DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. This office action is responsive to applicant’s amendment filed on 12/23/2025. Claims 1, 3-8 are pending. Claims 1, 5 have been amended. Claims 2, 6 have been cancelled.
The applicant’s Terminal Disclaimer filed on 12/23/2023 was sufficient to overcome the examiner’s previous provisional non-statutory double patent as being unpatentable over co-pending application No. 18/527,976.
The applicant’s amendment filed on 12/23/2025 along with the remark were sufficient to overcome the examiner previous ground of rejection under 35 U.S.C 102(a)(1) and/or 102(a)(2) as being anticipated by Hong (US 2020/0010959 A1) or as being anticipated by Ohhashi et at (US 2021/0155851 A1).
The examiner still maintained the previous ground of rejection under 35 U.S.C 102(a)(1) as being anticipated by Xie et al. ("Study of the Ce³⁺/Ce⁴⁺ Redox Couple in Mixed-Acid Media (CH₃SO₃H and H2SO4) for Redox Flow Battery Application", Energy Fuels, 2011, 25, pages 2399-2404).
New ground of rejection under 35 U.S.C 103 are set forth with respect to claims 1, 3-5, 7-8 as discussed below using new cited prior arts due to applicant’s amendment
Response to Arguments
4. The examiner withdraw the provisional double patenting rejection in view of the Terminal Disclaimer filed on 12/23/2023.
Regarding to previous ground of rejection under 35 U.S.C 102(a)(1) as being anticipated by Xia, the applicants stated:
“Claim 1 as amended recites, in part, "a cerium-containing oxidizing agent (A) comprising at least one member selected from the group consisting of a cerium nitrate salt and a cerium sulfate salt."
Xie fails to disclose such claim features. Rather, Xie merely discloses preparation of a
Ce3+ solution by neutralizing cerium carbonate. Xie fails to disclose or suggest a combination of the cerium-containing oxidizing agent (A), the an acid component (B) and water as recited by the claim language.
Since Xie fails to disclose each and every feature of claim 1 as amended, and claims 3-5 depend on claim 1, Xie does not anticipate claims 1 and 3-5. Accordingly, withdrawal of the rejection is respectfully requested.”
The examiner strongly disagrees. Xie teaches to use a solution comprises cerium sulfate (read on applicant’s cerium sulfate salt), methane sulfonic acid (read on applicant’s sulfonic acid) and water (See abstract, page 2402 col. 1). Xie further discloses wherein the concentration of methanesulfonic acid (MSA) is between 0 to 5 mol/L, including example of 1 mol/L, 2 mol/L. 3 mol/L, 4 mol/L, or 5 mol/L (Note: mol/dm-3 = mol/L because 1 dm-3 = 1 L; See abstract, Table 2 in pages 2401; within applicant’s range of 1.0 x 10-4 to 1.0 x 101 mol/L). Thus, the examiner still maintained previous ground of rejection under 35 U.S.C 102(a)(1) as being anticipated by Xie.
Regarding to previous ground of rejection under 35 U.S.C 102(a)(1) and/or 102(a)(2) as being anticipated by Hong (US 2020/0010959 A1) with respect to claims 1, 3-5, 7-8, the applicants stated:
“Hong (US 2020/0010959). Claims 1 and 5 have been amended to incorporate the subject matter of claims 2 and 6, respectively, to which no anticipation rejection over Hong is rendered. In fact, Hong fails to disclose regarding "a concentration of the acid component (B) is 1.0 x10-4 to 1.0 X101 mol/L." The amendments render the rejection over Hong moot. Accordingly, withdrawal of the rejection is respectfully requested.”
The applicant’s amendment along with the remark were sufficient to overcome the examiner’s previous ground of rejection under 35 U.S.C 102(a)(1) and/or 102(a)(2) as being anticipated by Hong (US 2020/0010959 A1). However, upon further consideration a new ground of rejection under 35 U.S.C 103 as being unpatentable over Hong (US 2020/0010959 A1) in view of Kuroiwa (US 2011/0297873 A1) are set forth as discussed below.
