DETAILED ACTION
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 .
Election/Restrictions
Newly submitted amendments to claim 16 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The claim was limited to two sublimable substances and one combination of solvent and surfactant. The elimination of one of the sublimable substances and addition of other solvent and surfactants makes the combinations created in the claim mutually exclusive from those previously claimed. As such, the species including a3, a4, a14, a18, a19 and a20 are not being examined.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, the species including a3, a4, a14, a18, a19 and a20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant's arguments filed 4/22/2026 have been fully considered but they are not persuasive. The applicant argues that the prior art does not teach the solvent/surfactant combinations.
While the solvent taught is isopropyl alcohol in Sasaki, the other solvents listed are structurally similar, and thus obvious variants. The other solvents are only subtractions of one or two -CH groups, for example. , according to MPEP 2144.09 II: “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007)
The surface tension is lowered in the treatment liquid by adding a surfactant in Sasaki (paras 0004, 0280-0285) and its only requirement is that it has a hydrophobic and hydrophilic group. Sasaki teaches tert butyl alcohol as the surfactant (para 00258-0259) and not those claimed. However, tert butanol is structurally similar to the alcohols claimed, such as isobutanol and 1-butanol. They are alcohols that would fulfill the requirement of having a hydrophobic and hydrophilic group. In fact. All of the surfactants listed are structurally similar and obvious variants. According to MPEP 2144.09 II: “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007)
Therefore, it would have been obvious to one of ordinary skill in the art to use any of the claimed solvents and surfactants as they are all structurally similar and would be expected to have the same properties.
As to claim 16, the applicant deleted cyclohexanone oxime. The formula of cyclohexanone oxime is C6H11NO, which is the same as e-caprolactam. This makes these two molecules isomers. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007)
Therefore, the previous rejection is maintained.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al. (US 2019/0390320 A1; hereafter Sasaki)
As to claims 1-3, Sasaki teaches a substrate treating method for treating a substrate (abstract), the substrate treating method comprising: a treatment liquid supplying step of supplying a treatment liquid, containing a sublimable substance, a solvent, and a surfactant, to the substrate; a solidified film forming step of forming a solidified film containing the sublimable substance on the substrate by evaporating the solvent and the surfactant from the treatment liquid on the substrate; and a sublimation step of sublimating the solidified film, wherein the surfactant has an octanol-water partition coefficient of -1 or more and 1 or less, and vapor pressure of the surfactant at room temperature is 0.9 times or more and 3 times or less vapor pressure of the solvent at room temperature (abstract). In paras 0012 and 0013, camphor is taught as the sublimable substance and isopropyl alcohol in para 0013 as the solvent isopropyl alcohol or propylene glycol monomethyl ether acetate may be the solvent in para 0088.
While the solvent taught is isopropyl alcohol, the other solvents listed are structurally similar, and thus obvious variants. The other solvents are only subtractions of one or two -CH groups, for example. , according to MPEP 2144.09 II: “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007)
The surface tension is lowered in the treatment liquid by adding a surfactant (paras 0004, 0280-0285) and its only requirement is that it has a hydrophobic and hydrophilic group. Sasaki teaches tert butyl alcohol as the surfactant (para 00258-0259) and not those claimed. However, tert butanol is structurally similar to the alcohols claimed, such as isobutanol and 1-butanol. They are alcohols that would fulfill the requirement of having a hydrophobic and hydrophilic group. In fact. All of the surfactants listed are structurally similar and obvious variants. According to MPEP 2144.09 II: “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007)
Therefore, it would have been obvious to one of ordinary skill in the art to use any of the claimed solvents and surfactants as they are all structurally similar and would be expected to have the same properties.
Further, as the rejection teaches the same substances and those that met the physical limitations in the cancelled groups, it follows that they will have the claimed physical properties as desired in claims 1-3.
As to claim 5, the substrate has a pattern in the abstract of Sasaki.
Claim(s) 1-3, 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki in view of EITHER Otusuji et al. (US 2020/0411309 A1, hereafter Otusuji), Sasaki (US 2020/0411307, hereafter Sasaki 307) OR Dumas et al. (US 4775449)
As to claims 1-3, Sasaki teaches a substrate treating method for treating a substrate (abstract), the substrate treating method comprising: a treatment liquid supplying step of supplying a treatment liquid, containing a sublimable substance, a solvent, and a surfactant, to the substrate; a solidified film forming step of forming a solidified film containing the sublimable substance on the substrate by evaporating the solvent and the surfactant from the treatment liquid on the substrate; and a sublimation step of sublimating the solidified film, wherein the surfactant has an octanol-water partition coefficient of -1 or more and 1 or less, and vapor pressure of the surfactant at room temperature is 0.9 times or more and 3 times or less vapor pressure of the solvent at room temperature (abstract). In paras 0012 and 0013, camphor is taught as the sublimable substance and isopropyl alcohol in para 0013 as the solvent isopropyl alcohol or propylene glycol monomethyl ether acetate may be the solvent in para 0088.
