FINAL REJECTION AFTER FILING RCE
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 § 102
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 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.
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.
Claim(s) 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2002179687 A.
JP 2002179687 A (abstract) discloses the preparation of organoalkoxysilanes which comprises: magnesium (24.3 g) was heated under N2, to which chlorocyclopentane (104.6 g) dissolved in THF (252 g) was added dropwise and reacted at 50-70 degrees. The resulted cyclopentylmagnesium chloride in THF was added dropwise to a mixture of positive methyl silicate (76.1 g) and xylene (150 g) and reacted at 70 degrees. The reaction mixture was distilled at 150 degrees to remove THF, and the resulted slurry (solid content of 27 wt. %) was filtered to remove the by-product. Dicyclopentyldimethoxysilane was obtained in 85 % yield, see abstract.
Applicant’s claims are deemed to be directly anticipated over the solution of chlorocyclopentane (104.6 g) dissolved in THF (252 g). Please note that chlorocyclopentane reads directly on Applicant’s liquid halogen compound of Chemical Formula 1-4 of independent claim 1, and THF reads directly on Applicant’s tetrahydrofuran solvent having a dielectric constant of 25 or less, as set forth in dependent claim 6.
Claim(s) 1-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yeon et al. KR 10-2156663 B1 (as evidenced by the corresponding English Language equivalence U.S. Patent Application Publication 2021/0087683 A1).
Yeon et al. discloses a method for forming a thin film, and more particularly, to a method for forming a thin film comprising steps of: i) adsorbing a growth inhibitor for forming a thin film on a surface of a substrate; and ii) adsorbing a metal film precursor, metal oxide film precursor, metal nitride film precursor or silicon nitride film precursor on a surface of a substrate on which the growth inhibitor is adsorbed, wherein the growth inhibitor for forming a thin film is represented by Chemical Formula 1 below, and the metal is at least one selected from a group consisting of tungsten, cobalt, chrome, aluminum, hafnium, vanadium, niobium, germanium, lanthanide, actinoids, gallium, tantalum, zirconium, ruthenium, copper, titanium, nickel, iridium and molybdenum,
AnBmXo [Chemical Formula 1] wherein A is carbon or silicon, B is hydrogen or a C1-C3 alkyl, X is a halogen, n is an integer of 1 to 15, o is an integer of 1 or more, and m is 0 to 2n+1, see abstract and independent claim 1. [Emphasis added].
Applicant’s attention is drawn to the growth inhibitor of Example 1, which is 2-chloro-2-methylbutane, which reads directly on Applicant’s liquid halogen compound of Chemical Formula 1-1 as set forth in independent claim 1. Also note that 2-chloro-2-methylbutane has a dielectric constant of about 9.3.
Yeon et al. differ from Applicant’s claimed invention in that there is not a direct teaching (i.e. by way of a specific example) to where the growth inhibitor is composed of an admixture of at least one liquid halogen component having a vapor pressure of 1 torr (25oC) or more (e.g. 2-chloro-2-methylbutane); and a separate chemically distinct solvent having a dielectric constant of 25 or less (as set forth in applicant’s independent claim 1) or a halogen based solvent (as set forth in applicant’s dependent claim 5), or one or more solvents selected from an octane, 1,2-dichloroethane, dimethylethyl amine, tetrahydrofuran, N,N dimethylformamide, isobutyl alcohol, and ethyl alcohol, (as set forth in applicant’s dependent claim 6).
Yeon et al.’s paragraph [0081] reads as followed: “The compound represented by Chemical Formula 1 may preferably be a branched, cyclic or aromatic compound, and may be specifically one or more selected from the group consisting of 1,1-dichloroethane, 1,2-dichloroethane, dichloromethane, 2-chloropropane, 1-chloropropane, 1,2-dichloropropane, 1,3-dichloropropane, 2,2-dichloropropane, 1-chloropentane, 2-chloropentane, 3-chloropentane, chlorocyclopentane, n-butylchloride, tert-butyl chloride, sec-butyl chloride, isobutyl chloride, 1,2-dichlorobenzene, 1,4-dichlorobenzene, trimethylchlorosilane, trichloropropane, 2-chloro-2-methylbutane, 2-methyl-1-pentane, and the like. In this case, there are advantages in that the effect of removing the process byproducts is large and excellent step coverage is achieved.” [Emphasis added].
It would have been obvious to one having ordinary skill in the art to use Yeon et al.’s disclosure of their Example 1 in conjunction with paragraph [0081], as strong motivation to actually formulate a growth inhibitor composition comprising 2-chloro-2-methylbutane (as the liquid halogen component having a vapor pressure of 1 torr (25oC) or more) and 1,2-dichloroethane as an additional growth inhibitor that also will function as a solvent having a dielectric constant of 25 or less. Please note that 1,2-dichloroethane reads simultaneously directly on applicant’s halogen based solvent (as set forth in applicant’s dependent claim 5), and on the one or more solvents selected from an octane, 1,2-dichloroethane, dimethylethyl amine, tetrahydrofuran, N,N dimethylformamide, isobutyl alcohol, and ethyl alcohol, (as set forth in applicant’s dependent claim 6).
