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, 2, and 4-20 are pending. Claim 3 has been canceled. Note that, Applicant’s amendment and arguments filed July 6, 2026, have been entered.
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 February 10, 2026.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 4/6/26 have been withdrawn:
The objection to claims 1-19 due to minor informalities has been withdrawn.
The rejection of claims 10-13 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inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, has been withdrawn.
The rejection of claims 1, 2, and 10-19 under 35 U.S.C. 102(a)(1) as being anticipated by Mochida et al (US 2016/0032227), has been withdrawn.
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, 4, 5, and 7-19 are rejected under 35 U.S.C. 103 as being unpatentable over Mochida et al (US 2016/0032227).
With respect to independent, instant claim 1, Mochida et al teach a cleaning composition for a semiconductor substrate contains a solvent, and a polymer that includes a fluorine atom, a silicon atom or a combination thereof. The content of water in the solvent is preferably no greater than 20% by mass. See Abstract. The cleaning composition contains a solvent (A), and a polymer (B). Since the polymer (B) includes a fluorine atom and/or a silicon atom, it is presumed that the cleaning composition exhibits proper wet spreadability on substrate surfaces, and the formed film has an affinity to the removing liquid and a proper rate of dissolution, thereby allowing the particles on the substrate surface to be rapidly removed in a state in which the particles are covered by the film, leading to an achievement of a high efficiency of removal. See para. 17.
The solvent (A) is exemplified by: an organic solvent such as an alcohol solvent, an ether solvent, a ketone solvent, an amide solvent, an ester solvent and a hydrocarbon solvent; water; and the like. Examples of the ketone solvent include: chain ketone solvents such as acetone, methyl ethyl ketone, etc. Examples of the ester solvent include: ethyl lactate and ethyl 3-methoxypropionate; polyhydric alcohol partial ether carboxylate solvents such as monocarboxylates of an alkylene glycol monoalkyl ether, and monocarboxylates of a dialkylene glycol monoalkyl ether; cyclic ester solvents such as butyrolactone, etc. Preferably, the organic solvent is propylene glycol monoethyl ether, ethyl lactate, butyrolactone or propylene glycol monomethyl ether acetate. The lower limit of the content of the solvent (A) is preferably 50% by mass, more preferably 80% by mass, and still more preferably 90% by mass. The upper limit of the content is preferably 99.9% by mass, more preferably 99.5% by mass, and still more preferably 99.0% by mass. When the content of the solvent (A) falls within the range of from the lower limit to the upper limit, the cleaning property of the cleaning composition on silicon nitride substrates can be further improved. See paras. 29-40. The cleaning composition may contain either one, or two or more types of the solvent (A). Mochida et al exemplifies compositions containing GBL which is gamma butyrolactone (i.e., butyrolactone). See paras.120-150.
Mochida et al do not teach, with sufficient specificity, a composition containing butyrolactone, another solvent such as propylene glycol monomethyl ether, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
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 butyrolactone, at least one of propylene glycol monomethyl ether, propylene glycol methyl ether acetate, acetone, ethyl lactate, or methyl ethyl ketone, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because Mochida et al teach a composition containing butyrolactone, at least one of propylene glycol monomethyl ether, propylene glycol methyl ether acetate, acetone, ethyl lactate, or methyl ethyl ketone, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mochida et al (US 2016/0032227) as applied to claims 1, 2, 4, 5, and 7-19 above, and further in view of Kamei et al (US 2017/0330762).
Mochida et al are relied upon as set forth above. However, Mochida et al do not teach the use of 3-methoxybutyl acetate in addition to the other requisite components of the composition as recited by the instant claims.