Regarding to previous ground of rejection under 35 U.S.C 102(a)(1) and/or 102(a)(2) as being anticipated by Ohhashi (US 2021/0155851 A1) with respect to claims 1, 3-5, 7-8, the applicants stated:
“Claims 1 and 5 have been amended to incorporate the subject matter of claims 2 and 6, respectively, to which no anticipation rejection over Ohhashi is rendered. In fact, Ohhashi fails to disclose regarding "a concentration of the acid component (B) is 1.0 x 10-4 to 1.0 x 101 mol/L." The amendments render the rejection over Ohhashi moot. Accordingly, withdrawal of the rejection is respectfully requested.”
The applicant’s amendment along with the remark were sufficient to overcome the examiner’s previous ground of rejection under 35 U.S.C 102(a)(1) and/or 102(a)(2) as being anticipated by Ohhashi et al. (US 2021/0155851 A1)
Terminal Disclaimer
5. The terminal disclaimer filed on 12/23/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/527,976 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Interpretation
6. Claims 1, 3-4 drawn to a composition. Composition claim drawn to what the composition is (i.e. ingredients of the composition), not what the composition does. In the preamble of claim 1, applicants recite “A chemical solution for removing a precious metal” (emphasis added). It is noted that previous metal is not part of chemical solution. Previous metal is intended use of the composition. According to the MPEP 2111.02(II), “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 of 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.” (emphasis added).
Claim Rejections - 35 USC § 102
7. 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.
8. 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.
9. Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xie et al. (“Study of the Ce3+/Ce4+ Redox Couple in Mixed-Acid Media (CH3SO3H and H2SO4) for Redox Flow Battery Application”, Energy Fuels, 2011, 25, pages 2399-2404), herein after refer as Xie.
As to claim 1, Xie discloses a chemical solution comprises:
A cerium-containing oxidizing agent (A) comprising at least one member selected from the group consisting of cerium sulfate(i.e. Ce2(SO4)3 or [Ce+3]2 / [SO4]-2; abstract, pages 2402, Table 1-Table 3);
An acid component (B) selected from the group consisting of sulfonic acid includes methanesulfonic acid (See abstract, pages 2399-2401; Note methanesulfonic acid is also known as MSA or CH3SO3H: See evidence reference: Wikipedia, "Methanesulfonic acid" via https://en.wikipedia.org/wiki/Methanesulfonic_acid );
Water (page 2399 col.2; page 2400 col. 1; page 2402, col. 1)
Wherein the concentration of methanesulfonic acid (MSA) is between 0 to 5 mol/L, including example of 1 mol/L, 2 mol/L. 3 mol/L, 4 mol/L, or 5 mol/L (Note: mol/dm-3 = mol/L because 1 dm-3 = 1 L; See abstract, Table 2 in pages 2401; within applicant’s range of 1.0 x 10-4 to 1.0 x 101 mol/L).
As to claim 3, Xie discloses the previous metal is platinum (i.e. platinum electrode; page 2399, col. 2, page 2400 col. 2, page 2401 col. 1-2).
As to claim 4, Xie discloses the acid component is sulfonic acid (e.g. methanesulfonic acid; aka MSA aka CH3SO3H; See abstract, pages 2399-2400).
As to claim 5, Xie discloses the method comprising: dissolving the cerium-containing oxidizing agent (A) and the acid component (B) in water (abstract, pages 2399-2402).
wherein the acid component (B) methanesulfonic acid (MSA) is dissolved in water to a concentration of is between 0 to 5 mol/L, including example of 1 mol/L, 2 mol/L. 3 mol/L, 4 mol/L or 5 mol/L (Note: mol/dm-3 = mol/L because 1 dm-3 = 1 L; See abstract, Table 2 in pages 2401; within applicant’s range of 1.0 x 10-4 to 1.0 x 101 mol/L).
Claim Rejections - 35 USC § 103
10. 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.
11. Claims 1, 3-5, 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hong (US 2020/0010959 A1) in view of Kuroiwa et al. (US 2011/0297873 A1).
