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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/13/2026 has been entered.
Status of the Claims
This is a non-final office action in response to the applicant’s arguments and remarks filed on 01/13/2026. Claims 1-5, 7-14, 16-19, and 21-23 are pending in the current office action. Claims 1, 7, and 16 have been amended by the applicant. Claims 21-23 are new claims. Claims 6, 15, and 20 are cancelled.
Status of the Rejection
The rejection of claims 6, 15, and 20 is obviated by the Applicant’s cancellation.
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
New grounds of rejection under 35 U.S.C. § 112(a) and 112(b) are necessitated by the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7-14, 16-19, and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The independent claims 1, 7, and 16 include the limitation “wherein the etching composition does not include peroxide”. However, the only mention of any peroxide within the specification, found within Paragraph [0022], states “In an implementation, the etching composition may not include hydrogen peroxide (H202)”. Therefore, the specification only provides support for the exclusion of hydrogen peroxide from the etching composition, failing to convey to one skilled in the art that inventors had possession of a composition that excluded the inclusion of all possible peroxides. Examiner notes that this position is further supported by the claims 2 and 11, which include ammonium persulfate as a suitable oxidant to include in the composition. However, ammonium persulfate can be considered a peroxide as it comprises an oxygen-oxygen bond within the persulfate molecule. Claims 2-5, 8-14, 17-19, and 21-23 are rejected due to their dependance upon claims 1, 7, and 16.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 2 and 11 include the compound “ammonium persulfate” as a suitable oxidant to include in the composition. However, it is unclear how a composition could be formed that comprises ammonium persulfate that also meets the limitations of the independent Claims 1 and 7, upon which claim 2 and 11 depend, because claims 1 and 7 require that the composition “does not include peroxide” while ammonium persulfate includes a peroxide. Therefore, claims 2 and 11 are indefinite.
Allowable Subject Matter
Claims 1-5, 7-14, 16-19, and 21-23 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is considered Takahashi (CN=107304476-A, machine translation).
Takahashi teaches an etching composition for etching a molybdenum film (Paragraph [0002] an etching composition is taught. The preamble "for etching a molybdenum film" is a statement of intended use that does not further limit the claimed invention. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114. Since the structure of the prior art teaches all of the structural limitations of the claim, the structure is considered capable of meeting the intended use limitations. However, for purposes of compact prosecution, examiner notes that Takahashi expressly teaches that the composition can be used to etch molybdenum (Paragraph [0041]), the etching composition comprising: an oxidant (Paragraph [0087] Nitric acid can be considered an oxidant - see Claim 2 of the instant application); a chelating agent, the chelating agent including a mineral acid (Paragraph [0090] composition includes 0.1-30% phosphoric acid by mass. Phosphoric acid is a mineral acid and can be considered a chelating agent - see claim 3 of instant application); a corrosion inhibitor, the corrosion inhibitor including at least one corrosion inhibitor selected from the group consisting of an ammonium salt (Paragraph [0090-0091] the composition can include a phosphate compound, which can include ammonium phosphate or diammonium phosphate. composition includes 0.1-30% phosphoric acid and phosphates by mass, and can include multiple types such that both phosphoric acid and an ammonium phosphate salt are included in the composition), and an amine compound (Paragraph [0092] composition can include a basic compound which can be an organic amine); an organic solvent (Paragraph [0076] composition includes an organic solvent); and water (Paragraph [0098] composition can include water).
However, the composition taught by Takahashi requires the inclusion of hydrogen peroxide and therefore fails to meet the claimed limitations.
Response to Arguments
Applicant’s arguments, see Remarks Pg. 1, filed 01/13/2026, with respect to the 35 U.S.C. § 103 rejection have been fully considered and are persuasive. After further search and consideration, examiner agrees that the prior art fails to teach all the limitations claimed, and in particular fails to teach a composition that does not include hydrogen peroxide. Examiner further agrees that the application has support for compositions that do not include hydrogen peroxide. However, as explained above in the 112 rejections, there is no clear support for compositions that do not include all peroxides.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW KEELAN LAOBAK whose telephone number is (703)756-5447. The examiner can normally be reached Monday - Friday 8:00am - 5:30pm.
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/A.K.L./Examiner, Art Unit 1713 /DUY VU N DEO/Primary Examiner, Art Unit 1713