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 .
Claim Status
Claims 1-32 are under consideration
Claim Objections
Claims 15, 17, 19, 21, 23 and 32 are objected to because of the following informalities:
In claims 15, 17, 19, and 21, each instance of “alkanediol” should be “alkylenediol”.
In claim 23, “a an alkylenediol” should be “
In claim 32, “wherein, wherein,” should be “wherein, .
Appropriate correction is required.
Examiner also notes that claim 28 is dependent on a subsequent claim 30, which may be a typographical error.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-4, 7, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chae (KR20070088828A, published 2007, references made to provided translation).
Regarding claims 1-4, 7, and 11,
Chae teaches a solution consisting of sulfosalicylic acid and acetone [page 3 paragraph 11], reading on the instant sulfosalicylic acid and primary solvent.
Examiner notes that the acetone may be derived from isopropylideneglycol (glycol derivative) as evidenced by chem.libretexts.org and CAS registry number 558-18-9, as seen below, reading on the instant secondary solvent, reading on instant claims 1-4, 7, and 11. The instant claims do not require that the second solvent is different from the first solvent.
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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 8-10 and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Chae (KR20070088828A, published 2007, references made to provided translation) as applied to claim 1 above.
Regarding claims 8-10 and 29-30,
Chae fails to explicitly teach the alternative isomers disclosed by instant claims 8-10.
However, the alternative isomers disclosed by instant claims 8-10 have very close structural similarities, with the only difference being which carbon atom on the aromatic ring the sulfonic acid group is bonded to, and would be expected to function similarly and comparably in the composition, reading on instant claims 8-10 and 29-30.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, subsection II.A.4.(c).
Claims 1-2, 5-7, 8-15, 17-18, 27, and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Zi (US20200328075A1, published 10/15/2020).
Regarding claims 1-2, 5-11, 14-15, 17-18, 27, and 29-32,
Zi teaches a cleaning solution comprising of a first solvent having Hansen solubility parameters of 25>δd>13, 25>δp>3, and 30>δh>4, an acid, and a surfactant [claim 1], where the solvent may be acetone [0099] and the acid may be 5-sulfosalicylic acid [0106].
Examiner notes that the acetone may be derived from isopropylideneglycol (glycol derivative) as evidenced by chem.libretexts.org and CAS registry number 558-18-9, as seen below, reading on the instant secondary solvent as well, reading on instant claims 1-2, 5-7, 11, and 32. The instant claims do not require that the second solvent is different from the first solvent.
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Zi discloses the composition that encompasses the presently claimed composition, including the instantly claimed solvent(s) and acid. Each of the disclosed substituents from the substituent groups of Zi are considered functionally equivalent and their selection would lead to obvious variants of the composition. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, in the absence of unexpected results, to have selected these substituents among those disclosed for the composition to provide the composition described above, which is both disclosed by Zi and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Zi fails to explicitly teach the alternative isomers disclosed by instant claims 8-10.
However, the alternative isomers disclosed by instant claims 8-10 have very close structural similarities, with the only difference being which carbon atom on the aromatic ring the sulfonic acid group is bonded to, and would be expected to function similarly and comparably in the composition, reading on instant claims 8-10 and 29-30.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, subsection II.A.4.(c).
Zi teaches their solvent may also be propanediol, propylene glycol methyl ether, or butyldiglycol [0099], reading on instant claims 14-15, 17-18, and 27.
It would have been obvious to a person of ordinary skill in the art to try using a mixture of solvents in an effort to further optimize the first solvent of Zi, particularly regarding the desired Hansen solubility parameters.
Zi teaches heating their cleaning solution at a temperature between about 25 °C to 75 °C [0115]. Zi teaches applying the cleaning solution for about 1 to 60 seconds [0128], overlapping the instantly claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Zi further teaches a second cleaning solution which may comprise of water [0114], which may be applied as a final application step of a cleaning solution [0128], reading on the instant rinsing step. Zi teaches spinning the wafer [0129], which would be expected to aid in drying the wafer. Further, the wafer which has been treated with the first and second cleaning solutions would be expected to continue drying once the cleaning solutions are no longer being applied, reading on instant claim 31.
Regarding claim 12-13,
Zi fails to explicitly teach methyl ethyl ketone as a solvent.
However, Zi does teach solvents for a photoresist include both acetone and methyl ethyl ketone [0071]. As methyl ethyl ketone is a known solvent in the art, where the Hansen solubility parameters are within the ranges desired by Zi (as evidenced by https://www.accudynetest.com/solubility_table.html), it would have been obvious to a person of ordinary skill in the art that using methyl ethyl ketone in addition to, or in place of, the acetone would result in a comparable and expected composition, reading on instant claims 12-13.
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That is, the substitution of the methyl ethyl ketone for the acetone, absent unexpected results, would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application with the predictable result of forming a cleaning solution. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (See MPEP § 2143, B).
Allowable Subject Matter
Claims 16, 19-26, and 28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 16, 19-26, and 28 each further limit the instant secondary solvent, where a composition consists essentially of: a sulfosalicylic acids having structure (1); a primary solvent which is acetone, methyl ethyl ketone, or a mixture; a secondary solvent, and an optional surfactant.
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A search did not find the composition.
The closest prior arts Chae and Zi each teach similar compositions as noted in the above rejections.
However, both Chae and Zi each fail to teach a secondary solvent that is one of those listed in instant claims 16, 19-26, and 28.
Neither Chae, Zi, nor the prior art in general provide sufficient motivation to make it obvious to modify their compositions to arrive at the instantly claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US20070272275A1, KR20070023004A, US4171222A, and US20140076356A1 each teach similar compositions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.N.L./Examiner, Art Unit 1737 /JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734
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