear, a branched or a cyclic alkyl group (C1 - C6) and a linear, a branched or a cyclic partially or fully halogenated alkyl group (C1 - C6), - RF are independently from each other selected from the group consisting of a linear, a branched or a cyclic alkyl group (C1 - C10) and a linear, a branched or a cyclic partially or fully halogenated alkyl group (C1 - C10), and - n = 1 to 5 or 1 , 2 or 3” (emphasis added; p. 1, line 16-p. 2, line 8; pp. 66-69; pp. 88-91); and given that Rau specifically discloses an embodiment wherein R is 1,1,5-trihydroperfluorpentyl with working examples thereof produced from 1,1,5-trihydroperfluorpentanol, as well as working examples produced from 1,1,1,3,3,3-hexafluoropropan-2-ol (thus R is a fluoroalkyl with 3 carbon atoms and 6 fluorine atoms), 2-fluoroethanol (thus R is a fluoroalkyl with 2 carbon atoms and 1 fluorine atom), 3-fluoropropan-1-ol (thus R is a fluoroalkyl with 3 carbon atoms and 1 fluorine atom), and 4-fluoro-1-butanol (thus R is a fluoroalkyl with 4 carbon atoms and 1 fluorine atom), the Examiner takes the position that Rau discloses the claimed “thin-film forming raw material” and “molybdenum compound” as recited in instant claims 1-2 and 7, respectively, as well as the claimed “method of producing a thin-film…through use of the thin-film forming raw material of claim 1” and “molybdenum-containing thin film, which is produced by using the thin-film forming raw material of claim 1” as recited in instant claims 3 and 6, respectively, with sufficient specificity to anticipate instant claims 1-3 and 6-7 (Entire document, particularly as noted above and p. 40, line 20-p. 41, line 19; p. 84, line 17-p. 85, line 20; pp. 86-87; and p. 122-125).
With respect to the 102(a)(1) rejection over Rau, Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
It is further noted that an English language translation of the non-English language foreign priority application would not overcome the Rau reference as applied under 35 U.S.C. 102(a)(2).
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.
Alternatively, claims 1-3 and 6-7 as well as claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Rau, as applied above to claims 1-3 and 6-7, and further discussed below.
The teachings of Rau are discussed in detail above and although the Examiner is of the position that the reference is anticipatory with respect to instant claims 1-3 and 6-7, particularly in light of the working examples as well as the lack of clarity of the claimed “produced by using” limitation of instant claim 6 as discussed above, the Examiner alternatively takes the position that the claimed invention as recited in instant claims 1-3 and 6-7 would have been obvious over the teachings of Rau which specifically utilizes the metal oxyalkoxide compounds as precursors for forming the deposited layer/film, given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
With respect to instant claims 4-5, given that Rau provides a clear teaching and/or suggestion that the compound(s) can be utilized as precursors to form the layer/film on a surface of a substrate of a semiconductor element, etc., by a chemical vapor deposition (CVD) or sol-gel process as known in the art (p. 1, second paragraph; and pp. 88-91), wherein a CVD process implicitly includes steps as recited in instant claim 4, the Examiner takes the position that the claimed invention as recited in instant claim 4 would have been obvious over the teachings of Rau. Further, given that atomic layer deposition (ALD) is a known, functionally equivalent deposition process in the art to a CVD process as broadly taught by Rau wherein a precursor layer/film is first formed on the substrate surface and then reacted with a reactive gas to form a final layer/film as in instant claim 5, the Examiner further takes the position that absent any clear showing of unexpected results, the claimed invention as recited in instant claim 5 also would have been obvious over the teachings of Rau given that Rau does not specifically limit the deposition process utilized to produce the molybdenum or molybdenum containing layer on the substrate from the molybdenum oxyalkoxide compound(s).
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lansalot-Matras (US2017/0268107A1) view of Rau (WO2021/197597A1).
