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 1-3, 5-12, 15, 18-29, 31, and 32 are pending. Claims 4, 13, 14, 16, 17, and 30 have been canceled. Note that, Applicant’s amendment and arguments filed March 25, 2026, has been entered.
Claims 18-28, 31, and 32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 October 6, 2025.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 1/8/26 have been withdrawn:
The rejection of claims 1-3, 8, 9, 11, 12, 15, and 29 under 35 U.S.C. 102(a)(1) as being anticipated by Shimada (US2017/0183607), has been withdrawn.
The rejection of claims 1-3, 7, 9, 11, 12, 15, and 29 under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al (US2016/0130500), has been withdrawn.
The rejection of claims 4 and 30 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chen et al (US2016/0130500), has been withdrawn.
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 1-3, 5-12, 15, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US2016/0130500).
With respect to independent, instant claim 1, Chen et al teach compositions useful for the selective removal of titanium nitride and/or photoresist etch residue materials relative to metal conducting, e.g., cobalt, ruthenium and copper, and insulating materials from a microelectronic device having same thereon. See Abstract. The composition comprises from about 10% to about 40% by weight of at least one oxidizing agent, about 0.01 wt% to about 15 wt % of at least one etchant, about 0.01 to about 1 wt % of at least one chelating agent, at least one surfactant, and about 34 wt% to about 99.9 wt% of at least one solvent. These compositions have pH value in a range from about 5 to about 12, preferably about 6 to about 10. See paras. 24 and 25. In all such compositions, wherein specific components of the composition are discussed in reference to weight percentage ranges including a zero lower limit, it will be understood that such components may be present or absent in various specific embodiments of the composition, and that in instances where such components are present, they may be present at concentrations as low as 0.001 weight percent, based on the total weight of the composition in which such components are employed. See para. 23. Suitable etchants include tetramethylammonium hydroxide (TMAH), tetraethylammonium hydroxide (TEAH), tetrapropylammonium hydroxide (TPAH), tetrabutylammonium hydroxide (TBAH), potassium hydroxide, etc., and mixtures thereof. See para. 26. Suitable oxidizing agents include hydrogen peroxide, etc. See para. 27. Suitable chelating agents include oxalic acid, diethylenetriamine pentaacetic acid (DTPA), amino tri(methylene phosphonic acid), etc., and mixtures thereof. See para. 29. Suitable solvents include water, etc. See para. 31.
Specifically, Chen et al teach a composition containing about 1 to about 10 wt% of tetramethylammonium hydroxide, about 0.05 to about 0.1 wt% of a chelating agent which is diethylenetriamine pentaacetic acid (DTPA), diluted with 50% to about 95 wt% of hydrogen peroxide (30% strength solution) which would equal 15% to 28.5 wt% hydrogen peroxide, and 35% to 66.5 wt% water.
Chen et al do not teach, with sufficient specificity, a composition containing hydrogen peroxide, a hydrogen peroxide stabilizing agent, a quaternary ammonium hydroxide, potassium hydroxide, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
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 containing hydrogen peroxide, a hydrogen peroxide stabilizing agent, a quaternary ammonium hydroxide, potassium hydroxide, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Chen et al suggest a composition containing hydrogen peroxide, a hydrogen peroxide stabilizing agent, a quaternary ammonium hydroxide, potassium hydroxide, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using Chen et al, Applicant states that while Chen et al list alkaline compounds and mentions "combinations thereof' as a possibility, there is no mention of any particular combination being superior to an etchant alone or to other combinations of etchants. In particular, Applicant states that there is no teaching or suggestion of the combination of potassium hydroxide and the specific tetraalkyl(benzyl)ammonium hydroxide in present claim 1.
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 Chen et al suggest 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, Chen et al clearly teach that suitable etchants include tetramethylammonium hydroxide (TMAH), tetraethylammonium hydroxide (TEAH), tetrapropylammonium hydroxide (TPAH), tetrabutylammonium hydroxide (TBAH), potassium hydroxide, etc., and mixtures thereof (See para. 26 of Chen et al), which would clearly suggest a mixture of tetramethylammonium hydroxide and potassium hydroxide and would fall within the scope of the instant claims. Thus, the Examiner asserts that the teachings of Chen et al 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 Examples 1, 6, and 7 provide data showing that the claimed invention provides unexpected and superior suppression of metal corrosion properties (i.e., corrosion inhibiting) as indicated by a reduction in cobalt film thickness, 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 hydrogen peroxide in any amount, a broad group of hydrogen peroxide stabilizing agents in any amount, a quaternary ammonium hydroxide compound in any amount, and potassium hydroxide in any 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 Examples 3, 13, and 18, which fall within the scope of the instant claims, provide a cobalt metal corrosion of 2.8, 3.2, and 15.3, respectively, which appears to indicate that compositions falling within the scope of the instant claims provide suppression of metal corrosion properties (i.e., corrosion inhibiting) as indicated by a reduction in cobalt film thickness which is not favorable and inferior to compositions falling outside the scope of the instant claims. Thus, 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.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/May 21, 2026
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