DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/13/2026 has been entered.
Status of Claims
Claim 28 is new. Claims 1, 5-10, 14-19, 23-26, and 28 are pending. Claims 10, 14-19, and 23-26 are withdrawn. Claims 1, 5-9, and 28 are examined on the merits.
Response to Amendments
The claim objection is withdrawn. The 35 USC 112(a) and 112(b) rejections are withdrawn. The double patenting rejections are withdrawn.
Response to Arguments
Applicant’s 04/13/2026 arguments (“Remarks”) have been fully considered.
Applicant contends that the prior art reference NAKAZAKI “only considers including less than 30% by mass of component [III]” (see Remarks at pg. 15). This statement is inaccurate and is contradicted by Applicant’s admission that NAKAZAKI discloses a range of 0-40% by mass of component [III] (see Remarks at pg. 20, discussing ¶ 0072 of NAKAZAKI).
Applicant contends that NAKAZAKI’s “purpose” is not “focused” on swelling and peeling (see Remarks at pg. 15, 20-22). This is not persuasive: the fact that the inventors of this application have recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Here, NAKAZAKI already teaches/suggests the same method of using the claimed composition, including the recited amount of component [III], such that the “swelling” and “peeling” effects would naturally flow from the prior art’s teachings/suggestions, even if NAKAZAKI does not explicitly state the “swelling” and “peeling” effects. There are no non-obvious differences between NAKAZAKI’s method and the claimed method, and the recitation of an additional advantage (e.g., swelling and peeling effects) associated with doing what the prior art has taught or suggested does not lend patentability to an otherwise unpatentable invention.
Applicant acknowledges that NAKAZAKI discloses a range of 0-40% by mass for component [III] (see Remarks at pg. 20), but Applicant also suggests that the 0-40% range should be disregarded because NAKAZAKI discloses narrower ranges (e.g., 3-25%, 7-20%) and examples of 29.2% (see Remarks at pg. 21-22). In particular, Applicant states that “cleaning compositions containing [component III] in a quantity of ‘30 to 40% by mass’ are not evaluated and therefore cannot be said to be fairly described in NAKAZAKI” (see Remarks at pg. 21). These arguments are not persuasive because: (1) they are not backed by any binding authority; (2) they are contradicted by NAKAZAKI; and (3) applying those arguments against the disclosures of this application would lead to illogical results.
First, Applicant presents no binding authority that says when a prior art reference discloses both a broader range and a narrower range, the broader range should be disregarded and the prior art’s teachings should be limited to the narrower range.
Second, as admitted by Applicant, NAKAZAKI already teaches an example in which component [III] appears at 29.2% (see Remarks at pg. 21), so there’s no persuasive reason to disregard the upper portions of the 0-40% range. The very existence of 29.2% in NAKAZAKI’s examples undermines Applicant’s argument that NAKAZAKI’s teachings should be limited to the 3-25% range or the 7-20% range.
Third, if Applicant’s arguments were applied against the disclosures of this application, the results may be illogical. In this application, the specification discloses that component [III] (i.e., a solvent having formula L) “is preferably 30 to 90 mass%, and more preferably 40 to 80 mass%” (see Spec. at ¶ 0112), and the examples in Table 1 only reach to a maximum value of 64.2% for component [III] (see example 2-5). Is it logical to conclude that the broader 30-90% range should be disregarded from the disclosures of this application? Is it logical to conclude that any cleaning compositions containing component III in a quantity above 64.2% by mass “are not evaluated and therefore cannot be said to be fairly described” in this application?
Applicant contends that “in NAKAZAKI, in order to increase solubility in the adhesive layer, only a content of less than 30% by mass of the compound of formula (3) (corresponding to component [III] of the present invention) is considered” (see Remarks at pg. 22). This is conclusory without evidentiary support and not persuasive for the same reasons above.
Applicant contends that the claimed range of “35% by mass or more” for component [III] is not fairly taught or suggested by NAKAZAKI (see Remarks at pg. 15, 23). This is a new limitation introduced through amendment, and it’s addressed in the updated 103 rejection below.
