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 .
Applicant’s election without traverse of Group I, claims 1-9 in the reply filed on 12/22/2025 is acknowledged.
Claims 10-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/22/2025.
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.
Claims 1-9 are rejected under 35 U.S.C. 102a)(1) as being anticipated by Clary et al. (USP 9,243,004)
Regarding claims 1-4 and 6
Clary discloses a composition comprising (1-bromoethyl)benzene in tetrahydrofuran (i.e., THF) (Table 2, Entry 9).
It is noted that (1-bromoethyl)benzene is an aromatic compound having a hydrocarbon group and a halogen group, and reads directly on Chemical Formula 1-2 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-bromoethyl)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.
Regarding claims 7-9
The dielectric constant of the solvent is a property of the composition, and as the reference is using an identical solvent as claimed (i.e., THF) 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.
Conclusion
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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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734