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 1-20 are pending. Note that, Applicant’s amendment and arguments filed April 8, 2026, have been entered.
Applicant’s election of Group I, claims 1-13, in the reply filed on April 8, 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 April 8, 2026.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 1/8/26 have been withdrawn:
The objection to claims 2-4 and 8 due to minor informalities has been withdrawn.
The rejection of claims 1-6 and 9-12 under 35 U.S.C. 103 as being unpatentable over Konno et al (US2005/0176606), has been withdrawn.
The rejection of claims 7-9 under 35 U.S.C. 103 as being unpatentable over Konno et al (US2005/0186606) as applied to claims 1-6 and 10-12 above, and further in view of WO2020/195343, has been withdrawn.
The rejection of claim 13 under 35 U.S.C. 103 as being unpatentable over Konno et al (US2005/0176606); or WO2012/154498 in view of WO2020/195343; as applied to the rejected claims above, and further in view of WO2013/123317, has been withdrawn.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 1-12, 16, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO2012/154498 in view of WO2020/195343. Note that, Kamimura et al (US 2021/0395645) is a continuation of WO2020/195343 and Kamimura et al has been used and an English language translation of WO2020/195343.
With respect to independent, instant claim 1, ‘498 teaches removal compositions and processes for removing at least one metal impurity from a substrate (e.g., a silicon-containing substrate) having same thereon. Advantageously, the compositions remove metal impurities, e.g., iron, from silicon-containing substrates used as semiconductor devices and solar cell devices. See Abstract. The compositions contain about 0.01% to about 50% by weight of at least one chelating agent, about 1% to about 99.9% of water, 0.01 to about 15% of surfactant, etc. See paras. 62-65. Suitable chelating agents include HEDP (1-hydroxyetylidene-1,1’-diphosphonic acid), citric acid, etc. See para. 42. Suitable surfactants include nonionic, anionic, etc., and mixtures thereof. See para. 43. The composition have a pH value in the range of from about 1 to about 7, more preferably from about 2.5 to about 4.5. See para. 40. A buffer system can be added to achieve and maintain the desired pH, wherein suitable buffering agents include phosphate buffers such as sodium phosphate/disodium phosphate, etc. See paras. 39 and 48. The weight ranges as taught by ‘498 would clearly suggest the mass ratios as recited by instant claim 1.
‘498 does not teach the use of a mixture of alkylbenzene sulfonic based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths or a composition containing citric acid, 1-hydroxyethylidene-1,1'-diphosphonic acid, a sulfonic-acid based surfactant and a mixture of alkylbenzene sulfonic based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Kamimura et al (i.e., WO2020/195343) teach a cleaning liquid of the invention (hereinafter also simply called "cleaning liquid") is a cleaning liquid for semiconductor substrates, the cleaning liquid containing a chelating agent. See para. 39. The organic chelating agent is a chelating agent constituted of an organic compound, and examples thereof include a carboxylic acid-based chelating agent having a carboxy group as the coordination group, and a phosphonic acid-based chelating agent having a phosphonic acid group as the coordination group. See para. 51. The cleaning liquid may contain a surfactant. The surfactant is not particularly limited as long as it is a compound having a hydrophilic group and a hydrophobic group (lipophilic group) in the molecule, and examples thereof include an anionic surfactant, a cationic surfactant, a nonionic surfactant, and an amphoteric surfactant, and mixtures thereof. See para. 101 and para. 136. Examples of the sulfonic acid-based surfactant include alkyl sulfonic acid, alkylbenzene sulfonic acid, alkylnaphthalene sulfonic acid, alkyl diphenyl ether disulphonic acid, alkyl methyl taurine, sulfosuccinic acid diester, polyoxyalkylene alkyl ether sulfonic acid, and salts thereof. A monovalent alkyl group that the sulfonic acid based surfactant has is not particularly limited and is preferably an alkyl group having 2 to 24 carbon atoms and more preferably an alkyl group having 6 to 18 carbon atoms. A divalent alkylene group that the polyoxyalkylene alkyl ether sulfonic acid has is not particularly limited and is preferably an ethylene group or a 1,2-propanediyl group. The number of repeats of an oxyalkylene group in the polyoxyalkylene alkyl ether sulfonic acid is preferably 1 to 12 and more preferably 1 to 6. Specific examples of the sulfonic acid-based surfactant include hexanesulfonic acid, octanesulfonic acid, decanesulfonic acid, dodecanesulfonic acid, toluenesulfonic acid, cumenesulfonic acid, octylbenzenesulfonic acid, dodecylbenzenesulfonic acid (DBSA), dinitrobenzenesulfonic acid (DNBSA), and lauryl dodecylphenyl ether disulfonic acid (LDPEDSA). See paras. 114-118.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a mixture of alkylbenzene sulfonic-based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths in the composition taught by ‘498, with a reasonable expectation of success, because Kamimura et al teach the use of a mixture of alkylbenzene sulfonic based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths in a similar composition and further, ‘498 teaches the use of a variety of anionic surfactants in general.
