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, 4-8, 12-17, and 19-21 are pending. Claims 2, 3, 9-11, and 18 have been canceled. Note that, Applicant’s amendment and arguments filed July 24, 2026, have been entered.
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 August 26, 2025.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 4/1/26 have been withdrawn:
The rejection of claim 3 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inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, has been withdrawn.
The rejection of claims 1, 3-5, and 12-16 under 35 U.S.C. 103 as being unpatentable over Tamboli (US2019/0390139), has been withdrawn.
The rejection of claims 6-8 under 35 U.S.C. 103 as being unpatentable over Tamboli (US2019/0390139), further in view of Lee (US2009/0133716), Lee (US2009/0130849), or Andreas (US2003/0089891), has been withdrawn.
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, 4-8, 12-17, and 21 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.
With respect to instant claims 1 and 21, the specification, as originally filed, provides no basis for an upper limit of “2% by weight” for the second acid. Thus, this is deemed new matter. Note that, instant claims 4-8 and 12-17 have also been rejected due to their dependency on claim 1.
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, 5, and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Tamboli (US2019/0390139) in view of EP 3,599,633.
With respect to independent, instant claim 1, Tamboli teaches Post Chemical Mechanical Planarization (CMP) cleaning composition which comprises water, an organic acid, a fluoride compound, a polymeric additive, and optionally, a surfactant, corrosion inhibitors, biological preservatives (i.e., biocides), etc. The one or more organic acids or salts are selected from the group comprising dicarboxylic acid, hydroxycarboxylic acid, polycarboxylic acid, salts, and combinations thereof. The fluoride compound is selected from the group comprising hydrofluoric acid, ammonium fluoride, ammonium bifluoride, quaternary ammonium fluoride and combinations. The one polymeric additive is selected from a group comprising anionic polymer, non-ionic polymer and cationic polymer and combinations thereof. The surfactant is selected from the group consisting of non-ionic surfactants, anionic surfactants, cationic surfactants, ampholytic surfactants, and mixtures thereof, where composition has a pH of between 1-7. See Abstract and para. 7. Suitable acids include oxalic acid, citric acid, acetic acid, glycine, alpha-alanine, cystine, etc., which may be used in amounts from 1% to 30% by weight. In some embodiments formulations comprises one or more anionic polymer or copolymers. Preferred anionic polymer is acrylic acid-acrylamido propane sulfonic acid copolymer (AA-AMPS). In preferred embodiments the molecular weight of the polymer may be between 100-1,000,000, or more preferably between 200 and 100,000 or most preferable between 1000 and 10,000. In some more preferred embodiments, the acrylic acid (x): 2-acrylamido-2-methylpropanesulfonic acid (y) mole ratio (x:y) in the copolymer is between 90:10 to 70:30. An example of preferred AA-AMPS copolymer that is used in the working examples is Dequest® P9300 available Italmatch Chemicals (Genova, Italy). Polymers or mixtures thereof can be added in concentrations from 0.01 to 10 wt. % to the cleaning formulations. Addition of the polymers to post CMP formulations with appropriate bases leads to great improvement in cleaning performance. Without binding to any particular mechanism, one of the possible mechanism may be physical adsorption on surfaces, which would prevent re-deposition of removed particles and other residues. Another likely mechanism is the strong affinity towards the residues (organics) thereby increasing the driving force on lift-off during the cleaning process. See paras. 51-58.
Tamboli does not teach the use of an acid such as lysine or a composition having a pH from about 0.1 to about 7, said composition containing a first organic acid, s second organic acid different from the first organic acid, an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer, water, and the other requisite components of the composition in the specific amounts as recited by independent instant claim 1 and the respective dependent instant claims.
‘633 is relied upon as set forth below.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use an amino acid such as lysine in the composition taught by Tamboli, with a reasonable expectation of success, because ‘633 teaches the equivalence of lysine to glycine as an amino acid component in a similar composition and further, Tamboli teaches the use of glycine.
