DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
As of the response restriction requirement filed on February 2, 2026, claims 1 – 13 are pending. Claim 12 has been amended. Claims 1 – 11 have been withdrawn from consideration.
Election/Restrictions
Applicant’s election without traverse of Group III, claims 8 – 13 in the reply filed on February 2, 2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 9 and 12 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.
Regarding claims 9 and 12:
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 9 and 12 recites the broad recitation “…one … or more…”, and the claim also recites “… two or more…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
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.
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.
Claim 8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hostalek et al. US 5015747 A1 (hereinafter “Hostalek”).
Regarding claim 8:
Hostalek is directed to organometallic compounds for use in gas phase deposition techniques such as MOCVD (Abstract; col 1 lines 1 –30). Such organometallic precursors follow the general formula I disclosed:
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In which (Col 2 lines 10 – 35):
R1 and R2 independently of one another are each H, a straight-chain or branched alkyl group having up to 7 C atoms, which can be partially or completely fluorinated, a cycloalkyl, alkenyl or cycloalkenyl group having each 3-8 C atoms or an unsubstituted or substituted phenyl group,
M is Al, In or Ga,
Y is N, P, As or Sb,
m is 2, 3 or 4,
n and o are each 0 or 1 and
n+o is 1.
Hostalek discloses that suitable precursors for such techniques include e.g. 1,5-dimethyl-1-inda-5-aza-cyclooctane (col 3 lines 30 –41), which comports with R1 and R2 being methyl m = 3, where the 1 position and 5 position are substituted with indium and nitrogen respectively (M = In, Y = N), and o being zero.
Hostalek further discloses an embodiment of their method of depositing gallium onto surfaces [substrates] comprising: charging the bubbler with 1,5-dimethyl-1-galla-5-azacyclooctane; connecting an inert gas inlet to the bubbler and a decomposition chamber/reactor, and depositing gallium within the reactor (col 1 lines 30 – 50, col 5 line 45 – col 6 line 5).
Hostalek does not expressly teach a specific embodiment of their method with indium.
However, Hostalek clearly contemplates 1,5-dimethyl-1-inda-5-aza-cyclooctane as preferred alongside 1,5-dimethyl-1-galla-5-azacyclooctane.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have contemplated and performed the same method as that disclosed with regards to the gallium example because Hostalek indicates that such a deposition has a reasonable expectation of success and a desire to deposit indium films (col 1 lines 4 –20).
Regarding claim 10:
While Hostalek does not expressly teach an embodiment of their method wherein the deposition temperature is between 200°C and 600°C, Hostalek does disclose that their precursors are for use in an MOCVD method, where precursors are decomposed at temperatures below 1100°C (col 1 lines 20 – 40). Thus Hostalek discloses an overlapping range with regards to temperature. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Claim(s) 8 – 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koh et al. US 2014/0335363 A1 (hereinafter “Koh”).
Regarding claims 8, 9, 10, 11, 12, 13:
Koh is directed to deposition of indium oxide films and indium-gallium-zinc films (IGZO) (Abstract; [0003], [0020], [0052]). In an example, Koh discloses a method comprising: alternatively providing Et2InN(TMS)2 precursor gas, trimethylgallium [gallium precursor], diethylzinc [zinc precursor] and gaseous H2O [meeting claims 9 and 12] to contact the surface of a substrate that is heated to 500°C; and growing the IGZO film from the reaction of the gases with the surface of the substrate ([0052]).
With regards to temperature, Koh discloses an overlapping range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Koh does not expressly teach that the indium precursor is among those represented by claimed Formula 1:
Hostalek’s disclosure of such compounds as discussed above in the rejection of claim 8 over Hostalek applies to the present rejection, mutatis mutandis. Additionally, Hostalek discloses that their disclosed compounds are notably stable and resistant to air and oxygen, easy to handle and not self-igniting (col 2 lines 1 – 10, lines 35 – 45).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Koh by substituting Koh’s disclosed precursor with that of Hostalek because Hostalek teaches that their precursors are easy to handle, relatively safe and resistant from oxidation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Vaartstra US 6326505 B1, particularly col 6 lines 35 – 60 indicating similar precursor species.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached on (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
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