DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. This office action is responsive to applicant’s amendment filed on 10/24/2025. Claims 1-5, 8-9, 14-20 are pending. Claims 1-2 have been amended. Claims 6-7, 10-13 have been cancelled. Claims 14-18 are withdrawn. Claims 19-20 are new claims.
Response to Arguments
3. The applicant’s amendment filed on 10/24/2025 was sufficient to overcome the examiner’s previous ground of rejection under 35 U.S.C 112(b). However, upon further consideration a new ground of rejection under 35 U.S.C 112(a) was set forth as discussed below.
Applicant’s arguments with respect to claim(s) 1 as being anticipated by Ge (US 2022/0157613 A1) have been considered but are moot because the new ground of rejection as discussed below using new cited prior art Endo et al. (US 2022/0081615 A1).
Applicant’s arguments with respect to claim(s) 1 as being anticipated by Kim (US 2021/0108140 A1) have been considered but are moot because the new ground of rejection as discussed below using new cited prior art Endo et al. (US 2022/0081615 A1).
Claim Interpretation
4. Claims 1-5, 8-9, 19-20 are drawn to an etching composition. A composition claim drawn to what the composition is (i.e. ingredients of the composition), not what the composition does. In the preamble of claim 1, the applicants recited "An etching composition capable of increasing an etching selectivity for a silicon nitride over a silicon oxide and a polycrystalline silicon". According to the MPEP 2111.02(II), "If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction" (emphasis added).
Claim Rejections - 35 USC § 112
5. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. Claims 1-5, 8-9, 19-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In line 9 of claim 1, the examiner is unable to find proper support for the new limitation “the epoxy includes one or more of glycidyl” (emphasis added). The examiner clearly recognizes that applicants has proper support for the epoxy includes one or more of glycid, allyl glycidyl ether, epichlorohydrin, 1,2-epoxy-3-phenoxypropane, and 2,3-epoxypropyl benzene in original claim 6 and paragraph [0046] of the Specification (emphasis added). However, the applicants do not have proper support for the limitation “glycidyl”. It is noted that the term “glycidyl” as recited in amended claim 1 is broader than glycid and allyl glycidyl ether.
Claims 2-5, 8-9, 19-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph because they directly or indirectly depend on rejected claim 1.
Claim Rejections - 35 USC § 102
7. 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.
8. 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.
9. Claims 1-3, 5, 8 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Endo (US 2022/0081615 A1).
As to claim 1, Endo discloses an etching composition for selectivity etching silicon nitride over silicon oxide, the etching composition comprising:
An inorganic acid (i.e. phosphoric acid; See paragraph 0026, 0052; Endo’s claim 1);
A solvent (i.e. H2O or water/aqueous; See paragraph 0026, 0052-0054);
An additive,
Wherein the addictive include a compound containing an epoxy group, wherein the compound containing the epoxy group includes one or more of glycidyl (paragraph 0031, 0045);
Wherein the etching composition has an etching selectivity for the silicon nitride compared to the silicon oxide 0057).
As to claim 1, Endo fails to explicitly disclose the etching composition has an etching selectivity of 50 or more for the silicon nitride compared to the polycrystalline silicon and an etching selectivity of 30 or more for the silicon nitride compared to the silicon oxide (emphasis added). However, etching selectivity of 50 or more for the silicon nitride compared to the polycrystalline silicon and an etching selectivity of 30 or more for the silicon nitride compared to the silicon oxide is a property of the composition. It is noted that Endo’s etching composition is identical with applicant’s etching composition (i.e. both comprises: an inorganic acid; a solvent and an addictive containing an epoxy group wherein the epoxy group includes glycidyl). According the MPEP 2112.01(II), “Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”. Thus, Endo’s composition inherently has etching selectivity of 50 or more for the silicon nitride compared to the polycrystalline silicon and an etching selectivity of 30 or more for the silicon nitride compared to the silicon oxide because Endo’s composition is identical with applicant’s composition as recited in claim 1.
As to claims 2-3, Endo discloses the inorganic acid is phosphoric acid (paragraph 0026, 0052).
As to claim 5, Endo disclose the solvent includes water (paragraph 0026, 0052-0054).
As to claim 8, Endo discloses a content of the additive in the etching composition is in a
range of 0.01 wt% to 15 wt% (paragraph 0028, within applicant's range of 0.001 to about 20
wt%).
Claim Rejections - 35 USC § 103
10. 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.
11. 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.
12. Claims 4, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Endo et al. (US 2022/0081615 A1) as applied to claims 1-3, 5, 8 above, and further in view of Ge et al. (US 2022/0157613 A1).
As to claim 4, Endo fails to disclose the content of the inorganic acid in a total amount of the inorganic acid and the solvent is in a range of about 80 to about 90 wt%. However, Endo clearly teaches to use a composition comprises inorganic acid (phosphoric acid) and a solvent (i.e. water) (See paragraph 0052-0054). As to claim 4, Ge discloses a content of the inorganic acid (phosphoric acid) in a total amount of the inorganic acid and the solvent is in a range of 70 wt% to 99.99 wt%, or 70 wt% to 95 wt% including example of 85 wt% (See paragraph 0026; Table 1-2; Note: 85 wt% is within applicant's range of 80 to about 90 wt%). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Endo in view of Gu by using phosphoric acid in the amount of 80 to 90 wt%, including 85 wt% because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
As to claim 9, Endo fails to disclose the content of the additive in the etching composition is in a range of about 0.1 to about 3 wt%. However, Endo clearly teaches content of the additive in the etching composition is in a range of 0.01 wt% to 15 wt% (paragraph 0028, overlapping applicant’s range). As to claim 9, Ge discloses the content of the additive in the etching composition from about 0.1 wt% to 10 wt% including example of 1 wt%, 2 wt% and 3 w% (paragraph 0042, within applicant's range of 0.1 to about 3 wt%). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Endo in view of Gu by having the content of the additive in the etching composition is in a range of about 0.1 to about 3 wt% because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
Conclusion
13. 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.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH X TRAN whose telephone number is (571)272-1469. The examiner can normally be reached Monday-Friday.
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, Joshua Allen can be reached at 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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BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/Primary Examiner, Art Unit 1713