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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 18, lines 2-4, the terms “the organic tertiary amine or quaternary amine” and “the basic compound” lack proper antecedent basis.
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 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shegenoi et al (US 2023/0416605 A1).
As to claims 9 and 12, Shegenoi discloses an etching composition [0007] consisting of:
an oxidizing agent (hydroxy acid [0078], such as an acetic acid, [0105]);
tributylamine [0138];
tetramethylammonium hydroxide ([0114], [0124]); and
a solvent (such as water, [0142]-[0143]),
wherein the etchant composition has a pH value of 7 or higher and 14 or less [0152], which encompasses the cited range. Shegenoi discloses example pH values of 12.0, 13.2, 7.3, 10.8, 11.4, but in large part the examples are at pH 12 (Table 1, pages 15-16) and a preferred range is pH 11-13 [0491]. However, the claims are directed to a composition, and not a method of using the composition for a specific material. Thus, the composition of Shegenoi may be used for etching a different method such as obtaining a different selectivity or level of defects than desired by Shegenoi [0487], [0488], [0490] or for etching a different material than etched by Shegenoi. Thus the pH may optimally be lower than the preferred range of Shegenoi, but still within the range taught by Shegenoi. Further, Shegenoi specifically discloses that a lower end point is pH 7.0, which is the same as the claimed endpoint of the pH range. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the cited pH in the composition of Shegenoi because Shegenoi teaches that compositions within the cited range are useful compositions, and the composition may be optimized to obtain best results according to the material etched and desired etch results.
Any additional components to the composition are optional [0154], and thus the composition of Shegenoi consists of the cited elements as described above.
Claims 13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shegenoi et al (US 2023/0416605 A1) in view of Takahashi et al (US 2023/0287304 A1).
The discussion of Shegenoi from above is repeated here.
As to claims 13 and 16, Shegenoi renders obvious the claim elements of the oxidizing agent, compounds, solvent and pH, as explained above with respect to claims 9 and 12. However, Shegenoi fails to disclose to include a chelating agent in the etchant composition.
Takahashi teaches etching compositions can include a chelating agent (such as EDTA, which because it is the same composition as in the instant invention, is expected to have the same chelating properties, [0195]). More specifically, Takahashi teaches that the etching composition consists of an oxidizing agent [0027] (such as hydrogen peroxide [0028], [0231]-[0232]), tributylamine [0169], resin [0015], ammonium hydroxide [0024], solvent [0015], [0064], and pH higher than 6 [0336]. Takahashi teaches that EDTA, as an acidic compound, can be used to adjust the pH of the etching composition [0182].
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include EDTA in the composition of Shegenoi as a chelating agent because Takahashi teaches that it is useful to adjust the pH.
As to claims 17 and 19, the modified composition of Shegenoi includes EDTA, see rejection of claim 16.
As to claims 18 and 20, Shegenoi discloses a content of the oxidizing agent is 0.0001-1 mol/L and a molecular weight that ranges from 30 to 3,000 [0111], [0113], which is expected to encompass the cited range; a content of the tributylamine of 1 ppt to 1,000 ppm by mass [0141], equivalent to up to 0.1 mass %, which is lower than the cited range, and a content of the basic compound of 0.1% by mass or more and 20% by mass or less [0127], which overlaps with the cited range.
Takahashi teaches a content of the chelating agent is 0.001% to 90% [0223], which encompasses the cited range. A prima facie case of obviousness exists even where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. MPEP 2144.05 I. Accordingly, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to optimize the composition for best results of etching to obtain the composition as claimed in order to provide for effective etch properties, as desired by both Shegenoi and Takahashi.
Allowable Subject Matter
Claims 10 and 14 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: the prior art fails to disclose or suggest an etchant composition with an oxidizing agent of hydrogen peroxide, as in the context of claims 10 and 14.
The closest prior art, Shegenoi et al (US 2023/0416605 A1) in view of Takahashi et al (US 2023/0287304 A1), disclose the composition of the base claims. However, Shegenoi discloses an oxidizing agent of a hydroxy acid such as aliphatic hydroxy acid and salts thereof include citric acid, lactic acid, tartaric acid, glyceric acid, glycolic acid, tartronic acid, leucic acid, malic acid, gluconic acid, isocitric acid, mevalonic acid, pantoic acid, hydroxypentanoic acid, hydroxyhexanoic acid, hydroxyethyliminodiacetic acid, hydroxyiminodisuccinic acid, quinic acid, and salts thereof [0105], examples of the aromatic hydroxy acid and salts thereof including salicylic acid, 4-hydroxyphthalic acid, 4-hydroxyisophthalic acid, cresotic acid, vanillic acid, syringic acid, resorcylic acid, protocatechuic acid, gentisic acid, orsellinic acid, gallic acid, mandelic acid, atrolactic acid, melilotic acid, phloretic acid, coumaric acid, umbellic acid, caffeic acid, and salts thereof [0106], or hydroxy acids of amino acids having a hydroxyl group including serine, threonine, tyrosine, hydroxyproline, hydroxylysine, homoserine, allothreonine, N-acyl-N-(2-hydroxyethyl)-β-alanine, and salts thereof [0108]. The prior art does not teach the equivalence of hydrogen peroxide as an oxidizing agent for the hydroxy acids of Shegenoi. Accordingly, there is no motivation to include hydrogen peroxide as the oxidizing agent in the etchant composition of Shegenoi, as in the context of claims 10 and 14.
Response to Amendment
The rejections of claims 1-2, 4-7 under 35 U.S.C. 102 and of claim 8 under 35 USC 103 as being anticipated and obvious over Kamimura are withdrawn. These claims were cancelled, thus rendering the rejections moot. Kamimura does not disclose or suggest the more narrowly claimed composition that is “consisting of” the claimed elements, as in the context of claims 9-10, 12-14 and 16-20.
The rejection of claims 9-18 under 35 U.S.C. 102(a)(2) as being anticipated by Takahashi et al (US 2023/0287304 A1) is withdrawn because Takahashi discloses to include a basic compound other than those cited in newly amended claims 9 and 13.
Claim 18 is rejected under 35 U.S.C. 112(b). Claims 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shegenoi et al (US 2023/0416605 A1). Claims 13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shegenoi et al (US 2023/0416605 A1) in view of Takahashi et al (US 2023/0287304 A1). Claims 10 and 14 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.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
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/ANITA K ALANKO/ Primary Examiner, Art Unit 1713
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