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 .
Detailed Action
This office action is in response to applicant’s communication filed on 8/27/25.
Claims 1-10 are pending in this application and are being examined in this Office Action. Due to applicant’s amendments to the claims filed 8/27/25, the objection and 112 rejection is withdrawn.
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 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 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 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (CN 103102273, pub date 4/27/16, in applicant’s IDS filed 5/19/23, see the English translation herein).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Sun et al. teaches a method for purifying organic amines, such as tetramethylammonium hydroxide (TMAH), triethanolamine and triisopropanolamine, from metal ion contaminants, for the semiconductor industry. An iminodiacetic acid or aminophosphoric acid chelating resin polymer, composed of polyacrylic acid or styrene polymers, is used to purify a solution of organic amine contaminated with metal ions, by removing and binding the metal ions to the chelating resins. Additionally, Sun et al. teaches an anion ion exchange resin can also be used, the temperature of the solution can range from 20 to 70 degree C and the flow rate can be 1-100 L/h. Sun et al.’s purification was able to achieve a concentration of all metal ions of less than 2-10 ppb and a concentration of chloride ions of less than 0.1 ppm. Highly pure organic amines without metal bonded contaminants are desirable for the semiconductor industry. Furthermore, Sun et al. teaches the use of commercially available resins, such as D261, Amberlite 252, JK204 and D001 resins. (abstract; page 2, Background technique section; page 3, first and fourth paragraph; page 4, second, third, fourth and eighth paragraph; page 5, fourth, fifth and sixth paragraphs; page 6, second and seventh paragraph; Example 1 and 3; claims, especially claim 3)
Furthermore, Sun et al. is able to purify the organic amine to achieve fine electronic grade standard purity. (abstract) Sun et al. teaches diluting to a pH value of 10 – 13.5 (page 10, “Step 2”; page 4, last paragraph)
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Sun et al. is deficient in the sense that it does not include the pore size and particle diameter of the resin polymer beads. Sun et al. also is deficient in that it does not teach that the organic amine contains less than 1% by weight water.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
However, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention, to optimize a resin polymer bead’s pore size and diameter, in order to bind and remove the metal contaminants in the organic amine solution. Furthermore, Sun et al. teaches the use of commercially available resin polymers, which typically include beads with varying pore sizes and diameters. Absent evidence of unexpected results, it would be reasonable to expect one of ordinary skill in the art to optimize the pore size and diameter of the resin polymer beads for optimal binding of the metal contaminants in the organic amine solution.
With regard to applicant’s purity limitations in claims 8 and 9 and the limitation of the organic amine containing less than 1% by weight water in claim 10, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize the purity of the organic amine since pure forms of known compounds are obvious, especially since highly pure organic amines are desirable for the semiconductor industry. Thus it would be obvious to purify the organic amine to contain less than 1% by weight of water and to remove the metallic elements to less than 1 part per million or in which more than 80% of the metallic elements are removed.
When claiming a purer form of a known compound, it must be demonstrated that the purified material possess properties and utilities not possessed by the unpurified material. Ex parte Reed, 135 U.S.P.Q. 34, 36 (P.O.B.A. 1961), on reconsideration, Ex parte Reed, 135 U.S.P.Q. 105 (P.O.B.A. 1961).
It has been well established that the mere purity of compound, in itself, does not render a substance unobvious Ex Parte Gray (BPAI 1989) 10 PQ2D 1922.
As stated in Aventis Pharma Deutschland Gmbh and King Pharmaceuticals, Inc., v. Lupin, Ltd., 84 USPQ2d 1197:
“The ‘reason or motivation’ need not be an explicit teaching that the claimed compound will have a particular utility; it is sufficient to show that the claimed and prior art compounds possess a ‘sufficiently close relationship . . . to create an expectation,' in light of the totality of the prior art, that the new compound will have ‘similar properties’ to the old.”
“However, if it is known that some desirable property of a mixture derives in whole or in part from a particular one of its components, or if the prior art would provide a person of ordinary skill in the art with reason to believe that this is so, the purified compound is prima facie obvious over the mixture even without an explicit teaching that the ingredient should be concentrated or purified….”
“Ordinarily, one expects a concentrated or purified ingredient to retain the same properties it exhibited in a mixture, and for those properties to be amplified when the ingredient is concentrated or purified; isolation of interesting compounds is a mainstay of the chemist’s art. If it is known how to perform such an isolation, doing so ‘is likely the product not of innovation but of ordinary skill and common sense.’”
