The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to the amendment filed on February 6, 2026.
Claims 1 and 5-18 are pending. Claims 2-4 are cancelled. Claims 15-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to non-elected inventions. Claims 1, 5-14 and withdrawn claims 15-18 are currently amended.
Applicant's election with traverse of Group I, presently claims 1 and 5-14, in the reply filed on February 6, 2026 is acknowledged. The traversal is on the ground(s) that the subject matter of groups II and III are so closely related to the subject matter of Group I that they could be searched in a single search of reasonable burdens on the Office. This is not found persuasive because Groups I-III lack unity of invention according to PCT Rule 13.2 as stated in the previous office action and there would be a serious search and examination burden if restriction were not required because the inventions require a different field of search and the prior art applicable to one invention would not likely be applicable to another invention.
The requirement is still deemed proper and is therefore made FINAL.
The objection to the abstract of the disclosure is withdrawn in view of Applicant’s amendment.
The objection to claims 1, 4 and 7-14 for minor informalities is withdrawn in view of Applicant’s amendment.
The rejection of claim 13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn in view of Applicant’s amendment.
The rejection of claims 1, 5-6, 9, 13 and 14 under 35 U.S.C. 102(a)(1) as being anticipated by Zenfuku (US 2009/0042762) is withdrawn in view of Applicant’s amendment.
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.
Claims 1, 5-6, 9-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Zenfuku (US 2009/0042762).
Regarding claims 1, 5-6 and 9, Zenfuku teaches a cleaner composition that can satisfactorily remove lead-free soldering flux adhered to the object to be cleaned, such as electronic components, which comprises (A) a polyoxyalkylene phosphate-based surfactant, (B) a metal chelating agent, (C) a halogen-free organic solvent (see abstract; paragraph [0005]). Zenfuku teaches that the (A) polyoxyalkylene phosphate-based surfactant is a polyoxyethylene phosphate-based surfactant represented by General Formula (1) or a salt thereof:
PNG
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156
402
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Greyscale
where R1 is a C5-20 straight-chain or branched alkyl or phenyl group, or a phenyl group substituted with a C7-12 straight-chain or branched alkyl group, n is an integer of 0 to 20, and X is a hydroxyl group (see paragraphs [0018]-[0019]). In Example 1, Zenfuku teaches a cleaner composition which comprises 1 wt% component A, i.e., monoester phosphate of polyoxyethylene alkyl ether in General Formula (1), wherein R1 is a C1-2 straight-chain alkyl group, n is 16 and X is a hydroxyl group (a polyoxyalkylene phosphate-based surfactant), 80.5 wt% component C, i.e., diethylene glycol monobutyl ether (a C8 glycol ether, which reads on the main solvent in claims 1, 5-6 and 9), among others, and 7 wt% water (which reads on the secondary solvent of claims 1 and 9) (see Table 1 and paragraphs [0127]-[0132]). Zenfuku, however, fails to specifically disclose the specific phosphate-based surfactant or phosphoric acid ester like phosphoric acid n-octyl ester, say in Example 1, as recited in amended claim 1.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the monoester phosphate of polyoxyethylene alkyl ether in Example 1 with phosphoric acid n-octyl ester, wherein R1 is a C8 straight-chain alkyl group, n is 0 and X is a hydroxyl, because the substitution of art recognized equivalents as shown by Zenfuku in General Formula (1) in paragraphs [0018]-[0019]) is within the level of ordinary skill in the art. In addition, the substitution of one phosphate-based surfactant for another is likely to be obvious when it does no more than yield predictable results.
Regarding claims 10 and 12, Zenfuku teaches the features as discussed above. In addition, Zenfuku teaches that the contents of the components of the (A) polyoxyalkylene phosphate-based surfactant, (B) metal chelating agent, and (C) halogen-free organic solvent are (A) 0.1 to 60 weight %, (B) 0.01 to 10 weight %, and (C) 39 to 99 weight % respectively when the total weight of the three components is defined as 100 weight % (see paragraph [0079] and claim 8). Zenfuku also teaches that any known halogen-free organic solvent (C) may be used, and aside from the diethylene glycol monobutyl ether used in Example 1 above, other solvents include hydrocarbon solvents like propanol and ketone-based solvents like acetone, and combinations thereof (see paragraphs [0067] and [0078]). Zenfuku, however, fails to disclose from 65% to 90% by weight of the C6-C15 glycol ether; from 9% to 30% by weight of secondary solvent; and from 1% to 15% by weight of the phosphoric acid ester as recited in claim 10, or from 90% to 99.5% by weight of the C6-C15 glycol ether, and from 0.5% to 10% by weight of the phosphoric acid ester as recited in claim 12.
Considering that Zenfuku teaches from 39 to 99 wt% of a halogen free solvent like diethylene glycol monobutyl ether, or other solvents like propanol or acetone, or mixtures thereof; and 0.1 to 60 weight % polyoxyalkylene phosphate-based surfactant or phosphoric acid ester, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference (e.g., 80 wt% diethylene glycol monobutyl ether, 15 wt% propanol and 5 wt% phosphoric acid ester; or 95 wt% diethylene glycol monobutyl ether, and 5 wt% phosphoric acid ester) because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Regarding claim 13, even though Zenfuku is silent as to the acid value of the above composition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the cleaner composition of Zenfuku to exhibit an acid value within those recited because similar ingredients and overlapping proportions have been utilized, hence would behave similarly.
Regarding claim 14, Zenfuku further teaches that the electronic components are cleaned by directly dipping them in the cleaner composition as discussed above, or as an aqueous solution thereof, i.e., diluted with water (see paragraphs [0112], [0051], [0134] and Table 4), wherein the resulting product reads on the defluxing product of claim 14.
