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
Applicant’s election without traverse of Group I, claims 1-13 in the reply filed on 03/03/2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 for application JP2023-117307.
Acknowledgment is made of applicant's claim for foreign priority based on applications filed in Japan on 03/29/2023 and 02/14/2024. It is noted, however, that applicant has not filed a certified copy of the JP2023-052687 application or the JP2024-020006 application as required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Muro et al. (JP-7145351-B1 , machine translation).
Regarding Claim 1, Muro teaches a composition for surface treatment (Paragraph [0008] composition for treatment of surface to remove residue) comprising components (A) to (C) below:
the component (A): a piperazine-based compound represented by a formula (a) below and having two or more amino groups having pKa larger than the pH of the composition for surface treatment: wherein R1 is a hydrogen atom, or an alkyl group having 1 or more and 10 or less carbon atoms optionally substituted with any of primary to tertiary amino groups; and R2 is an alkyl group having 1 or more and 10 or less carbon atoms optionally substituted with any of primary to tertiary amino groups (Paragraph [0025] composition includes an amine-containing compound, that can be an organic amine. Paragraphs [0027-0033] examples of suitable organic amines are provided and include piperazine compounds. Three of the piperazine compounds taught, 1-methylpiperazine, 1-ethylpiperazine, and 1-propylpiperazine, are included in the specification of the instant application as compounds meeting the limitations of formula (a). 1-methylpiperazine meets the limitations of the formula (1) wherein R1 is a hydrogen atom, R2 is an alkyl group of 1 carbon atom and the molecule can be considered to have a dimethyl amino group and a trimethyl amino group, where the pKa of a dimethyl amino group is 10.73 and the pKa of a trimethyl amino group is 9.81 (see Reference Document: "pKa Values of Amines, Diamines, and Cyclic Organic Nitrogen Compounds – Alfa Chemistry"), which are both higher than the taught pH range of 4.0-9.0),
the component (B): an anionic polymer (Paragraph [0056] composition can include a corrosion inhibitor that can be a water-soluble polymer. Paragraph [0057] examples of water-soluble polymers include poly(meth)acrylic acid and polystyrene sulfonic acid, which are anionic polymers), and
the component (C) : a buffer represented by a formula: A-COO-NH4wherein A is an alkyl group having 1 or more and 10 or less carbon atoms or a phenyl group (Paragraph [0071-0072] the composition can include pH adjusters that adjust and maintain the pH of the composition. Compounds taught as being "component C" can function as the pH adjuster. Paragraph [0044] two or more components taught as suitable for "component C" can be used in the composition. Paragraph [0038] "component C" can be a quaternary ammonium compound, such as quaternary ammonium acetate., which meets the instant limitations)
Muro fails to teach wherein pH of the composition is more than 7.0
However, Muro teaches that the pH of the composition is 4.0-9.0 (Paragraph [0010]).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated a composition pH at a level within the disclosed range of 4.0-9.0, including at amounts that overlap with the claimed range of more than 7.0. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claim 2, Muro teaches wherein the component (A) comprises a piperazine-based compound represented by the formula (a), wherein R1 is a hydrogen atom, or an alkyl group having 1 or more and 5 or less carbon atoms optionally substituted with a primary or tertiary amino group; and R2 is an alkyl group having 1 or more and 5 or less carbon atoms optionally substituted with a primary or tertiary amino group (Paragraphs [0027-0033] examples of suitable organic amines are provided and include piperazine compounds. Three of the piperazine compounds taught, 1-methylpiperazine, 1-ethylpiperazine, and 1-propylpiperazine, are included in the specification of the instant application as compounds meeting the limitations of formula (a). 1-methylpiperazine meets the instant claim limitations of the formula (1) wherein R1 is a hydrogen atom, R2 is an alkyl group of 1 carbon atom).
Regarding Claim 3, Muro teaches wherein the component (A) comprises a piperazine-based compound represented by the formula (a),wherein R1 is a hydrogen atom, or an alkyl group having 1 or more and 3 or less carbon atoms optionally substituted with a primary or tertiary amino group; and R2 is an alkyl group having 1 or more and 3 or less carbon atoms substituted with a primary amino group (Paragraphs [0027-0033] examples of suitable organic amines are provided and include piperazine compounds. Three of the piperazine compounds taught, 1-methylpiperazine, 1-ethylpiperazine, and 1-propylpiperazine, are included in the specification of the instant application as compounds meeting the limitations of formula (a). 1-methylpiperazine meets the instant claim limitations of the formula (1) wherein R1 is a hydrogen atom, R2 is an alkyl group of 1 carbon atom).
Regarding Claim 4, Muro teaches all the limitations of claim 1 as outlined above.
Muro fails to teach wherein a content of the component (A) is 0.10% by mass or more relative to the composition for surface treatment.
