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 .
The amendment filed 3/30/2026 has been entered. Claims 1, 3, and 6 have been canceled. Claims 2, 4-5, and 7 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claims 2 and 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), for generally the reasons recited in the prior office action and restated below with respect to the amended claims, wherein it is noted that although Rau does disclose [Mo(O)(OR)3] (as noted by the Applicant in the response filed 3/30/2026), Rau also specifically discloses [Mo(O)(OR)4] on pages 66-69 and pages 88-90 (i.e., m represents 4 in the claimed formula (2) as recited in amended claim 2), and hence the Examiner maintains her position that Rau discloses the claimed invention as recited in (amended) claims 2 and 7 with sufficient specificity to anticipate instant claims 2 and 7.
As discussed in the prior office action, 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 again takes the position that Rau discloses the claimed “thin-film forming raw material” and “molybdenum compound” as recited in instant claims 2 and 7, respectively, with sufficient specificity to anticipate instant claims 2 and 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, it is again noted that 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 again 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
Alternatively, claims 2 and 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 2 and 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 2 and 7, particularly in light of the working examples, the Examiner alternatively takes the position that the claimed invention as recited in instant claims 2 and 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 (by definition) implicitly includes general “vaporizing” and “chemical reaction” 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 2, 4-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Lansalot-Matras (US2017/0268107A1) view of Rau (WO2021/197597A1) for generally the reasons recited in the prior office action and restated below with respect to the amended claims.
As discussed in the prior office action, 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 4-5). 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 2, 4-5, and 7, although Lansalot-Matras teaches a thin-film forming raw material comprising a molybdenum compound, 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” and particularly by the steps as recited in instant claims 4-5, Lansalot-Matras does not teach that the molybdenum-containing precursor is a compound represented by general formula (2) as recited in instant claim 7 from which amended claims 2 and 4-5 now depend, which is limited to 1 to 8 fluorine atoms with respect to the fluorine atom-containing alkyl group as R21 when “m” represents 4. However, 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 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 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 2, 4-5, and 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 2, 4-5, and 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.
Response to Arguments
Applicant's arguments filed 3/30/2026 have been fully considered but they are not persuasive with respect to the rejections over Rau taken alone, or over Lansalot-Matras in view of Rau as restated above with respect to the amended claims. Specifically, with respect to the anticipation and obviousness rejections over Rau, the Applicant first argues that “while Rau allegedly discloses Mo(=O)(OR)3, one skilled in the art would recognize that this compound is a pentavalent molybdenum compound” (emphasis in original) and that “[n]othing in Rau [allegedly] describes how such a pentavalent molybdenum compound could or should be produced (i.e., without undue experimentation)—This is because this compound cannot exist stably based on electron count (and the Office Action [allegedly] has not established with actual evidence that one skilled in the art would be able to synthesize such a pentavalent molybdenum compound” (emphasis in original, see page 7, first full paragraph). The Applicant argues that “[i]n contrast, the compound represented by the general formula (2), as recited in the rejected claims, is a hexavalent molybdenum compound that exists stably” (emphasis in original) and that allegedly “[n]othing in Rau and/or the other applied references would have led a person skilled in the art to conceive of the hexavalent molybdenum compound recited in the claims of this application based on the pentavalent molybdenum compounds described in Rau” (see page 7, second full paragraph). However, the Examiner respectfully disagrees and again notes, as discussed in detail above, that Rau also clearly discloses [Mo(O)(OR)4] – a hexavalent molybdenum compound (as acknowledged by Rau at page 2, lines 4-6) on pages 66-69 and pages 88-90 along with [W(O)(OR)4] – a similar hexavalent tungsten compound as also acknowledged by Rau at page 2, lines 4-6, and a process for producing these similar silicon-free compounds by a one-pot synthesis utilizing similar starting materials. Hence, Applicant’s arguments with respect to Rau and a pentavalent molybdenum compound as presented in the first two paragraphs of page 7, and generally summarized and/or restated in the remaining portion of page 7 through the first full paragraph of page 8, are not persuasive.
In the second full paragraph of page 8, the Applicant argues that the Office Action allegedly asserted an inherency position in the context of the 103 rejections, and that the “high standard” required to rely upon inherency in an obviousness rejection allegedly “is simply not met by the [alleged] unsupported/erroneous findings, conclusory statements and positions provided in the Office Action.” However, it is unclear to the Examiner as to what “inherency position” the Applicant is referring with respect to the 103 rejections given that neither 103 rejection relied upon inherency for any claimed properties, with only the obviousness rejection over Rau referring to the broadly claimed steps of “introducing a raw gas obtained by vaporizing” the molybdenum compound according to claim 7 “into a film formation chamber having a substrate set therein” and “subjecting the molybdenum compound… to decomposition and/or chemical reaction” of instant claim 4 as being “implicitly” included in the “chemical vapor deposition” (CVD) process taught by Rau – which by definition and as the name itself implies is a “deposition” process, particularly a “thin film” deposition process for forming a thin film on a surface of a substrate, utilizing a “vapor” of a precursor or raw material that decomposes and/or reacts by a “chemical” reaction to deposit a thin film on the substrate surface, as would be clearly understood by one having ordinary skill in the art and as evidenced by, for example, Dahmen, Chemical Vapor Deposition in Encyclopedia of Physical Science and Technology, Third Edition, Volume 2 (see particularly Glossary and Sections I-IV). Hence, Applicant’s arguments in the second full paragraph of page 8 are not persuasive.
The Applicant also argues that “it is [allegedly] unreasonable for the Examiner to find that the recited combination of features are rendered obvious by Rau alone or in Lansalot-Matras as modified by Rau and/or find that the claims encompass materials with an identical chemical structure to that of Rau alone or in Lansalot-Matras as modified by Rau” and that “[i]nstead, when the language of the claims and the content of the applied references are properly considered, there is [allegedly] neither any description in the applied references nor any specific examples in the applied references that prove prior invention of the claimed subject matter,” arguing that “[f]or at least these reasons, and because the molybdenum compounds as encompassed by the claims are [allegedly] not identical to those fairly suggested by the applied references, the reasoning in the Office Action [allegedly] lacks a proper factual basis and each of the rejections should be withdrawn” (see paragraph bridging pages 8-9 of the response). The Applicant then argues that “[f]urthermore, the rejections are deficient not only because the Office Action [allegedly] has failed to establish that the claimed features would naturally result from the combination of components/conditions that are explicitly disclosed in the applied references, but also because there [allegedly] would have been no proper suggestion or motivation to make the modification of the asserted primary reference that would have been necessary to arrive at the claimed features” and that [a]s such, there are [allegedly] various evidentiary gaps in the rejections of the claims that are fatal to a prima facie case of unpatentability at least because the Office action [allegedly] has not properly established that the references as applied in the Office Action either disclose and/or render obvious all of the limitations arranged or combined in the same way as recited in the claims” (see page 9 of the response). However, the Examiner respectfully disagrees and notes that aside from Applicant’s specific arguments with respect to the claimed chemical formula (2) on pages 5-6 of the response, which have been addressed by the Examiner above, the Applicant fails to specifically point out how the language of the claims patentably distinguishes them from the references. Hence, Applicant’s arguments on pages 7-9 of the response filed 3/30/2026 are not persuasive, and the Examiner maintains her position with respect to the anticipation and obviousness rejections over Rau taken alone, and the obviousness rejection over the combined teachings of Lansalot-Matras in view of Rau, as restated above with respect to the amended claims.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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