DETAILED ACTION
Applicant’s reply and request for continued examination (RCE), filed 8 August 2025 via supplemental submission in response to the Advisory action mailed 21 February 2025 (see also the Final Office action of 8 November 2024), has been entered and fully considered. As per Applicant’s filed claim amendments claims 13, 15-23 and 25 are pending under examination, wherein: claims 13 and 17-18 have been amended, claims 15-16 and 19-23 are as previously presented, claim 25 is new, and claims 1-12, 14 and 24 have been cancelled by this and/or previous amendment(s).
Applicant’s attention is directed to the advisory action of 21 February 2025 wherein Applicant’s filed after final amendments were entered. As such Applicant’s amending to claim 13 in the supplemental submission of 8 August 2025 are improper as the underlined recitations, with the exception of relocation of the “x>1” recitation, were amendments entered in the Advisory action. Applicant is reminded that improper amending risks a notice of noncompliance.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8 August 2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8 August 2025 was filed after the mailing date of the Final Office action on 8 November 2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
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 13-15, 17-23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Petrov (US PGPub 2005/0065382) in view of Costello et al. (US PGPub 2005/0224747).
Petrov teaches fluorinated arylether solvents suitable for use in the manufacture of electronic devices and semiconductor components (abstract; [0002]-[0005]; [0047]-[0048]) and wherein the solvents have broader uses as refrigerants, heat transfer media, carrier fluids, etc. ([0051]). Petrov teaches the fluorinated solvents have the formula:
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205
320
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, wherein R is a C1-C10 alkyl, alkoxy or oxyalkyl group, R-f is a C1-C10 fluorinated alkyl, alkenyl, oxyalkyl or oxyalkenyl group, X is H, F, Cl, Br, or a C1-10 alkyl, alkoxy, oxyalkyl, fluorinated alkyl, fluorinated alkenyl, fluorinated oxyalkyl or fluorinated oxyalkenyl, m is from 0-5 and n is from 0-5 ([0005]-[0018]; [0020]-[0021]; see also compounds A-O [0041]-[0044])(claims 13, 17-23 and 25). Petrov requires no other solvents (instant at least 5 wt% (claim 22)).
Petrov teaches the solvents as suitable for use in manufacture of electronic, and semiconductor, devices and teaches their use as heat transfer fluids but does not specifically teach the claimed methods. Costello teaches it is known to use hydrofluoroether compounds as heat transfer fluids in the manufacture of semiconductors (abstract; [0003]-[0023]; [0075]-[0087]). Costello teaches the methods of transferring heat comprise providing a device and a mechanism for transferring heat comprising a heat transfer fluid, and using the fluid to transfer heat to or from the device ([0076]-[0087])(claim 13). Costello teaches the aforementioned method utilizes an apparatus requiring heat transfer and temperature control ([0075]-[0077]), including Etchers ([0012]), Ashers ([0013]), Steppers ([0014]), and PECVD ([0015])(claim 14). Costello additionally teaches methods of thermal shock testing performed over a temperature range from about -65°C to about 150°C ([0019]; [0077];[0084])(claim 15).
Costello and Petrov are analogous art and are combinable because they are concerned with the same field of endeavor, namely methods of manufacturing electronic devices utilizing hydrofluoroether compounds suitable as heat transfer fluids. At the time of filing a person having ordinary skill in the art would have found it obvious to employ in the methods of Costello the fluids of Petrov, with a reasonable expectation of success, and would have been motivated to do so as Petrov teaches the fluorinated arylether compounds are suitable for both manufacture of electronic devices and as heat transfer fluids and further as Costello teaches hydrofluoroether compounds are known to be suitable for use and effective in such methods.
Petrov notably teaches the preferred and explicitly identified compound A (= 1,4-bis(1,1,2,2-tetrafluoroethoxy)benzene). The instant original specification states that 1,4-bis(1,1,2,2-tetrafluoroethoxy)benzene has a GWP100 of 1.8 ([0042]; [0057]). As such, Petrov teaches the instant claimed property recitation of a heat transfer fluid having a GWP100- of less than 30. It is further noted, a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Petrov (US PGPub 2015/0065382) in view of Costello et al. (US PGPub 2005/0224747) as set forth in claim 13 above, and further in view of Flynn et al. (US PGPub 2007/0051916).
Petrov in view of Costello renders obvious the method of semiconductor manufacture as set forth in claim 13 above. Petrov is silent as to the further step of vapor phase soldering as claimed. As noted above Petrov teaches the solvents as suitable for use in manufacture of electronic, and semiconductor, devices.
