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
Claims 1-17 are pending. Note that, Applicant’s amendment and arguments filed January 28, 2026, have been entered.
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on September 9, 2025.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 11/5/25 have been withdrawn:
None.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-8, 10, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over WO2005/057281.
With respect to independent, instant claim 1, ‘281 teaches An aqueous-based composition and process for removing photoresist, bottom anti-reflective coating (BARC) material, and/or gap fill material from a substrate having such material(s) thereon. The aqueous-based composition includes a fluoride source, at least one organic amine, at least one organic solvent, water, and optionally chelating agent and/or surfactant. See Abstract. More specifically, the compositions contains about 0.1% to about 15% of a fluoride source, about 20.0% to about 60.0% of at least one organic amine, about 1.0% to about 60.0% of at least one organic solvent, about 20.0% to about 70.0% of water, about 0.000% to about 20.0% of chelating agent, and 0.000% to about 5.0% of surfactant. The pH of the composition is from about 5 to about 9. See page 6. Fluoride sources are included to destroy the BARC material. The preferred fluoride sources include ammonium fluoride (NH4F), ammonium bifluoride ((NH4)HF2), hydrogen fluoride (HF), tetraalkylammonium difluorides ((R)4NHF2, where R is methyl, ethyl, butyl, phenyl or fluorinated C₁-C4 alkyl groups), etc. See page 7. Note that, the prior art clearly recognizes the equivalence of HF to alkyl ammonium fluorides as the fluoride component, and the Examiner asserts that ‘281 would clearly suggest compositions containing a mixture of HF and an alkyl ammonium fluoride; it is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06.
Suitable organic solvents include dimethyl sulfoxide, etc. See para. 33. The aqueous-based compositions of the invention are easily formulated by simple addition of the respective ingredients and mixing to homogeneous condition. See para. 36.
‘281 does not teach, with sufficient specificity, a composition containing HF, an ammonium fluoride, dimethyl sulfoxide, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing HF, an ammonium fluoride, dimethyl sulfoxide, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of ‘281 suggest a composition containing HF, an ammonium fluoride, dimethyl sulfoxide, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over WO2005/057281 as applied to claims 1-8, 10, 16, and 17 above, and further in view of Mellies (US2007/0161243).
‘281 is relied upon as set forth. However, ‘281 does not teach the use of a carboxylic acid such as octanoic acid in addition to the other requisite components of the composition as recited by the instant claims.
Mellies teaches a novel solution for the removal of post-etch residues having improved properties and to the use thereof in the production of semiconductors. The invention relates, in particular, to an aqueous solution having a reduced etching rate on metallisations and on surfaces which have to be freed from post-etch residues and particles during the semiconductor production process. See Abstract. Mellies teaches that it has furthermore proven advantageous for the cleaning solution additionally to comprise surface-active substances. Suitable surface-active substances have proven to be anionic surfactants. Particularly suitable surfactants are those selected from the group consisting of aliphatic carboxylic acids and/or from the group consisting of alkylbenzenesulfonic acids. Suitable aliphatic carboxylic acids are, for example, heptanoic acid and octanoic acid. An alkylbenzenesulfonic acid which can be employed is, inter alia, dodecylbenzenesulfonic acid. See para. 36.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a carboxylic acid such as octanoic acid in the composition taught by ‘281, with a reasonable expectation of success, because Mellies teach the use of a surfactant such as octanoic acid in a similar composition and further, ‘281 teaches the use of various surfactants in general.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over WO2005/057281 as applied to claims 1-8, 10, 16, and 17 above, and further in view of Barnes et al (US 2013/0296214).
‘281 is relied upon as set forth. However, ‘281 does not teach the use of the specific amount of water addition to the other requisite components of the composition as recited by the instant claims.
Barnes et al teach cleaning compositions and processes for cleaning post-plasma etch residue from a microelectronic device having said residue thereon. The composition achieves highly efficacious cleaning of the residue material, including titanium-containing, copper-containing, tungsten-containing, and/or cobalt-containing post-etch residue from the microelectronic device while simultaneously not damaging the interlevel dielectric, metal interconnect material, and/or capping layers also present thereon. See Abstract. In a first aspect, the cleaning compositions described herein are aqueous or semi-aqueous and include at least one corrosion inhibitor, water, optionally at least one etchant source, optionally at least one metal-chelating agent, optionally at least one complexing agent, and optionally at least one passivating agent, for removing post-plasma etch residues from the surface of a microelectronic device having same thereon. See para. 30. Water is used in amounts from about 50% to about 97% by weight. See para. 31.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use water in amounts, for example, of 74.3% or 76.3% by weight, in the composition taught by ‘281, with a reasonable expectation of success, because Barnes et al teach the use of water in amounts, for example, of 74.3% or 76.3% by weight, and the equivalence of these amounts of water to 70% by weight of water in a similar composition and further, ‘281 teaches the use of water in amounts such as “about” 70% by weight, which would encompass amounts such as 74.3% or 76.3% by weight.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over WO2005/057281 as applied to claims 1-8, 10, 16, and 17 above, and further in view of Mellies (US2007/0161243) or Barnes et al (US 2013/0296214).
