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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/10/2025 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 11/10/2025.
Claims 1-6 and 8 are presently pending; claim 7 is canceled; claims 5-6 are withdrawn; claim 1 is amended; claim 8 is new; claims 1-4 and 8 are under examination.
The provisional nonstatutory double patenting rejection of claims 1-4 over claims 1-2 of copending Application No. 17/811,528 is withdrawn in light of the amendments to claim 1 of 17/811,528, requiring that in (P-1), one of the R groups is a hydrogen atom that is bonded to the phosphorus atom (i.e., the R group is just H, not OH).
The 35 U.S.C. 102 rejection of claims 1-4 over BLAIR are withdrawn in light of the amendments to the claims; the rejection of claim 7 is moot as this claim has been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claim 1 is a product claim drawn to a surface treatment agent, and claims 2-4, which are also product claims drawn to a surface treatment agent, are dependent on claim 1. Claims 1-4 recite limitations using language pertaining to the intended use of the surface treatment agent, e.g., language describing the type of surface on which the surface treatment agent is to be used, language describing the oxidizing pretreatment and type of oxidizing agent to be used, etc. For purposes of claim interpretation, claims 1-4 are being treated as though any chemical composition meeting the structural limitations drawn to the surface treatment agent as recited in independent claim 1 would be capable of performing the intended use described in claims 1-4.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 and 8 are rejected under 35 U.S.C 103 as being unpatentable over Hashemi, et al., “A New Resist for Area Selective Atomic and Molecular Layer Deposition on Metal-Dielectric Patterns”, Journal of Physical Chemistry, 118, pg. 10957-10962, published May 2, 2014 (hereinafter, “HASHEMI”; IDS cited reference by Applicant) in view of Abys, et al. (WO-2008/131206-A1) (hereinafter, “ABYS”; IDS cited reference by Applicant).
Regarding claims 1 and 8, HASHEMI teaches a surface treatment agent (see generally HASHEMI at Abstract and pg. 10958, “2. Experimental Methods”), the surface treatment agent consisting of:
a compound (P) represented by the formula (P-1): R1-P(=O)(OR2)(OR3), wherein R1 represents an octadecyl group, and R2 and R3 each independently represent a hydrogen atom, a linear or branched alkyl group, a linear or branched fluorinated alkyl group, or an aromatic hydrocarbon group which may have a substituent (see HASHEMI at Abstract and pg. 10958, “2. Experimental Methods”; HASHEMI teaches a surface treatment agent consisting of octadecylphosphonic acid (ODPA), which is of formula CH3(CH2)16CH2-P(=O)(OH)(OH), meeting the limitation of a compound (P) represented by the formula (P-1) as recited by claim 1, and tert-butanol as the organic solvent); and
b. an organic solvent (S) having a relative dielectric constant of 35 or less (see HASHEMI at Abstract and pg. 10958, “2. Experimental Methods”; HASHEMI teaches that the organic solvent is tert-butanol, also called tert-butyl alcohol; HASHEMI discloses tert-butyl alcohol, which is an organic solvent having a relative dielectric constant of 35 or less as discussed in Applicant’s specification at paragraph [0030]).
While there is no explicit disclosure that a surface treatment agent is used for treating a substrate having a surface that has two or more regions made of different materials in which at least one of the two or more regions that has a metal surface and pretreated with an oxidizing agent, as presently claimed, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all 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”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Office’s position that the preamble does not appear to state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e., surface treatment agent used for treating a substrate having a surface that has two or more regions made of different materials in which at least one of the two or more regions that has a metal surface and pretreated with an oxidizing agent, recited in the presently claimed limitation, does not appear to result in a structural difference between the presently claimed invention and the prior art and, further, that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
However, HASHEMI fails to explicitly teach that the organic solvent is at least one member selected from the group recited by claim 1.
ABYS teaches a surface treatment agent for treating a substrate with at least one metal-based layer (see ABYS at Abstract and paragraphs [0001], [0012] and [0032]), wherein the surface treatment agent comprises a phosphorous oxide compound such as octadecyl phosphonic acid (ODPA) (see ABYS at paragraph [0040]) and an organic solvent having a low surface tension, such as an alcohol, such as tert-butanol or isobutanol (see ABYS at paragraphs [0034] and [0092]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the surface treatment agent of HASHEMI by simply substituting the tert-butanol organic solvent with isobutanol organic solvent as taught by ABYS (see ABYS at paragraph [0092]), as ABYS teaches that tert-butanol and isobutanol may be used interchangeably. One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing a low surface tension organic solvent capable of dissolving a phosphonic acid such as ODPA (see ABYS at paragraphs [0034], [0040], [0088] and [0092]). Further, ABYS teaches that isobutanol is a known organic solvent in the art, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
13. Regarding claim 2, as applied to claim 1 above, HASHEMI in view of ABYS teaches a surface treatment agent according to claim 1, therefore the surface treatment agent of HASHEMI in view of ABYS would be expected to be able to perform the intended use of treating a metal surface which contains at least one selected from the group consisting of tungsten, ruthenium, copper, and cobalt (see rejection of claim 1 setting forth the claimed surface treatment agent and metal surface that is included in the preamble of independent claim 1).
Regarding claim 3, as applied to claim 1 above, HASHEMI in view of ABYS teaches a surface treatment agent according to claim 1, therefore the surface treatment agent of HASHEMI in view of ABYS would be expected to be able to perform the intended use of treating a metal surface which contains at least one selected from the group consisting of tungsten and ruthenium (see rejection of claim 1 setting forth the claimed surface treatment agent and metal surface that is included in the preamble of independent claim 1).
Regarding claim 4, as applied to claim 1 above, HASHEMI in view of ABYS teaches a surface treatment agent according to claim 1, therefore the surface treatment agent of HASHEMI in view of ABYS would be expected to be able to perform the intended use of treating a surface which has been pretreated with an oxidizing agent as claimed (see rejection of claim 1 setting forth the claimed surface treatment agent and metal surface that is included in the preamble of independent claim 1).
Response to Arguments
Applicant’s arguments filed 11/10/2025 and the Declaration under 37 C.F.R. 1.132 filed 11/11/2025 with respect to claims 1-4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731