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 .
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 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 12, 2026 has been entered.
Response to Amendments/Arguments
The amendment made to claim 1, the cancelation of claim 6, and the withdrawal of claim 9, as filed on June 12, 2026, are acknowledged.
Applicant’s arguments, see Remarks filed on June 12, 2026, with respect to rejection to amended claim 1 have been considered but are moot because the arguments do not apply to new ground(s) of rejection in this Office Action necessitated by the amendments made to the claims.
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 of this title, 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.
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 103 as being obvious over Wu et al. (WO2016042408).
Regarding claim 1, Wu discloses an etching composition (abstract), comprising an oxidizing agent (A) (paragraph 0029), a fluorine compound (B) (HF, paragraph 0028), and a metal tungsten corrosion inhibiter (C), wherein the metal tungsten corrosion inhibiter (C) contains an ammonium salt represented by formula (1) as recited in the instant claim, wherein in formula (1), wherein R1 represents an unsubstituted alkyl group having 16 carbon atoms; each R2 independently represents an unsubstituted alkyl group having 1 carbon atom; and X− represents a hydroxide ion (hexadecyltrimethylammonium hydroxide, paragraph 0030), wherein the oxidizing agent (A) comprises an oxoacid of iodine (periodic acid, paragraph 0029), and wherein the etching composition has a pH from 0 to 4 (paragraph 0027). The pH range disclosed by Wu encompasses the range recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
It is noted that claim 1 is drawn to a composition claim and the recitation of "for a semiconductor substrate for a memory element " is considered as intended use of the claimed composition. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claims 2-3, Wu discloses wherein said R represents a substituted or unsubstituted aryl(poly)heteroalkylene group having 14 to 20 carbon atoms (benzethonium chloride, paragraph 0030).
Regarding claim 4, Wu is silent about that the composition has a surface tension of 50 mN/m or less. However, it is noted that claim 2 is drawn to a composition claim, and a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition.").
Regarding claim 5, Wu discloses that the composition further comprises a pH adjuster (D) (paragraph 0033).
Regarding claim 7, Wu discloses an organic solvent (E) (paragraph 0031).
Regarding claim 8, Wu discloses wherein the organic solvent (E) is an alcohol (methanol, paragraph 0031).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (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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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
