DETAILED ACTION
Claims 1-12 are pending before the Office for review.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 24, 2025.
Applicant’s election without traverse of Group I claims 1-8 in the reply filed on September 24, 2025 is acknowledged.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over LI et al (U.S. Patent Application Publication 2014/0349483).
With regards to claims 1 and 5, Li discloses a composition for surface treatment, comprising: a nitrogen-free nonionic polymer (Paragraph [0026] discloses polyvinyl alcohols), a nitrogen-containing nonionic polymer (Paragraph [0030] discloses one or more nonionic polymers different from the polyvinyl alcohol) , and an anionic polymer (Paragraphs [0021]-[0024], [0064] discloses ionic polymers including anionic polymer), wherein the nitrogen-free nonionic polymer has a weight-average molecular weight of less than 100,000 (Paragraph [0028] discloses polyvinyl alcohol has an average molecular weight of about 100,000 g/mol or less), and the composition for surface treatment has a pH of less than 7.0 (Paragraph [0031]).
Li does not explicitly disclose, a ratio of a weight-average molecular weight of the nitrogen-containing nonionic polymer to the weight- average molecular weight of the nitrogen-free nonionic polymer (nitrogen-containing nonionic polymer/nitrogen- free nonionic polymer) is 0.1 or more and 10 or less, 8 or less.
However Li discloses wherein the polyvinyl alcohol can have an average molecular weight of about 250 g/mol to 100,000 g/mol (Paragraph [0028]) and wherein the nonionic polymer may have a molecular weight of about 8,000 (Paragraph [0064]) which renders obvious a ratio of a weight-average molecular weight of the nitrogen-containing nonionic polymer to the weight- average molecular weight of the nitrogen-free nonionic polymer (nitrogen-containing nonionic polymer/nitrogen- free nonionic polymer) is 0.1 or more and 10 or less, 8 or less. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05(I)
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Li to include a molecular weight ratio as rendered obvious by the general teachings of Li because one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired composition using the ratio of the weight average molecular weight as rendered obvious by Li. MPEP 2143D
With regards to claims 2 and 4, the modified teachings of Li renders obvious wherein the nitrogen-containing nonionic polymer has an amide bond and wherein the nitrogen-containing nonionic polymer is one or more selected from the group consisting of polyvinylpyrrolidone (Paragraph [0030]).
With regards to claim 3, the modified teachings of Li renders obvious wherein the nitrogen-containing nonionic polymer has a weight-average molecular weight of 80,000 or less (Paragraph [0030], [0064] discloses additional nonionic polymers including polyvinylpyrrolidone wherein the nonionic polymers can have a MW of 8000).
With regards to claim 6, the modified teachings of Li renders obvious wherein the nitrogen free onion polymer is polyvinyl alcohol (Paragraphs [0026]-[0028]).
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over YOSHINO et al (U.S. Patent Application Publication 2019/0093056) in view of TAMBOLI (EP 3588535).
With regards to claims 1 and 5, Yoshino discloses a composition for surface treatment (Paragraph [0027]), comprising: a nitrogen-free nonionic polymer (Paragraph [0061], [0072] discloses polyvinyl alcohols), a nitrogen-containing nonionic polymer (Paragraph [0061] discloses polyvinylpyrrolidone PVP, polyvinyl caprolactam), wherein the nitrogen-free nonionic polymer has a weight-average molecular weight of less than 100,000 (Paragraph [0074]-[0075] discloses polyvinyl alcohol has weight average molecular weight of about 100,000 g/mol or less), and the composition for surface treatment has a pH of less than 7.0 (Paragraph [0057] discloses a pH of 5 or lower).
Yoshino does not explicitly disclose, and an anionic polymer, a ratio of a weight-average molecular weight of the nitrogen-containing nonionic polymer to the weight- average molecular weight of the nitrogen-free nonionic polymer (nitrogen-containing nonionic polymer/nitrogen- free nonionic polymer) is 0.1 or more and 10 or less, 8 or less.
Tamboli discloses a post chemical mechanical cleaning composition comprising water soluble polymeric additives including anionic polymers and nonionic polymers wherein the anionic polymer and nonionic polymer are present in amounts suitable for improving cleaning of the surface by having a strong affinity towards the residues (Paragraphs [0045]-[0051]). Yoshino further discloses wherein the polymer amount can be present in amounts wherein the weight average molecular weight is 1,000 or more (Paragraph [0081]) wherein the content of the nitrogen free nonionic polymer (sulfonic acid group containing PVA) and nitrogen containing nonionic polymer can be optimized enhance the dissolution and removal for foreign materials (Paragraph [0078]-[0079]). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A). Therefore it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to optimize a ratio of a weight-average molecular weight of the nitrogen-containing nonionic polymer to the weight- average molecular weight of the nitrogen-free nonionic polymer (nitrogen-containing nonionic polymer/nitrogen- free nonionic polymer) to amounts including Applicant’s claimed amount of 0.1 or more and 10 or less, 8 or less in order to enhance the dissolution and removal for foreign materials as taught by the modified teachings of Yoshino in view of Tamboli (Yoshino Paragraph [0078]-[0079]).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Yoshino to include a molecular weight ratio as rendered obvious by the general teachings of Yoshino because one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired composition using the ratio of the weight average molecular weight as rendered obvious by Yoshino. MPEP 2143D
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Yoshino to include the anionic polymer as rendered obvious by Tamboli because the reference of Tamboli teaches that the anionic polymer helps prevent physical adsorption and redeposition of removed particles and other residues (Paragraphs [0050]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired composition using the anionic polymer as rendered obvious by Tamboli . MPEP 2143D
With regards to claims 2 and 4, the modified teachings of Yoshino renders obvious wherein the nitrogen-containing nonionic polymer has an amide bond and wherein the nitrogen-containing nonionic polymer is one or more selected from the group consisting of polyvinylpyrrolidone and polyvinyl caprolactam (Yoshino Paragraph [0030]).
With regards to claim 3, the modified teachings of Yoshino renders obvious wherein the nitrogen-containing nonionic polymer has a weight-average molecular weight of 80,000 or less (Yoshino Paragraph [0081 discloses a weight average molecular wight of 1,000 or more). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05(I)
With regards to claim 6, the modified teachings of Yoshino renders obvious wherein the nitrogen free nonionic polymer is polyvinyl alcohol (Yoshino Paragraph [0072]).
With regards to claim 7, the modified teachings of Yoshino renders obvious the composition further comprising a chelating agent having two or more phosphoric acid groups. (Tamboli Paragraph[0074])
With regards to claim 8, the modified teachings of Yoshino renders obvious the composition comprising substantially no abrasive grains (Yoshino Paragraph [0083]).
Conclusion
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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713