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 .
Response to Arguments
Applicant's arguments filed 8/7/2026 have been fully considered but they are not persuasive. Applicants argue that Kamimura’s composition is not capable of performing the intended use of the composition as claimed, specifically, may not explicitly disclose that the composition has a cobalt removal rate of at least 20 nm per minute. Applicants additionally pointed out that Kamimura’s examples (page 6 of the arguments section) include 5-methylbenzotriazole (5-MBTA), none of these formulations contain polyvinylpyrrolidone (PPV); and estimated removal /etching rate is 7.2 nm per minute (Table 4, comparative example 4 is 72 Angstroms, which equates to 7.2 nm).
In response, examiner states that examples of a prior art reference is a preferred embodiment. All disclosures of non-preferred embodiments must be considered. See In re Nehsenberg 126 PQ 383, In re Boe 148 PQ 507, In re Mill & Palmer 176 PQ 196 (CCPA 1972), In re Simon 174 PQ 114 and In re Lamberti et al. 192 PQ 278 (CCPA 1976). Disclosed examples and preferred embodiments do not constitute teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
A prima facie obvious rejection was made over Kamimura and Kamimura’s composition appears to comprise mixture of 5-methylbenzotriazole (5-MBTA) and polyvinylpyrrolidone (PPV) (see the rejection) and expected to have the same effect, namely the claimed cobalt removal rate, unless applicants show on the contrary. Additionally, applicants’ claims do not limit to any specific characteristic of the claimed component that would give the specific removal rate as claimed.
However, modified rejections applies as the recent amendments to the claims as follows:
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 seems to be identical to claim 6 and so, claim 8 does not further limit. Applicants may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over KAMIMURA et al (TW1708840B).
Regarding claims 1,4-5 and 10, KAMIMURA et al disclose a treatment solution (composition) comprises a fluorine-containing compound, such as hydrofluoric acid, ammonium fluoride, which reads on the claimed etchant (abstract, page 4 in the translation); a corrosion inhibitor including 5-methyl-1H-benzotriazole (5- MBTA) (see page 26 in the machine translation), which resemble as the claimed “first corrosion inhibitor” comprising “N-hetero-atom-containing aromatic compound” of claims 1 and 4; in addition, a hydrophilic polymer can be used as the corrosion inhibitor. Examples of hydrophilic polymers include polyethylene glycols and other polyethylene glycols, polyethylene glycol alkyl ethers, polyvinyl alcohol, polyvinylpyrrolidone (see, page 9 in the machine translation), which resemble as the claimed “second corrosion inhibitor” and aforesaid reads on the claimed second corrosion inhibitor includes a “non-aromatic heterocyclic aromatic compound” with regards to claims 1,5 and 10.
KAMIMURA et al also disclose that the corrosion inhibitor may be used alone or in combination of two or more. When two or more corrosion inhibitors are used in combination (see, last paragraph at page 12 in the machine translation).
KAMIMURA et al may not explicitly disclose using the first and the second corrosion inhibitor is combined in the composition but additionally, disclosed that the corrosion inhibitor may be used alone or in combination of two or more.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use any combination of the corrosion inhibitor in the KAMIMURA et al’s teaching including the 5-methyl-1H-benzotriazole and polyvinylpyrrolidone defined in the applicant’s claims 1 and 4-5 (the first and the second corrosion inhibitor) because it has been held that 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 which is to be used for the very same purpose." In re Kerkhoven 205 USPQ 1069 (CCPA 1980).
KAMIMURA et al also disclose that the composition contains an oxidizing agent and examples of the oxidizing agent include hydrogen peroxide, peroxide, iodate, periodic acid, hypochlorite, etc. (page 16 at the machine translation).
In the above disclosure, KAMIMURA et al may not explicitly disclose that the composition has a cobalt removal rate of at least 20 nm per minute.
However, KAMIMURA et al disclose that object of the present invention is to provide a treatment solution that has excellent residue removal ability, excellent corrosion resistance to a metal layer containing cobalt (Co), and can suppress the occurrence of defects (abstract); and additionally, the specified cobalt removal rate would have been an intended use of the composition is not given a patentable weight; and KAMIMURA et al’s composition has all the claimed components and which is capable of performing the intended use of the composition as clamed. Likewise, the intended use of composition is not patentably significant. In re Albertson 141 USPQ 730 (CCPA 1964).
Regarding claims 2 and 3, the first and second corrosion inhibitors inhibit chemical reaction of the first material and the second material, respectively, would have been the intended use of such inhibitors because they are capable of performing such as the first and the second inhibitors of KAMIMURA et al, are similar in nature and expected to have the same effect.
Claim(s) 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over KAMIMURA et al (TW1708840B) as applied to claims 1 and 4 above, and further in view of Hong et al (US 2022/0049160; provided with the IDS of dated 3/7/2024).
KAMIMURA et al disclose above for claims 1 and 4 but fail to disclose the corrosion inhibitor comprises 4-(3-phenylpropyl)pyridine as the corrosion inhibitor with the context of claims 6 and 8.
However, in the same field of endeavor, Hong et al disclose a metal corrosion inhibitors are added to block the oxidative activity of the oxidizing agent(s). Metal corrosion inhibitors contemplated herein include, 4-(3-phenylpropyl)pyridine and 5-methyl-benzotriazole [0031],[0032].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Hong et al's teaching of using both the 4-(3-phenylpropyl)pyridine and 5-methyl-benzotriazole as corrosion inhibitor into the teaching of KAMIMURA et al because they are functional equivalent during corrosion inhibition.
Additionally, it would have been simple substitution of known materials for predictable result.
Regarding claims 7 and 9, KAMIMURA et al disclose that the composition comprises a corrosion inhibitor; and specific examples thereof include polyvinylpyrrolidone [see, page 9]; and aforesaid “polyvinylpyrrolidone” reads on the claimed second corrosion inhibitor.
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 SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/Primary Examiner, Art Unit 1713
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