Lansalot-Matras teaches a method of producing a thin group 6 transition metal-containing film on a substrate, particularly a Mo containing film, from an organometallic precursor compound having a general formula selected from Formulae I-V, utilizing any vapor deposition process (Abstract, Paragraph 0366). Lansalot-Matras teaches that the vapor deposition process can include introducing a precursor gas (“raw material gas”), obtained by vaporizing the precursor (“raw material”), into a reactor (“film formation chamber”) having a substrate disposed (“set”) therein (Entire document, particularly Paragraphs 0312-0327, 0366-0368, 0376-0380), wherein the precursor gas is introduced in combination with a reactant gas either simultaneously as in CVD or sequentially as in ALD to form a thin film on the surface of the substrate, wherein in the latter ALD process, the vaporized precursor adsorbs to the substrate (“forming a precursor film”) and then the reactive gas is introduced into the reactor where it reacts with the adsorbed composition forming a desired film on the surface of the substrate (Paragraphs 0382-0383, 0389, and 0393-0398; as in instant claims 3-5). Lansalot-Matras teaches that the resulting Group 6 transition metal-containing films may include a pure Group 6 transition metal, a Group 6 transition metal silicide (MkSil), a Group 6 transition metal oxide (MnOm), Group 6 transition metal nitride (MoNp) film, Group 6 transition metal carbide (MoCr) film, or a Group 6 transition metal carbonitride (MCrNp), wherein M is particularly Mo, and k, l, m, n, o, p, q, and r are integers individually ranging from 1 to 6 (Paragraphs 0327-0337 and 0398); and that one of ordinary skill in the art would “recognize that by judicial selection of the appropriate disclosed Group 6 film forming composition, optional precursors, and reactants, the desired film composition may be obtained” (Paragraph 0398).
Hence, with respect to instant claims 1-7, although Lansalot-Matras teaches a thin-film forming raw material comprising a molybdenum compound as broadly recited in instant claim 1, and a method of producing a thin-film containing a molybdenum atom on a surface of a substrate through use of a molybdenum-containing precursor as a “thin-film forming raw material” as broadly recited in instant claim 3 and particularly by the steps as recited in instant claims 4-5, as well as a molybdenum-containing thin film produced using a molybdenum-containing precursor or “thin-film forming raw” as broadly recited in instant claim 6, Lansalot-Matras does not teach that the molybdenum-containing precursor is a compound represented by general formula (1) as recited in instant claim 1 from which instant claims 3-6 depend or as represented by general formula (2) as recited in instant claim 7 that unlike claim 1, is limited to 1 to 8 fluorine atoms with respect to the fluorine atom-containing alkyl group as R21 when “m” represents 4. However, the Examiner first notes that with respect to the “molybdenum-containing thin-film” product as recited in instant claim 6, given that Lansalot-Matras clearly teaches that the resulting Group 6 transition metal-containing film may be a pure Group 6 transition metal thin film (Paragraph 0331), particularly of either molybdenum or tungsten, or may be a Group 6 transition metal oxide MnOm as noted above, particularly MoO2 or MoO3, or may be a Group 6 transition metal nitride MoNp, particularly Mo2N, MoN, or MoN2 (Paragraphs 0327-0337), and that one having ordinary skill in the art would clearly recognize that when the molybdenum-containing compound as represented by general formula 1 of instant claim 1 was utilized as a precursor or target material in the same manner as utilized in the invention taught by Lansalot-Matras to produce a molybdenum-containing thin-film and/or when the precursor(s) taught by Lansalot-Matras were used to produce a molybdenum-containing thin-film in the same manner as in the instant invention, the resulting products would essentially be the same, absent any specific claim limitations with respect to the thin-film structure and composition. Thus, the Examiner takes the position that the claimed “molybdenum-containing thin-film” of instant claim 6 would have been obvious over the