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 citric acid, 1-hydroxyethylidene-1,1'-diphosphonic acid, a sulfonic-acid based surfactant and a mixture of alkylbenzene sulfonic based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths, water, 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 the broad teachings of ‘498 in view of Kamimura et al (i.e., WO2020/195343) suggest a composition containing citric acid, 1-hydroxyethylidene-1,1'-diphosphonic acid, a sulfonic-acid based surfactant and a mixture of alkylbenzene sulfonic based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims. Note that, the Examiner asserts that the broad teachings of ‘498 in view of Kamimura et al would suggest compositions having the same electrical conductivity as recited by independent, instant claim 1 because ‘498 in view of Kamimura et al teach compositions containing the same components in the same amounts as recited by the instant claims and further, such properties would flow naturally from the teachings of ‘498 in view of Kamimura et al.
Claims 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over WO2012/154498 in view of WO2020/195343; as applied to claims 1-12, 16, 17, 19, and 20 above, and further in view of WO2013/123317. Note that, Kamimura et al (US 2021/0395645) is a continuation of WO2020/195343 and Kamimura et al has been used and an English language translation of WO2020/195343.
‘498 are relied upon as set forth above. However, ‘498 do not teach the use and amount of phosphate ion in addition to the other requisite components of the composition as recited by the instant claims.
‘343 teaches an amine-free composition and process for cleaning post-chemical mechanical polishing (CMP) residue and contaminants from a microelectronic device having said residue and contaminants thereon. The amine-free composition preferably includes at least one oxidizing agent, at least one complexing agent, at least one basic compound, and water and has a pH in the range from about 2.5 to about 11.5. See Abstract. Additionally, the composition may contain a buffering agent in amounts from about 0.01% to about 10% by weight, wherein buffering agents are added to stabilize the first composition during dilution and manufacturing as well as achieve the appropriate compositional pH, as readily determined by the skilled artisan. Buffering agents contemplated include, but are not limited to, dipotassium phosphate, potassium carbonate, boric acid, lysine, proline, B-alanine, ethylenediamine tetraacetic acid (EDTA), diethylenetriaminepentaacetic acid (DTPA), dimethyl glyoxime, dibasic phosphate salts (e.g., (NH)H2P0 4, K2HPO 4), tribasic phosphate salts (e.g., (NH4)3PO 4, K3PO4), mixtures of dibasic and tribasic phosphate salts (e.g., K2HPO 4/K3PO 4), mixures of dibasic and tribasic carbonate salts (e.g., K3CO KHCO 3), hydroxyethylidene diphosphonic acid (HEDP), and combinations thereof. Preferred buffering agents include dibasic phosphate salts (e.g., (NH4)H2PO 4, K₂HPO 4), tribasic phosphate salts (e.g., (NH4)3PO 4. K3PO 4),mixtures of dibasic and tribasic phosphate salts (e.g., K2HPO /K3PO 4), HEDP, and combinations thereof. See paras. 34-41.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a phosphate buffer in an amount, for example of 0.5% or 1% by weight, in the composition taught by ‘498, with a reasonable expectation of success, because ‘343 teaches the use of a phosphate buffer in an amount, for example of 0.5% or 1% by weight, in a similar composition which stabilizes composition during dilution and manufacturing as well as achieves the appropriate compositional pH and further, ’498 teaches the use of phosphate buffers in general.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 18-21 of copending Application No. 18/492224 (reference application, now allowed). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-15 and 18-21 of 18/492224 encompass the material limitations of independent, instant claim 1 and the respective dependent claims.
