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 1-15 in the reply filed on 02 MAR 2026 is acknowledged.
Claims 16-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02 MAR 2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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) 1-9, 11-13, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Romero ‘842.
Claim 1 – Romero ‘842 teaches a precursor for forming a scandium-containing thin film (PG 0001), the precursor comprising a scandium-containing compound represented by Chemical Formula 1 below,
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,
wherein in Chemical Formula 1,M is a scandium or yttrium metal, R1 and R3 are each independently a straight-chain, branched- chain, or cyclic alkyl or alkenyl group having 1 to 5 carbon atoms, and R2 is a hydrogen atom or a straight-chain, branched-chain, or cyclic alkyl or alkenyl group having 1 to 6 carbon atoms (PG 0023-0024 broadly, PG 0023 and 0026 specifically where all R groups are methyl).
Claim 2 – Romero ‘842 teaches the precursor of claim 1, wherein in Chemical Formula 1, R2 is a straight-chain alkyl group having 2 to 3 carbon atoms (PG 0023, 0025, and 0027; PG 0025 discloses a closed genus where all R groups are selected from methyl or ethyl, which further necessarily discloses a subgenus where the R2 group is ethyl [a subgenus of four discrete compounds Me-Et-Me, Me-Et-Et, Et-Et-Me, Et-Et-Et]; similarly, PG 0027 discloses a closed genus where all R groups are chosen from methyl, ethyl, or propyl, which further necessarily a subgenus where the R2 group is ethyl [a subgenus of 16 discrete compounds, as R1 and R3 can each be one of Me, Et, iPr, or nPr; 4 x 4 = 16 combinations]).
Claim 3 – Romero ‘842 teaches the precursor of claim 1, wherein in Chemical Formula 1, R1 and R3 are each independently a straight-chain alkyl group having 2 to 3 carbon atoms, and R2 is a straight-chain alkyl group having 2 to 3 carbon atoms (PG 0023, 0025, and 0027, the argument being the same mutatis mutandis as Claim 2).
Claim 4 – Romero ‘842 teaches the precursor of claim 1, wherein in Chemical Formula 1, R1 and R3 are methyl groups (PG 0023 and 0026, express recitation of R1 and R3 being solely methyl groups).
Claim 5 – Romero ‘842 teaches the precursor of claim 1, wherein in Chemical Formula 1, R2 is an isopropyl group (PG 0023 and 0027, the argument being the same mutatis mutandis as Claim 2).
Claim 6 – Romero ‘842 teaches the precursor of claim 1, wherein in Chemical Formula 1, R1 and R3 are each independently a straight-chain alkyl or alkenyl group having 1 to 5 carbon atoms (PG 0023-0024 broadly, PG 0023 and 0025-0027, the argument being the same mutatis mutandis as Claim 2).
Claim 7 – Romero ‘842 teaches the precursor of claim 1, wherein in Chemical Formula 1, R1 and R3 are each independently a straight-chain alkyl or alkenyl group having 1 to 5 carbon atoms, and R2 is a straight- chain alkyl or alkenyl group having 1 to 4 carbon atoms (PG 0023-0024 broadly, PG 0023 and 0025-0027, the argument being the same mutatis mutandis as Claim 2).
Claim 8 – Romero ‘842 teaches the precursor of claim 1, wherein in Chemical Formula 1, R1 and R3 are both the same and are straight-chain, branched-chain, or cyclic alkyl or alkenyl groups having 1 to 5 carbon atoms (PG 0023-0024 broadly, PG 0023 and 0025-0027, the argument being the same mutatis mutandis as Claim 2).
Claim 9 – Romero ‘842 teaches the precursor of claim 1, wherein in Chemical Formula 1, R1 to R3 are all the same and are straight-chain, branched-chain, or cyclic alkyl or alkenyl groups having 1 to 4 carbon atoms (PG 0023-0024 broadly, PG 0023 and 0025-0027, the argument being the same mutatis mutandis as Claim 2).
Claim 11 – Romero ‘842 teaches the precursor of claim 1, wherein the precursor has a melting point of 70°C or lower (PG 0013-0014, a genus of precursor with all R groups being chosen from methyl or ethyl; said genus of precursor has a melting point of 67.2 degrees Celsius +/- 5 degrees).
Claim 12 – Romero ‘842 teaches the precursor of claim 1, further comprising a solvent (PG 0022, the residue extracted into hexanes and distilled; the hexanes solvate the precursor if it is extracted into it; alternatively, PG 0022, THF is present with the formed precursor prior to the extraction into hexanes).
Claim 13 – Romero ‘842 teaches the precursor of claim 12, wherein the solvent is one or more of a saturated hydrocarbon having 6 carbon atoms and tetrahydrofuran (THF) (PG 0022).
Claim 15 – Romero ‘842 teaches the precursor of claim 1, wherein the compound is at least one selected from the group consisting of the following chemical structures
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(PG 0023 and 0027 for the first entry in each row; PG 0023 and 0025 for the second and third entries in each row; PG 0023 broadly for the fourth and fifth entries in each row; the argument in all cases being the same mutatis mutandis as Claim 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.
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) 10 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Romero ‘842.
Claim 10 – Romero ‘842 teaches the precursor of claim 1, but does not fairly teach or suggest wherein the precursor has a viscosity of 60 cP or less. It is established legal principle that "Products of identical chemical composition can not have mutually exclusive properties." Romero ‘842 discloses precursors with identical composition to those claimed in Claims 1 and 10; therefore, “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” See further MPEP 2112.01(II).
Claim 14 – Romero ‘842 teaches the precursor of claim 12, but does not fairly teach or suggest wherein the solvent is included in an amount range of 1 to 99 wt% with respect to the total weight of the precursor. Determination of the proper amount of material to solvate a precursor without unduly delaying distillation as disclosed in Romero ‘842 is held to be routine experimentation and therefore is held as prima facie obvious in the absence of unexpected results derived from the selection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL G MILLER whose telephone number is (571)270-1861. The examiner can normally be reached M-F 9:00-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL G MILLER/ Primary Examiner, Art Unit 1712
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