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 .
Election/Restrictions
Applicant’s election without traverse of Claims 1-6 in the reply filed on 3/23/2026 is acknowledged. Claims 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for creating a flowable oxygen containing aluminum compound when using a compound containing oxygen, does not reasonably provide enablement for mixtures of compounds not containing oxygen as currently claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Claims 1-6 requires an unreasonable amount of experimentation based upon the Wands analysis (In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)) that considers
(A) The breadth of the claims; (Claim 1 includes all hydrogen containing gases and aluminum compounds with and without oxygen)
(B) The nature of the invention; (A deposition process performed under vacuum/vapor deposition conditions)
(C) The state of the prior art; (Materials deposited in a vapor deposition process must originate form the precursor, reactant or atmosphere)
(D) The level of one of ordinary skill; (One familiar with vapor deposition techniques)
(E) The level of predictability in the art; (Materials deposited in a vapor deposition process must originate form the precursor, reactant or atmosphere, there are no predictable entities that can be assumed)
(F) The amount of direction provided by the inventor; (Instant specification para 0093-0097/ Second Embodiment only discloses flowable oxygen containing aluminum films that may be formed when the aluminum compound includes oxygen or a when the hydrogen containing compound includes oxygen if the aluminum compound does not. The specification does not support all of the combinations possible in Claim 1 to make an oxide film)
(G) The existence of working examples; (Second embodiment only, see above) and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (Excessive, based upon the wide range of precursors that may or may not be able to be used especially given the broad claim language that does not require oxygen at all)
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 1-6 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, the applicant includes forming a film of a flowable oxygen containing aluminum compound on the substrate. However, claim 1 does not necessarily include any oxygen containing compounds in its method. There are only some instances of formula 2 where oxygen is actually present. As such, it is impossible for one of ordinary skill in the art to discern where the oxygen to make a flowable oxygen containing aluminum compound is coming from.
Similarly, in claim 2, trimethylaluminum does not contain oxygen, so it is unclear how to make a flowable oxygen containing aluminum compound.
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.
Claim(s) 1-4 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paranjpe (US 2003/0134038 A1).
As to claim 1, Paranjpe teaches an aluminum containing gas of that claimed, a hydrogen containing gas with remote plasma to form a flowable oxygen containing aluminum compound (para 0070, 0005). As the claim does not include what in the method designates the film as ‘flowable’ it is assumed this is a naturally occurring result of the claimed method, and thus taught by Paranjpe. Annealing occurs to finish the film in para 0080-0081.
As to claim 2, trimethylaluminum is used in para 0070.
As to claim 3, as broadly claimed, trimethylaluminum may be considered an additive gas (the claim does not require the additive gas be mixed with the original gas, just that it be designated as such) for mixed oxides.
As to claim 4, the hydrogen containing gas is as claimed in para 0070.
As to claim 6, the annealing is in a non oxidizing atmosphere in para 0080-0081.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paranjpe.
Paranjpe does not teach the annealing temperature. However, Paranjpe repeatedly designates the annealing temperature as a result effective variable in order to gain the required film properties (para 0080). It would have been obvious to a person having ordinary skill in the art at the time the invention was made to include the claimed annealing temperature, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/ Primary Examiner, Art Unit 1718
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