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 .
Status of the Claims
This is a final office action in response to the applicant’s arguments and remarks filed on 06/18/2026. Claims 1 and 3-14 are pending in the current office action. Claims 1, 4, and 6 have been amended by the applicant. Claim 2 has been cancelled. Claims 12-14 remain withdrawn.
Status of the Rejection
The rejection of claim 2 is obviated by the Applicant’s cancellation.
All 35 U.S.C. § 103 rejections from the previous office action are substantially maintained and modified only in response to the amendments to the claims.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya et al. (US-20130181159-A1) in view of Chung et al. (US-20200407636-A1).
Regarding Claim 1, Tsuchiya teaches a silicon-etchant composition (Paragraph [0001] composition for etching. Paragraph [0033] composition can be used in treating a silicon wafer) comprising:
a quaternary alkyl ammonium hydroxide (Paragraph [0031] composition includes a basic compound. Paragraph [0033] basic compound can be a quaternary ammonium hydroxide, with examples of tetramethylammonium and tetraethyl ammonium listed as suitable);
an amine-based compound (Paragraph [0052] composition can include a chelating agent, suitable examples are included contain an amine, such as ethylenediaminetetraacetic acid and triethylenetetramine hexaacetic acid); and
a nonionic surfactant that includes at least two nonionic surfactants (Paragraph [0017] composition includes a first and second surfactant. Paragraph [0026] first and second surfactants can be nonionic).
Tsuchiya fails to explicitly teach the nonionic surfactant includes the second nonionic surfactant represented by Chemical Formula 1 where n is 3 to 5, and further includes at least one of the first nonionic surfactant is represented by Chemical Formula 1 where n is 1 to 2, and the third nonionic surfactant is represented by Chemical Formula 1 where n is 6 to 8, and wherein R withing Chemical Formula 1 is a C3 to C18 linear or branched alkyl group, a C3 to C18 cyclic alkyl group, or a C6 to C18 aryl group.
However, Tsuchiya teaches the surfactants are not particularly limited by their structure, and provides examples, such as polyoxyalkylene compounds that can be suitable for use (Paragraphs [0027-0029]). Tsuchiya does teach that the second surfactant has a molecular weight of one-half or less than that of the first surfactant (Paragraph [0017]).
Chung teaches a composition for silicon etching (Paragraph [0001]) that can include a quaternary ammonium hydroxide component (Paragraphs [0024-0026]) and nonionic surfactants (Paragraphs [0047] and [0082]). Chung teaches a formula for the surfactant (see C-1 below) where x can be 1-20, R5 can be a hydrogen atom, and R6 can be C3-C18 alkyl group or a cyclic group (Paragraphs [0054-0059] and [0071]). Chung teaches another formula for the surfactant (see C-1-4 below) where X04 can be 5-20 and m04 + n04 is 7-15 (Paragraphs [0075-0080]).
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In an embodiment where a surfactant is represented by the formula C-1, x=1, R5 is a hydrogen atom, and R6 is a C3-C18 alkyl group, the resulting surfactant would be equivalent to the claimed “first nonionic surfactant” and would have a molecular weight of 104.1. In an embodiment where a surfactant is represented by the formula C-1, x=3, R5 is a hydrogen atom, and R6 is a C3-C18 alkyl group, the resulting surfactant would be equivalent to the claimed “second nonionic surfactant” and would have a molecular weight of 192.3. In an embodiment where a surfactant is represented by the formula C-1-4 and x04 is 5, the resulting surfactant would be equivalent to the claimed “second nonionic surfactant” and would have a molecular weight 378.5. In an embodiment where a surfactant is represented by the formula C-1-4 and x04 is 8, the resulting surfactant would be equivalent to the claimed “third nonionic surfactant” and would have a molecular weight of 598.9.
It would have been obvious to one of ordinary skill in the art to have modified the composition of Tsuchiya by selecting as the first nonionic surfactant, one of the surfactants taught by Chung that meet the limitations of the claimed “second nonionic surfactant” and selecting as the second nonionic surfactant, a different surfactant taught by Chung such that the molecular weight of the second surfactant would be half or less than the molecular weight of the first surfactant (where as shown in the example outlined above, this surfactant would meet the limitations of the claimed “first nonionic surfactant”), or twice or more than the molecular weight of the first surfactant (where as shown in the example above, this surfactant would meet the limitations of the claimed “third nonionic surfactant”). Such a selection would be possible, as can be seen from the example embodiments of the teachings of Chung outlined above.
