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 .
DETAILED ACTION
Claims 1-16 are pending in this application.
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 5, 8, 13 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.
In claim 1 line 4, from which claims 2-3, 5-7, 9, 11-16 depend, the phrase “or is semiconducting” is deemed confusing as to what it is modifying. It might be referring to the conductive metal containing film, the metal of the metal containing film, or the substrate. Furthermore, if it is referring to the metal film or the metal, then the term is contradicting as semiconducting is NOT the same as conducting. Clarification is requested.
In claim 1 lines 5-6, the phrase “amorphous or crystalline” is deemed confusing as to whether this is a limitation. The examiner believes that all materials are either amorphous or crystalline and thus is confusing.
In claim 4 line 1, from which claims 8, 10 depend, the preamble states producing a conductive substrate but the substrate in line 4 could be insulating, which is confusing. If the substrate in line 4 is an insulator, what method step converts the insulating substrate in line 4 to a conductive substrate in line 1? Clarification and appropriate amendments are requested.
In claim 5 lines 1-2, the term “the substrate is conductive” appears to be not further limiting as independent claim 1 already recites this. Clarification and appropriate amendments are requested.
In claim 8, the phrase “on an insulating substrate” appears to contradict independent claim 4, from which claim 8 depends, as it requires a conductive substrate (line 2). Clarification and appropriate amendments are requested.
In claim 13, the phrase “wherein a metal … conducting native oxides” appears to be not further limiting as independent claim 1 lines 3-4, from which claim 13 depends, already recites this. Clarification and appropriate amendments are requested.
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.
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.
Independent claim 1
Claims 1-2, 5-7, 9, 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Afzali-Ardakani et al. (2021/0394229) in view of Nealey et al. (2006/0134556).
Claim 1--Afzali-Ardakani teaches metal surface protection (title) in which a metal substrate is protected by a polymer film which self-assembles on a metal oxide positioned on a surface of the metal substrate (abstract). Specifically, a metal substrate 104 consists of a metal oxide surface 106 and one or more polymer films 102 (0023-0024 and Figure 1). The metal oxide film can be titanium oxide (0024) and the polymer film can include phosphonic acid groups (0028). However, the reference fails to teach a hydrophobic film.
Nealey teaches a method for forming a copolymer film (title) in which surfaces are capped by hydrophobic molecules such as tetradecyl phosphonic acid (0096). It would have been obvious to utilize a hydrophobic phosphonic layer in Afzali-Ardakani with the expectation of success because Nealey teaches of using hydrophobic molecules such as phosphonic acid.
Regarding claim 2, Afzali-Ardakani teaches self-assembled monolayer (0020).
Regarding claim 5, Afzali-Ardakani teaches a metal substrate (0001), which are conductive.
Regarding claim 6, Afzali-Ardakani teaches a silicon substrate (0024).
Regarding claim 7, Afzali-Ardakani teaches a silicon oxide substrate (0024), which is an insulator.
Regarding claim 9, Afzali-Ardakani teaches aluminum oxide (0024), which is suggestive of sapphire.
Regarding claim 12, Afzali-Ardakani teaches titanium oxide (0024).
Regarding claim 13, Afzali-Ardakani teaches titanium oxide (0024), which is susceptible to forming native oxides.
Regarding claim 14, Afzali-Ardakani teaches heating (0038).
Regarding claim 15, Afzali-Ardakani teaches a heating temperature of 100-140oC (0038).
Regarding claim 16, Afzali-Ardakani teaches a flat substrate (Figure 1).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Afzali-Ardakani et al. (2021/0394229) in view of Nealey et al. (2006/0134556) and further in view of Dolog et al. (2019/0153805). The combination of Afzali-Ardakani/Nealey fails to teach the appropriate phosphonic acid.
Dolog teaches an elastomer surface having a highly fluorinated group such as (3,3,4,4,5,5,6,6,7,7,8,8,9,9,10,10,11,11,12,12,12-heneicosafluorododecyl)phosphonic acid (0021). To utilize the phosphonic acid of Dolog in the combination would have been obvious in the absence of a showing of criticality with the claimed phosphonic acid.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Afzali-Ardakani et al. (2021/0394229) in view of Nealey et al. (2006/0134556) and further in view of Jacques et al. (2018/0186123). The combination of Afzali-Ardakani/Nealey fails to teach the appropriate deposition method.
Jacques teaches of forming a coated film structure (title) by depositing a polymer film using CVD, PVD, or ALD (0043). To utilize PVD in the combination would have been obvious with the expectation of success because Jacques teaches of forming a polymer film by PVD.
Independent claim 4
Claims 4, 8, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Haider et al (The Journal of Physical Chemistry C article) in view of Johannsen et al. (2002/0181725).
Haider teaches an atomic layer deposition method of depositing a plasma polymerized fluorocarbon layer (title) on metal oxide materials including HfO2 (abstract). Specifically, the fluorocarbon layer was deposited by plasma polymerization using C4F8 gas on metal oxide films on top of Si samples (p.26394 col.2 Film Growth). The thickness can be 32 nm (p.26395 col.1 Results and Discussion). However, the reference fails to teach a hydrophobic film.
Johannsen teaches a method of providing a hydrophobic layer (title) in which a plasma polymerized fluorocarbon film is hydrophobic (0004). It would have been obvious to utilize a hydrophobic plasma polymerized fluorocarbon film in Haider with the expectation of success because Johannsen teaches of using a hydrophobic plasma polymerized fluorocarbon film.
Regarding claim 8, the applicant requires an insulating substrate. Haider teaches a Si(100) substrate (p.26395 col.1) which is a semiconductor substrate with insulating properties. To utilize an insulating substrate would have been obvious in the absence of a showing of criticality.
Regarding claim 10, Haider teaches C4F8 (p.26394 col.2).
Schwartz et al. (2021/0130771) teaches a hydrophobic phosphonic layer on a cell substrate and has been cited as relevant art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRET CHEN whose telephone number is (571)272-1417. The examiner can normally be reached M-F 8:30-8:30 MT.
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/BRET P CHEN/Primary Examiner, Art Unit 1718 03/06/2026