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 with traverse of Species F, chemical formula 6, in the reply filed on May 28, 2026 is acknowledged. The traversal is on the ground(s) that species J is not patentably distinct from that the Species F. This is not found persuasive because species J requires that the formula comprises Ta while elected species F requires that the formula comprises Nb. Species F and species J are materially different from each other. Applicant’s arguments concerning claim 6 are persuasive and claim 6 will be examined.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-4 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 28, 2026.
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 pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. Claim 6 discloses chemical formula 9 which is outside the range of chemical formula 6 of parent claim 5. For formula 9 n is equal to 1 in order for there to be four halogens X. However, parent claim 5 requires that at least one of the L constituents is a bidentate organic ligand bonded with N, O, P or S elements while formula 9 has only has one L constituent which is a cyclopentadienyl group and does not disclose a bidentate organic ligand bonded with N, O, P or an S element. 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
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.
Claims 1 and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al (U.S. Patent # 11,466,043).
In the case of claim 1, Lee teaches a method for depositing thins films by forming thin films comprising niobium (Abstract). The method of Lee comprised an ALD process wherein a metal precursor in the form of a niobium compound of general formula I was supplied into a chamber having a substrate placed in it which adsorbed the precursor/compound to form an adsorption layer of the precursor/compound (Abstract, Column 17 Lines 34-52 and Figure 4). Lee further teaches having pursed the inside of the chamber (Column 17 Line 66 through Column 18 Line 8 and Figure 4) followed by supplying a reactant/reactive gas to the inside of the chamber to react with the adsorption layer to form the thin film (Column 18 Lines 15-21 and Figure 4).
Lee teaches that the metal precursor/compound had a general formula I including one or more halogen groups and one or more organic ligand wherein the formula had a cyclopentadienyl group and R2 and R3 which were independently selected from halogens or organic ligands (Column 3 Lines 9-34).
As for claim 8, Lee teaches that the method was carrier out in the temperature range of 150 to 350 ℃ (Column 17 Lines 59-65 and Column 18 Lines 29-36), which was within the required range of 50 to 700 ℃.
As for claim 9, Lee teaches that the taught process formed a thin film which was a metal film or a metal oxide film (Column 19 Lines 22-35).
In the case of claims 10 and 11, Lee teaches that the method was used to form thin films used in volatile memory devices such as DRAM devices and non-volatile memory devices such as flash memory devices (Column 19 Lines 36-43 and Column 29 Lines 44-54).
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.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al as applied to claim 1 above, and further in view of Barry et al (U.S. Patent # 8,795,771).
The teaching of Lee as it applies to claim 1 have been discussed previously and are incorporated herein.
In the case of claims 5 and 6, Lee teaches general formula I which reads on formula 6, 7 and 8 of the claims when n of the claims is either 3 or 4 and comprised a cyclopentadienyl group and a ligand R1 bonded to the niobium element by a nitrogen double bond. Lee further teaches that constituents R2 and R3 were independently selected from halogens, hydrogen or alkyl groups. (Column 1 Lines 30-64)
Though Lee teaches an organic ligand bonded with nitrogen in the form of R1, Lee does not teach that this ligand was a bidentate organic ligand.
Barry teaches an atomic layer deposition process for forming a thin film wherein the process used a metal precursor comprising a cyclopentadienyl group and a nitrogen bridged ligand (Abstract). Barry teaches that the metal of the precursor included niobium (Nb) (Column 2 Lines 20-27) and that the ligand bound to the nitrogen was a chelating ligand comprised of a bidentate ligand (Column 3 Lines 50-52).
Based on the teachings of Barry, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have had the R1 ligand of Lee be a bidentate ligand in order to provide chelating/stability properties to the precursor compound.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, 6 and 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,421,605. Although the claims at issue are not identical, they are not patentably distinct from each other because both the patent and the present application claims substantially the same method of depositing thin films by supplying a metal precursor to a chamber comprising a substrate, purging the chamber and supplying a reactant to the chamber to form the thin film wherein the metal precursor was a metal precursor of niobium including one or more halogen groups and one or more organic ligands.
Conclusion
Claims 1, 5, 6 and 8 through 11 have been rejected. Claims 2 through 4 and 7 have been withdrawn. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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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 P WIECZOREK/Primary Examiner, Art Unit 1712
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