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 .
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Millward (U.S. Patent # 7,300,873).
In the case of claims 1 and 3, Millward teaches a compound which was incorporated into a precursor composition/thin-film forming raw material having the formula I (Column 2 Lines 17-44), which encompasses the formula (1) of the claims and has a synonymous structure to the claimed compound according to Page 4 Paragraphs 0015-0017 of the specification of the present application as originally filed.
Millward teaches a formula embodiment wherein M of the formula was lanthanum (La) and R1 and R2 were organic groups and E, which reads on R3 of the claims, of the formula was also an organic group (Column 4 Line 51 through Column 5 Line 3). Millward further teaches that organic groups included alkyl groups having 1 to 4 carbon atoms (Column 7 Lines 26-49), which were within the required ranges for claim 1. Millward further teaches an embodiment wherein x of the taught formula was 0 and n of the taught formula was 3 (Column 18 Lines 10-43).
Millward does not specifically teach that R1 and R2 represent different groups. However, Millward teaches that R1 and R2 were both independently selected organic groups and that an organic group was a hydrocarbon group which did not interfere with the formation of a metal oxide layer using the taught compound in a vapor deposition technique (Column 6 Lines 11-30).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have R1 and R2 different groups because having R1 and R2 be the same groups or different groups did not affect the formation of a metal oxide layer by vapor deposition.
As for claim 2, Millward teaches that R1 and R2 were branched alkyl groups having 1 to 4 carbon atoms (Column 7 Lines 43-49), which overlapped with the claimed range of 3 to 6 carbon atoms, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
In the case of claims 4-8, Millward teaches having used the taught compound as a precursor material to form a metal/lanthanum containing layer on a substrate (Abstract) wherein the metal/lanthanum containing layer was formed by a vapor deposition processes comprising vaporizing the raw material/precursor compound and introducing the vaporized material in the presence of a reactive gas and plasma into a chamber having a substrate (Column 12 Line 36 through Column 13 Line 11).
Conclusion
Claims 1 through 8 have been rejected. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
Prosecution Insights