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.
Response to Amendments/Arguments
The amendment made to Figure 1, the amendment made to claim 1, the cancelation of claim 6, and the withdrawal of claim 9, as filed on March 12, 2026, are acknowledged.
Amendments made to Figure 1 is responsive. The previous objection to the drawing, as set forth in the Office Action mailed on December 16, 2025, has been withdrawn.
Applicant’s arguments, see Remarks filed on March 12, 2026, with respect to rejection to amended claim 1 under 35 USC § 102 based on Chen reference 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.
Applicant's arguments, see Remarks filed on March 12, 2026, with respect to rejection to amended claim 1 under 35 USC § 102 based on Tamai have been fully considered but they are not persuasive.
The Applicant argues that “Tamai does not disclose or suggest the use of a halogen oxoacid or a salt thereof as the oxidizing agent (A)”. However, Tamai does clearly name perchloric acid as an example of a component in the composition (paragraph 0060). Even though perchloric acid is disclosed as a pH adjuster, it is a well-known oxidizing agent. It is noted that claim 1 is drawn to a composition claim, and a composition claim covers what the composition is not what the composition does. See 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.").
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, 4-5 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tamai et al. (US20160281038).
Regarding claim 1, Tamai discloses an etching composition (abstract), comprising an oxidizing agent (A) (perchloric acid reads on an oxidizing agent, paragraph 0060), a fluorine compound (B) (abstract), and a metal tungsten corrosion inhibiter (C) (a tungsten-corrosion preventer reads on a metal tungsten corrosion inhibiter, abstract), 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 0038), wherein the oxidizing agent (A) comprises a halogen oxoacid (perchloric acid, paragraph 0060), and wherein the etching composition has a pH of 1.4 (Table 2).
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 claim 4, Tamai 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, Tamai discloses that the composition further comprises a pH adjuster (D) (paragraph 0060).
Regarding claim 7, Tamai discloses an organic solvent (E) (paragraph 0062).
Regarding claim 8, Tamai discloses wherein the organic solvent (E) is an alcohol (methanol, paragraph 0063).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being obvious over Tamai et al. (US20160281038).
Regarding claim 2, Tamai discloses wherein said R1 represents a substituted or unsubstituted alkyl(poly)heteroalkylene group having 8-18 carbon atoms (a fluoroalkyl reads on a heteroalkylene group, claim 8). The range of carbon atoms disclosed by Tamai overlaps with 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).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tamai et al. (US20160281038) as applied to claim 2 above, in view of Chen et al. (US20160032186).
Regarding claim 3, Tamai fails to disclose said R1 represents a substituted or unsubstituted aryl(poly)heteroalkylene group having 14 to 20 carbon atoms. However, Tamai discloses that hexadecyltrimethylammonium hydroxide is a tungsten corrosion preventer (claim 1 and paragraph 0038). In addition, Chen teaches that examples of a tungsten preventer (corrosion inhibitor for tungsten) include hexadecyltrimethylammonium hydroxide and benzethionium chloride (paragraph 0032). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to substitute hexadecyltrimethylammonium hydroxide in the composition of Tamai with benzethionium chloride which is a known equivalent tungsten corrosion preventer as taught by Chen, with a reasonable expectation of success. It has been held that substituting equivalents known for the same purpose is obvious. See MPEP 2144.06 II. In benzethionium chloride, R1 represents a substituted or unsubstituted aryl(poly)heteroalkylene group having 18 carbon atoms
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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
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