DETAILED ACTION
Claims 1-20 are pending before the Office for review.
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.
Election/Restrictions
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 11, 2026.
Applicant's election with traverse of Group I (claims 1-13) in the reply filed on March 11, 2-26 is acknowledged. The traversal is on the ground(s) that claims 14-20 depend from claim 1 and can be examined without an undue burden. This is not found persuasive because the claims of Group I and Group II require a search of different classifications, terms and art applicable to one group would not necessarily be applicable to the other group. As such it would create an undue burden for the Examiner to fully examine each group.
The requirement is still deemed proper and is therefore made FINAL.
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.
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.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over GE et al (U.S. Patent Application Publication 2019/0284704).
With regards to claim 1, Ge discloses an etching composition comprising an oxidizer (Paragraphs [0028]-[0031]); an ammonium salt (Paragraphs [0045]-[0048]); an aqueous solvent (Paragraphs [0032]-[0038]) wherein the ammonium salt comprises an ammonium cation and an organic anion (Paragraphs [0045]).
Ge does not explicitly disclose an accelerator wherein the accelerator comprises a first accelerator and a second accelerator, the first accelerator and the second accelerator are different from each other, and each of the first accelerator and the second accelerator comprises at least one of a group represented by Formula A, a group represented by Formula B, and a group represented by Formula C.
However Ge discloses the inclusion of a metal chelating agent including citric acid (Applicants 2-E7), oxalic acid (Applicant’s 2-E23) and salicylic acid (Applicant’s 1-E1) (Paragraphs [0049]-[0051]) and a corrosion inhibitor including succinic acid (Applicant’s 3-E11) which renders obvious an accelerator wherein the accelerator comprises a first accelerator and a second accelerator, the first accelerator and the second accelerator are different from each other, and each of the first accelerator and the second accelerator comprises at least one of a group represented by Formula A, a group represented by Formula B, and a group represented by Formula C. While Ge does not explicitly disclose Applicant’s “first accelerator” and “second accelerator”, the disclosure of compounds which would satisfy Applicant’s claimed component render that component obvious.
It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the composition of Ge to include the metal chelating (first accelerator) and the corrosion inhibitor (second accelerator) because the refence of Ge teaches that the chelating agent increases the capacity of the composition to retain metals in solution and to enhance the dissolution of the metallic residues; the corrosion inhibitor can be added to adjust the etch rate (Paragraph [0052]) and one of ordinary skill in the art prior to the effective filing date would have had a reasonable expectation of predictably achieving the desired etching using metal chelating and corrosion inhibitor as rendered obvious by Ge. MPEP 2143D
With regards to claims 2-11, the modified teachings of Ge discloses the inclusion of a metal chelating agent including citric acid (Applicants 2-E7), oxalic acid (Applicant’s 2-E23) and salicylic acid (Applicant’s 1-E1) (Paragraphs [0049]-[0051]) and a corrosion inhibitor including succinic acid (Applicant’s 3-E11) wherein 1 or more of each of the metal chelating agent and corrosion inhibitor may be included in combination in the composition rendering obvious wherein i) the first accelerator and the second accelerator each are a first compound, ii) one of the first accelerator and the second accelerator is the first compound and the other of the first accelerator and the second accelerator is a second compound, or, iii) the first accelerator and the second accelerator each are the second compound; wherein the first compound is one of compound 1-E1, 2-E7 and 2-E23 (Applicant’s pending claim 8, in addition Applicant’s pending claim 4 formula 1-1), wherein the second compound is one of 3-E11 (claims 9-11). In addition while Ge does not explicitly disclose “… a first compound is compound capable for forming a cyclometallated 5-memebred ring represented by Formula CM5 or a cyclometallated 6-memebred being represented by Formula CM6…” the composition of Ge discloses a first compound and a second compound which render obvious Applicant’s claimed compounds. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. MPEP 2112.01 Therefore disclosure of the compounds which render obvious Applicant’s claimed first compound and claimed second compound are “capable of” forming Applicant claimed cyclometallated 5-memebred ring represented by Formula CM5 or a cyclometallated 6-memebred being represented by Formula CM6 as this would be a property of the chemical composition.
With regards to claim 12, the modified teachings of Ge renders obvious wherein the metal chelating agent is present in amounts from 0.00001 toa bout 10 % by weight (Paragraph [0050]) and wherein the corrosion inhibitor is present in amounts from 0.00002 to about 10 wt% (Paragraph [0064]) which renders obvious wherein a weight ratio of the first accelerator to the second accelerator is 1:99 to 99:1. 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). MPEP 2144.05(I)
With regards to claim 13, the modified teachings of Ge renders obvious wherein the metal chelating agent is present in amounts from 0.00001 toa bout 10 % by weight (Paragraph [0050]) and wherein the corrosion inhibitor is present in amounts from 0.00002 to about 10 wt% (Paragraph [0064]) wherein an amount of the accelerator is 0.001 wt% to 20 wt%, per 100 wt% of the etching composition. 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). MPEP 2144.05(I)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chang et al (U.S. Patent Application Publication 2022/0367199), Liu et al (U.S. Patent Application Publication 2017/0145311).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE P. DUCLAIR whose telephone number is (571)270-5502. The examiner can normally be reached 9-6:30 M-F.
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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713