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Claims 1-13 are pending, of which Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-7 are under current examination.
Amendment necessitated new claim rejection as set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The subject matter of instant claim 1, filed on 09/09/2026 is not properly described in the application as filed. In particular, there was no indication in original specification as filed, or paragraph 150 (where applicant indicated support for the limitation), or in canceled claims that “is used in a vapor state----irreversible deposition process” and therefore raise doubt as to possession of the claimed invention at the time of filing.
Applicant is required to cancel the new matter in the reply to this Office Action.
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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112
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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; used in a vapor state ---800C; 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; used in a vapor state ---800C; 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; used in a vapor state ---800C; 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; used in a vapor state ---800C; 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.
Response to Arguments
Applicants’ remarks and amendments, filed on 09 09 2026, have been fully considered but not found persuasive.
Applicants argue over the rejection under 102, specifically, related to a new limitation “irreversible deposition process”.
Applicants’ argument is moot in view of new rejection as set forth above.
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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