Applicant contends that “by increasing the content of component [III] from 30 mass% to 35 mass% or more, the swelling and peeling effect on the adhesive layer is enhanced, resulting in significantly better results, such as the ability to peel off the adhesive layer without residue and in a shorter time” (Remarks at pg. 16-17). This is not persuasive for several reasons. First, “significantly better results” is a subjective term not defined by the specification. Second, there’s no disclosure of statistical variance in the data shown in Table 1, so it’s unclear if the differences between results are statistically significant or just within the expected variance in data. Third, the data in Table 1 does not show sufficient controls of the other parameters to draw any reliable conclusions regarding the effect of component III. A non-limiting list of observations regarding the data of Table 1 is provided below:
From Examples 2-1 to Examples 2-5, all three components (II, III, and IV) are changing, so no reliable inference can be drawn.
Example 2-7 is the sole data point for 35% of component III, which is not sufficient to draw any conclusions regarding 35% by mass of component III.
Example 2-6 has 30% of component III, and Example 2-12 has 40% of component III, but the peeling time is the same for both of them.
Example 2-6 and 2-9 both have 30% of component III, but their peeling times are different, which suggests that other parameter(s) may affect peeling time.
Examples 2-8, 2-10, 2-11, and 2-12 all have 40% of component III, but their peeling times are different, which suggests that other parameter(s) may affect peeling time.
Examples 2-18 and 2-20 both have 40% of component III, but their peeling times are different, which suggests that other parameter(s) may affect peeling time.
Examples 2-20 and 2-22 both have components II, III, and IV in a 50-40-10 ratio, but their peeling times are different, which suggests that other parameter(s) may affect peeling time.
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, 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, 5-9, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over NAKAZAKI et al. (WIPO Publication WO2020/080060A1, as translated by US PGPUB 2021/0317390).
Regarding Claim 1, NAKAZAKI teaches a method for cleaning a semiconductor substrate (see, e.g., abstract, ¶¶ 0001, 0042, 0082-84, 0088-89, 0090-94, 0100-05, 0114-15, 0120-21). NAKAZAKI teaches that the substrate has an adhesive layer formed thereon (a siloxane-based adhesive, see id.).
As a preliminary matter, the clause “swelling, peeling and dissolving” is interpreted as the intended outcome or effect produced as a result of performing the physical action of contacting the recited composition with the recited adhesive layer. Once the recited composition comes into contact with the recited adhesive layer (see specification at ¶¶ 0128-29, contact by immersion), no further action is required to produce the “swelling, peeling and dissolving” outcome or effect (see also specification at ¶ 0077, calling peeling an “effect”).
NAKAZAKI teaches the method comprises immersing the substrate in a cleaning composition to remove the adhesive layer (see, e.g., abstract, ¶¶ 0001, 0042, 0082-84, 0088-89, 0090-94, 0100-05, 0114-15, 0120-21). In other words, NAKAZAKI teaches contacting the cleaning composition with the adhesive layer.
NAKAZAKI teaches that the composition contains a quaternary ammonium salt (tetrabutylammonium fluoride or “TBAF,” see Examples 1-56, Tables 1-2, 4-6, ¶¶ 0097-99, 0109, 0111) which is component [I] and an aprotic solvent (see ¶¶ 0024-26, 0050, 0056).
NAKAZAKI teaches the aprotic solvent contains the following component [II], the following component [III], and the following component [IV]:
component [II] is an amide-based solvent (an N-substituted amide, see Examples 1-56, Tables 1-2, 4-6, ¶¶ 0097-99, 0109, 0111);
component [III] is a solvent represented by the claimed Formula (L), i.e., L1-L3-L2, wherein L3 represents O (dibutyl ether or “DBE,” see ¶¶ 0069, 0097, 0099, 0109, 0111, Examples 1-11 & 15-33 in Table 1, Examples 40-42 in Table 2, Examples 45-49 in Table 4, Examples 52-53 in Table 5, and Example 56 in Table 6), and wherein L1 and L2 each independently represent an alkyl group having 4 carbon atoms (see id.);
component [IV] is a dialkyl ether of glycol that satisfies the claimed Formula (T) (see ¶¶ 0031-33, 0065, 0097, 0105).