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 a pH from about 0.1 to about 7, said composition containing a first organic acid, s second organic acid different from the first organic acid, an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer, water, and the other requisite components of the composition in the specific amounts as recited by independent instant claim 1 and the respective dependent instant claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Tamboli in view of ‘633 suggest a composition having a pH from about 0.1 to about 7, said composition containing a first organic acid, s second organic acid different from the first organic acid, an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer, water, and the other requisite components of the composition in the specific amounts as recited by independent instant claim 1 and the respective dependent instant claims.
Claims 1, 4, 5, and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3,599,633 in view of Tamboli (US2019/0390139).
With respect to independent, instant claim 1, ‘633 teaches aqueous compositions used to remove photoresist, etch and ash residue and contaminants from semiconductor substrates without attacking to any undesired extent-metal, low-k dielectric, and/or high-k dielectric materials that might also be exposed to the composition. See para. 8. In a cleaning method involving articles such as substrates useful for microelectronic devices, typical contaminants to be removed may include, for example, organic compounds such as exposed and ashed photoresist material, ashed photoresist residue, UV- or X-ray-hardened photoresist, C-F-containing polymers, low and high molecular weight polymers, and other organic etch residues; inorganic compounds such as metal oxides, ceramic particles from chemical mechanical planarization (CMP) slurries and other inorganic etch residues; metal containing compounds such as organometallic residues and metal organic compounds; ionic and neutral, light and heavy inorganic (metal) species, moisture, and insoluble materials, including particles generated by processing such as planarization and etching processes. In one particular embodiment, residues removed are processing residues such as those created by reactive ion etching. See para. 25.
The cleaning composition comprises water; oxalic acid, and two or more types of corrosion inhibitors selected from the following three types of corrosion inhibitors: (a) amino acids; (b) non-phenolic-type organic acids, non-phenolic-type organic acid salts or other derivatives of non-phenolictype organic acids, and (c) phenol and derivatives of phenol. In another aspect of the invention, the cleaning composition comprises one or more of said type (a) corrosion inhibitors and one or more of said type (b) corrosion inhibitors. See paras. 8 and 9. Suitable amino acids include glycine, lysine, alanine, etc. The cleaning composition comprises from about 20% to about 99.5% water; from about 0.1 to about 10% of oxalic acid, and from about 0.1 % to about 15% of one or more corrosion inhibitors. See para. 10. The cleaning composition, alone or with other aspects of the invention, has a pH from 0.1 to 7, or from 0.5 to 3. The compositions of this invention may comprise additional organic acids (different from the types of corrosion inhibitors listed above), including, glycolic acid, lactic acid, hydroxybutyric acid, glyceric acid, malic acid, tartaric acid, formic acid, citric acid, etc., in amounts from 0.1 to 10% by weight. See para. 42. The composition may be free of fluorine-containing compounds, etc. See para. 56.
‘633 does not teach the use of an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer or a composition having a pH from about 0.1 to about 7, said composition containing a first organic acid, a second organic acid different from the first organic acid, an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer, water, and the other requisite components of the composition in the specific amounts as recited by independent instant claim 1 and the respective dependent instant claims.
Tamboli is 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 an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer in the composition taught by ‘633, with a reasonable expectation of success, because Tamboli teaches that the use of a polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer leads to great improvement in cleaning performance and prevents re-deposition of removed particles and other residues and allows that residues may be lifted off easier and further, such properties would be desirable in the composition taught by ‘633.
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 a pH from about 0.1 to about 7, said composition containing a first organic acid, s second organic acid different from the first organic acid, an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer, water, and the other requisite components of the composition in the specific amounts as recited by independent instant claim 1 and the respective dependent instant claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of ‘633 in view of Tamboli suggest a composition having a pH from about 0.1 to about 7, said composition containing a first organic acid, s second organic acid different from the first organic acid, an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer, water, and the other requisite components of the composition in the specific amounts as recited by independent instant claim 1 and the respective dependent instant claims.
Claims 6-8 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Tamboli (US2019/0390139) in view of EP 3,599,633; or EP 3,599,633 in view of Tamboli (US2019/0390139) as applied to the rejected claims above, and both further in view of Lee (US2009/0133716), Lee (US2009/0130849), or Andreas (US2003/0089891).
