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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The abstract of the disclosure is objected to because it recites “Representative figure: Fig. 1” which should be omitted. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 10 and 11 are objected to because of the following informalities: Claim 10 recites “(wherein…group)” such that the parentheses should be omitted. Claim 11 recites “coating the aforementioned composition for removing edge beads from the metal-containing resists claim 1” but should instead recite --coating the composition for removing edge beads from the metal-containing resists of claim 1--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9 and 10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 9 and 10 recite “The composition of claim 1, wherein a metal compound included in the metal-containing resists”. However, claim 1 is directed to a composition, not a metal-containing resist. Claim 1 recites “for removing edge beads from metal-containing resists” which refers to the use of the composition. It has been held that a recitation with respect to the manner in which a claimed composition is intended to be used does not differentiate the claimed composition from a prior art composition satisfying the claimed structural limitations. Ex Parte Masham, 2, USPQ2d 1647 (1987). This recitation of the composition is drawn to intended use; therefore, this limitation does not add any patentable weight to the claim (MPEP 2106). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. The Examiner suggests canceling said claims and adding new claims reciting the same subject matter but depend from claim 11 since it is the only claim which positively recites a metal-containing resist.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/565,488 (reference application) (U.S. 2024/0369935). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending claims are directed to compositions comprising an organic solvent and a compound, specifically ‘488 teaches pyrocatechol which encompasses a cyclic compound substituted with two hydroxy groups having a carbon number of 6 and 3 double bonds of instant claims 1-4, specifically Chemical Formula 2 of instant claim 5, more specifically Chemical formula 2-1 of instant claim 6, even more specifically the middle compound of Group 2 of instant claim 7. Claims 4-8 of ‘488 encompass instant claims 9-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/580,110 (reference application) (U.S. 2024/0329536). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending claims are directed to compositions comprising an organic solvent and a compound, specifically ‘110 teaches pyrocatechol which encompasses a cyclic compound substituted with two hydroxy groups having a carbon number of 6 and 3 double bonds of instant claims 1-4, specifically Chemical Formula 2 of instant claim 5, more specifically Chemical formula 2-1 of instant claim 6, even more specifically the middle compound of Group 2 of instant claim 7. Claims 4-8 of ‘110 encompass instant claims 9-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 17/858,921 (reference application) (U.S. 2023/0038110). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending claims are directed to compositions comprising an organic solvent and a compound, specifically ‘921 teaches 2-hydroxy-2,4,6-cycloheptatrien-1-one which encompasses a cyclic compound substituted with one hydroxy group having a carbon number of 7 and 3 double bonds of instant claims 1-4, specifically Chemical Formula 3 of instant claim 5, more specifically Chemical formula 3-1 of instant claim 6, even more specifically the right compound of Group 2 of instant claim 7. Claims 7-11 of ‘921 encompass instant claims 9-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-10 of copending Application No. 17/858,924 (reference application) (U.S. 2023/0037563). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending claims are directed to compositions comprising an organic solvent and a compound, specifically ‘924 teaches 2-hydroxy-2,4,6-cycloheptatrien-1-one which encompasses a cyclic compound substituted with one hydroxy group having a carbon number of 7 and 3 double bonds of instant claims 1-4, specifically Chemical Formula 3 of instant claim 5, more specifically Chemical formula 3-1 of instant claim 6, even more specifically the right compound of Group 2 of instant claim 7. Claims 1 and 8-10 of ‘924 encompass instant claims 9-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (KR20110124955). WO2011142600 is being used as the English translation.
Park et al. teaches in Comparative Example 14, a photoresist stripper composition comprising 2.0% by weight TMAH, 75.0% by weight DMSO, 6.0% by weight of catechol, and 15.0% by weight water [p 11] (claim 8) wherein DMSO is dimethylsulfoxide which is an organic solvent of instant claims 1 and 9 and catechol is equivalent to a cyclic compound substituted with two hydroxy groups having a carbon number of 6 and 3 double bonds of instant claims 1-4, specifically Chemical Formula 2 of instant claim 5, more specifically Chemical formula 2-1 of instant claim 6, even more specifically the middle compound of Group 2 of instant claim 7. Park also teaches in Example 1, a photoresist stripper composition comprising 2.0% by weight TMAH, 86.0% by weight DMSO, 1.0% by weight of gallic acid, and 15.0% by weight water [p 11] (claim 8) wherein DMSO is dimethylsulfoxide which is an organic solvent of instant claims 1 and 9 and gallic acid is equivalent to a cyclic compound substituted with three hydroxy groups having a carbon number of 6 and 3 double bonds of instant claims 1, 3, and 4.
Claim 1 recites “for removing edge beads from metal-containing resists” which refers to the use of the composition. It has been held that a recitation with respect to the manner in which a claimed composition is intended to be used does not differentiate the claimed composition from a prior art composition satisfying the claimed structural limitations. Ex Parte Masham, 2, USPQ2d 1647 (1987). This recitation of the composition is drawn to intended use; therefore, this limitation does not add any patentable weight to the claim (MPEP 2106). Therefore, the metal compound recited in claims 9 and 10 holds no patentable weight.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoon et al. (U.S. 2003/0158058).
