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 .
Drawings
The drawings are objected to because Figure 1 has spelling mistakes or typographical errors in box “02”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: the specification fails to describe the numerals: 00, 02, 04 (as shown in Figure 1) and 200, 204 (as shown in Figure 2). See paragraph [00115].
Appropriate correction is required.
Claim Objections
Claim 6 is objected to because of the following informalities: the first and last structures recited are the same when R4-R6 comprises a methyl group. The claim is thus unnecessarily duplicative. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3 and 5-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Li et al (US 2025/0230357 A1).
Li discloses a composition (Table 1, Embodiment 3, [0056]) comprising:
a phosphoric acid (at 85.03 wt%, Embodiment 3);
a water [0056]; and
an alkyl silane (ureapropyltriethoxysilane, which meets the formula where R1, R2, R3 are alkoxide of ethoxy, n is 3, Q is as cited where Ra and Rb are each independently hydrogen).
Prior art disclosing a species anticipates a claim to a genus. MPEP 2131.02 I.
As to claims 3, 5-7, see the rejection of claim 1. Further as to claim 6, R4, R5 and R6 are ethyl groups.
As to claim 8, Li discloses a balance of water, which for embodiment 3 is 10.87% by weight (Table 1, embodiment 3), which is within the cited range. A specific example in the prior art which is within a claimed range anticipates the range. MPEP 2131.03.
As to claim 9, Li discloses 2.5% by weight of the alkyl silane compound (Embodiment 3), which is within the cited range. A specific example in the prior art which is within a claimed range anticipates the range. MPEP 2131.03.
As to claim 10, the composition of Li is the same as that cited, and therefore the same results of foaming are expected. When the structure recited in a reference is identical or substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP 2112.01 I. When a chemical composition is the same as another composition, then the compositions must have the same properties. MPEP 2112.01 II.
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.
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 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al (US 2025/0230357 A1), as applied to claim 1, and further in view of Tanigaki et al US 2017/0243737 A1).
As to claim 2, Li discloses that R1, R2 and R3 are each ethoxy, not methoxy. Tanigaki teaches that in solutions with silanes, that 1-(3-trimethoxysilylpropyl)urea and 1-(3-triethoxysilylpropyl)urea are known, useful silanes [0036]. Thus, Tanigaki teaches the obviousness of including methoxy groups as cited as an alternative to ethoxy groups. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide methoxy groups as cited in the composition of Li because Tanigaki teaches that it is a known and useful alternative to the silane that includes an ethoxy group, and such is expected to give the predictable result of a composition ready for etching.
As to claim 4, Li discloses that Ra is hydrogen, but fails to explicitly disclose that Rb is an alkyl (see rejection of claim 1). Tanigaki teaches that substituting a hydrogen with an alkyl group is a common [0027]. Such a substitution would provide a structure with a close structural similarity to the structure of Li with the expectation of similar function and results for the composition with an alkyl group. Compounds with close structural similarity are expected to have similar properties, and thus are obvious to provide. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include an alkyl group as cited because of the close structural similarity of the resulting compounds and resulting expected equivalent function and because Tanigaki teaches that substituting alkyl groups for hydrogen is a known and useful structure. MPEP 2144.08 II A 4 c, 2144.09.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. White et al (US 2021/0054287 A1) is cited to show a silylurea [0100] for etching silicon nitride. Reiss et al (US 2016/0257856 A1) is cited to show a composition with phosphoric acid [0053] and ureidopropyltriethoxysilane [0067]. Zhou et al (ACS Appl. Electron. Mater 2024) is not prior art, but is cited for completeness.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 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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/ANITA K ALANKO/Primary Examiner, Art Unit 1713
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