Tamboli and ‘633 are relied upon as set forth above. However, neither reference teaches the use of an acid which is a dienoic acid in addition to the other requisite components of the composition as recited by the instant claims.
‘716 teaches a method for the removal of residues and contaminants from metal or dielectric surfaces and to a method for chemical mechanical polishing of a copper or aluminum surface. The methods of the invention include using an aqueous amidoxime complex agent. Optionally, the pH of the solution can be adjusted with an acid or base. The method includes applying the above composition to the copper or aluminum surface and polishing the surface in the presence of the composition. See Abstract. Acids may be used in amounts from 0.001% to 15% by weight and include 9c,12c-octadecadienoic acid (linoleic acid), citric acid, alanine, cysteine, glutamic acid, etc. See paras. 540-575.
‘849 teaches semiconductor processing compositions comprising water and at least one compound containing at least one amidoxime functional group. It a preferred embodiment the at least one amidoxime functional groups are derived from a nitrile compound. See para. 79. In use in CMP applications, the cleaning agent may further include one or more oxidizers and one or more surface-active agents, such as a surfactant in the classes disclosed herein include anionic surfactants, zwitterionic surfactants, multi-ionic surfactants, or combinations thereof. Examples of such surfactants are: sodium salts of polyacrylic acid, potassium oleate, sulfosuccinates, sulfosuccinate derivatives, sulfonated amines, sulfonated amides, sulfates of alcohols, alkylaryl sulfonates, carboxylated alcohols, alkylamino propionic acids, alkyliminodipropionic acids, and combinations thereof and wherein the surfactant comprises between about 0.001 to about 10 percent by weight of the composition. See para. 81. Acids may be used in amounts from 0.001% to 15% by weight and include 9c,12c-octadecadienoic acid (linoleic acid), 9t,12t-octadecadienoic acid (linolaidic acid), citric acid, alanine, cysteine, glutamic acid, etc. See paras. 500-509.
Andreas teaches an antimicrobial cleaning composition and methods for cleaning semiconductor substrates, particularly after chemical mechanical planarization or polishing, are provided. In one embodiment, the cleaning composition combines a solvent, a cleaning agent such as a hydroxycarboxylic acid or salt thereof, and at least one antimicrobial agent resulting in a cleaning composition in which microbial growth is inhibited. Examples of suitable antimicrobial agents include a benzoic acid or salt such as potassium or ammonium benzoate, and sorbic acid or salt such as potassium sorbate. See Abstract. An antimicrobial agent is included in the cleaning composition to inhibit growth of Bacillus sp. and other bacteria, mold and other microbes, within the cleaning composition and on the surface of the cleaned substrate and planarized features. Suitable antimicrobial agents include sorbic acid (i.e., 2,4-hexadienoic acid), etc., which may be used in amounts from 0.005 to about 0.3% by weight. See paras. 25-36.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use an acid such as sorbic acid (i.e., 2,4-hexadienoic acid) or 9c,12c-octadecadienoic acid (linoleic acid)in the composition taught by Tamboli or ‘633, with a reasonable expectation of success, because ‘716 or ‘849 teach the equivalence of 9c,12c-octadecadienoic acid (linoleic acid) to citric acid in a similar composition and further, Tamboli or ‘633 teaches the use of citric acid and organic acids in general; and Andreas teaches that the use of sorbic acid (i.e., 2,4-hexadienoic acid) in a similar composition inhibit a growth of Bacillus sp. and other bacteria, mold and other microbes, within the cleaning composition and on the surface of the cleaned substrate and further, Tamboli teaches the use of biological preservatives in general and such properties would be desirable in the composition taught by Tamboli or ‘633.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using Tamboli (US2019/0390139), Applicant states that Tamboli does not mention any of the amino acids recited in amended claim 1, and Tamboli merely lists vast, generic categories of organic acids, surfactants, and polymers, describing them at a high level of generality. Further, Applicant states that Tamboli provides no direction, motivation, or functional incentive to select the specific combinations of components in the specific narrow weight percentage ranges defined in amended claim 1, and to arrive at the composition of amended Claim 1 from the broad disclosure of Tamboli would require impermissible hindsight reconstruction-picking and choosing isolated components from different lists and assembling them into a specific narrow concentration profile without any prior art guidance.
