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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 07/20/2026 has been entered.
Status of the Application
Applicant’s IDS, filed on 07/20/2026 is acknowledged.
In view of IDS, allowance is hereby withdrawn and restriction is maintained.
Claims 1-19 are pending, of which claims 3-19 are withdrawn.
Claims 1-2 are under current examination.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Xinjian (US20220178028 A1), and KLINGEBIEL ("Aminofluorosilanes: Formation of heterocycles and lithio-aminofluorosilanes", Journal of Natural Research B, Retrieved from the Internet: "URL: https://www.degruyterbrill.com/document/doi/10.1515/znb-1977-0511/ pdf", January 01, 1977, pp. 537-542; as provided by the applicant on IDs dated 07/20/2026) in combination.
Determining the scope and contents of the prior art
Xinjian, teaches compound of formula:
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for making thin films (entire application). which differs from the instant claims with respect to X substituent as CH3 vs H or halogen of the instant claims.
KLINGEBIEL teaches several compounds and derivatives, such as:
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346
879
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see compounds 1-12, wherein Si sandwiched between two N atoms is substituted with halogens, or halogen and alkyl (entire article, especially page 537).
Ascertaining the differences between the prior art and the claims at issue
Xinjian, teaches compound of formula:
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, which differs from the instant claims with respect to X substituent on Si sandwiched between two N as CH3 vs H or halogen of the instant claims.
KLINGEBIEL teaches several compounds and derivatives, such as:
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346
879
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see compounds 1-12, wherein Si sandwiched between two N atoms is substituted with halogens, or halogen and alkyl, but fails to teach same compound as in the instant claims having same substituents on N and Si.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference- Since Xinjian, teaches compound of formula:
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, which differs only with respect to X substituent on Si sandwiched between two N as CH3 vs H or halogen of the instant claims and KLINGEBIEL teaches several compounds and derivatives similar to compounds of the instant claims, wherein Si sandwiched between two N atoms is substituted with halogens, or halogen and alkyl and variation of substituents on N, such as alkyl, hydrogen and aryl, it would have been prima facie obvious to a person of ordinary skill in the art that that alkyl of Si sandwiched between two N of Xinjian’s compounds may be substituted with halogen as taught by KLINGEBIEL.
Further, substitution of a methyl for a hydrogen is considered to be prima facie obvious. In re Woods 199 USPQ 137; further, homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ compound.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Xinjian, teaches compound of formula:
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, and KLINGEBIEL teaches several compounds and derivatives, such as:
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346
879
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. So, the combination of prior art read applicants claims.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that compounds with Si sandwiched between two N may be substituted with alkyls; alkyl and H; alkyl and halogen and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed compound with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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