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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5, as to the point that the applied prior art, Hong fails to teach the composition is free of oxidizing agent, as required in the recently amended claim 1, 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.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al (US 2022/0336210).
Regarding claim 1, Hong et al disclose a composition comprises, consist of, or consist essentially of water, a reducing agent, an etchant compound, and corrosion inhibitor [0032],[0033], wherein the etchant compound comprises proline [0059],[0060]; 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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Liu et al also disclose that the composition comprises a pH adjustor, which inlcudes tetraalkyl ammonium hydroxides (such as tetramethylammonium hydroxide (TMAH); and aforesaid pH adjustor (TMAH) reads on the claimed “organic alkaline compound” [0067]-[0068].
Examiner noted that 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.
Liu et al also disclose that the content of the etchant compound (such as proline) in a range from about 0.005 wt % to about 20 wt %, based on the total weight of the composition [0062], 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.
Liu et al also disclose that the composition is substantially free of oxidizers [0084].
Regarding claim 2, Liu et al disclose that the pH of the composition is about 8.5 to about 12 [0067], 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, Liu 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, Liu et al disclose the organic alkaline compound is quaternary ammonium hydroxide (TMAH) [0067], [0069].
Claim(s) 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Osamu Tabata (Anisotropic Etching of Silicon in TMAH Solutions; Mechanical Engineering, Faculty of Science and Engineering, Ritsumeikan University Noji-higashi, Kusatsu-shi, Shiga 525-8577, Japan (Received May 15, 2000; accepted May 15, 2000) in view of Kang et al (US 2015/0166942).
Regarding claim 8, Osamu Tabata disclose a composition for etching silicon-containing substrate using tetramethyl ammonium hydroxide (TMAH) (see, atleast the introduction at page 271); and aforesaid TMAH rads on the claimed organic alkaline compound) and water (see page 278).
Osamu Tabata fail to disclose the compound represented by the Formula (1).
However, Kang et al disclose a composition comprising TMAH for removing residues [0006],[0009] from a silicon-containing layer [00045], and the composition comprises amino acid such as proline and the amino acid may prevent the detached organic residues or particles from being re-adsorbed on the surfaces of the organic pattern 120a or on the organic pattern 120b and the structure 110 and may serve as a chelating agent ; and the content of the amino acid is 0.1 to 10 wt% [0049]; and such overlaps the claimed range of 100 mass ppm or more as claimed and overlapping ranges are prima facie obvious, MPEP 2144.05.
It is noted that 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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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Kang et al's teaching of introducing an amino acid, namely proline into the teaching of Osamu Tabata for efficiently achieving an etched surface without residues because addition of proline would prevent re-adsorption of detached particles and residues on the substrate’s surface as suggested by Kang et al.
Regarding claim 9, Osamu Tabata disclose pH of the composition falls within the claimed range (see page 278; Figure 6).
Regarding claims 10-11, Kang 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 12, Osamu Tabata disclose above that the organic alkaline compound is quaternary ammonium hydroxide (see page 278).
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 SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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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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