This modification would have been the simple substitution of two nonionic surfactants suitable for use in an etching composition with two other nonionic surfactants. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP §2143(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.07.
Regarding Claim 3, modified Tsuchiya teaches all the limitations of claim 1 as outlined above.
Tsuchiya fails to explicitly teach wherein a content of the nonionic surfactant is in a range from 0.01 wt% to 0.2 wt% based on a total weight of the composition.
However, Tsuchiya further teaches content of the surfactants is 0.00001% to 0.1% by mass (Paragraphs [0018-0019]).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated the nonionic surfactant at a level within the disclosed range of 0.00001% to 0.1% by mass, including at amounts that overlap with the claimed range of 0.01-0.2% by weight. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claims 4 and 5, modified Tsuchiya teaches all the limitations of claim 1 as outlined above. As outlined in claim 1, embodiments of the teachings can include wherein the nonionic surfactant includes the first nonionic surfactant and the second nonionic surfactant as required by the instant claims.
Modified Tsuchiya fails to explicitly teach wherein the nonionic surfactant includes the first nonionic surfactant and the second nonionic surfactant, and a weight ratio of the first nonionic surfactant to the second nonionic surfactant is in a range from 0.1 to 0.2, as required by claim 4, or wherein a weight ratio of the first nonionic surfactant to the second nonionic surfactant is in a range from 0.12 to 0.17, as required by claim 5.
However, Tsuchiya teaches a ratio of the total number of carbon atoms of the taught second surfactant to the sum of the total number of carbon atoms of the taught first surfactant and the total number of carbon atoms of the taught second surfactant to be 1-90% (Paragraphs [0021-0022]), and teaches a method for calculating these values (Paragraph [0023]). In an embodiment where the claimed first nonionic surfactant is HO(C2H4)OC3H7 (Formula C-1, taught by Chung where x=1, R5 is a hydrogen atom, and R6 is a C3H7 group), with a total of 5 carbon atoms per molecule and a molecular weight of 104.1, and the claimed second nonionic surfactant is (CH3)2(CH2)7(CH)O(C2H4O)5H (Formula C-1-4 taught by Chung where x04 is 5 and m04+n04 is 7), with a total of 20 carbon atoms and a molecular weight of 378.5, the range of the ratio of the mass of the claimed first nonionic surfactant to the claimed second nonionic surfactant can be calculated to be 0.101 to 89.991.
It would have been obvious to one of ordinary skill in the art to have selected and incorporated the two nonionic surfactants at a levels within the composition such that the weight ratio of the first nonionic surfactant to the second nonionic surfactant was within the disclosed range of 0.101 to 89.991, including at amounts that overlap with the claimed range of 0.1 to 0.2, as required by claim 4, or the claimed range of 0.12 to 0.17, as required by claim 5. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claim 6 and 7, modified Tsuchiya teaches all the limitations of claim 1 as outlined above. As outlined in claim 1, embodiments of the teachings can include wherein the nonionic surfactant includes the second nonionic surfactant and the third nonionic surfactant as required by the instant claims.
Modified Tsuchiya fails to explicitly teach a weight ratio of the third nonionic surfactant to the second nonionic surfactant is in a range from 0.08 to 0.17, as required by claim 6, and wherein a weight ratio of the third nonionic surfactant to the second nonionic surfactant is in a range from 0.10 to 0.15, as required by claim 7.
However, Tsuchiya teaches a ratio of the total number of carbon atoms of the taught second surfactant to the sum of the total number of carbon atoms of the taught first surfactant and the total number of carbon atoms of the taught second surfactant to be 1-90% (Paragraphs [0021-0022]), and teaches a method for calculating these values (Paragraph [0023]). In an embodiment where the claimed second nonionic surfactant is (C3H7)(OC2H4)3OH (Formula C-1, taught by Chung where x=3, R5 is a hydrogen atom, and R6 is a C3H7 group), with a total of 9 carbon atoms per molecule and a molecular weight of 192.3, and the claimed third nonionic surfactant is (CH3)2(CH2)15(CH)O(C2H4O)8H (Formula C-1-4 taught by Chung where x04 is 8 and m04+n04 is 15), with a total of 34 carbon atoms and a molecular weight of 598.9, the range of the ratio of the mass of the claimed third nonionic surfactant to the claimed second nonionic surfactant can be calculated to be 0.0123 to 10.917.