Flynn teaches it is known to use hydrofluoroether compounds for a variety of purposes including both as heat transfer fluids in the manufacture of semiconductors, including methods of vapor phase soldering, and as heat transfer fluids (abstract; [0001]; [0004]; [0007]; [0014-[0015]; [0065]). Flynn teaches vapor phase soldering methods include immersing a component to be soldered in a body of vapor comprising the hydrofluoroether compound to melt the solder, wherein a liquid pool of the hydrofluoroether is heated to boiling to form a saturated vapor in the space between the boiling liquid and a condensing means, immersing the workpiece to be soldered in the vapor whereby the vapor is condensed on the surface of the workpiece so as to melt and reflow the solder ([0063]).
Flynn and Petrov are analogous art and are combinable because they are concerned with the same field of endeavor, namely methods of manufacturing electronic devices utilizing hydrofluoroether compounds suitable as heat transfer fluids. At the time of filing a person having ordinary skill in the art would have found it obvious to employ in the methods of Flynn the fluids of Petrov, with a reasonable expectation of success, and would have been motivated to do so as Petrov teaches the fluorinated arylether compounds are suitable for both manufacture of electronic devices and as heat transfer fluids and further as Flynn teaches hydrofluoroether compounds are known to be suitable for use and effective in such methods of both heat transfer and of vapor phase soldering.
Response to Arguments/Amendments
The 35 U.S.C. 103 rejection of claims 13-15 and 17-24 as being unpatentable over Petrov (US PGPub 2005/0065382) in view of Costello (US PGPub 2005/0224747) is maintained. Applicant’s argument’s (Remarks, pages 6-13) have been fully considered but were not found persuasive. Applicant’s 1.132 declaration of Evgeny Denisov, filed 8 August 2025, is acknowledged and has been fully considered (see below).
Applicant’s attention is directed to the advisory action of 21 February 2025 wherein Applicant’s filed after final amendments were entered and Applicant’s after final arguments/remarks were fully responded to by the Examiner. As such, Applicant’s arguments i) from the bottom of page 6 thru the first paragraph of page 8 and ii) from the bottom of page 10 thru page 12 (entire) where fully responded to by the Examiner in the noted advisory action (see pages 2-6, top), for which Applicant has provided no further rebuttal. Applicant’s attention is directed thereto in response to the repeated arguments presented in the RCE/supplemental submission under discussion here.
Applicant argues (Remarks, pages 8-10) that a person of ordinary skill would understand that F-substitution values “may be” used to estimate the flammability of hydrofluoroethers. The Examiner notes that F-substitution values and flammability are not claimed limitations and have little to no bearing on the method as claimed. Applicant argues that “some” of the compounds of Petrov are inferior in this respect (see 1.132 declaration; see Remarks, pages 8-10) and one of ordinary skill would not have expected the compounds of Petrov to be suitable for use, more specifically that one of ordinary skill would understand that a compound with a flash point of 52ºC would not be suitable.
Applicant is again reminded that Petrov explicitly states that the compounds are suitable as heat transfer fluids and as solvents in the manufacture of electronic and semiconductor devices (see rejection). Applicant’s attempt to invalidate the express disclosure of Petrov via identification of a seemingly random non-claimed property, and general assertion of unsuitability based on said property, is not persuasive.
One of ordinary skill would find the compound of Petrov suitable for their express intended uses. Petrov is not required to demonstrate flammability properties, F-substitutions of any number, or flash points, etc. in order to be relied upon, or for the teaches therein to be valid. It is further noted that Petrov teaches the preferred and explicitly identified compound A (= 1,4-bis(1,1,2,2-tetrafluoroethoxy)benzene). The instant original specification not only states that the compound A of Petrov will have the claimed GWP100 of 1.8 ([0042]; [0057]) but further that the compound A will be suitable for the method claimed. As such Applicant has done no more than demonstrate that a well-known compound in the art, of both heat transfer fluids and manufacture of semiconductor devices, would be suitable for its known uses, as taught by Petrov. Furthermore, demonstration that “some” compounds of Petrov would, in Applicant’s opinion, not be suitable does not negate the remaining compounds of Petrov that are suitable via Applicant’s chosen metric.
The 35 U.S.C. 103 rejection of claim 16 as being unpatentable over Petrov in view of Costello and further in view of Flynn (US PGPub 2007/0051916) is maintained. Applicant’s argument’s (Remarks, page 13) have been fully considered but were not found persuasive.
Applicant’s repeated argument was previously responded to by the Examiner in the advisory action of 21 February 2025 (see page 6), to which Applicant provides no specific/additional rebuttal.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767