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 .
DETAILED ACTION
Claims 1-10 are pending. Note that, Applicant’s response filed June 29, 2026, has been entered.
Claims 11 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 20, 2026.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 4/22/26 have been withdrawn:
None.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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, 2, and 4-10 are rejected under 35 U.S.C. 103 as being unpatentable over Acra et al (U2016/0215240).
With respect to independent, instant claims 1 and 10, Acra et al teach solutions and processes to remove substances from substrates. The substances can include photoresist on surfaces of semiconductor substrates, which may also be referred to as “wafers.” In particular, the photoresist can include an acrylate-based photoresist. In some scenarios, a semiconductor substrate can include one or more solder bumps. See para. 5. The solution can include at least one amine. The at least one amine can include at least one of an aliphatic amine, an alkanolamine, an aromatic amine, or a combination thereof. See para. 30. An aliphatic amine can include a nitrogen (N) containing compound where an aromatic ring is not directly bonded to a nitrogen atom of the compound. For example, an aliphatic amine can have one or more lower alkyl groups directly bonded to a nitrogen atom of the compound. The term “lower alkyl” can refer to a functional group including a straight-chain or branched-chain hydrocarbon containing from 1 to 20 carbon atoms linked exclusively by single bonds and not having any cyclic structure. Examples of lower alkyl groups include methyl, ethyl, n-propyl, isopropyl, n-butyl, isobutyl, sec-butyl, tert-butyl, pentyl, iso-amyl, hexyl, heptyl, octyl, nonyl, decyl, undecyl, dodecyl tridecyl, tetradecyl, pentadecyl, hexadecyl, heptadecyl, octadecyl, nonadecyl, eicosyl, and the like. Examples of aliphatic amines included in the solution include, but are not limited to diethylenetriamine (DETA) (same as instant claims 1, 2, and 4), etc. See para. 31. A total amount of any amine in the solution can be no greater than about 97%, or no greater than about 95%, or no greater than about 93%, or no greater than about 90%, or no greater than about 85%, or no greater than about 80%, or no greater than about 75%, in each case as weight based on the total weight of the solution. In addition, the total amount of amines in the solution can be at least about 50%, or at least about 55%, or at least about 60%, or at least about 65%, or at least about 70%, in each case as weight % based on the total weight of the solution. See paras. 36-40.
Additionally, the solution can include an amount of at least one quaternary ammonium hydroxide. The quaternary groups can include (C1-C8) alkyl, aryl alkyl, and combinations thereof. The at least one quaternary ammonium hydroxide can include tetramethylammonium hydroxide (TMAH), tetraethylammonium hydroxide (TEAH), dimethyldipropylammonium hydroxide (DMDPAH), trimethylethylammonium hydroxide (TMEAH), benzyltrimethylammonium hydroxide (BTMAH), tetrapropylammonium hydroxide (TPAH), tetrabutylammonium hydroxide (TBAH), or a mixture thereof. In an illustrative example, the solution can include an amount of quaternary ammonium hydroxide included in a range of about 0.5% by weight to about 10% by weight of a total weight of the solution. In another illustrative example, an amount of quaternary ammonium hydroxide included in the solution can be included in a range of about 1% by weight to about 5% by weight of a total weight of the solution. See para. 43. The solution can also include an amount of water. For example, the solution can include an amount of water included in a range of about 0.5% by weight to about 10% by weight of a total weight of the solution. See para. 44.
Acra et al do not teach, with sufficient specificity, a composition containing an amine solvent of Formula (1), a quaternary ammonium salt, and water in the specific amounts as recited by independent, instant claims 1 and 10.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing an amine solvent of Formula (1), a quaternary ammonium salt, and water in the specific amounts as recited by independent, instant claims 1 and 10, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Acra et al suggest a composition containing an amine solvent of Formula (1), a quaternary ammonium salt, and water in the specific amounts as recited by independent, instant claims 1 and 10.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal et al (US 2016/0179011).
With respect to independent, instant claim 1, Agarwal et al teach A photoresist or semiconductor manufacturing residue stripping and cleaning composition comprising water, one or more alkaline compounds, one or more corrosion inhibitors, and one or more oxidized products of one or more antioxidants. See Abstract. The one or more alkaline compounds of the invention may comprise one or more amines or one or more quaternary ammonium hydroxides or combinations thereof. See para. 4. Suitable amines include ethylenediamine, diethylenetriamine, 1,3-diaminobutane, etc. (same as instant claims 1-4). See para. 5. Suitable quaternary ammonium hydroxides include tetramethylammounium hydroxide (TMAH), tetraethylammonium hydroxide, tetrabutylammonium hydroxide (TBAH), tetrapropylammonium hydroxide, trimethylethylammonium hydroxide, (2-hydroxyethyl)trimethylammonium hydroxide, (2-hydroxyethyl)triethylammonium hydroxide, (2-hydroxyethyl)tripropylammonium hydroxide, (1-hydroxypropyl)trimethylammonium hydroxide, ethyltrimethylammonium hydroxide, etc. In an additional aspect of the invention, alone or with additional aspects, is provided a photoresist or semiconductor manufacturing residue stripping and cleaning composition comprising about 70 to 85% by weight of said one or more alkaline compounds. See para. 16. The composition of this invention, alone or with any additional aspects of this invention may have 5 to 50 wt %, or 5 to 30 wt %, or 10 to 40 wt %, or 10 to 30 wt %, or 15 to 25 wt % of water. See para. 8.