teachings of Lansalot-Matras, particularly in light of the lack of clarity of the claimed “produced by using” limitation of instant claim 6 as discussed in detail above given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Further, it is noted that Lansalot-Matras teaches that the precursor may be of Formula (IV) M(=O)(OR)4 wherein M is Mo or W, and R is a C1 to C6 alkyl group similar to the instantly claimed general formula 1 when n=4 as in instant claims 1-2 or similar to the instantly claimed general formula 2 of instant claim 7 when m=4, except Lansalot-Matras does not teach that the C1 to C6 alkyl group is a fluoroalkyl group as in the instantly claimed invention, particularly a fluorine atom-containing alkyl group having 1 to 5 carbon atoms as in instant claims 1-2 and 7, and more particularly, also having only 1 to 8 fluorine atoms as in instant claim 7. However, as discussed in detail above, Rau teaches a similar molybdenum compound for use as a precursor in producing a deposited molybdenum or molybdenum containing layer/film, e.g., as in Lansalot-Matras, wherein the compound may also be of the formula M(=O)(OR)4 as in Lansalot-Matras, and more particularly [Mo(O)(OR)4] as in Lansalot-Matras, wherein “R is selected from the group consisting of a linear, branched or cyclic alkyl group (C5 - C10) [e.g., similar to Lansalot-Matras], a linear, branched or cyclic partially or fully halogenated alkyl group (C5 - C10) [e.g., similar to the fluorinated R1 or R21 group(s) of the instantly claimed invention], an alkylene alkyl ether group (RE-O)n-RF [e.g., similar to the L-2/L-4 group(s) of the instantly claimed invention], a benzyl group, a partially or fully substituted benzyl group, a monocyclic or polycyclic arene, a partially or fully substituted monocyclic or polycyclic arene, a monocyclic or polycyclic heteroarene and a partially or fully substituted monocyclic or polycyclic heteroarene, wherein - RE are independently from each other selected from the group consisting of a linear, a branched or a cyclic alkyl group (C1 - C6) and a linear, a branched or a cyclic partially or fully halogenated alkyl group (C1 - C6), - RF are independently from each other selected from the group consisting of a linear, a branched or a cyclic alkyl group (C1 - C10) and a linear, a branched or a cyclic partially or fully halogenated alkyl group (C1 - C10), and - n = 1 to 5 or 1 , 2 or 3” (emphasis added; p. 1, line 16-p. 2, line 8; pp. 88-91); that are produced by an improved method over known methods utilizing lithium or sodium salts (pp. 1-2 and 66-69), e.g., as in Lansalot-Matras (Paragraph 0359); and given that Rau teaches that the melting point of the compound(s) is dependent upon the residue R and the ligand OR such that some representative metal oxyalkoxides are liquid at or slightly above ambient temperature (p. 88), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize similar R group(s) of the [Mo(O)(OR)4] compound as taught by Rau, such as partially or fully halogenated alkyl groups or more particularly partially or fully fluorinated alkyl groups as in the examples, e.g., 1,1,5-trihydroperfluorpentyl, as the R group(s) in the invention taught by Lansalot-Matras and/or to determine the optimum R group(s) and respective OR ligand(s) to provide a desired melting point for a particular deposition process in the invention taught by Lansalot-Matras, wherein functionally equivalent R groups as taught by Rau (e.g., a C5-C6 alkyl group or partially fluorinated C5-C6 alkyl group) would have been obvious to one having ordinary skill in the art and would read upon the claimed “raw material” and/or “molybdenum compound” of instant claims 1-7.
Hence, absent any clear showing of criticality and/or unexpected results, the Examiner takes the position that the claimed invention as recited in instant claims 1-7 would have been obvious over the teachings of Lansalot-Matras in view of the teachings of Rau given that it is prima facie obviousness to simply substitute one known element (e.g., R group) for another to obtain predictable results and/or prima facie obviousness to combine prior art reference teachings to arrive at the claimed invention where there is some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787