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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 09/22/2025. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
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.
Claims 1-10, 13, 15 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hernandez (EP3686265A1).
With regards to claims 1, 5, 6, 13, 15 and 16, Hernandez teaches a liquid laundry composition comprising 0.8 wt % citric acid (pH adjusting agent), 4.5 wt% sophorolipid (a glycolipid biosurfactant), 7.5 wt% C12-18 7 EO (a non-ionic surfactant), a 0.5 wt% soil repellant polymer (an anionic polymer), among others (see Example 1, Table 1). The pH of the composition was adjusted to be between 8 and 9 using 1-5 wt% caustic soda (another pH adjusting agent) (see [0153]). Hernandez fails to teach the removal rate of at least about 30% of total defect counts (TDC) remaining on a substrate after a polishing/CMP process.
However, the structure of the prior art is structurally identical to the claimed composition in the instant claim. Therefore, the removal rate is inherent and necessarily at least 30%. “Products of identical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II. Hence, the removal rate is inherently taught by Hernandez, absent of evidence to the contrary.
With regards to claims 2-4, Hernandez teaches the use of carboxylic acids (such as acetic acids, lactic acid, citric acid, and mixtures thereof) as pH regulating agents for the composition (see [0124]).
With regard to claims 7-10, Hernandez teaches additional biosurfactants such as phospholipids, glycolipids (rhamnolipids, sophorolipids, trehaloselipids, mannosylerythritlipids, glucoselipids, cellobioselipids), polyketideglycosids, isoprenoide and carotenoid glycolipids, and lipopeptides (see [0005]). Hernandez also teaches a sophorolipid made up of the general Formula III (see [0049]) and Formula IV (see [0050]).
With regard to claim 17, Hernandez teaches a formulation comprising of a sophorolipid biosurfactant, an additional surfactant, and a fatty acid such as linoleic acid, a dienoic acid (see [0013]).
Claims 1-4, 12, 13 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Richli (EP3290020A1).
With regards to claim 1-4, Richli teaches a medical cleaning composition comprising at least one glycolipid biosurfactant in 0.1-50 wt% of the composition (see [0097]), which include rhamnolipids and sophorolipids (see [0067]), and at least one alkoxylated fatty acid amide in 0.1-50 wt% of the composition (see [0074]). The composition preferably has a pH of between 0-14 (see [0171]) and can be adjusted by pH adjusters such as citric acid, lactic acid, glycolic acid, phosphoric acid, among others (see [0170]). Richli however, fails to teach the removal rate of at least about 30% of total defect counts (TDC) remaining on a substrate after a polishing/CMP process.
Given the structure of the prior art is structurally identical to the claimed composition in the instant claim, the removal rate is inherent and necessarily at least 30%. “Products of identical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II. Hence, the removal rate is inherently taught by Richli, absent of evidence to the contrary.
With regard to claim 12, Richli teaches the optional use of biosurfactants such as surfactin, iturin, fengycin lipopeptides (see [0136]).
With regards to claim 14, Richli further teaches the alkoxylated fatty acid amide to comprise of a surfactant, which further comprises of a mixture of different chain lengths and degrees of saturation of the fatty acid radical and is derived from a C18 vegetable oil (see [0068]). Thus, functionally the alkoxylated fatty acid amide is a biosurfactant and Richli’s composition can be formulated with biosurfactants exclusively.
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.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hernandez (EP3686265A1).
With regard to claim 11, the teachings of Hernandez are discussed above. However, a glycolipid comprising 5-95% by weight acidic-type sophorolipid is not explicitly taught. Hernandez does teach 4.5 wt % composition of the sophorolipid in the liquid composition (see Example 1, Table 1) which is about 5 wt%. If range of prior art and claimed range do not overlap, obviousness may still exist if the range are close enough that one would not expect a difference in properties, In re Woodruff 16 USPQ 2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner 227 USPQ 773 (Fed. Cir. 1985); In re Aller 105 USPQ 233 (CCPA 1955).
Claims 1-2 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Staley et. al (US2001037821A1) hereinafter Staley, in view of Kim et. al (KR20150117350A) hereinafter Kim.
With regards to claims 1-2, Staley teaches a method for polishing and cleaning a substrate using a cleaning composition (see [0002]), further specifying the composition can be used to polish any part of a substrate, such as a semiconductor device, at any stage in production (see [0011]). Staley teaches the use of surfactants including cationic surfactants, anionic surfactants, anionic polyelectrolytes, nonionic surfactants, amphoteric surfactants, fluorinated surfactants, mixtures thereof, and the like (which can include biosurfactants) (see [0021]) and as well as the addition of pH adjuster such as acetic acid, citric acid, malonic acid, succinic acid, tartaric acid, and oxalic acid (see [0024]). The pH of the composition will necessarily fall into the range of 1-14 recited in the instant claim because the range encompasses all possible pHs. The removal rate of at least about 30% of total defect counts (TDC) remaining on a substrate after a polishing/CMP process is not explicitly taught. Staley teaches two cleaning compositions, C12 and C13, comprising 13.79 wt% citric acid, 7 wt% ammonium fluoride, among others with “Excellent” silica particle removal ability from tungsten surface and a Tetra Ethyl Ortho Silicate (TEOS) defect count of 303 or less (see Table 7). Excellent cleaning performance is defined as particle area coverage after cleaning being <10% of the area imaged (see [0104]), hence at least a 90% cleaning performance. It would have been reasonable to one skilled in the prior art before the effective filing date to expect the cleaning compositions taught by Staley in Table 7 to have a removal rate of at least 30% of TDC, given their excellent silica particle removal ability and lower TEOS defect count. However, Staley fails to teach the use of glycolipid and lipopeptide biosurfactants in the cleaning composition.
Kim teaches a cleaning composition for a semiconductor PCB substrate comprising a sophorolipid as an active ingredient (see [0008]); see [0003]). It would have been obvious to one having ordinary skill in the art before the effective filing date to use the sophorolipid active ingredient of Kim’s composition as the biosurfactant in the cleaning composition used in the method taught by Staley, for the benefit of lowering toxicity, increased biodegradability, and improved environmental compatibility (see [0003]). This modification of the biosurfactant in Staley’s method would also improve absorbency of cleaning (see [0003]) and can reasonably be expected to retain the efficacy of polishing and cleaning the substrate.
With regard to claim 18, Staley teaches a method of polishing and cleaning a substrate, particularly semiconductor devices (see [0016]), with a suitable cleaning composition stated above. Staley further teaches the use of CMP processes to remove slurry and substrate residue from the surface of the polishing substrate (see [0006]) and also a method of cleaning a substrate with a multi-component cleaning composition wherein the components of the composition are mixed just before being delivered at the point of use (see [0010]). The cleaning of the substrate with the composition necessarily entails contact with the substrate.
With regard to claim 19, Staley teaches a substrate comprised of silicon carbide, tungsten carbide, tungsten nitride, among others (see [0009]).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 18-19 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 and 17 of prior patent US11884900B2. This is a statutory double patenting rejection. Both sets of claims are drawn to identical methods of cleaning and polishing an identical wafer substrate with a cleaning composition comprising of a glycolipid or lipopeptide biosurfactant that has a pH between 1-14.
Conclusion
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/SP/ Patent Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/ Supervisory Patent Examiner, Art Unit 1761