DETAILED ACTION
This is the Office action based on the 17889136 application filed August 16, 2022, and in response to applicant’s argument/remark filed on January 28, 2026. Claims 1-24 and 28 are currently pending and have been considered below. Applicant’s cancellation of claims 25-27 acknowledged. Claims 1-16 withdrawn from consideration.
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 .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 5, 2026 has been entered.
Claim Interpretations
Applicant has elected Group II, which is drawn to a chemical composition, in response to the Election/Restriction requirement. Note that the claims are directed towards a chemical composition and as such will be examined under such conditions. The process of using the composition or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details).
It has been held that claim language that simply specifies an intended use or field of use for the invention generally will not limit the scope of a claim (See MPEP 2106; Walter, 618 F.2d at 769, 205 USPQ at 409). When apparatus is capable of performing such functions, it is considered to meet the claim limitations. Additionally, in apparatus claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim (See MPEP 2111.02, 2115; In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458,459 (CCPA 1963). When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (See MPEP 2112.01; In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433 (CCPA 1977). It has further been held that expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969); and the inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)). While features of an apparatus may be described either structurally or functionally, claims directed to an apparatus MUST be distinguished from prior art in terms of structure rather than function (See MPEP §2114).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 17-24 and 28 rejected under 35 U.S.C. 103 as being obvious over Takahashi et al. (U.S. PGPub. No. 20160056054), hereinafter “Takahashi”:--Claims 17, 19, 23, 24: Takahashi teaches an etching composition (Claim 15) for etching a cobalt layer (abstract), comprising one or more organic solvent ([0278, 0304]), wherein the organic solvent may include an alcohol compound, such as 2-butanol ([0279-0284]), presented at a concentration 50-98 wt.% ([0303]);oxalic acid, presented at a concentration 0.1-20 wt.% ([0314-0316]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to select oxalic acid and beta-diketone, among the list of possible compounds, for the polishing composition in the invention of Takahashi. It is noted that 2-butanol is an alcohol having 4 carbon atoms, and oxalic is an aliphatic dicarboxylic acid having 2 carbon atoms.--Claim 18: Applicant has elected Group II, which is drawn to a chemical composition, in response to the Election/Restriction requirement. Note that the claims are directed towards a chemical composition and as such will be examined under such conditions. The process of using the composition or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details). It is noted that since the etching composition taught by Takahashi is the same as Applicant’s , it must be capable of etching a cobalt oxide layer, as taught by Applicant.--Claims 20, 21: Takahashi further teaches that water may be presented as a concentration 0.1 wt.% to 50 wt.% ([0322]).--Claim 22: It is noted that an etching composition containing 0.1 wt.% may be considered substantially does not contain water.--Claim 28: Takahashi does not teach adding any Ni or Cu to the etching composition. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to form an etching composition containing less than 10 ppb of Ni or Cu.
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered as follows:--Regarding Applicant’s argument that the previously cited prior arts do not teach the amended features, this arguments is not persuasive. While Zandi and Misra fail to teach all those features, Takahashi clearly teaches those features, as shown above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (571) 270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS T PHAM/Primary Examiner, Art Unit 1713