Agarwal et al do not teach, with sufficient specificity, a composition containing an amine solvent of Formula (1), a quaternary ammonium salt, and water in the specific amounts as recited by independent, instant claim 1.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing an amine solvent of Formula (1), a quaternary ammonium salt, and water in the specific amounts as recited by independent, instant claim 1, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Agarwal et al suggest a composition containing an amine solvent of Formula (1), a quaternary ammonium salt, and water in the specific amounts as recited by independent, instant claim 1.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Acra et al (U2016/0215240) as applied to claims 1, 2, and 4-10 above, and further in view of Agarwal et al (US 2016/0179011).
Acra et al are relied upon as set forth above. However, Acra et al do not teach the use of an amine such as ethylenediamine in addition to the other requisite components of the composition as recited by the instant claims.
Agarwal et al are relied upon as set forth above.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use ethylenediamine in the composition taught by Acra et al, with a reasonable expectation of success, because Agarwal et al teach the equivalence of ethylenediamine to diethylenetriamine as a suitable amine in a similar composition and further, Acra et al teach the use of diethylenetriamine.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using Acra et al or Agarwal et al, Applicant states that Acra et al disclose a solution including three amines different from each other, the total amount of amine being no greater than about 95% and that Acra et al fail to disclose the amount of the specific amine solvent. Additionally, Applicant states that Agarwal et al disclose a total amount of the amine and/or the quaternary ammonium salt from 35 to 94.5%, but does not disclose the amount of each component independently.
In response, note that, the Examiner asserts that the teachings of a reference are not limited to the preferred embodiments and that the broad teachings of Acra et al or Agarwal et al suggest compositions containing the same components in the same amounts as recited by the instant claims. Note that, the fact that a specific embodiment is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the disclosed alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "[a] reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment." CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1349 (Fed. Cir. 2017) (quoting In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012)); see also In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions". Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); See MPEP 2123(II). The fact that a reference discloses a multitude of effective combinations does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, 874 R.2d 804, 808 (Fed. Cir. 1989). See also, In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations even though “the inventors selected the zeolites of the claims from amount thousands of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was huge, but it undeniably included at least some of the compounds recited in appellant’s generic claims and was a class of chemicals to be used for the same purpose as appellant’s additives).
For example, Acra et al clearly teach that the at least one amine can include at least one of an aliphatic amine, an alkanolamine, an aromatic amine, or a combination thereof, wherein a total amount of any amine in the solution can be no greater than about 97%, or no greater than about 95%, or no greater than about 93%, or no greater than about 90%, or no greater than about 85%, or no greater than about 80%, or no greater than about 75%, in each case as weight based on the total weight of the solution. Additionally, Acra et al clearly teach the use of diethylenetriamine and would clearly suggest, for example, 60% by weight of diethylenetriamine which would clearly fall within the scope of the instant claims (See paras. 30-40 of Acra et al). Agarwal et al clearly teaches the use of one or more amines and one or more quaternary ammonium hydroxides as alkaline compounds which may be used in amounts from about 35 to 94.5% by weight of the composition which would clearly suggest, for example, a composition containing 80% by weight of an amine such as diethylenetriamine and 5% by weight of a quaternary ammonium compound and would fall within the scope of the instant claims (See paras. 5-8). Thus, the Examiner asserts that the teachings of Acra et al or Agarwal et al are sufficient to render the claimed invention obvious under 35 USC 103.
Further, Applicant states that data has been provided in the instant specification which is sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. Specifically, Applicant states that Tables 1 and 2 of the instant specification provide data showing the unexpected and superior cleaning ability of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
In response, note that, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. The data provided in the instant specification is not commensurate in scope with the instant claims. For example, the instant claims are open to a broad group of amine solvents in broad amounts and any quaternary ammonium salt in any amount, while the instant specification provides data with respect to only several specific embodiments which is not commensurate in scope with the instant claims. Note that, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); See MPEP 716.02(d)(I). Applicant has not provided on this record a sufficient basis for concluding that the generic scope of protection sought by claim 1 is reasonably commensurate with the showing of alleged unexpected results. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (obviousness rejection affirmed because evidence establishing that one (or a small number of) species gives unexpected results is inadequate proof); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims). Note that, the evidence in the Specification is not commensurate in scope with the appealed claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (concluding that unexpected results “limited to sodium only” were not commensurate in scope with claims to a catalyst having an “alkali metal”. Appellants have not established that the results using the single embodiment in (Example 3) is representative of the results which would be obtained over the broad scope of compositions covered by the claims). Thus, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
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 GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/August 29, 2026
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