It would have been obvious to one of ordinary skill in the art to have selected and incorporated the two nonionic surfactants at a levels within the composition such that the weight ratio of the third nonionic surfactant to the second nonionic surfactant was within the disclosed range of 0.0123 to 10.917, including at amounts that overlap with the claimed range of 0.08 to 0.17, as required by claim 6, or the claimed range of 0.10 to 0.15, as required by claim 7. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claim 8, modified Tsuchiya teaches all the limitations of claim 1 as outlined above. Modified Tsuchiya further teaches wherein the nonionic surfactant does not include a nonionic surfactant represented by Chemical Formula 1 where n is 8 (As outlined in the rejection of Claim 1 above, embodiments are taught where the "at least two" nonionic surfactants selected are the claimed first nonionic surfactant and the claimed second nonionic surfactant. In any such embodiment, there is no nonionic surfactant represented by Chemical Formula 1 where n=8).
Regarding Claim 9, modified Tsuchiya teaches all the limitations of claim 1 as outlined above. Chung further teaches wherein, in Chemical Formula 1, R is a phenyl group, a naphthyl group, a methylphenyl group or an octylphenyl group (Chung Paragraphs [0056] R5 can be a cyclic group. Paragraph [0059] R5 can be an aromatic or polycyclic group. Chung Paragraph [0064] the group can be a benzene or naphthalene ring).
Regarding Claim 10, modified Tsuchiya teaches all the limitations of claim 1 as outlined above.
Tsuchiya teaches that the amount of quaternary alkyl ammonium hydroxide within the composition is not particularly limited (Paragraph [0034]) but fails to teach wherein a content of the quaternary alkyl ammonium hydroxide is in a range from 1 wt% to 20 wt% based on a total weight of the composition.
Chung teaches a composition for silicon etching (Paragraph [0001]) that can include a quaternary ammonium hydroxide component (Paragraphs [0024-0026]) and nonionic surfactants (Paragraphs [0047] and [0082]). Chung further teaches that quaternary ammonium hydroxide component can be include at 0.01-15% by mass (Paragraph [0043]).
It would have been obvious to one of ordinary skill in the art to have modified the composition of modified Tsuchiya by including the quaternary ammonium hydroxide component within the composition at the range taught by Chung.
This modification would been obvious as it could be considered the combination of prior art elements according to known methods to yield a predictable result. This combination would have had the predictable result of providing a suitable amount of a quaternary ammonium hydroxide component to include within an etching composition. See MPEP 2143(I)(A).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated a quaternary alkyl ammonium hydroxide at a level within the disclosed range of 0.01-15% by mass, including at amounts that overlap with the claimed range of 1-20% by weight. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya in view of Chung, as applied to claim 1, and further in view of Asirvatham (US-20220017821-A1)
Modified Tsuchiya teaches all the limitations of claim 1 as outlined above.
Tsuchiya teaches that the composition includes a chelating agent that can include an amine (Paragraph [0052]), but fails to teach wherein a content of the amine-based compound is in a range from 1 wt% to 30 wt% based on a total weight of the composition.
Asirvatham teaches formulations that can be used in the etching of silicon wafers and substrates (Paragraphs [0031-0032]). Asirvatham teaches that the formulation can include a chelating agent (Paragraph [0036]). Asirvatham teaches that the chelating agent can be included in the composition from 0-10% by weight (Paragraph [0055]).
It would have been obvious to one of ordinary skill in the art to have modified the composition of modified Tsuchiya by including the chelating agent within the composition at level within the range taught by Asirvatham.
This modification would been obvious as it could be considered the combination of prior art elements according to known methods to yield a predictable result. This combination would have had the predictable result of providing a suitable amount of a chelating agent to include within an etching composition. See MPEP 2143(I)(A).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated the chelating agent at a level within the disclosed range of 0-10% by weight, including at amounts that overlap with the claimed range of 1-30% by weight. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Response to Arguments
Applicant’s arguments, see Remarks Pg. 1-10, filed 06/18/2026, with respect to the 35 U.S.C. § 103 rejection have been fully considered and are not persuasive.
Applicant argues, on page 1, that the first, second, and third nonionic surfactants have particular benefits to the etchant composition and are used in the composition according to those inventive concepts. Applicant further argues, on page 6, that Tsuchiya fails to teach that the second nonionic surfactant is used to improve etching performance.
