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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-5), along with the species election of Formula (1) where R¹ is a single bond, R² is a hydrogen atom and R³ is a hydrogen atom, without traverse, in the reply filed on 11/19/2025 is acknowledged.
Specification
The abstract of the disclosure is objected to because the abstract of dated 4/11/2024 includes two-paragraphs. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Rejections - 35 USC § 103
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 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.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al (US 2023/0121639).
Regarding claim 1, Hong et al disclose a composition ([0012]-[0017],[0023,[0028]);
Note: The preamble "silicon etching solution" is a statement of intended use that does not further limit the claimed invention [see MPEP 2111.02]. Claims directed to a product must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir.1997) [MPEP 2114]. The recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1729 (Fed. Cir. 1997).
Since the product (composition) of the prior art teaches all of the components or ingredients of the claim, the product is considered capable of meeting the intended use limitation.
Hong et al disclose a composition comprises a pH adjustor, which include but are not limited to, alkali metal hydroxides, alkaline earth metal hydroxides, tetraalkyl ammonium hydroxides (such as tetramethylammonium hydroxide (TMAH); and aforesaid pH adjustor (TMAH) reads on the claimed “organic alkaline compound” [0023]; a complexing agent, which includes proline [0028]; and aforesaid proline reads on the elected species of Formula 1, where R¹ is a single bond, R² is a hydrogen atom and R³ is a hydrogen atom because the chemical structure of proline is given below (source: Wikipedia):
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Hong et al also disclose that the content of the complexing agent (such as proline) is about 0.1 weight percent to about 20 weights % [0029], and such overlaps the claimed range of 100 mass ppm or more as claimed and overlapping ranges are prima facie obvious, MPEP 2144.05.
Additionally, it has been held that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art in the absence of evidence indicating that said concentration is critical. See MPEP 2144.05.II.A.
Regarding claim 2, Hong et al disclose that the composition comprises at least one pH adjustor in an amount necessary to achieve a pH of the composition to be at least about 7. In one embodiment, the pH of the composition is from about 7.5 to about 13 and in another embodiment from about 8 to about 11 [0023], such pH ranges are overlaps the claimed “pH range of 10 or higher and 14 or lower” as claimed and overlapping ranges are prima facie obvious, MPEP 2144.05.
Regarding claims 3-4, Hong et al disclose above that “proline’s structure” represent the Formula 1, where R¹ is a single bond, R² is a hydrogen atom and R³ is a hydrogen atom (see the proline chemical structure above).
Regarding claim 5, Hong et al disclose the organic alkaline compound is quaternary ammonium hydroxide [0023].
Conclusion
The prior art made of record listed in the PTO-892 and not relied upon is considered pertinent to applicant's disclosure. White et al (US 2020/0199500) disclose a composition comprises organic alkaline compound (TMAH) [0044], proline [0055], which reads on the claimed chemical Formula 1.
Skee (US 2007/0060490) discloses an alkaline composition comprises organic alkaline compound (TMAH) [0023], proline [0040], which reads on the claimed chemical Formula 1 and pH of the composition of about 11.6 [0059].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713
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