Yoon et al. teaches in Example 2, a photoresist remover composition comprising 5 wt% water soluble amine HDA, 15 wt% oxime P-Oxime, 25 wt% water, 8 wt% phenol compound PC, and 47 wt% alkyl amide DMAc [0056] wherein DMAc is dimethylacetamide which is an organic solvent of instant claims 1 and 8 and phenol compound PC is pyrocatechol which is equivalent to a cyclic compound substituted with two hydroxy groups having a carbon number of 6 and 3 double bonds of instant claims 1-4, specifically Chemical Formula 2 of instant claim 5, more specifically Chemical formula 2-1 of instant claim 6, even more specifically the middle compound of Group 2 of instant claim 7.
Claim 1 recites “for removing edge beads from metal-containing resists” which refers to the use of the composition. It has been held that a recitation with respect to the manner in which a claimed composition is intended to be used does not differentiate the claimed composition from a prior art composition satisfying the claimed structural limitations. Ex Parte Masham, 2, USPQ2d 1647 (1987). This recitation of the composition is drawn to intended use; therefore, this limitation does not add any patentable weight to the claim (MPEP 2106). Therefore, the metal compound recited in claims 9 and 10 holds no patentable weight.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zi et al. (U.S. 2018/0039182) in view of Yoon et al. (U.S. 2003/0158058).
Zi et al. teaches FIG. 8 provides a visual illustration of a flow in which the cleaning process is performed according to embodiments of the present disclosure. Referring to FIG. 8, an example lithography process 400 is illustrated. In some embodiments, the lithography process 400 is an EUV lithography process. The lithography process 400 includes a step 410 in which a photo-sensitive material is coated onto a wafer such as the wafer 45 [0067], he lithography process 400 includes a step 420 of pre-exposure baking, in which the wafer (and the metal-containing photo-sensitive material coated thereon) is baked. The lithography process 400 includes a step 430 of exposure, in which the wafer (and the metal-containing photo-sensitive material coated thereon) is exposed. In some embodiments, the exposure involves using ultraviolet (UV) light or using e-beam to expose the wafer 45. The lithography process 400 includes a step 440 of post-exposure bake, in which the wafer 45 (and the metal-containing photo-sensitive material coated thereon) is baked. The lithography process 400 includes a step 450 of developing, in which the wafer (and the metal-containing photo-sensitive material coated thereon) is developed via an application of a developer solution onto the wafer [0068], FIG. 9 provides another visual illustration of another flow in which the cleaning process is performed according to embodiments of the present disclosure. For reasons of consistency and clarity, similar elements appearing in FIGS. 8-9 are labeled the same. In comparison to the process flow shown in FIG. 8, the process flow shown in FIG. 9 performs the wafer cleaning after the steps 410, 420, 440, and 450, rather than during the steps 410 and 450. In other words, the wafer 45 may be cleaned (using the cleaning system 150) after the metal-containing photo-sensitive material has been coated onto the wafer, and/or after the pre-exposure baking process, and/or after the post-exposure baking process, and/or after the developing process. Again, it is understood that the wafer 45 need not necessarily be cleaned four times in this process flow. For example, the wafer 45 may be cleaned (using the cleaning system 150) just after any one of the steps 410, 420, 440, and 450, or combinations thereof [0070] in which the cleaning fluid 100 is applied to a back side of the wafer 45 and/or the side edges of the wafer 45 [0048] (claims 11 and 12). Zi et al. also teaches the cleaning fluid 100 contains a solvent that is selected to have specific ranges with respect to Hansen solubility parameters of delta D, delta P, and delta H. Hansen solubility parameters provide a way to predict whether one material will dissolve in another and form a solution [0050] but does not teach a cyclic compound substituted with at least one hydroxy group having a carbon number of 5 to 30 and at least one double bond in the ring.
However, Yoon et al. teaches in Example 2, a photoresist remover composition comprising 5 wt% water soluble amine HDA, 15 wt% oxime P-Oxime, 25 wt% water, 8 wt% phenol compound PC, and 47 wt% alkyl amide DMAc [0056] wherein DMAc is dimethylacetamide which is an organic solvent of instant claims 1 and 8 and phenol compound PC is pyrocatechol which is equivalent to a cyclic compound substituted with two hydroxy groups having a carbon number of 6 and 3 double bonds of instant claims 1-4, specifically Chemical Formula 2 of instant claim 5, more specifically Chemical formula 2-1 of instant claim 6, even more specifically the middle compound of Group 2 of instant claim 7. Yoon et al. also teaches the phenol compound containing 2 or 3 hydroxyl groups have the function of making the hydroxyl ion, which is produced by the reaction of hydroxylamine with hydrogen ions of water, penetrate the contact surface between the conductive layers. In addition, the phenol compound containing 2 or 3 hydroxyl groups have an anticorrosive function in that it can keep the lower metal film material from being corroded by the hydroxyl groups produced from the photoresist remover composition [0027].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Zi et al. to include other known resist remover compositions (cleaning liquids) such as those taught by Yoon et al. and arrive at the instant claims through routine experimentation of substituting equally suitable components for the sought invention in order to keep the lower metal film material from being corroded.
Claim 1 recites “for removing edge beads from metal-containing resists” which refers to the use of the composition. It has been held that a recitation with respect to the manner in which a claimed composition is intended to be used does not differentiate the claimed composition from a prior art composition satisfying the claimed structural limitations. Ex Parte Masham, 2, USPQ2d 1647 (1987). This recitation of the composition is drawn to intended use; therefore, this limitation does not add any patentable weight to the claim (MPEP 2106). Therefore, the metal compound recited in claims 9 and 10 holds no patentable weight.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 5,49,467, U.S. 2004/0234904, U.S. 2020/0117085, KR20040037643, and KR20160074396.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 6:30-3:00 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anna Malloy/Examiner, Art Unit 1737
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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