In response, examiner notes that these features of the claimed first, second, and third nonionic surfactants upon which applicant relies in the argument are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, examiner notes that this argument relates directly to the particular benefits that individual components of the claimed composition might provide during particular intended use cases, and a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As outlined in the rejections above, modified Tsuchiya teaches a composition for etching that can include the claimed components.
Applicant argues that Tsuchiya teaches away from the claimed invention, citing preferred embodiments and the examples disclosed by Tsuchiya. Applicant argues that Chung fails to teach the claimed surfactants, citing the preferred embodiments of the structures taught by Chung and the particular examples disclosed by Chung.
In response, examiner notes that the teachings of Tsuchiya and Chung, in combination as outlined in the above rejections, do disclose a composition that meets all the limitations claimed by the applicant. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123(II).
Applicant argues that the combination of Chung and Tsuchiya relies on impermissible hindsight, arguing that the combination requires an initial selection of species from Chung that meet the claimed limitations followed by the reading of Tsuchiya’s composition requirements onto those species.
Examiner respectfully disagrees. Examiner notes that it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Examiner takes the position that one of ordinary skill in the art could have taken the teachings provided by Tsuchiya to reach a composition that used polyoxyalkylene compounds as the first and second surfactants and required that the second surfactant had a molecular weight of one-half or less than that of the first surfactant and used the teachings of Chung to find two specific compounds, with the difference in molecular weight desired by Tsuchiya, to use in the composition, as outlined in the rejections above.
Applicant argues that Chung fails to teach a combination of the claimed nonionic surfactants, specifically noting that Chung only discloses examples that include a single type of nonionic surfactant.
In response, examiner notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The particular compositions disclosed by Chung are not relevant in the rejections above, as Tsuchiya is relied upon for the teachings regarding the combinations of multiple surfactants within the composition and Chung is being relied upon for teachings regarding the structure of the surfactants.
Applicant argues that the claimed combination achieves unexpected results over the cited prior art.
Examiner respectfully disagrees that unexpected results have been proven for the claimed invention. In order to establish unexpected results applicant should compare a sufficient number of tests both inside and outside of the claimed ranges to show the criticality of these ranges. See MPEP 716.02(d)(II). Examiner notes that the invention of claim 1 claims a particular set of components in a composition and has claimed ranges for the n value for within the claimed “Chemical Formula 1” for the first, second, and third nonionic surfactant. Applicant’s specification and the additional information provided by the affidavit, has failed to provide a sufficient number of tests both inside and outside of these claimed ranges. Examiner notes that argument presented in favor of this position only highlights Comparative Examples composition employing a single type of nonionic surfactant in the instant application, and the examples presented by Chung, when as noted above, Chung is not relied upon in the rejection for the teachings regarding the use of multiple surfactants within the composition.
Applicant further supports the argument that the claimed composition achieves unexpected results by highlighting that the examples disclosed in the instant application achieved no etch residue, increased etch rate, improved pattern etching uniformity, and reduced surface roughness.
In response, examiner notes that these features of the composition upon which applicant relies in the argument are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, examiner notes that this argument relates directly to the particular benefits that the claimed composition might provide during particular intended use cases, and a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As outlined in the rejections above, modified Tsuchiya teaches a composition for etching that can include the claimed components. Further examiner notes that the claiming of an unknown property that would be inherently present in the prior art does not make the claim patentable. The prior art, as outlined the rejections above, teaches a composition that meets all the limitations claimed, and features such as those noted in this argument would be inherent features of a composition (for example, any structurally identical compositions when tested under the same conditions for etch rate, would achieve the same etch rates). See MPEP 2112(I).
Applicant argues that the limitations of claims 4 through 7 on the composition achieve unexpected results over the cited prior art.
Examiner respectfully disagrees that unexpected results have been proven for the claimed invention. In order to establish unexpected results applicant should compare a sufficient number of tests both inside and outside of the claimed ranges to show the criticality of these ranges. See MPEP 716.02(d)(II).
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW KEELAN LAOBAK whose telephone number is (703)756-5447. The examiner can normally be reached Monday - Friday 8:00am - 5:30pm.
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/A.K.L./Examiner, Art Unit 1713 /DUY VU N DEO/Primary Examiner, Art Unit 1713
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