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 citric acid, 1-hydroxyethylidene-1,1'-diphosphonic acid, a sulfonic-acid based surfactant and a mixture of alkylbenzene sulfonic based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths, water, 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 claims 1-15 and 18-21 of 18/18492224 suggest a composition containing citric acid, 1-hydroxyethylidene-1,1'-diphosphonic acid, a sulfonic-acid based surfactant and a mixture of alkylbenzene sulfonic based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths, water, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using WO2012/154498 in view of WO2020/195343 (i.e., Kamimura et al), Applicant states that the liquid described in WO 2012/154498 and the liquid described in Kamimura are completely different from each other in use application, so a person skilled in the art would not intentionally combine them. Additionally, Applicant states that while Kamimura et al disclose an alkyl group having 2 to 24 carbon atoms in a sulfonic acid-based surfactant, it does not specify that the four surfactants recited in claim 17 are included and the alkyl group is branched. Also, Applicant states that while WO 2013/123317 relating to a phosphate ion describes that the content of the buffering liquid is "0.01 to 10%," this range does not overlap the range of claim 18. Further, with respect to instant claim 20, Applicant states that in the embodiment in which the oxidizing agent is not contained, it is described in ‘498 that the content of the chelating agent is at most "25%," while the content of chelating agent in claim 20 is from "30% to 35% by mass.”
In response, note that, the Examiner asserts that Kamimura et al is analogous prior art relative to the claimed invention and ‘498 since it is drawn to the same field of endeavor, namely, semiconductor cleaning/treatment compositions, and that one of ordinary skill in the art clearly would have looked to the teachings of Kamimura et al to cure the deficiencies of ‘498. Kamimura et al is a secondary reference relied upon for its teaching of a mixture of alkylbenzene sulfonic based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use a mixture of alkylbenzene sulfonic-based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths in the composition taught by ‘498, with a reasonable expectation of success, because Kamimura et al teach the use of a mixture of alkylbenzene sulfonic based surfactants having alkyl groups of 10, 11, 12, and 13 carbon chain lengths in a similar composition and further, ‘498 teaches the use of a variety of anionic surfactants in general. Note that, Kamimura et al teach the equivalence of a variety of alkylbenzene sulfonic based surfactants, and it is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06. Additionally, the Examiner asserts that one of ordinary skill in the art would expect similar surfactant properties when using linear or branched alkylbenzene sulfonic based surfactants; Note that, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties. Further, compounds which are position isomers or homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09(I) and (II).
With respect to instant claim 20, the Examiner asserts that ‘498 does not require the use of an oxidant and clearly teaches the oxidizing agents are optional (See para. 38 of ‘498); ‘498 clearly and generally teaches that the compositions may contain about 0.01% to about 50% by weight (See para. 62 of ‘498) and would clearly suggest embodiments containing no oxidizing agent and, for example, 30% by weight of a chelating which would fall within the scope of instant claim 20. Thus, the Examiner asserts that the teachings of ‘498 in view of Kamimura et al are sufficient to render the claimed invention obvious under 35 USC 103.
With respect to the rejection of claims 13 and 18 under 35 U.S.C. 103 as being unpatentable over WO2012/154498 in view of WO2020/195343, further in view of WO2013/123317, Applicant states that the teachings of ‘343 are not sufficient to suggest the claimed invention and that the teachings of ‘317 are not sufficient to remedy the deficiencies of ‘343. In response, note that, the Examiner asserts that the teachings of ‘498 are sufficient to suggest the claimed invention for the reasons set forth above. Additionally, the Examiner asserts that ‘317 is analogous prior art relative to the claimed invention and ‘498 and that one of ordinary skill in the art clearly would have looked to the teachings ‘317 to cure the deficiencies of ‘498 with respect to instant claims 13 and 18. ‘317 is a secondary reference relied upon for its teaching of the use and amount of phosphate ion as recited by the instant claims. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use a phosphate buffer in an amount, for example of 0.5% or 1% by weight, in the composition taught by ‘498, with a reasonable expectation of success, because ‘343 teaches the use of a phosphate buffer in an amount, for example of 0.5% or 1% by weight, in a similar composition which stabilizes composition during dilution and manufacturing as well as achieves the appropriate compositional pH and further, ’498 teaches the use of phosphate buffers in general. Thus, the Examiner asserts that the teachings of ‘498 in view of ‘343, further in view of ‘317, 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/June 3, 2026
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