‘281 is relied upon as set forth. However, ‘281 does not teach the use of the specific amount of water or a carboxylic acid such as octanoic acid addition to the other requisite components of the composition as recited by the instant claims.
Mellies or Barnes et al are relied upon as set forth above.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use water in amounts, for example, of 74.3% or 76.3% by weight, in the composition taught by ‘281, with a reasonable expectation of success, because Barnes et al teach the use of water in amounts, for example, of 74.3% or 76.3% by weight, and the equivalence of these amounts of water to 70% by weight of water in a similar composition and further, ‘281 teaches the use of water in amounts such as “about” 70% by weight, which would encompass amounts such as 74.3% or 76.3% by weight.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a carboxylic acid such as octanoic acid in the composition taught by ‘281, with a reasonable expectation of success, because Mellies teach the use of a surfactant such as octanoic acid in a similar composition and further, ‘281 teaches the use of various surfactants in general.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using WO2005/057281, Applicant states that ‘281 discloses an organic solvent that is a sulfoxide DMSO only as part of a large genus or such solvents. In response, note that, the Examiner asserts that the teachings of a reference are not limited to the preferred embodiments and that the broad teachings of ‘281 suggest compositions containing the same components in the same amounts as recited by the instant claims. Note that, the fact that a specific embodiment is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the disclosed alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "[a] reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment." CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1349 (Fed. Cir. 2017) (quoting In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012)); see also In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions". Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); See MPEP 2123(II). The fact that a reference discloses a multitude of effective combinations does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, 874 R.2d 804, 808 (Fed. Cir. 1989). See also, In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations even though “the inventors selected the zeolites of the claims from amount thousands of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was huge, but it undeniably included at least some of the compounds recited in appellant’s generic claims and was a class of chemicals to be used for the same purpose as appellant’s additives).
For example, ‘281 clearly teaches that suitable solvents include dimethyl sulfoxide, etc. (See para. 33 of ‘281) which would clearly suggest compositions containing a sulfoxide solvent as recited by the instant claims. Thus, the Examiner asserts that the teachings of ‘281 are sufficient to render the claimed invention obvious under 35 USC 103.
Further, Applicant states that data has been provided in the instant specification which is sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. Specifically, Applicant states that Table 1 of the instant specification provides data showing that the claimed invention provides unexpected and superior residue removal properties along with minimizing damage and/or etching the underlying substrate in comparison to compositions falling outside the scope of the instant claims. In response, note that, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. The data provided in the instant specification is not commensurate in scope with the instant claims. For example, the instant claims are open to HF in a given range, a group of ammonium fluoride compounds in a given range, and a broad group of sulfoxide and sulfone solvents in broad amounts, while the instant specification provides data with respect to only several specific embodiments which is not commensurate in scope with the instant claims. Note that, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); See MPEP 716.02(d)(I). Applicant has not provided on this record a sufficient basis for concluding that the generic scope of protection sought by claim 1 is reasonably commensurate with the showing of alleged unexpected results. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (obviousness rejection affirmed because evidence establishing that one (or a small number of) species gives unexpected results is inadequate proof); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims). Note that, the evidence in the Specification is not commensurate in scope with the appealed claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (concluding that unexpected results “limited to sodium only” were not commensurate in scope with claims to a catalyst having an “alkali metal”. Appellants have not established that the results using the single embodiment in (Example 3) is representative of the results which would be obtained over the broad scope of compositions covered by the claims).
Additionally, the Examiner would like to point out that while Table 1 lists that amounts of various solvents present in the compositions, it is unclear from the Examples as to how much HF and water, which are required components, are used in each Example. Also, it does not appear that an ammonium fluoride compound, which is a required component of the claimed invention, is used in any of the Examples; therefore, the data provided in the instant specification does not appear to be representative of the claimed invention and no objective determination as to the unexpected and superior properties of the claimed invention can be made. Thus, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, 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 at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GREGORY R DELCOTTO/ Primary Examiner, Art Unit 1761
/G.R.D/April 29, 2026
Prosecution Insights