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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. KR 10-2021-0097192, filed on 23 July, 2021.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 6 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitation "the fluorine-based surfactant molecule" in Line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 2 recites “the fluorine-based surfactant molecule” but is referred to as “a fluorine-based surfactant” in Claim 1, in which Claim 2 is dependent on. For examination purposes, Claim 2 will be read as “the fluorine-based surfactant”.
Claim 6 recites a “use” claim in the form of “treating” and attempts to claim a method of treating a semiconductor substrate without setting forth any steps involved in the process, which leads to indefiniteness because it merely recites treating without any active, positive steps delimiting how this treating is actually practiced. See MPEP § 2173.05(q).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 6 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). Appropriate correction and or clarification is required.
With regard to Claim 6, the claim provides the treating a semiconductor substrate, but does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a “use” without any active, positive steps delimiting how this use, or in this case treating, is actually practiced.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Okuno (US 2023/0131533 A1, hereafter “Okuno”) in view of Otani (US 2017/0104161 A1, hereafter “Otani”).
With regard to Claim 1, Okuno discloses a semiconductor substrate cleaning composition that comprises of an aromatic hydrocarbon compound that include mesitylene (common name for 1,3,5-trimethylbenzene) in the amounts from about 10 to about 90 mass% (Abstract, [0114], [0126]).
While Okuno is silent to the exact range of the instant application’s claimed range, it would have been obvious to one of ordinary skill in the art to include in the amounts of mesitylene in the instant application’s claimed range. Furthermore, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP § 2144.05(I).
However, Okuno is silent to wherein the composition comprises a fluorine-based surfactant.
Otani discloses a charge-transporting varnish that comprises a charge-transporting substance, a nonionic fluorine-containing surfactant, and an organic solvent (Abstract).
Otani teaches the nonionic fluorine-containing surfactant of formulas (1) to (3) ([0011]). Otani teaches that the surfactant aides in a thin film of excellent flatness even within a pixel on a pixel substrate having banks, and thus is suitable for the production of a high-flatness thin film ([0024]).
The person of ordinary skill in the art would have been motivated to include the nonionic fluorine-containing surfactant of formulas (1) to (3) in order to aide in a thin film of excellent flatness even within a pixel on a pixel substrate having banks, and thus is suitable for the production of a high-flatness thin film. Furthermore it would have been obvious to one of ordinary skill in the art before the effective filling date of the invention taught by Okuno to include the nonionic fluorine-containing surfactant of formulas (1) to (3), as taught in Otani, in order to aide in a thin film of excellent flatness even within a pixel on a pixel substrate having banks, and thus is suitable for the production of a high-flatness thin film.
With regard to Claims 2-4, modified Okuno with view of Otani discloses nonionic fluorine-containing surfactant of formulas (1) to (3):
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and more preferably wherein the surfactant is α-perfluorononenyloxy structure represented by (1’) ([0015], [0039]).
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With regard to Claim 5, modified Okuno with view of Otani discloses wherein the amount of nonionic fluorine-containing surfactant is from about 0.001 to about 10 wt% ([0043]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUSTAFA H AHMED whose telephone number is (571)270-0270. The examiner can normally be reached Monday-Friday 7:30 am - 5:00 pm EST.
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, Angela Brown-Pettigrew can be reached on (571)272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.H.A./ Examiner, Art Unit 1761
/BRIAN P MRUK/ Primary Examiner, Art Unit 1761