However, Muro teaches that component (A) is included in the composition at 0.01-20% by mass (Paragraph [0044] "component C" is included at 0.01-20% by mass).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated an amount of component (A) in the composition within the disclosed range of 0.01-20% by mass, including at amounts that overlap with the claimed range of 0.10% by mass or more. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claims 5 and 6, Muro teaches wherein the component (A) has an amino group having a difference between a maximum pKa in the pKa' s of the amino groups present in the piperazine-based compound ( maximum pKa) and the pH of the composition for surface treatment (=maximum pKa - pH) of 0.5 or more, as required by claim 5, and of more than 1.30, as required by claim 6 (Paragraphs [0027-0033] examples of suitable organic amines are provided and include piperazine compounds. Three of the piperazine compounds taught, 1-methylpiperazine, 1-ethylpiperazine, and 1-propylpiperazine, are included specification of the instant application as compounds meeting the limitations of formula (a). 1-methylpiperazine meets the limitations of the formula (1) wherein R1 is a hydrogen atom, R2 is an alkyl group of 1 carbon atom and the molecule can be considered to have a dimethyl amino group and a trimethyl amino group, where the pKa of a dimethyl amino group is 10.73 and the pKa of a trimethyl amino group is 9.81 (see Reference Document: "pKa Values of Amines, Diamines, and Cyclic Organic Nitrogen Compounds"), which are both higher than the taught pH range of 4.0-9.0. Maximum pKa can be considered 10.73, maximum pH of the composition can be considered 9.0. 10.73-9.0=1.73)
Regarding Claim 7, Muro teaches wherein the component (B) comprises at least one anionic polymer selected from the group consisting of poly(meth)acrylic acid, polystyrene sulfonic acid, and poly(carboxylic acid-sulfonic acid), and salts thereof (Paragraph [0056] composition can include a corrosion inhibitor that can be a water-soluble polymer. Paragraph [0057] examples of water-soluble polymers include poly(meth)acrylic acid and polystyrene sulfonic acid).
Regarding Claim 8, Muro teaches wherein the component (C) comprises ammonium acetate (Paragraph [0071-0072] the composition can include pH adjusters. Compounds taught as being "component C" can function as the pH adjuster. Paragraph [0044] two or more components taught as suitable for "component C" can be used in the composition. Paragraph [0038] "component C" can be a quaternary ammonium compound, such as quaternary ammonium acetate).
Regarding Claims 9 and 10, Muro teaches further comprising a component (D):the component (D): a nonionic polymer, as required by claim 9, and wherein the component (D) comprises at least one nonionic polymer selected from the group consisting of polyvinyl alcohol, polyvinylpyrrolidone, polyacrylamide, poly N-vinyl acetamide, polyethylene glycol, hydroxyethyl cellulose, and butenediol-vinyl alcohol copolymer, as required by claim 10 (Paragraphs [0060-0063] composition can include surfactants, which can be nonionic surfactants. Examples of nonionic surfactants include polyethylene glycol).
Regarding Claim 11, Muro teaches further comprising a component (E):the component (E): a pH adjusting agent (Paragraph [0071] the composition can include pH adjusters. Paragraph [0076] two or more pH adjusters can be used in the composition).
Regarding Claim 12, Muro teaches wherein the pH adjusting agent is ammonia or acetic acid (Paragraph [0075] acetic acid can be used as a pH adjuster).
Regarding Claim 13, Muro teaches wherein the composition for surface treatment is substantially composed of the component (A), the component (B) , the component (C) , water, and at least one selected from the group consisting of a pH adjusting agent and a nonionicpolymer (Paragraph [0044] "component C", which can be considered equivalent to claimed "Component (A)" as outlined in the rejection of claim 1 above, is included at 0.01-20% by mass. Paragraph [0059] corrosion inhibitor, which can be considered equivalent to claim "Component (B)" as outlined in the rejection of claim 1 above, is included at 0.0001-10% by mass. Paragraph [0071] pH adjuster can be included at 0.1-10% by mass. Paragraph [0068] surfactant, which can be considered the nonionic polymer as outlined in the rejection of claim 9 above, can be included at 0.001-8.0% by mass. Paragraphs [0053-0054] water is included in the composition at 60-99.9% by mass. Therefore, he taught composition can include 60.1111-100% of the components listed for inclusion by the instant claim. Paragraph [0017] the taught composition includes the additional components "component A", "component B", and "component D", which are not included in the limitations of the instant claim. Paragraphs [0020-0021] "component A" is included at 0.0001-0.1% by mass. Paragraphs [0022-0023] "component B" is included at 0.001-1.0% by mass. Paragraph [0052] "component D" is included at 0.01-20% by mass. Therefore, the taught composition includes 0.0111-21.1% by mass components not listed for inclusion by the instant claim. Based on these taught ranges, a composition that contains all the required components of the taught composition and contains all the components included in the instant limitation for consideration of "substantially composed" and contains no other components, would contain all the components included in the instant limitation for consideration of "substantially composed" within the range of 78.9-99.9889% by mass. Examiner takes the position that such a composition meets the limitation of being "substantially composed" of those listed components).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW KEELAN LAOBAK whose telephone number is (703)756-5447. The examiner can normally be reached Monday - Friday 8:00am - 5:30pm.
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/A.K.L./Examiner, Art Unit 1713 /DUY VU N DEO/Primary Examiner, Art Unit 1713
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