The surface tension is lowered in the treatment liquid by adding a surfactant (paras 0004, 0280-0285) and its only requirement is that it has a hydrophobic and hydrophilic group. Sasaki teaches tert butyl alcohol as the surfactant (para 00258-0259) and not those claimed.
Otusuji teaches mixing IPA with methanol, ethanol etc. in para 0113, among other claimed combinations. These alcohols also meet the requirements of a surfactant of being hydrophobic and hydrophilic in Sasaki and being known to be used as surfactants by changing the surface tension in para 0004. 0280-0285. Therefore, it would have been obvious to one of ordinary skill in the art to use the solvents of Sasaki with the surfactants of Otusuji as Otusuji teaches the art recognized suitability and utility of such.
Further, Dumas teaches methanol as an adhesion promoter in the mixture (col 4 lines 50-65). Tert butyl alcohol is similarly taught as an adhesion promoter in the Sasaki referenced areas above. Therefore, it would have been obvious to one of ordinary skill in the art to use the solvents of Sasaki with the methanol of Dumas as Dumas teaches the art recognized suitability and utility of such.
While the solvents taught are cancelled, the other solvents listed are structurally similar, and thus obvious variants. The other solvents are only subtractions of one or two -CH groups, for example. , according to MPEP 2144.09 II: “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007)
Sasaki teaches tert butyl alcohol as the surfactant (para 00258-0259) and not those claimed. However, tert butanol is structurally similar to the alcohols claimed, such as isobutanol and 1-butanol. They are alcohols that would fulfill the requirement of having a hydrophobic and hydrophilic group. In fact. All of the surfactants listed are structurally similar and obvious variants. According to MPEP 2144.09 II: “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007)
Therefore, it would have been obvious to one of ordinary skill in the art to use any of the claimed solvents and surfactants as they are all structurally similar and would be expected to have the same properties.
As to claim 5, the substrate has a pattern in the abstract of Sasaki.
As to claim 16, Sasaki teaches a substrate treating method for treating a substrate (abstract), the substrate treating method comprising: a treatment liquid supplying step of supplying a treatment liquid, containing a sublimable substance, a solvent, and a surfactant, to the substrate; a solidified film forming step of forming a solidified film containing the sublimable substance on the substrate by evaporating the solvent and the surfactant from the treatment liquid on the substrate; and a sublimation step of sublimating the solidified film, wherein the surfactant has an octanol-water partition coefficient of -1 or more and 1 or less, and vapor pressure of the surfactant at room temperature is 0.9 times or more and 3 times or less vapor pressure of the solvent at room temperature (abstract). In paras 0012 and 0013, camphor is taught as the sublimable substance and isopropyl alcohol as the solvent. The surfactant may be tert-butanol (also known as tertiary butyl alcohol) in para 0258-0259, fulfilling the preferred substances in the instant specification and claim 16. The surface tension is lowered in the treatment liquid by adding these alcohols in para 0004, therefore having them act as surfactants (also see paras 0280-0285). In paragraphs 0258-0259, Sasaki teaches isopropyl alcohol as the solvent and tert butyl alcohol as the surfactant, meeting the claim language, and any variants are obvious as discussed above. However, Sasaki teaches the sublimable substance as camphor and not necessarily cyclohexanone oxime or E-caprolactam.
Otusuji teaches cyclohexanone oxime with the same solvents to dry a substrate and inhibit pattern collapse in paras 0008-0009. Sasaki 307 teaches cyclohexanone oxime with the same solvents to dry a substrate and inhibit pattern collapse in paras 0007-0008. Dumas et al. teaches cyclohexanone oxime as a similar sublimable substance in the same solvents in col. 3 lines 40-67.
The formula of cyclohexanone oxime is C6H11NO, which is the same as e-caprolactam. This makes these two molecules isomers. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007)
Therefore, it would have been obvious at the time of filing to modify Sasaki to include the sublimable e-caprolactam in its mixture as taught by Otusuji, Sasaki 307 and Dumas et al. as these references teach the art recognized suitability and utility of its use and isomers are obvious variants of one another.
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 KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718
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