Additionally, with regard to applicant's limitations for the flow rate, low metal and water purity, pore size and diameter, it is the position of the examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of these limitations to provide the best effective variable depending on the result desired. Because Sun et al. teaches flow rates, purities and a range of commercially available resins, the examiner asserts that the flow rate, low metal and water purity, pore size and diameter are art recognized result-effective variables. Thus it would be obvious in the optimization process to optimize the flow rate, low metal and water purity, pore size and diameter. The applicant does not show any unusual and/or unexpected results for the limitations stated. Note that the prior art provides the same effect desired by the applicant, the formation of highly pure organic amines with the metal contaminants removed by iminodiacetic acid or aminophosphoric acid chelating resins, to achieve fine electronic grade standard purity.
With regard to applicant’s polyacrylate resin form, acrylic acid and acrylate are in equilibrium. This equilibrium is pH dependent and is based on the lability of the hydrogen cation. See the acrylate/acrylic acid equilibrium below:
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Thus it would be obvious to transition between the protonated acrylic acid form and the unprotonated acrylate form. Furthermore, since Sun et al. teaches diluting to a pH value of 10 – 13.5, which is a basic pH value, it would be reasonable to expect that the unprotonated polyacrylate is the predominant form in the resin, which would read on applicant’s polyacrylate resin.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive for the following reasons:
The examiner acknowledges applicant’s argument that Sun et al. resin is different than applicant’s resin, based on the word “embedded”, since applicant claims their resin is embedded with the iminodiacetic acid or aminophosphoric acid versus Sun et al., which applicant claims teaches just a “resin comprising these materials”. The examiner also states that their claim 5 which adds an ion exchange resin to the liquid makes it clear that applicant’s recitation of “polymer matrix resin in claim 1 is not an “ion exchange resin””, which Sun et al. teaches.
The examiner does not agree with the applicant. The applicant argues that their recited word “embedded” somehow distinguishes against Sun et al.’s resin that comprises the iminodiacetic acid or aminophosphoric acid. Applicant’s specification does not limit the definition of “embedded” to exclude a resin that merely comprises the iminodiacetic acid or aminophosphoric acid. The examiner further states that it is reasonable to expect Sun et al.’s resin which comprises the iminodiacetic acid or aminophosphoric acid, to also be embedded with the iminodiacetic acid or aminophosphoric acid. One of ordinary skill in the art would not differentiate a meaningful difference between these descriptions of the resin.
Also with regard to applicant’s argument that their polymer matrix is not an ion exchange resin, and applicant’s argument that their claimed “embedded with an amino compound” is different than “comprising these materials as recited in Sun”, in applicant’s PGPub (US 20230117989) it states the “ion exchange resin, in a preferred embodiment, may be described as a polymer matrix comprised of polyacrylate or polystyrene-divinylbenzene (or a mixture of the two). The IDA and/or AMPA is embedded within, throughout, and/or upon this polymer matrix. The IDA and/or AMPA may be introduced during formation of the polymer resin and this resin may be formed into beads resulting in the AMPA or IDA embedded inside the resin beads and on the surface.”. (paragraph 5) Thus it is clear that Sun et al.’s ion exchange resin reads on applicant’s polymer matrix.
The examiner acknowledges applicant’s argument that Sun et al. does not teach applicant’s polyacrylate resin but instead teaches polyacrylic acid resin.
The examiner does not agree with the applicant. With regard to applicant’s polyacrylate resin form, acrylic acid and acrylate are in equilibrium. This equilibrium is pH dependent and is based on the lability of the hydrogen cation. See the acrylate/acrylic acid equilibrium below:
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70
316
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Thus it would be obvious to transition between the protonated acrylic acid form and the unprotonated acrylate form. Furthermore, since Sun et al. teaches diluting to a pH value of 10 – 13.5, which is a basic pH value, it would be reasonable to expect that the unprotonated polyacrylate is the predominant form in the resin, which would read on applicant’s polyacrylate resin.
With regard to applicant’s arguments against the obviousness of optimizing the pore size and particle diameter, the examiner states that since Sun et al.’s method makes applicant’s claims obvious, it would be reasonable to optimize the pore size and particle diameter, absent evidence to the contrary. The applicant has not provided evidence or data to contradict the examiner’s argument for obviousness.
Conclusion
Claims 1-10 are rejected.
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 Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
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Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691