DETAILED ACTION
Applicant’s reply, filed 13 April 2026 in response to the non-final Office action mailed 13 January 2026, has been fully considered. As per Applicant’s filed claim amendments claims 13, 15-18, 20-23 and 25-28, wherein: claims 13 and 15-16 have been amended, claims 17-18, 20-23 and 25 are as previously presented, claims 26-28 are new, and claims 1-12, 14, 19 and 24 have been cancelled by this and/or previous amendment(s).
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, 17-18, 20-23 and 25-28 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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, 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, 17-18, 20-23 and 25). Petrov requires no other solvents (instant at least 5 wt% (claim 22)) and requires no other CFCs or fluoroalkanes (claim 28)(noting also that ‘essentially free of’ is open and undefined phrasing which fails to exclude).
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 where heat-transfer fluids are kept in separate reservoirs maintained at the temperature extremes and the parts are alternately immersed therein to induce thermal shock in a rapid manner ([0019]; [0077];[0084]). Costello teaches rapid cycling is needed to induce the thermal shock and one of ordinary skill in the art would readily ascertain the amount of time needed between the temperature extremes in order to so induce, absent a showing of criticality (MPEP 2144.05)(claims 15 and 27).
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) (instant -Rf comprising at least one C-F bond and at least one C-H bond). The instant original specification states that 1,4-bis(1,1,2,2-tetrafluoroethoxy)benzene has a GWP100 of 1.8 ([0042]; [0057]) and ‘will exist’ in a liquid state in the range claimed of -100 to 200°C ([0033]; [0059]). As such, Petrov teaches the instant claimed property recitation of a heat transfer fluid having a GWP100- of less than 30 (claim 13) and having a liquid state temperature in a range of -100 to 200°C (claim 26). 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, 17-23 and 25 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 6-11) have been fully considered but were not found persuasive.
Applicant repeats the argument that the compounds of Costello are different from the compounds of Petrov and there is no expectation of success. This argument remains unpersuasive. It is firstly noted that the secondary reference of Costello was not relied upon to teach the heat transfer fluids/compounds, rather only to teach that it is well-known in the art to use hydrofluoroether compounds in well-known heat transfer processes (see rejection). Applicant’s focus on the minutiae of the compounds of Costello is overly narrow, misinterprets the basis of the rejection, and fails to rebut the fact that Costello teaches known methods of using known heat transfer fluids. Secondly, both Costello and Petrov are directed to hydrofluoroether compounds having similar properties, which are expressly taught as suitable for use in methods of heat transfer and manufacturing electronic/semiconductor devices. Petrov teaches hydrofluoroether compounds/fluids and expressly teaches they are suitable for use in known methods of using hydrofluoroether heat transfer compounds/fluids. Costello teaches known methods of using hydrofluoroether heat transfer compounds/fluids. It would be obvious to one of ordinary skill in the art to utilize a known hydrofluoroether for its express intended use in a known method of using hydrofluoroethers for the same purpose, with a more than reasonable expectation of success.
Applicant asserts that Applicant “does not believe that the properties required in Costello’s compounds” would have been reasonably expected at the time of filing from the compounds of Petrov”. Applicant has provided no evidence in support of their purported belief and as such the argument is no more than mere unsupported opinion. Applicant provides no evidence that the known compounds of Petrov, expressly taught as suitable for use as heat transfer fluids in known methods, would not be capable of use in the known methods of using heat transfer fluids of Costello.
Applicant argues Petrov “does not teach with any specificity as to which of the compounds are suitable for which method”. This argument is in now way persuasive. Petrov teaches a discrete and finite list of compounds and teaches that the compounds of the taught arylethers are useful in applications of heat transfer ([0051]). Petrov provides more than enough specificity for one of ordinary skill. Applicant asserts that one of ordinary skill would have ‘no reason to assume’ that the compounds of Petrov would ‘necessarily be suitable’ for the listed methods. The Examiner contends that one of ordinary skill would have sufficient reason to assume that the compounds of Petrov, taught by Petrov to be suitable in the listed methods, would be so suitable because Petrov says so.
