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 .
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 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.
Election/Restrictions
Applicant’s election without traverse of claims 1-11 and 15-19 in the reply filed on January 16, 2026 is acknowledged. Claims 12-14 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 1-11 and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (US20100152086).
Regarding claim 1, Wu discloses an etchant (a formulation for removing residue reads on an etchant, abstract) comprising: an organic acid (acetic acid, paragraph 0080); a nitrogen-containing heterocyclic compound and an organic solvent (1,2,4-triazole reads on a nitrogen-containing heterocyclic compound, glycerol reads on an organic solvent, paragraph 0080); and water (paragraph 0080). It is noted that claim 1 is drawn to a composition claim and the recitation of "recess etchant" in the preamble is considered as intended use of the claimed composition/function of the claimed composition. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claim 2, Wu discloses both the nitrogen-containing heterocyclic compound and the organic solvent (1,2,4-triazole reads on the nitrogen-containing heterocyclic compound, glycerol reads on the organic solvent, paragraph 0080).
Regarding claims 3 and 15, Wu discloses wherein the organic acid is an aliphatic carboxylic acid with 1-12 carbon atoms (acetic acid, paragraph 0080).
Regarding claim 4, Wu discloses wherein the aromatic carboxylic acid is benzoic acid (paragraph 0084).
Regarding claim 5, Wu discloses wherein the aliphatic carboxylic acid is acetic acid (paragraph 0080).
Regarding claims 6 and 16, Wu discloses wherein the nitrogen-containing heterocyclic compound is a triazole (1,2,4-triazole, paragraph 0080).
Regarding claim 7, Wu discloses wherein the nitrogen-containing heterocyclic compound is 1,2,4-triazole (paragraph 0080).
Regarding claims 8 and 17, Wu discloses wherein the organic solvent is an organic solvents having an HLB (Hydrophile-Lipophile Balance) value of 3-15 (glycerol, paragraph 0080).
Regarding claim 9, Wu discloses wherein the organic solvent is glycerol (paragraph 0080).
Regarding claims 10 and 18, Wu discloses comprising: 1.05 mass % of the organic acid, 0.5 mass % of the nitrogen-containing heterocyclic compound, and 40 mass % of the organic solvent (paragraph 0080).
Regarding claims 11 and 19, Wu discloses wherein the pH value is 4.84 (Example 30, Table 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (571)270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIONG-PING LU/
Primary Examiner, Art Unit 1713