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 .
Specification
The disclosure is objected to because of the following informalities:
a) on page 37, last line, “Formula (N-4)” should read “Formula (N-5)”
b) on page 38, line 2, “Formula (N-5)” should read “Formula (N-6)”
Appropriate correction is required.
Claim Objections
Claim 6 is objected to because of the following informalities: in line 12 (counting the formula as one line, or 3rd line from last line), “nd” before the phrase “is an integer of 2 or more” should be corrected as “n2.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 2 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.
Claim 2 is indefinite in the recital of “acetylenol type surfactant” in line 2 because the addition of the word “type” to an otherwise definite expression extends the scope of the expression so as to render it indefinite, see Ex parte Copenhaver, 109 USPQ 1 18 (Bd. App. 1955). See also MPEP 2173.05 (b)(III)(E).
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 3 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (CN 104152928 A), hereinafter “Wang.”
Regarding claims 1 and 3, Wang teaches a cleaning agent which comprises 2-5 pts. wt. hydrofluoric acid, 1-4 pts. wt. block polyether-type nonionic surfactant, 1-2 pts. wt. fatty alcohol polyoxyethylene ether (also a nonionic surfactant), 0.5-1.5 pts. wt. benzotriazole and 43-70 pts. wt. water, among others (see English abstract).
Regarding claim 8, even though Wang does not explicitly disclose the pH of the cleaning agent, it would be inherent for the cleaning agent of Wang to have a pH within those recited, i.e., pH 3 to 7, because the same components have been utilized. “Products of identical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II.
Hence, Wang anticipates the instant claims.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being obvious over Koga (US 20240101936).
The applied reference has a common Applicant (i.e., TOKYO OHKA KOGYO CO., LTD.) with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding claim 1, Koga teaches an aqueous cleaning liquid comprising hydrofluoric acid (see paragraph [0015] and claim 1), and may contain optional components like anticorrosion agents and surfactants, among others (see paragraph [0026]). Examples of the anticorrosion agent include compounds having a nitrogen-containing heterocyclic ring such as a triazole ring (see paragraph [0039]) and examples of the compound including a triazole ring include triazoles such as 1,2,3-triazole (see paragraph [0040]), and one selection of the surfactants include nonionic surfactant (see paragraph [0052]). Koga, however, fails to specifically disclose an aqueous cleaning liquid comprising hydrofluoric acid, triazole and a nonionic surfactant.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have prepared an aqueous cleaning liquid comprising hydrofluoric acid, triazole and nonionic surfactant because Koga specifically desires the incorporation of the aqueous cleaning composition comprising hydrofluoric acid with other components like anticorrosion agents such as triazole, and surfactants such as nonionic surfactant.
Regarding claim 2, Koga further teaches that one example of the nonionic surfactant is acetylene polyalkylene oxide-based surfactant (see paragraph [0053]).
Regarding claim 3, Koga further teaches that the anticorrosion agent which include compounds having a nitrogen-containing heterocyclic ring includes benzotriazoles (see paragraph [0040]).
Regarding claim 4, Koga further teaches that the benzotriazoles include, for example,
5-methyl-1H-benzotriazole (see paragraph [0040]), whose formula meets General Formula (BT-1), i.e., Rb11 is hydrogen, Rb12 is methyl and n1 is 1.
Regarding claim 5, Koga further teaches that the anticorrosion agent may be used in combination of two or more kinds (see paragraph [0048]).
Regarding claims 6-7, Koga further teaches that some examples of benzotriazoles include 5-methyl-1H-benzotriazole (see paragraph [0040]), whose formula meets General Formula (BT-1), i.e., Rb11 is hydrogen, Rb12 is methyl and n1 is 1; and naphthotriazole (see paragraph [0040]), whose formula meets General Formula (BT-2), i.e., Rb21 is hydrogen, Ar is an aromatic ring, i.e., benzene ring, and n2 is 0. Koga, however, fails to specifically disclose the anticorrosion agents comprising 5-methyl-1H-benzotriazole and naphthotriazole as recited in claim 6 and the mass ratio of the 5-methyl-1H-benzotriazole to naphthotriazole in a range of 10,000:1 to 1,000:1 as recited in claim 7.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected 5-methyl-1H-benzotriazole and naphthotriazole as the specific anticorrosion agents because Koga specifically desires a combination of two kinds of anticorrosion agents and 5-methyl-1H-benzotriazole and naphthotriazole are two of the suitable selections as taught by Koga in paragraph [0040]). With respect to the mass ratio of the 5-methyl-1H-benzotriazole to the naphthotriazole, while Koga is silent as to the specific proportions of each of the 5-methyl-1H-benzotriazole and naphthotriazole, when used as a mixture, 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 proportions of each of the 5-methyl-1H-benzotriazole and naphthotriazole to be non-critical, which means that each proportion can vary in a wide range, hence, would overlap those recited. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the proportions of the 5-methyl-1H-benzotriazole and naphthotriazole through routine experimentation for best results.
