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 § 102
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.
Claim(s) 1 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greer (USP 3,280,200).
Regarding claims 1 and 6-7
Greer discloses dissolving (1-chloroethyl)benzene in carbon tetrachloride (i.e., solvent with a dielectric constant of 2.2).
It is noted that (1-chloroethyl)benzene is an aromatic compound having a hydrocarbon group and a halogen group, and reads directly on Chemical Formula 1-1 of the instant claims.
With respect to the limitations on being a vacuum based modifier for controlling film growth or quality of a vacuum based thin film formed from a precursor compound, it is noted that this is an intended or desires use. Further, as the composition of the reference reads directly on the claimed composition it is expected to also be capable of the same intended use.
Regarding claim 5
The refractive index is a property of the composition, and as the reference is using an identical compound as claimed (i.e., (1-chloroethyl)benzene) it is expected to have the same properties. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Claim(s) 1 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ai et al. (CN-101693755-A)
Regarding claims 1 and 6-9
Ai discloses (1-chloroethyl)benzene in a solvent, where the solvent can be THF (Description).
It is noted that (1-chloroethyl)benzene is an aromatic compound having a hydrocarbon group and a halogen group, and reads directly on Chemical Formula 1-1 of the instant claims.
With respect to the limitations on being a vacuum based modifier for controlling film growth or quality of a vacuum based thin film formed from a precursor compound, it is noted that this is an intended or desires use. Further, as the composition of the reference reads directly on the claimed composition it is expected to also be capable of the same intended use.
Regarding claim 5
The refractive index is a property of the composition, and as the reference is using an identical compound as claimed (i.e., (1-chloroethyl)benzene) it is expected to have the same properties. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Response to Arguments
Applicants argue against the prior art rejections over Clary et al.
Applicants amendments to the claims overcome the rejection and it has been withdrawn. However, anew rejection with new art has been made in its place making these arguments moot.
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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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