It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference. Finally, it is well established by the courts that to combine two or more compounds/components together for the same purpose they are individually known to be used for, is not inventive outside a clear showing that said combination results in superior and unexpected results, see In re Kerkhoven (626 F.2d 846, 850, 205 USPQ 1069, 1072).
Response to Arguments
Applicant's arguments filed 07/22/26 with the amendment have been fully considered but are not persuasive to put the application in condition for allowance for the reasons set forth above. Additional Examiner comments are set forth next.
In regards to the prior-art rejection made over JP 2002179687 A, Applicant argues that: “the temporary coexistence of components does not imply the initiation of a functional composition." In fact, the mixture disclosed in of JP 2002179687 A is merely a mixed state of simple chemical reactants that pass through to be converted into a completely different substance via the following chemical reaction.
On the other hand, since the composition in question must be supplied in a gaseous state into an ALD chamber and physically and chemically adsorbed onto the substrate surface to control thin film growth, it corresponds to a finished product composition of a completely different nature in that these two components must reach the substrate while maintaining their inherent physicochemical properties (vapor pressure, dielectric constant) without decomposing or reacting.”
Examiner’s Response. The Examiner totally disagrees with Applicant’s position that in JP 2002179687 A invention, the combination of chlorocyclopentane (104.6 g) dissolved in THF (252 g) is nothing more than “the temporary coexistence of components” and thus “does not imply the initiation of a functional composition.". The fact of the matter is that the combination of chlorocyclopentane (104.6 g) dissolved in THF (252 g) actually results in a chemical stable composition that can subsequently be used for many different purposes. While JP 2002179687 A discloses that their subsequent use is the reaction of said composition with magnesium metal to make cyclopentylmagnesium chloride (a Grignard agent), this fact is irrelevant and moot in regards to the propriety of the examiner’s prior-art rejection.
Applicant’s claims are drawn to a composition that is capable for use in atomic layer deposition process and NOT to a process of actually using the composition in an atomic layer deposition process. JP 2002179687 A said composition is fully capable of subsequently being used in an atomic layer deposition process (because it falls directly within applicant’s claims), even if this fact is not disclosed by JP 2002179687 A. At best, applicant may have discovered a new use for JP 2002179687 A’s composition comprising a combination of chlorocyclopentane (104.6 g) dissolved in THF (252 g) in a subsequent process of atomic layer deposition process. Applicant is reminded that it has been well established by the courts that the new use of an otherwise old composition does not impart patentability to the old composition itself, see In re Tuomine, 213 USPQ 89 (CCPA 1982).
In regards to the prior-art rejection made over Yeon et al. KR 10-2156663 B1, Applicant argues that: “There is a difference between listing single components and mixing techniques producing synergistic effects. This is intended to refute the office action's position that since the halogen compound (A) in question is listed in Yeon and a substance suitable for use as a solvent (B) is also listed, mixing the two constitutes a combination of inventive steps that a person skilled in the art could easily perform. In other words, as shown in Example 1, Yeon is a technique for adsorbing only a specific single component onto a substrate. In fact, the listing of numerous substances in paragraph 0081, etc., of Yeon merely constitutes a disclosure of selecting and using one of these substances, not a disclosure of mixing them in specific ratios and numerical conditions.
On the other hand, the present invention achieves a synergistic effect by mixing a solvent having a specific dielectric constant (25 or less) with a halogen compound, thereby enabling fine control over excessive adsorption or substrate contamination (such as residual CI) that may occur when using only a single component. Even when combining the prior art documents, no technical implication can be found that transitions from a single-substance technique to a mixture technique.”.
Examiner’s Response. Please note the Examiner’s statement, made in the body of the prior-art rejection made over Yeon et al. KR 10-2156663 B1 that:, “It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference. Finally, it is well established by the courts that to combine two or more compounds/components together for the same purpose they are individually known to be used for, is not inventive outside a clear showing that said combination results in superior and unexpected results, see In re Kerkhoven (626 F.2d 846, 850, 205 USPQ 1069, 1072).”.
Applicant argues that their compositions show “synergistic effects” when mixed in specific ratios and under numerical conditions when subsequently used in an atomic layer deposition process. Nevertheless, the Examiner needs to point out that NONE of applicant’s pending elected claims 1-3 and 5-6 have any concentration ranges and/or ratios listed for the liquid halogen compound having a vapor pressure of 1 torr (25 oC) or more, and the separate distinct solvent having a dielectric constant of 25 or less. As such, applicant’s appeal to any “synergistic effects” is moot, at least because applicant’s claimed invention is NOT commensurate in scope with the alleged “synergistic effects”.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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