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 .
Status of the Application
Claims 1-13 are pending.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-7, directed to a compound, in the reply filed on 04/10/2026 is acknowledged.
The requirement is therefore made FINAL.
Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1-7 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.
Claims 1-7 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 pre-AIA the applicant regards as the invention.
Claims 1-7 are indefinite as claim 1 recites “halogen element, such as F---I”, which reflects use of broader and narrower limitations within the same claim. Thus, scope of claim is unclear. For compact prosecution, the claim has been interpreted as any halogen”.
Since the dependent claims doesn’t cure the above deficiency, these claims are also indefinite.
Appropriate correction required.
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 1-7 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kramer (US 4229611).
Kramer discloses compound tert-butyl bromide:
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, which reads on shielding compound of the instant claims, when R1-R3=C1 alkyl; and X=halogen=Br (entire patent).
With regards to limitation of the claims “shielding; for a silicon based thin film; and properties of silicon based thin film” – Since the cited prior art teaches same compound as in the instant claims, the compound of the cited prior art is capable of “shielding; for a silicon based thin film; and properties of silicon based thin film”, whether or not realized by the cited prior art. Further, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000). Thus, the cited prior art reads on all limitations of the instant claims.
With regards to physical properties of the compound of the instant claim 2-Since the cited prior art teaches same compound as in the instant claims, the compound of the cited prior art is expected to possess same physical properties as in the instant claims. Further, a compound cannot be separated from its physical properties. Thus, compound of the cited prior art possesses same physical properties as in the instant claims.
Since the cited prior art reads on all limitations of the instant claims 1-7, these claims are anticipated.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baker (J. Am. Chem. Soc. 1939, 61, 10, 2798–2805).
Baker discloses compound tert-butyl bromide, chloride and iodide, which reads on shielding compound of the instant claims, when R1-R3=C1 alkyl; and X=halogen=Br, Cl, or I (entire article).
With regards to limitation of the claims “shielding; for a silicon based thin film; and properties of silicon based thin film” – Since the cited prior art teaches same compound as in the instant claims, the compound of the cited prior art is capable of “shielding; for a silicon based thin film; and properties of silicon based thin film”, whether or not realized by the cited prior art. Further, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000). Thus, the cited prior art reads on all limitations of the instant claims.
With regards to physical properties of the compound of the instant claim 2-Since the cited prior art teaches same compound as in the instant claims, the compound of the cited prior art is expected to possess same physical properties as in the instant claims. Further, a compound cannot be separated from its physical properties. Thus, compound of the cited prior art possess same physical properties as in the instant claims.
Since the cited prior art reads on all limitations of the instant claims 1-7, these claims are anticipated.
Conclusion
No Claim is allowed.
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
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