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 .
Continued Examination under 37 CFR 1.114
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 final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/22/2025 has been entered.
Status of the Application
Claims 12, 14, 19-22 and 24-26 are pending, and are under current examination.
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.
Claim 26 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 26 is vague and indefinite because Claim 26 recites “species impurity ---from the group consisting of--- further species impurity ---selected from the group consisting of---SiCl4”, which reflects the use of narrow and broad limitations within the same claim. Thus, scope of the instant claim is unclear.
Applicant is suggested to amend the claim “further chlorine containing species impurity”
Appropriate correction required.
Claim Rejections - 35 USC § 112
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 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], 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.
Claims 19-21 are rejected under 35 U.S.C. 112(d), 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 19-21 are in an improper dependent form because according to claim 12, the composition comprises species impurities selected from a group consisting as in claim 12. However, Claims 19-21 recites species impurities outside the group disclosed in claim 12. Thus, these claims are not further limiting, and are improper.
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.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 24 is rejected under 35 U.S.C. 102(a)(1) and 102 (a)(2) as being anticipated by Dickson (US 4910153).
Dickson discloses a composition comprising trisilylphosphine (same as species A) (less than 99.99% pure) with impurity dimethyl ether (oxygen-containing and/or carbon-containing impurity having atom C) (more than 1ppm or 1ppb) with no impurity of silyl chloride.
Since the cited prior art reads on all the limitations of the instant claim 24, claim 24 is anticipated.
Claims 24 is rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Feng (WO2023/121973; effective filing date 12/23/2021; as provided by the applicant on IDs dated 12/13/2024).
Feng discloses a composition comprising a chemical precursor of formula PXn(SiR3)3-n and impurities ranging from 0.0%-10%w/w, such as 5%w/w, with different solvents, such as pentane, hexane etc. (entire application, especially, abstract, pages 17-23).
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The cited prior art further a composition comprising a molecule having P and at least one Si connected to P having purity less than 99.99w/w% and impurity having P metal, Si, H and C at 14minutes (entire application, especially, Figure 1, examples and claims).
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Since the cited prior art reads on all the limitations of the instant claims 24, the claim is anticipated.
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 24 and 26 and elected species (A) trisilylphosphine, species B (impurity) P(TMS)3, and species (C) pentane are rejected under 35 U.S.C. 103 as being unpatentable over Feng (WO2023/121973; effective filing date 12/23/2021; as provided by the applicant on IDs dated 12/13/2024).
Determining the scope and contents of the prior art
Feng discloses a composition comprising a chemical precursor of formula PXn(SiR3)3-n and impurities ranging from 0.0%-10%w/w, such as 5%w/w, with different solvents, such as pentane, hexane etc. (entire application, especially, abstract, pages 17-23).
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The cited prior art teaches synthesis of trisilylphosphine (same as species A) 92% (w/w%), 93% etc., (less than 99.99% pure) with impurity P(TMS)3 (same as species B), monochlorosilane (as these are the only reactants forming product P(SiH3)3), and trimethylsilylchloride (side product of the reaction) (combined about 8% w/w) and a solvent (entire application, especially, example 4, page 30 and claims).
The cited prior art further discloses a composition comprising a molecule having P and at least one Si connected to P having purity less than 99.99w/w% and impurity having P metal, Si, H and C at 14 minutes (entire application, especially, Figure 1, examples and claims) (reads on the instant claim 24).
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Ascertaining the differences between the prior art and the claims at issue
Feng discloses a composition comprising a chemical precursor of formula PXn(SiR3)3-n and impurities ranging from 0.0%-10%w/w, such as 5%w/w, with different solvents, such as pentane, hexane etc. present about 10% w/w, but fails to teach example wherein the impurity is solvent impurity pentane.
Resolving the level of ordinary skill in the pertinent art
Feng discloses a composition comprising a chemical precursor of formula PXn(SiR3)3-n and impurities ranging from 0.0%-10%w/w, such as 5%w/w, with different solvents, such as pentane, hexane etc. present about 10% w/w depending on if the reaction to make precursor is carried out neat or in solvent (pages 17-23).
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The cited prior art further gives example, wherein the precursor PXn(SiR3)3-n is made in 10% w/w hexane (such as example 9, page 31).
Thus, based on the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that the reaction to prepare trisilylphoshine may be carried out in neat environment or with a solvent, such as hexane, pentane etc., as taught by the cited prior art and product mixture may contain solvent impurity, such as hexane, pentane etc., in an amount such as 10%w/w..
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements, and the modification 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, Feng discloses a composition comprising a chemical precursor of formula PXn(SiR3)3-n and impurities ranging from 0.0%-10%w/w, such as 5%w/w, with different solvents, such as pentane, hexane etc. present about 10% w/w depending on if the reaction to make precursor is carried out neat or in solvent.
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 the product mixture may comprise solvent impurity of hexane, pentane etc. with the precursor and can be made by teachings 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 process with a reasonable expectation of success.
Allowable Subject matter
Claims 12, 14, 22 and 25 presents allowable subject matter over the cited prior art on record.
Response to Arguments
Applicants remarks and amendment, filed on 09/22/2025, have been fully considered but not found persuasive.
Applicant’s argument is moot in view of new rejection as set forth above.
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