As to claim 1, Hong discloses a chemical solution for removing a precious metal comprises:
A cerium-containing oxidizing agent (A) comprises at least one member selected from the group consisting of cerium nitrate salt (i.e. ammonium cerium nitrate; paragraph 0029);
An acid component (B) selected from the group consisting of sulfonic acid (paragraph 0035-0037);
Water (paragraph 0052).
As to claim 1, Hong fails to disclose a concentration of the acid component (B) is 1.x10-4 to 1.0 x 101 mol/L. However, Hong clearly teaches to use the acid in the amount of up to 50 wt%, including 0.1 wt% to 35 wt%, or from 1 wt% to 30 wt%, or from 1 wt% to 20 wt% or from 5 wt% to 15 wt% or from 10 wt% to 11 wt% (See paragraph 0040). It is well known in the art that methanesulfonic acid have a molecular weight of 96.1 g/mol (See evidence via Wikipedia, “Methanesulfonic acid” via https://en.wikipedia.org/wiki/Methanesulfonic_acid ; Note: This evidence reference was provided and cited by the examiner in previous office action). Any person having ordinary skill in the art would be able to convert weight percentage of the acid to mol/L if the density of the solution is known. The density of the solution can be easily measured. In a method for etching, Kuroiwa teaches to use methane sulfonic acid in a concentration of 0.01 to 1 mol/L, preferably 0.05 to 0.5 mol/L, including example of 0.16 mol/L (See paragraph 0029, 0047, Table 1, within applicant’s range of 1.x10-4 to 1.0 x 101 mol/L). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Hong in view of Kuroiwa by having the concentration of the acid in a range of 0.01 to 1 mol/L because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
As to claim 3, Hong discloses the previous metal is ruthenium (Ru) or platinum (paragraph 0024-0027).
As to claim 4, Hong discloses the acid component (B) is sulfonic acid (See paragraph 00355-0037).
As to claim 5, Hong discloses a method for manufacturing the chemical solution according to Claim 1, the method comprising: dissolving the cerium-containing oxidizing agent (A) and the acid component (B) in water (paragraph 0028, 0035-0037, 0052).
As to claim 5, Hong fails to disclose a concentration of the acid component (B) is 1.x10-4 to 1.0 x 101 mol/L. However, Hong clearly teaches to use the acid in the amount of up to 50 wt%, including 0.1 wt% to 35 wt%, or from 1 wt% to 30 wt%, or from 1 wt% to 20 wt% or from 5 wt% to 15 wt% or from 10 wt% to 11 wt% (See paragraph 0040). It is well known in the art that methanesulfonic acid have a molecular weight of 96.1 g/mol (See evidence via Wikipedia, “Methanesulfonic acid” via https://en.wikipedia.org/wiki/Methanesulfonic_acid ; Note: This evidence reference was provided and cited by the examiner in previous office action). Any person having ordinary skill in the art would be able to convert weight percentage of the acid to mol/L if the density of the solution is known. The density of the solution can be easily measured. In a method for etching, Kuroiwa teaches to use methane sulfonic acid in a concentration of 0.01 to 1 mol/L, preferably 0.05 to 0.5 mol/L, including example of 0.16 mol/L (See paragraph 0029, 0047, Table 1, within applicant’s range of 1.x10-4 to 1.0 x 101 mol/L). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Hong in view of Kuroiwa by having the concentration of the acid in a range of 0.01 to 1 mol/L because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
As to claim 7, Hong discloses method for treating a substrate, the method comprising: bringing the chemical solution according to Claim 1 into contact with a substrate on which a precious metal is exposed on a surface to remove at least a part of the precious metal from the substrate (paragraph 0025-0029, 0035-0037, 0052).
As to claim 8, Hong discloses a method for manufacturing a semiconductor device (paragraph 0004, 0022), the method comprising: treating a substrate by the method for treating a substrate according to Claim 7 (paragraph 0022, 0025-0029, 0035-0037, 0052).
Conclusion
12. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH X TRAN whose telephone number is (571)272-1469. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 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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BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/Primary Examiner, Art Unit 1713