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 Tamboli suggests 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, Tamboli teaches that suitable acids include oxalic acid, citric acid, acetic acid, glycine, alpha-alanine, cystine, etc., which may be used in amounts from 1% to 30% by weight and would clearly suggest compositions containing, for example, citric acid and would fall within the scope of the instant claims (See para. 48 of Tamboli). Additionally, Tamboli clearly teaches the use of a polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer (See paras. 51-58 of Tamboli) in amounts from 0.01 to 10% by weight which would clearly fall within the scope of the instant claims. Also, the Examiner asserts that ‘633 is analogous prior art relative to the claimed invention and Tamboli and that one of ordinary skill in the art clearly would have looked to the teachings of ‘633 to cure the deficiencies of Tamboli. ‘633 is a secondary reference relied upon for its teaching of an amino acid such as lysine. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use an amino acid such as lysine in the composition taught by Tamboli, with a reasonable expectation of success, because ‘633 teaches the equivalence of lysine to glycine as an amino acid component in a similar composition and further, Tamboli teaches the use of glycine. Thus, the Examiner asserts that the teachings of Tamboli are sufficient to render the claimed invention obvious under 35 USC 103.
With respect to the rejection of the instant claims under 35 USC 103 using EP 3,599,633 in view of Tamboli (US2019/0390139), Applicant states that ‘633 is directed to a fundamentally different technical problem and is non- analogous art since '633 teaches aqueous compositions used to remove highly cross-linked organic films, such as photoresist, etch, and ash residues while the claimed invention is directed to post-CMP cleaning. Additionally, Applicant states that absent the benefit of hindsight, there is no reason to assume that a skilled practitioner would have selected a particular component, an anionic polymer, from a post-CMP cleaning composition such as Tamboli and included it into a formulation for post-etch residue cleaning as taught by ‘633.
In response, note that, the Examiner asserts that the instant claims are drawn to a “cleaning composition” and that the compositions as taught by ‘633 would clearly fall within the broad scope of “cleaning composition” as recited by the instant claims. Additionally, the Examiner asserts that ‘633 is analogous prior art relative to the claimed invention since it is drawn to the same field of endeavor, namely semiconductor cleaning/treatment compositions. Additionally, the Examiner asserts that Tamboli is analogous prior art relative to the claimed invention and ‘633 and that one of ordinary skill in the art clearly would have looked to the teachings of Tamboli to cure the deficiencies of ‘633. Tamboli is a secondary reference relied upon for its teaching of an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer. The Examiner asserts that one of ordinary skill in the clearly would have been motivated to use an anionic polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer in the composition taught by ‘633, with a reasonable expectation of success, because Tamboli teaches that the use of a polymer such as 2-acrylamido-2-methyl-1-propanesulfonic acid-acrylic acid copolymer leads to great improvement in cleaning performance and prevents re-deposition of removed particles and other residues and allows that residues may be lifted off easier and further, such properties would be desirable in the composition taught by ‘633.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Thus, the Examiner asserts that the teachings of ‘633 in view of Tamboli 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 provides unexpected and superior cleaning efficacy 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 first acids in a given amount, a broad group of second organic acids in a given amount, and a broad group of anionic polymers in a given amount, 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). Given the very broad range of components and compositions which can fall within the scope of claim 1, the limited showing provided by Applicant is not commensurate in scope with those 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, as stated previously, the Examiner asserts that it is unclear from Example 1 and Table 1 as to how much of each component is present in the Control/Comparative composition and Cleaners A-D; therefore, it is unclear if the superior cleaning of Cleaners A-D rises to the level of unexpected or is merely what one of ordinary skill in the art would reasonably expect based on the amounts of components present in the composition. While Example 1 and Table 1 provides a general breakdown of the components, there are no amounts listed for each component and therefore, no objective determination can be made with respect to the unexpected and superior properties of the claimed invention. Also, the Examiner would like to point out that it is unclear as to the pH of the compositions listed in Table 1. Thus, the Examiner 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
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 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.
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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.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/September 22, 2026
