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 .
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 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.
Election/Restrictions
Applicant’s election without traverse of Invention Group I and the species identified in claims 9-11 in the reply filed on March 23, 2026 is acknowledged. Claims 5-8 and 23-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
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 1-4, 9, 12-13 and 17-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bilodeau et al. (US20200157423).
Regarding claim 1, Bilodeau discloses an etching composition (abstract), comprising: phosphoric acid (component a, claim 1); at least one fluorine-containing inorganic acid or a salt thereof (component d, claims 1 and 5); at least one nitrogen-containing compound comprising an alkoxysilane group (component (b)(i), claim 1); at least one silane compound different from the at least one nitrogen-containing compound, the at least one silane compound comprising an aminoalkyl group (component (b)(ii), claim 1); and water (component c, claim 1).
Regarding claim 2, Bilodeau discloses wherein the phosphoric acid is in an amount of about 84 wt % of the etching composition (Example 18, 98.4% of the composition is 85% H3PO4, Table 1).
Regarding claim 3, Bilodeau discloses wherein the at least one fluorine-containing inorganic acid or a salt thereof comprises tetrafluoroboric acid (claim 5).
Regarding claim 4, Bilodeau discloses wherein the at least one fluorine-containing inorganic acid or a salt thereof is in an amount of 0.002 wt % (Example 18, HF reads on a fluorine-containing inorganic acid, Table 1).
Regarding claim 9, Bilodeau discloses wherein the at least one nitrogen-containing compound comprises an alkoxysilane substituted trialkylamine compound (Example 18, N3APTMS reads on the nitrogen-containing compound, Table 1).
Regarding claim 12, Bilodeau discloses wherein the at least one nitrogen-containing compound is in an amount of 0.2 wt % of the etching composition (Example 18, N3APTMS reads on the nitrogen-containing compound, Table 1).
Regarding claim 13, Bilodeau discloses wherein the at least one silane compound comprises a trialkylsilane compound (the compound represented by the formula disclosed in claim 6, wherein X is an alkyl group).
Regarding claim 17, Bilodeau discloses wherein the at least one silane compound comprises
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(the compound represented by the formula disclosed in claim 6, wherein X is independently a C1 alkyl group or -OR group with R being C1 alkyl, n=3, R1 is hydrogen).
Regarding claim 18, Bilodeau discloses wherein the at least one silane compound is in an amount of 1.4 wt % of the etching composition (Example 18, APST reads on the silane compound, Table 1).
Regarding claim 19, Bilodeau discloses wherein the water is in an amount of about 15 wt % the etching composition (Example 18, 98.4% of the composition is 85% H3PO4, which comprises 15% water, Table 1 and paragraph 0007).
Regarding claim 20, Bilodeau discloses wherein the composition has a pH of from about 0 to about 2 (Example 18, 98.4% of the composition is 85% H3PO4, Table 1, which has a pH of about 0.5-1.0, as evidenced by a Copilot search on pH of 85% H3PO4).
Regarding claims 21-22, it is noted that they are drawn to a composition claim and a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
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 of this title, 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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bilodeau et al. (US20200157423) as applied to claim 1 above, in view of Wu et al. (US20220363990).
Regarding claim 10, Bilodeau is silent about wherein the alkoxysilane substituted tetraalkylammonium salt is a compound of formula (II) as recited in the instant claim. However, Bilodeau disclosed that the composition is phosphoric acid - based etching solution used for the selective removal of silicon nitride over silicon oxide (abstract). In addition, Wu teaches that in a phosphoric acid - based etching solution used for the selective removal of silicon nitride over silicon oxide, a silane additive such as N-trimethoxysilylpropyl-N,N,N-trimethylanimonium halide can minimize the amount of redeposition of the dissolved silica during use while maintaining high etch selectivity (claim 16 and paragraph 0018). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to incorporate the silane additive as taught by Wu, which is a compound represented by the formula as recited in the instant claim, in order to improve the selective etch process of Bilodeau, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Allowable Subject Matter
Claims 11 and 14-16 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:
Regarding claim 11, the cited prior art of record, taken either alone or in combination, fails to disclose or render obvious a composition wherein the alkoxysilane substituted tetraalkylammonium salt is represented by the formula recited in the instant claim, in the context of the instant claim.
Regarding claim 14, the cited prior art of record, taken either alone or in combination, fails to disclose or render obvious a composition wherein the at least one silane compound comprises an azasilacyclopentane compound of formula (III) recited in the instant claim, in the context of the instant claim.
Regarding claims 15-16, they are dependent on claim 14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (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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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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