NAKAZAKI teaches that component [IV] may be diethylene glycol dimethyl ether or “DMDG” (see ¶ 0097, Examples 1-11 in Table 1), whose structure is provided below:
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DMDG satisfies Formula T such that: each of X1 and X3 is a 1-carbon alkyl group; X2 is an alkylene group, n is 2 (see also specification of the present application at ¶ 0117).
NAKAZAKI also teaches that component [IV] may be dipropylene glycol dimethyl ether or “DPGDME” (see ¶ 0097, Examples 15-33 in Table 1; ¶ 0099, Examples 40-42 in Table 2; ¶ 0109, Examples 45-48 in Table 4; ¶ 0111, Examples 52-53 in Table 5 & Example 56 in Table 6), whose structure is provided below:
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DPGDME satisfies Formula T such that: each of X1 and X3 is a 1-carbon alkyl group; X2 is an alkylene group, n is 2 (see also specification of the present application at ¶ 0117).
NAKAZAKI also teaches other examples of the dialkyl ether of glycol (see ¶ 0065).
NAKAZAKI teaches the quaternary ammonium salt (tetrabutylammonium fluoride or “TBAF”) has a fluoride, i.e., it’s a halogen-containing quaternary ammonium salt.
NAKAZAKI teaches that the amide-based solvent (i.e., component [II]) may be an acid amide derivative that satisfies Formula (Z) or a compound that satisfies Formula (Y).
For example, the amide-based solvent may be N-N-dimethyl propionamide or “DMPA” (see ¶ 0099, Examples 40-42 in Table 2), whose structure is provided below:
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DMPA satisfies Formula (Z) such that: R0 is an ethyl group; and each of RA and RB is an 1-carbon alkyl group (see also specification of the present application at ¶ 0091).
For example, the amide-based solvent may be N-methyl-2-pyrrolidone or “NMP” (see ¶¶ 0097-98, Examples 1-11, 15-33 in Table 1; ¶ 0109, Examples 45-49 in Table 4), whose structure is provided below:
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NMP satisfies Formula (Y) such that: R101 is an 1-carbon alkyl group and R102 is a 3-carbon alkylene group (see also specification of the present application at ¶ 0100).
For example, the amide-based solvent may be N-ethyl-2-pyrrolidone or “NEP” (see ¶ 0110, Examples 52-53 in Table 5), whose structure is provided below:
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NEP satisfies Formula (Y) such that: R101 is a 2-carbon alkyl group and R102 is a 3-carbon alkylene group (see also specification of the present application at ¶ 0100).
For example, the amide-based solvent may be 1,3-dimethyl-2-imidazolidinone or “DMI” (see ¶ 0111, Example 56 in Table 6), whose structure is provided below:
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DMI satisfies Formula (Y) such that: R101 is an 1-carbon alkyl group; R102 has the formula *1–NR103–R104–*2, wherein R103 is a 1-carbon alkyl group and R104 is a 2-carbon alkylene group, wherein *1 represents a bond to a carbon atom and *2 represents a bond to a nitrogen atom (see also specification of the present application at ¶ 0100).
NAKAZAKI teaches that the content of the amide-based solvent of the component [II] in 100 mass% of the aprotic solvent contained in the composition may be 20 to 90 mass% (see ¶ 0077). Because the prior-art range (20-90%) overlaps with the claimed range of “20 to 50 mass%,” the claimed range is considered obvious. See MPEP § 2144.05.I.
NAKAZAKI teaches that the content of the solvent represented by Formula (L) of the component [III] in 100 mass% of the aprotic solvent contained in the composition may be 0 to 40 mass% (see ¶ 0072). Because the prior-art range (0-40%) overlaps with the claimed range of “35 mass% or more,” the claimed range is considered obvious. See MPEP § 2144.05.I.
Because the aprotic solvent comprises components [II], [III], and [IV] (as explained above), which add up to 100 mass% of the aprotic solvent, the total content of the solvent represented by Formula (L) as the component [III] and the solvent represented by Formula (T) as the component [IV] in 100 mass% of the aprotic solvent can be readily determined by subtracting the mass% of component [II] from 100%. In plain English, II+III+IV=100%, wherein the sum of III+IV = 100%–II.