Applicant argues that Petrov does not teach a compound of instant formula (I) wherein Rf includes at least one C-F bond and at least one C-H bond. Applicant’s attention is directed to the above maintained rejection where Petrov in fact teaches such compounds, including the noted compound A (= 1,4-bis(1,1,2,2-tetrafluoroethoxy)benzene) (instant -Rf comprising at least one C-F bond and at least one C-H bond)(referred to in the instant specification as “HFE1,4”).
Applicant argues that Petrov does not teach ‘essentially free of CFCs and fluoroalkanes’ of new claim 28. Applicant is reminded that ‘essentially free of’ is a relative term that is open and undefined and fails to establish actual limits or to exclude the presence of CFCs and/or fluoroalkanes. Furthermore, Petrov does not require the presence of CFCs or fluoroalkanes and therefore meets the limitation that the heat transfer fluid be ‘essentially free’.
Applicant admits that Costello teaches the methods of thermal shock testing typically operate at ranges from -65°C to about 150°C but asserts that the instant recitation (it is assumed Applicant refers to new claim 26 for this argument) of existing in a liquid state from -100 to 200°C is not taught or suggested by Petrov or Costello. Firstly, Petrov teaches the claimed compounds including the noted compound A (instant “HFE1,4”) as the heat transfer fluid compounds and therefore teaches compounds that ‘exist in a liquid state’ in that range. Secondly, Costello, as noted by Applicant, teaches a liquid use range of -65 to 150°C which is a range that falls within -100 to 200°C.
Applicant argues the as-amended transferring step of less than 10 seconds (amended claim 15) is not met by Costello. As noted above, Costello teaches methods of thermal shock testing performed over a temperature range from about -65°C to about 150°C where heat-transfer fluids are kept in separate reservoirs maintained at the temperature extremes and the parts are alternately immersed therein to induce thermal shock in a rapid manner ([0019]; [0077];[0084]). Costello teaches rapid cycling is needed to induce the thermal shock and one of ordinary skill in the art would readily ascertain the amount of time needed between the temperature extremes in order to so induce, absent a showing of criticality (MPEP 2144.05)(claims 15 and 27).
Applicant repeats the argument that Costello teaches low toxicity, low flammability and low environmental impact are ‘required’ (the Examiner notes that Costello does not actually require any of these properties and only teaches such as generally desired properties of various methods which may or may not occur and may or may not be necessary: see background) and asserts that these are properties Petrov does not teach. Applicant is invited to provide evidence that the compounds of Petrov fail to meet ‘low’ toxicity, ‘low’ flammability, and/or ‘low’ environmental impact such that they would not be suitable for their express uses in known methods of such use.
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, pages 11-12) have been fully considered but were not found persuasive.
Applicant’s argument appears to be that Flynn is an improvement on Costello as they have ‘similar inventorship’ and as such teaches compounds disparate from those of Petrov. Again, the heat transfer fluids/compounds are met by the primary reference of Petrov who teaches such is/are suitable for use in known methods as outlined above (see rejection). The reference of Flynn was relied upon to teach such a known method and was not relied upon to teach the compounds/fluids themselves. The primary reference of Petrov teaches that the noted fluoroether compounds are suitable as solvents in the manufacture of electronic and semiconductor components and devices. Flynn teaches the manufacture of semiconductors, including the general method of vapor phase soldering, and teaches that hydrofluoroether compounds are suitable in such methods. One of ordinary skill in the art having been appraised of the uses taught by Petrov would have found it obvious to look to the known methods of similar uses taught by Flynn, including methods of manufacturing electronic and semiconductor devices via steps of vapor phase soldering, and arrive at the instant invention with a reasonable expectation of success.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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
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