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 Group I, claims 1-15 in the reply filed on 04/22/2026 is acknowledged.
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 15 is 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.
As to claim 15, the chemical structures are unclear and fail to distinctly identify the claimed compounds because the reproduced figures do not clearly indicate the metal identities. Accordingly, one of ordinary skill int eh art cannot determine the scope of the claim with reasonable clarity.
Claim Rejections - 35 USC § 102
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) 1-3, 8, and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (US 2019/0152996).
As to claim 1, Park et al. discloses a precursor for forming a lanthanide metal-containing thin film (see abstract) comprising the chemical formula of claim 1 (see formula 1, abstract), wherein R1 and R3 are each (corresponding to R2 and R3 of Park) hydrogen atoms or C1-C5 linear or branched alkyl groups (see abstract); R2 (corresponding to R4 of Park) is a hydrogen atom or a C1-C4 linear or branched alkyl group; and R’ (corresponding to R1 of Park) is a hydrogel or C1-C2 linear or branched alkyl group (see abstract).
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As to claims 2-3 and 8, the chemical formulas 6-9 (see 0055) disclose R2 (corresponding to R4 of Park) is a C2 alkyl group and R1 and R3 (corresponding to R2 and R3 of Park) are both C3 branched alkyl groups.
As to claim 5, Park et al. states the R2 (corresponding to R4 of Park) can be an nPr group or iPr group (see 0035).
As to claims 6-7, Park states R1 and R3 (corresponding to R2 and R3 of Park) can be straight chain alkyl having C1-C5, and R2 (corresponding to R4 of Park) can be a linear C1-C4 (see 0034).
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As to claim 11, the precursor has a melting point less than 100 C (the precursor is in a liquid state at room temperature- see 0038).
As to claims 12 and 13, the precursor comprises a solvent such as tetrahydrofuran, esters, and ethers (see 0113-0115).
Claim(s) 1-3, 8, and 10-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (WO2021133080).
As to claim 1, Kim et al. discloses an yttrium or lanthanide metal containing precursor compound having the chemical formula I below where M can be selected from Y, La, Ce, Pr, Nd, Er, Lu, etc. and R1 is n-propyl group or iso-propyl, and Cp is a cyclopentadienyl group.
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As to claims 2-3, and 8, the R2 group is C2 alkyl group, R1 and R3 are both branched alkyl groups of C3.
As to claim 10, the viscosity of the precursor is less than 100cP (see Table 1).
As to claim 11, the precursor is in a liquid state at room temperature, therefore the melting point is below 100C.
As to claims 12-14, the solvent can be octane provided at 16-17 wt% (see Table 2)
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.
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.
Claim(s) 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US 2019/0152996) as applied to claim 1 above.
The teachings of Park as applied to claim 1 are as stated above.
Park et al. states the R1 and R3 (corresponding to R2 and R3 of Park et al.) maybe linear alkyl group C1-C4 (see abstract).
Park et al. fails to explicitly teach both groups are methyl groups as required by claim 4 or all of the groups are the same straight-chain alkyl groups having 1 to 4 carbons as required by claim 9.
However, selecting R1 and R3 as methyl groups would have been obvious to one having ordinary skill in the art through routine experimentation since both are C1 alkyls which is within the range taught by Park et al. to select two methyl groups in order to optimize the properties of the precursor.
As to claim 9, it would have been obvious to one having ordinary skill in the art to select all of the groups to have the same chain through routine experimentation since Park teaches all of them can be straight chain C1-C4 alkyl in order to optimize the properties of the precursor.
Conclusion
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/CACHET I. PROCTOR/
Examiner
Art Unit 1712
/CACHET I PROCTOR/Primary Examiner, Art Unit 1712
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