For example, NAKAZAKI teaches that the content of the amide-based solvent of the component [II] may be 20 to 90 mass% in 100 mass% of the aprotic solvent (see ¶ 0077). This means the total content of the Formula (L) solvent as the component [III] and the Formula (T) solvent as the component [IV] may be 10 to 80 mass% in 100 mass% of the aprotic solvent. Because the prior-art range (10-80 mass%) overlaps with the claimed range of “50 to 80 mass%,” the claimed range is considered obvious. See MPEP § 2144.05.I.
Although NAKAZAKI does not explicitly teach that the cleaning composition interacts with the adhesive layer to achieve a “swelling, peeling and dissolving” outcome or effect, such outcome/effect is inherently present or at least reasonably expected because:
(1) NAKAZAKI teaches the same or substantially similar adhesive—e.g., a siloxane-based adhesive such as a polyorganosiloxane adhesive cured by hydrosilylation (see ¶¶ 0085-86)—as disclosed by the present application (see specification at, e.g., ¶¶ 0009-10, 0021, 0030, 0145, 0149).
(2) NAKAZAKI teaches the same components I to IV as disclosed by the present application (see specification at, e.g., ¶¶ 0010, 0013-17, 0078-83, 0087, 0103, 0113).
(3) NAKAZAKI teaches or reasonably suggests the claimed ratios of components. For example, NAKAZAKI teaches that component II may be 20-90 mass% of the aprotic solvent (see ¶ 0077), component III may be 0-40 mass% of the aprotic solvent (see ¶ 0072), component IV may be 10-80 mass% of the aprotic solvent (see ¶ 0077), wherein the total content of components III and IV may be 10-80 mass% of the aprotic solvent (as calculated by subtracting the mass% of component II from 100%).
(4) NAKAZAKI teaches the same physical action—e.g., immersing the substrate in the cleaning composition—as disclosed by the present application (see specification at ¶¶ 0129-31, 0139, 0181-82).
See MPEP § 2112.01.I. (“where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established”); § 2112.01.II. (“a chemical composition and its properties are inseparable”).
Lastly, because NAKAZAKI’s composition achieves peeling and dissolving (as explained above), it may be considered a “peeling and dissolving composition.”
Regarding Claim 5, NAKAZAKI teaches the method according to Claim 1. NAKAZAKI teaches that the component [III] is dibutyl ether or “DBE” (as explained above), which means L1 and L2 are both butyl groups.
Regarding Claim 6, NAKAZAKI teaches the method according to Claim 1. NAKAZAKI teaches wherein the adhesive layer is a film obtained using an adhesive composition containing an adhesive component containing a siloxane-based adhesive (see, e.g., ¶¶ 0040, 0085-87, 0100, 0112, 0118).
Regarding Claim 7, NAKAZAKI teaches the method according to Claim 6. NAKAZAKI teaches wherein the adhesive component contains the siloxane-based adhesive (see, e.g., ¶¶ 0040, 0085-87, 0100, 0112, 0118).
Regarding Claim 8, NAKAZAKI teaches the method according to Claim 7. NAKAZAKI teaches wherein the siloxane-based adhesive contains a polyorganosiloxane component (see, e.g., ¶¶ 0040, 0085-86, 0100, 0112, 0118) which is cured by a hydrosilylation reaction (see ¶ 0086).
Regarding Claim 9, NAKAZAKI teaches the method according to Claim 1. As explained above, NAKAZAKI teaches or reasonably suggests the “swelling, peeling, and dissolving” outcome/effect produced by contacting the recited composition with the recited adhesive layer. NAKAZAKI also teaches eliminating the peeled adhesive layer (see ¶¶ 0003, 0084, the adhesive is removed).
Regarding Claim 28, NAKAZAKI teaches the method according to Claim 1. NAKAZAKI teaches the content of the solvent represented by formula (L) of the component [III] in 100 mass% of the aprotic solvent contained in the composition may be 0 to 40 mass% (see ¶ 0072). Because the prior-art range (0-40%) overlaps with the claimed range of “40 mass% or more,” the claimed range is considered obvious. See MPEP § 2144.05.I.
Conclusion
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/R.Z.Z./Examiner, Art Unit 1714
/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714
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