Kamei et al teach a semiconductor treatment composition that can reduce damage applied to a metal wire and the like that are included in the treatment target, and can still effectively remove contaminants from the surface of the treatment target, and a treatment method that utilizes the semiconductor treatment composition. See para. 7. The semiconductor treatment composition may be used as a treatment agent such as a cleaning agent for removing particles, metal impurities, and the like present on the surface of the treatment target (polishing target) after completion of CMP, a resist stripper for removing a resist from a semiconductor substrate that has been processed using a resist, and an etchant for shallowly etching the surface of a metal wire or the like to remove a surface contaminant. Note that the term “treatment agent” used herein includes a cleaning agent for cleaning a semiconductor surface, a resist stripper, an etchant, and the like. See para. 25. The semiconductor treatment composition according to one embodiment of the invention is a liquid that includes a liquid medium as the main component. The liquid medium may be appropriately selected taking account of the intended use (e.g., cleaning, etching, and resist removal) of the treatment target. See para. 59. The liquid medium may include an organic solvent as the main component, wherein the solvent may be a ketone-based solvent, an ester-based solvent, an ether-based solvent, and an amide-based solvent, and a hydrocarbon-based solvent. Suitable ester-based solvents include propylene glycol monomethyl ether acetate, 3-methoxybutyl acetate, etc.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use 3-methoxybutyl acetate in the composition taught by Mochida et al, with a reasonable expectation of success, because Kamei et al teach the equivalence of 3-methoxybutyl acetate to propylene glycol monomethyl ether acetate as a suitable solvent in a similar composition and further, Mochida et al teach the use of propylene glycol monomethyl ether acetate.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using Mochida et al, Applicant states that a "thinner composition" (or "thinner") is well-understood in the fields of photoresist processing, display manufacturing, and electronics as a solvent-based formulation used to clean, strip, or dilute photosensitive resins or other organic/inorganic residues from substrates, piping, or equipment, and thinner compositions are characterized by the absence of film-forming polymers and are not intended to form a removable film on the substrate, while Mochida et al teach cleaning compositions that form a removable film for particle removal, not to act as a solvent-based thinner for direct solubilization and removal of residues. Also, Applicant states that Mochida et al list GBL as one of many possible solvents, but nowhere do they disclose or suggest using GBL at 70-99.9 wt% in the cleaning composition; the claimed composition requires GBL in the specified range and at least one of propylene glycol monomethyl ether, propylene glycol methyl etheracetate, 3-methoxybutyl acetate, acetone, ethyl lactate, or methyl ethyl ketone. Additionally, Applicant states that Mochida et al. do not disclose or suggest this specific combination or concentration range, nor do they teach or suggest using such a composition as a thinner for cleaning colored photosensitive compositions from SUS pipes. Further, Applicant states that the Examiner has relied upon impermissible hindsight reasoning in rendering the claimed invention obvious.
In response, note that, the Examiner asserts that Mochida et al clearly teach a cleaning compositions for a semiconductor substrate contains a solvent, and a polymer that includes a fluorine atom, a silicon atom or a combination thereof (See Abstract of Mochida et al), which would clearly function as a cleaner and would fall within the broad scope of “a thinner composition” as recited by the instant claims. While the cleaner taught by Mochida et al may utilize Additionally, the Examiner asserts that “for cleaning an unnecessary photosensitive film or materials stuck to Steel Use Stainless pipes in a process using a colored photosensitive composition” is merely an intended use of the claimed composition and is not a patentable limitation. Note that, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention and the preamble merely states, for example, the purpose or intended use for the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81. See MPEP 2111.02. The Examiner asserts that the broad teachings of Mochida et al clearly suggest compositions which are capable of cleaning an unnecessary photosensitive film or materials stuck to Steel Use Stainless pipes in a process using a colored photosensitive composition because Mochida et al teach compositions containing the same components in the same amounts as recited by the instant claims.
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 Mochida 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, Mochida et al clearly teach that the cleaning composition may contain either one, or two or more types of the solvent (A), and that preferably, the organic solvent is propylene glycol monoethyl ether, ethyl lactate, butyrolactone or propylene glycol monomethyl ether acetate. Additionally, Mochida et al clearly teach the lower limit of the content of the solvent (A) is preferably 50% by mass, more preferably 80% by mass, and still more preferably 90% by mass. The upper limit of the content is preferably 99.9% by mass, more preferably 99.5% by mass, and still more preferably 99.0% by mass, which would clearly suggest, for example, a composition containing 80% by weight of butyrolactone and 10% by weight of propylene glycol monomethyl ether and would fall within the scope of the instant claims.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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). Thus, the Examiner asserts that the teachings of Mochida et al are sufficient to render the claimed invention obvious under 35 USC 103.
With respect to the rejection of instant claim 6 under 35 USC 103 using Mochida et al, further in view of Kamei et al, Applicant states that the teachings of Mochida et al are not sufficient to suggest the claimed invention and that the teachings of Kamei et al are not sufficient to remedy the deficiencies of Mochida et al. In response, note that, the Examiner that the teachings of Mochida et al are sufficient to suggest the claimed invention for the reasons set forth above. Additionally, the Examiner asserts that Kamei et al is analogous prior art relative to the claimed invention and Mochida et al and that one of ordinary skill in the art clearly would have looked to the teachings of Kamei et al to cure the deficiencies of Mochida with respect to instant claim 6. Kamei et al is a secondary reference relied upon for its teaching of 3-methoxybutyl acetate. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use 3-methoxybutyl acetate in the composition taught by Mochida et al, with a reasonable expectation of success, because Kamei et al teach the equivalence of 3-methoxybutyl acetate to propylene glycol monomethyl ether acetate as a suitable solvent in a similar composition and further, Mochida et al teach the use of propylene glycol monomethyl ether acetate. Thus, the Examiner asserts that the teachings of Mochida et al, further in view of Kamei et al, are sufficient to render the claimed invention obvious under 35 USC 103.
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 26, 2026
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