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 .
Election/Restrictions
Applicant’s election without traverse of Claims 1-8 in the reply filed on 20 NOV 2025 is acknowledged.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 20 NOV 2025.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO ‘272 (WO 2009/006272).
Claim 1 – WO ‘272 discloses a precursor comprising:
a compound of the formula (PG 0035 (ii), alkoxysilanes).
As regards the specifically claimed formula:
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126
179
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PG 0035 (ii) can be selected to read on the claimed formula in one of two ways:
x = 1, the Rs are chosen as hydrogen, alkyl, alkyl, and R’ is chosen as an alkyl, commensurate with the disclosure of said paragraph as to the scope of the alkyls; since R’ is an alkyl and the OR groups are alkoxys, the groups are different as required by the claim.
x = 0, the Rs are chosen as hydrogen, alkyl(1), alkyl(2), and alkyl(3), where alkyl(1) is different from at least one of alkyl(2) or alkyl(3), commensurate with the disclosure of said paragraph as to the scope of the alkyls.
These selections are held as prima facie obvious from the options provided in the cited paragraph.
As regards the vaporization limitation, PG 0045 expressly contemplates CVD, ALD, or other vapor-phase contacting of the substrate with the precursor.
As regards the dielectric constant of the substrate, deposition of the compound on a specific substrate is held as intended use and is not held as a limitation of the compound of Claim 1. See further MPEP 2114(II).
Claim 2 – WO ‘272 renders obvious the precursor of claim 1, wherein R is an alkoxy (from the rejection of Claim 1 above, using the x=0 definition, alkyl(1) is attached to an oxygen making the group an alkoxy commensurate with Claim 2).
Claim 3 – WO ‘272 renders obvious the precursor of claim 1, wherein R is a tert-butoxy or a tert- pentoxy (from the rejection of Claim 1 above, using the x=0 definition, alkyl(1) is attached to an oxygen making the group an alkoxy commensurate with Claim 3; PG 0035 contemplates up to C6 alkyls and PG 0032 is enabling for specific isomers thereof)
Claim 4 – WO ‘272 renders obvious the precursor of claim 1, wherein R1 and R2 are a tert-pentyl (PG 0035 contemplates up to C6 alkyls and PG 0032 is enabling for specific isomers thereof).
Claim 5 – WO ‘272 renders obvious the precursor of claim 1, wherein R1 and R2 are tert-butyl (PG 0035 contemplates up to C6 alkyls and PG 0032 is enabling for specific isomers thereof).
Claim 6 – WO ‘272 renders obvious the precursor of claim 1, wherein R1 and R2 are bonded to form a 5-membered heterocycle (PG 0035 (ii) and (xvi), the partial hydrolysis product of two methoxy groups yields -OCCO- linkages).
Claim 7 - WO ‘272 renders obvious the precursor of claim 1, wherein the precursor comprises a compound of the formula:
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168
238
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where:
R1 and R2 are bonded to form a heterocycle (PG 0035 (ii) and (xvi), the partial hydrolysis product of two methoxy groups yields -OCCO- linkages).
Claim 8 - WO ‘272 renders obvious the precursor of claim 1, wherein the precursor comprises a compound of the formula:
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286
256
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(PG 0035 (ii) and (xvi), the partial hydrolysis product of two methoxy groups yields -OCCO- linkages; selection of t-butoxy and t-pentoxy are independently obvious from (ii)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL G MILLER whose telephone number is (571)270-1861. The examiner can normally be reached M-F 9:00-5:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL G MILLER/ Primary Examiner, Art Unit 1712