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 1-7 are pending. Note that, Applicant’s amendment and arguments filed January 26, 2026, have been entered.
Claims 5-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 22, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 26, 2026, has been entered.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 10/27/25 have been withdrawn:
The rejection claims 1-4 under 35 U.S.C. 103 as being unpatentable over Schwartzkopf et al (US 6,326,130) in view of Harada et al (US2020/0231900) or WO02/33033, has been withdrawn.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-4 are objected to because of the following informalities:
With respect to instant claim 1, line 10, it is suggested that Applicant delete “including” and insert “comprising”. Note that, instant claims 2-4 have also been objected to due to their dependency on claim 1.
Appropriate correction is required.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over WO2021/153122. Note that, Sugishima (US2023/0159864) is a 371 application of WO2021/153122 and has been used as an English language translation of WO2021/153122.
With respect to independent, instant claim 1, Sugishima (i.e., ‘122) teaches a treatment liquid which contains water, hydroxylamine, and one or more kinds of hydrazines selected from the group consisting of hydrazine, a hydrazine salt, and a hydrazine derivative, in which a total content of the hydrazines is 1 part by mass or less with respect to 100 parts by mass of the hydroxylamine. See Abstract. Suitable hydrazines include those having the formula H₂N-NRN2 in which RN may be an alkyl group wherein the alkyl group may be linear or branched, and preferably has 1 to 5 carbon atoms, etc. Examples of the hydrazine salt include hydrazine sulfate, hydrazine hydrochloride, and hydrazine acetate. See paras. 109-114. In the treatment liquid, the total content of the hydrazines is preferably 0.0001 to 3,000 ppm by mass (i.e., 0.00000001% to 0.3% by weight) with respect to the total mass of the treatment liquid. The treatment liquid may contain a pH adjuster other than the components described above. Examples of the pH adjuster include an acid compound and a base compound. Examples of the acid compound include acetic acid, perchloric acid, hypochlorous acid, and periodic acid. Examples of the base compound include aqueous ammonia, an amine compound different from both the hydroxylamine and hydrazines, and a quaternary ammonium hydroxide salt. The pH of the treatment liquid is preferably 1 to 13, and more preferably 6 to 11. See para. 282. The content of water in the treatment liquid is not particularly limited. The content of water with respect to the total mass of the treatment liquid is preferably 50% by mass or more, more preferably 70% by mass or more, and even more preferably 80% by mass or more. The upper limit of the content of water is less than 100% by mass. See para. 97. The treatment liquid may contain an anticorrosive. The anticorrosive has a function of preventing overetching of an object to be treated, and further improves the smoothness of the object to be treated. See para. 175.
Sugishima does not teach the specific pH as recited by the instant claim 1 or a composition having the specific pH containing a hydrazine compound, a water-soluble basic compound, and the other requisite components of the composition in the specific amounts as recited by at least instant claim 1.
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 having the specific pH containing a hydrazine compound, a water-soluble basic compound, and the other requisite components of the composition in the specific amounts as recited by at least instant claim 1, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Sugishima suggests a composition having the specific pH containing a hydrazine compound, a water-soluble basic compound, and the other requisite components of the composition in the specific amounts as recited by at least instant claim 1.
Response to Arguments
Note that, Applicant’s arguments are moot since all prior art rejection(s) set forth in the Office action mailed October 27, 2025, have been withdrawn and a new ground(s) of rejection has been made, as set forth above, which was necessitated by Applicant’s amendment.
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 Tables 1-13 of the instant specification provide data showing that the claimed invention provides unexpected and superior silicon residue removal properties and inhibited damage to molybdenum and tungsten substrates 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 a broad group of hydrazine compounds in a given amount and a broad group of water-soluble basic compounds 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 the data provided in the instant specification appears to show that the claimed invention provides superior silicon residue removal and inhibited damage to molybdenum and tungsten substrates properties in comparison to compositions falling outside the scope of the instant claims, Examples 1-24 all contain at least 0.02% of a hydrazine compound and at least 0.02% more actives than the comparative compositions; therefore, it is unclear if the superior residue removal and inhibited damage properties actually rise to the level of unexpected or is merely what one of ordinary skill in the art would reasonably expect when using compositions containing 0.02% more actives. Thus, the Examiner asserts that the data presented 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Remaining references cited but not relied upon are considered to be cumulative to or less pertinent than those relied upon or discussed above.
Applicant is reminded that any evidence to be presented in accordance with 37 CFR 1.131 or 1.132 should be submitted before final rejection in order to be considered timely.
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.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/February 2, 2026