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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 12-18 & 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Multia (Multia, J., & Karppinen, M. (2022). Atomic/Molecular Layer Deposition for Designer's Functional Metal–Organic Materials. Advanced Materials Interfaces, 9(15), Article 2200210. https://doi.org/10.1002/admi.202200210; published 23/05/2022; hereafter Multia).
Claim 12: Multia is directed towards a process for preparing a transition metal-containing film on a substrate (see pg 27, discussing post-deposition annealing of a MLD film of Mo-thiolate to produce a MoS2 domains; pg 30, post-deposition annealing of hybrid films to remove the organic part) comprising:
forming an organic-inorganic hybrid film by repeated bringing the substrate in contact with a transition metal-containing compound and oxalic acid (see Figs. 1 & 4; abstract; § 4.4-4.5, pgs 9-11), and
decomposing the organic-inorganic hybrid film into a transition metal-containing film by thermal treatment (see pg 27, discussing post-deposition annealing of a MLD film of Mo-thiolate to produce a MoS2 domains; pg 30, post-deposition annealing of hybrid films to remove the organic part).
Claim 13: The transition metal includes Mn, Fe, Co, Ni, and Cu (§ 4.4, pgs 9-10).
Claim 14: The transition metal can be Ni (§ 4.4, pgs 9-10).
Claim 15: The transition metal-containing film is a transition metal film (film can be annealed at elevated temperatures to remove the organic part; § 4.4, pgs 9-10 and pg 30).
Claim 16: Fe2O3 layers with thickness of 20nm can be produced (pg 29).
Claim 17: The transition metal-containing compound is a transition metal cyclopentadienyl complex (see pg 7, Cp2Fe2(CO)4).
Claim 18: The organic acid is oxalic acid (§ 4.4, pg 9).
Claim 20: The process of forming the organic-inorganic hybrid film is performed as an atomic layer deposition process containing multiple times a sequence containg brining the substrate in contact with a transition metal-containing compound, removing residual transition metal-containing compound from the gas phase, bringing the substrate in contact with the organic acid and removing organic acid from the gas phase (see § 4.4, pg 10; Fig. 35).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 19 & 22 are rejected under 35 U.S.C. 103 as being unpatentable over Multia.
Claim 19: The deposition temperature ranges between 125-350 ºC, § 4.4, pg 10).
Although the taught range of 125-350ºC is not explicitly the claimed range of 160-280ºC, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since 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, 191 USPQ 90 (CCPA 1976).
Claim 22: Multia does not teach a specific desired wt% of organic acid.
However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Multia as applied above, and further in view of Yerushalmi et al. (US Patent 9,587,117; hereafter ‘117).
Claim 21: Multia teaches performing the thermal treatment by heating the organic-inorganic hybrid film a temperature of 350ºC in a H2S/H-2 atmosphere (pg 27) or a broader teaching of removing the organic part by annealing at elevated temperatures (pg 30).
Multia does not teach performing the thermal treatment at 350-450ºC in an inert atmosphere.
However, ‘117, which is also directed towards forming a metal containing film (claim 1) by first forming an organic/inorganic hybrid film (col. 2, lines 35-50) by ALD/MLD (see col. 1), and then thermally treating the hybrid films at 200-900ºC in an inert atmosphere to decompose a portion of the hybrid film into a metal containing film (see claims 1, 18, & 19).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘117 into the teachings of Multia and perform the heat treating process at 200-900ºC in an inert atmosphere because said heat treatment parameters are art recognized parameters suitable for decomposing an organic/inorganic hybrid film as desired and would have predictably produced the desired product.
Although the taught range of 200-900ºC is not explicitly the claimed range of 350-450ºC, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since 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, 191 USPQ 90 (CCPA 1976).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
