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 .
Status of Application
Claims 1-33 are pending. Claims 20-28 and 31-33 are withdrawn. Claims 1-19, 29 and 30 are presented for examination.
Election/Restrictions
Applicant’s election without traverse of claims 1-19, 29 and 30 in the reply filed on 2/26/2026 is acknowledged.
Claims 20-28 and 31-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 2/26/2026.
Claim Objections
Claims 7, 8, 17 and 18 are objected to because of the following informalities:
In claims 7 and 17, “(di-iso-propylamino)diiodoborane (pyrrolidino)chloroborane,” should correctly be “(di-iso-propylamino)diiodoborane, (pyrrolidino)chloroborane,”.
In claims 8 and 18, “recursor” should correctly be “precursor”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
1. Claims 1-19, 29 and 30 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.
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 1 and 10 recite the broad recitation that R2 can be a C4 to C10 aryl group, and the claim also recites a C6 to C10 aryl group 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. Claims 2-9, 11-19, 29 and 30 depend from claim 1 or claim 10 and are indefinite for the same reasons. For examination purposes, R2 has been interpreted as inclusive of the broader range of C4 to C10 aryl groups.
Claim 10 recites the limitation "the at least one boron-containing precursor". There is insufficient antecedent basis for this limitation in the claim. There is no initial recitation of a boron-containing precursor. Therefore, claim 10 is indefinite. Claims 11-19 and 30 depend from claim 10 and are indefinite for the same reasons. For examination purposes, the limitation has been interpreted as “the at least one compound”.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
2. Claims 7, 17, 29 and 30 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 7, 17, 29 and 30 recite that the boron containing precursor of claims 1 or 10 comprise compounds that are not covered by the structure of Formula I. For example, (2-methyl-pyrrolidono)chloroborane only includes one X group and 1 amino containing group, whereas the structure of Formula I requires 3 units where 2 are amino groups and 1 is a halogen or 2 are halogen and 1 is an amino group. Therefore, claims 7, 17, 29 and 30 actually broaden the parent claim rather than further limiting the parent claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Note that for examination purposes, if the compound comprises a 2-methyl-pyrrolidono group and a chlorine group off the boron it will be interpreted as reading upon the claim.
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.
3. Claim(s) 1-5, 10 and 12-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maringgele et al. (“Sterically Encumbered Monomeric Sec.amino-(halogeno)hydroboranes and the Corresponding Dihalogeno- and Dihydroborane Precursors”).
I. Regarding claims 1-3 and 5, Maringgele teaches a boron compound having the structure R-BCl2 wherein R has the structure
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(see compound 16a, Table 1). This compound meets the formula I wherein n is 1, R1 and R2 are linked together to form a ring and are different C3 and C4 branched alkyl groups. Maringgele teaches a boron precursor meeting all the limitations of claims 1-3 and 5; therefore, Maringgele anticipates claims 1-3 and 5.
II. Regarding claims 1, 4, 5, Maringgele teaches a boron compound having the structure R-BCl2 wherein R has the structure
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(see compound 14a, Table 1). This compound meets the formula I wherein n is 1, R1 and R2 are not linked together are different and R1 is a C1 alkyl group and R2 is a C9 aryl group. Maringgele teaches a boron precursor meeting all the limitations of claims 1, 4 and 5.
III. Regarding claims 10, 12, 13, 15, Maringgele teaches a composition comprising a boron compound having the structure R-BCl2 wherein R has the structure
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(see compound 16a, Table 1) having a boiling point of 87 ºC (Table 2) in a solvent of carbon tetrachloride (see top of page 725) which has a boiling point of 76 ºC. Maringgele teaches all the limitations of claims 10, 12, 13 and 15; therefore, Maringgele anticipates the claims.
IV. Regarding claims 10, 14, 15, Maringgele teaches a composition comprising a boron compound having the structure R-BCl2 wherein R has the structure
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(see compound 14a, Table 1) having a boiling point of 112 ºC (Table 2) in a solvent of carbon tetrachloride (see top of page 725) which has a boiling point of 76 ºC. Maringgele teaches all the limitations of claims 10, 14 and 15; therefore, Maringgele anticipates the claims.
4. Claim(s) 1, 4, 6-11, 14 and 16-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishiyama et al. (“Bis(pinacoloato)diboron”).
I. Regarding claims 1, 4 and 6-9, Ishiyama teaches a boron compound which is bis(dimethylamino)bromoborane (see Scheme B). This compound meets all the limitations of claims 1, 4 and 6-9; therefore, Ishiyama anticipates claims 1, 4 and 6-9.
II. Regarding claims 10, 11, 14 and 16-19, Ishiyama teaches a composition comprising the boron compound as outlined above having a boiling point of 20-28 ºC in a solvent of pentane (Scheme B), which is an alkyl hydrocarbon having a boiling point of 36 ºC. Ishiyama teaches all the limitations of claims 10, 11, 14 and 16-19; therefore, Ishiyama anticipates the claims.
Claim Rejections - 35 USC § 103
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.
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.
5. Claim(s) 1, 4-9 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roeder et al. (U.S. PGPUB No. 2005/0042888).
Regarding claims 1, 4-9 and 29, Roeder teaches a precursor compound (abstract) having a formula (R1R2N)a-bMXb, (0090) where R1 and R2 can be the same or different and not linked together (0014), wherein M can be boron (0011), a is the valence of the metal (0012), and b is greater than or equal to 1 and less than or equal to a-1 (0013, and note that if the metal is boron then a would be 3 and b is 1 or 2), X is chlorine, fluorine, bromine or iodine (0015). Roeder teaches that R1 and R2 can be a C1-C4 alkyl (0014). Roeder fails to teach an exemplary embodiment meeting the limitations of the boron precursor as claimed.
However, Roeder does teach a genus which includes compounds where M can be boron, R1 and R2 can both be methyl or one can be ethyl and the other methyl and X can be bromo (see above), thereby yielding the compounds bis(dimethylamino)bromoborane and bis(ethylmethylamino)bromoborane). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Roeder’s precursor by substituting a compound where the metal is selected to be boron, X is bromine, b is 1, and R1 and R2 are both methyl or one is methyl and the other ethyl. One would have been motivated to make this substitution as one could have substituted these particular compounds for the examples of Roeder with a reasonable expectation of success (note that Roeder teaches that the substituents can be selected from these groups), and the predictable result of providing a boron precursor.
6. Claim(s) 10, 14-19 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roeder in view of Maringgele.
Regarding claims 10, 14-19 and 30, Roeder makes obvious a boron precursor composition including a boron precursor, such as bis(dimethylamino)bromoborane and/or bis(ethylmethylamino)bromoborane (see above), but fails to teach or suggest the inclusion of a solvent.
However, Maringgele teaches similar boron precursors (see above), which are provided in a solvent with a boiling point difference between the boron precursor and solvent of less than 40 ºC (see above). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Roeder’s composition by including a solvent as disclosed by Maringgele. One would have been motivated to make this modification as the inclusion of solvent would allow for easier handling of the precursor and vaporization to yield boron films.
Conclusion
Claims 1-33 are pending.
Claims 20-28 and 31-33 are withdrawn.
Claims 1-19, 29 and 30 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
March 16, 2026Primary Examiner, Art Unit 1717
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