Regarding claim 8, Koga further teaches that the pH of the aqueous cleaning liquid is preferably in a range of 4 to 7 (see paragraph [0085]).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Claims 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (US 2017/0200601), hereinafter “Song.”
Regarding claims 1 and 3, Song teaches an aqueous cleaning composition comprising at least one non-ionic surfactant corrosion inhibitor, at least one etchant source, water, and optionally at least one additional corrosion inhibitor, among others (see paragraph [009] and claim 1), wherein the at least etchant includes hydrofluoric acid, as one of the selections (see claim 3), and wherein the at least one additional corrosion inhibitor includes benzotriazole, as one of the selections (see claim 10). Song, however, fails to specifically disclose an aqueous cleaning composition comprising a nonionic surfactant with hydrofluoric acid and triazole as recited in claim 1, in particular wherein the triazole is benzotriazole as recited in claim 3.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have prepared an aqueous cleaning composition comprising non-ionic surfactant corrosion inhibitor, and to have incorporated hydrofluoric acid as the specific etchant and benzotriazole as the specific additional corrosion inhibitor because these are some of the suitable selection of etchants and additional corrosion inhibitors taught by Song.
Regarding claim 4, Song further teaches that the at least one additional corrosion inhibitor includes 5-methyl-benzotriazole (mBTA), among others (see claim 10), wherein the mBTA meets General Formula (BT-1), i.e., Rb11 is hydrogen, Rb12 is methyl and n1 is 1.
Regarding claims 5-7, Song further teaches that the at least one additional corrosion inhibitor includes 5-methyl-benzotriazole (mBTA) and naphthotriazole, among others (see claim 10), wherein the mBTA meets General Formula (BT-1), i.e., Rb11 is hydrogen, Rb12 is methyl and n1 is 1; and naphthotriazole meets General Formula (BT-2), i.e., Rb21 is hydrogen, Ar is an aromatic ring, i.e., benzene ring, and n2 is 0. Song, however, fails to specifically disclose two or more kinds of triazole as recited in claim 5; the triazole comprising mBTA and naphthotriazole as recited in claim 6 and the mass ratio of the mBTA to naphthotriazole in a range of 10,000:1 to 1,000:1 as recited in claim 7.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected mBTA and naphthotriazole as the specific additional anticorrosion inhibitors because Song specifically desires at least one additional corrosion inhibitors, hence, 2 anticorrosion inhibitors is envisaged, and mBTA and naphthotriazole are two of the suitable selections as taught by Song in claim 10. With respect to the mass ratio of the mBTA to the naphthotriazole, while Song is silent as to the specific proportions of each of the mBTA and naphthotriazole, when used as a mixture, 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 proportions of each of the mBTA and naphthotriazole to be non-critical, which means that each proportion can vary in a wide range, hence, would overlap those recited. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the proportions of the mBTA and naphthotriazole through routine experimentation for best results.
Regarding claim 8, Song further teaches that the pH of the aqueous cleaning composition is 4-14 (see paragraph [0030]). Song, however, fails to specifically disclose the pH of the aqueous cleaning composition in a range of 3-7.
Considering that Song teaches the aqueous cleaning composition having a pH of 4-14, 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 (i.e., pH of 4-7) 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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Song as applied to claims 1 and 3-8 above, and further in view of Takahashi et al. (US 2011/0076852), hereinafter “Takahashi.”
Regarding claim 2, Song teaches the features as discussed above. In addition, Song teaches that the at least one non-ionic surfactant corrosion inhibitor includes ethylene oxide/propylene oxide block copolymers (see claim 7). Song, however, fails to disclose an acetylenol type nonionic surfactant.
Takahashi, an analogous art (see abstract), teaches the equivalency of polyethylene oxide/polypropylene oxide block copolymer with acetylene polyalkylene oxide-based surfactant as nonionic surfactants (see paragraph [0073]).
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 ethylene oxide/propylene oxide block copolymer of Song with acetylene polyalkylene oxide-based surfactant because the substitution of art recognized equivalents as shown by Takahashi is within the level of ordinary skill in the art. In addition, the substitution of one nonionic surfactant for another is likely to be obvious when it does no more than yield predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references are considered cumulative to or less material than those discussed above.
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