Claims 7 and 11 stand rejected under 35 U.S.C. 103 as being unpatentable over Zenfuku as applied to claims 1, 5-6, 9-10 and 12-14 above, and further in view of Doyel et al. (US 2012/0152286), hereinafter “Doyel ‘286.”
Regarding claims 7 and 11, Zenfuku teaches the features as discussed above. Zenfuku, however, fails to disclose a secondary solvent like dibasic ester in an amount from 1wt% to 70wt% as recited in claim 7, or from 1 wt% to 25 wt% as recited in claim 11.
It is known from Doyel ‘286, an analogous art which teaches a composition for removing solder fluxes from electronic parts or electronic assemblies (see paragraphs [0005] and [0036]), to incorporate at least one secondary solvent that imparts different solubility parameters for different flux types in a total amount of up to 90%, preferably up to 70% by weight of the composition (see paragraph [0009] and Table on page 2), and one example is dibasic ester (see paragraph [0019]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a dibasic ester in an amount of up to 70 wt% as a secondary solvent into the cleaner composition of Zenfuku, say in the modified composition of Example 1, because such incorporation would impart different solubility parameters for different flux types as taught by Doyel ‘286.
Regarding the amount of the secondary solvent like dibasic ester, considering that Doyel ‘286 teaches a secondary solvent like dibasic ester in an amount of up to 90% or up to 70% by weight of the composition, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference (e.g., from 1wt% to 70wt% or from 1 wt% to 25 wt%) because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549; In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In addition, a prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
Claim 8 stands rejected under 35 U.S.C. 103 as being unpatentable over Zenfuku as applied to claims 1, 5-6, 9, 13 and 14 above, and further in view of Doyel et al. (US Patent No. 6,130,195), hereinafter “Doyel ‘195.”
Regarding claim 8, Zenfuku teaches the features as discussed above. Zenfuku, however, fails to disclose a secondary solvent like 1,3-dioxolane.
It is known from Doyel ‘195, an analogous art which teaches a composition for removing residues and contaminants like flux from electronic devices (see abstract), to incorporate other materials like cyclic ethers, for example, 1,3 dioxolane (see col. 8, lines 5-8 and 63-65) to improve or control solubility, volatility, and material compatibility (see col. 10, lines 30-35).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated 1,3-dioxolane into the cleaner composition of Zenfuku because such incorporation would improve or control solubility, volatility, and material compatibility as taught by Doyel ‘195.
Response to Arguments
Applicant's arguments filed February 6, 2026 have been fully considered but they are not persuasive.
With respect to the obviousness rejection over Zenfuku as applied to the present claims, Applicant argues that Zenfuku does not disclose or suggest the addition of fee acid additives of the type recited in amended claim 1, nor does it treat acids as interchangeable with metal chelating agents.
The Examiner respectfully disagrees with the above argument because, as discussed in paragraph 10 above, Zenfuku teaches polyoxyalkylene phosphate-based surfactant having the General Formula (1), which reads on the phosphoric acid ester, i.e., acid additive, for example, phosphoric acid n-octyl ester, wherein R1 is a C8 straight-chain alkyl group, n is 0 and X is a hydroxyl. Please note that the present claim 1 recites the “comprising” language, hence, the claim is open to other ingredients such as the chelating agent in Zenfuku.
With respect to the rejection of claims 7 and 11 under 35 U.S.C. 103 as being unpatentable over Zenfuku as applied to claims 1, 5-6, 9-10 and 12-14 above, and further in view of Doyel ‘286, Applicant argues that there is no motivation for one skilled in the art to combine Doyel ‘286’s alkaline teachings with Zenfuku’s chelation-focused system to arrive at the claimed acidic, chelator-free composition.
The Examiner respectfully disagrees with the above argument because, as stated in the previous office action and repeated in paragraph 11 above, Doyel ‘286 is an analogous art which teaches a composition for removing solder fluxes from electronic parts or electronic assemblies (see paragraphs [0005] and [0036]) to incorporate at least one secondary solvent that imparts different solubility parameters for different flux types (see paragraph [0009] and Table on page 2), and one example is dibasic ester (see paragraph [0019]). Hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a dibasic ester as a secondary solvent into the cleaner composition of Zenfuku, say in the modified composition of Example 1, because such incorporation would impart different solubility parameters for different flux types as taught by Doyel ‘286. Please also note that the present claim 1 to which claims 7 and 11 are dependent upon, does not require that the composition is acidic, nor does it require that it is chelator-free.
With respect to the rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Zenfuku as applied to claims 1, 5-6, 9, 13 and 14 above, and further in view of Doyel ‘195, Applicant argues that Doyel ‘195 teaches cleaning compositions comprising cyclic ethers and alkoxy methyl butanols, with optional alkaline materials to raise pH above 6 (see Col. 1, lines 55-67, Col. 2, lines 1-20, and claims 1 and 11 of Doyel ‘195), and like Doyel ‘286, Doyel ‘195 focuses on neutral to alkaline conditions, providing no suggestion for the claimed acidic additives or motivation to eliminate Zenfuku’s essential chelating agent.
The Examiner respectfully disagrees with the above argument because of the same reasons as set forth in the previous office action and repeated in paragraph 12 above. Please also note that the present claim 1 to which claim 8 is dependent upon does not require that the composition is acidic, nor does it require that it is chelator-free.
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 LORNA M DOUYON whose telephone number is (571)272-1313. The examiner can normally be reached Mondays-Fridays; 8:00 AM-4:30 PM.
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/LORNA M DOUYON/Primary Examiner, Art Unit 1761
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