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 .
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.
Response to Amendments/Arguments
The amendment made to claim 1, the cancelation of claims 3-15, 18-19 and 24, and the withdrawal of claims 29 - 30, as filed on November 26, 2025, are acknowledged.
Applicant’s arguments with respect to amended claims have been considered but are moot because the arguments do not apply to new ground(s) of rejection in this Office Action necessitated by the amendments made to the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office Action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 21-23 and 25-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (US20160185595).
Regarding claim 1, Chen discloses a treatment liquid (claim 1) comprising: a fluoride ion source (ammonium fluoride, claim 2); an oxidant (oxidizing agent, claim 1); and an additive, wherein the oxidant is a peracetic acid (claim 4), the additive is a nitrogen atom-containing polymer (polyallylamine, paragraph 0031).
Regarding claim 2, Chen discloses wherein the additive contains the nitrogen atom-containing polymer other than polyethyleneimine (polyallylamine, paragraph 0031).
Regarding claim 21, Chen discloses an organic solvent (claim 9).
Regarding claims 22-23, Chen discloses wherein the organic solvent is propylene glycol (claim 9).
Regarding claim 25, Chen discloses wherein a content of the oxidant is less than 10% by mass with respect to a total mass of the treatment liquid (see the Table in paragraph 0034).
Regarding claims 26-28, it is noted that they are drawn to a composition claim and the limitations in the wherein clauses are considered as intended use of the claimed composition. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Claims 1 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishiwaki et al. (US20150255309).
Regarding claim 1, Nishiwaki discloses a treatment liquid (an etching liquid, paragraph 0031) comprising: a fluoride ion source (ammonium fluoride, paragraph 0035); an oxidant (oxidizing agent, paragraph 0032); and an additive, wherein the oxidant is a peracetic acid (paragraph 0032), the additive is a pyrrole (paragraph 0044).
Regarding claim 16, Nishiwaki discloses wherein the additive contains the nitrogen-containing heterocyclic compound (pyrrole, paragraph 0044).
Claims 1 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bilodeau et al. (US20180197746).
Regarding claim 1, Bilodeau discloses a treatment liquid (claim 14) comprising: a fluoride ion source (claim 17); an oxidant (oxidizing species, claim 14); and an additive, wherein the oxidant is a peracetic acid (claim 18), the additive is isoleucine (claim 20).
Regarding claim 17, Bilodeau discloses wherein the additive contains the amino acid other than cysteine (isoleucine, claim 20).
Claims 1 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Serikawa (EP3263670).
Regarding claims 1 and 31, Serikawa discloses a treatment liquid (a polishing composition reads on a treatment liquid, abstract) comprising: a fluoride ion source (hydrogen fluoride, paragraph 0041); an oxidant (oxidizing agent, paragraph 0042); and an additive, wherein the oxidant is a peracetic acid (paragraph 0042), the additive is a polystyrene sulfonic acid (paragraph 0043).
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 20, the cited prior art of record, taken either alone or in combination, fails to disclose or render obvious a composition wherein the additive is a phenolsulfonic acid formaldehyde condensate, in the context of the instant claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (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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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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