NON-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 § 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.
Claims 1-3 and 5-6 are 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.
Independent claim 1 is indefinite in regards to the limitation of: “Chemical Formulas 1-1 to 104, 1-6 to 1-9 and 2-3 to 2-3” [Emphasis added]. Is “104” supposed to be --1-4--? Is “2-3 to 2-3” supposed to be --2-1 to 2-3--?
All other claims are being rejected here because they are either directly or indirectly dependent on rejected independent claim 1.
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 5-6 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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 claims are deemed to be directly anticipated over 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 (which has a dielectric constant of about 9.3) also reads directly on Applicant’s solvent component having a dielectric constant of 25 or less as set forth in independent claim 1. Also note that Applicant’s dependent claim 5 lists a “halogen-based solvent” as one type of solvent meeting the limitation of a solvent component having a dielectric constant of 25 or less.
Claim(s) 6 is 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. has been described above and 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 chemical distinct solvent having a dielectric constant of 25 or less comprising one or more selected from an octane, 1,2-dichloroethane, dimethylethyl amine, tetrahydrofuran, N,N dimethylformamide, isobutyl alcohol, and ethyl alcohol as set forth in 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 the distinct solvent having a dielectric constant of 25 or less). It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference.
Response to Arguments
On 04/24/26 Applicant’s RCE was filed with the request that the amendment filed 04/13/26 be entered. Such has been done. Applicant's arguments filed 04/13/26 with said 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 seems to have misread the prior-art rejection itself. The Examiner was explicitly clear that applicant’s claims are 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. The fact that said solution of chlorocyclopentane (104.6 g) dissolved in THF (252 g) is subsequently used in a Grignard reaction is totally irrelevant. The solution of chlorocyclopentane (104.6 g) dissolved in THF (252 g) contains only two components, and thus clearly falls within Applicant’s independent claim 1 limitation of a “thin film modification composition consisting of: . . .”.
Likewise, in regards to the prior-art rejection made over KR 10-2156663 B1 (as evidenced by the corresponding English Language equivalence U.S. Patent Application Publication 2021/0087683 A1), Applicant seems to have misread the prior-art rejection itself. The Examiner was explicitly clear that applicant’s claims are directly anticipated over 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 (which has a dielectric constant of about 9.3) also reads directly on Applicant’s solvent component having a dielectric constant of 25 or less as set forth in independent claim 1. Also note that Applicant’s dependent claim 5 lists a “halogen-based solvent” as one type of solvent meeting the limitation of a solvent component having a dielectric constant of 25 or less. The fact that said growth inhibitor can subsequently be used in a process of 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." is totally irrelevant. The growth inhibitor of Example 1, which is 2-chloro-2-methylbutane which also functions as a solvent having a dielectric constant of 25 or less, and thus clearly falls within Applicant’s independent claim 1 limitation of a “thin film modification composition consisting of: . . .”.
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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