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 .
DETAILED ACTION
This office action is in response to applicant’s communication filed on 1/27/26. Claims 1-26 are pending. Claims 1-12 remain withdrawn from further consideration. As a result, claims 13-26 are being examined in this Office Action. Due to applicant’s claim amendments filed 1/27/26, the 112 and 103 rejection are withdrawn. However, based on a new search in response to applicant’s amended and new claims, a new 103 rejection is in order.
Claim Rejections – 35 USC 112
The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 25-26 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no evidence in the record for new claims 25 and 26, at the time of filing the application. Claim 25 recites the limitation for “the composition does not contain amide-based organic solvents” and claim 26 recites the limitation for “the composition does not contain a content (by mass) of the first organic solvent that is five times or more of a content (by mass) of the quaternary ammonium hydroxide”.
Therefore, the new limitations in claims 25 and 26, raise an issue of new matter and amounts to a new concept that was not present at time of filing.
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 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 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.
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 13-26 are rejected under 35 U.S.C. 103(a) as being unpatentable over Fujiwara et al. (WO 2015083636, pub date 6/11/2015, the English translation is used herein, the patent is also under the inventor name of Morita et al., in applicant’s IDS filed 3/25/24), in view of Hirose et al. (US 20100298605, pub date Nov. 25, 2010), further in view of Ferstl et al. (WO 2006056298, pub date June 1, 2006).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Fujiwara et al. teaches a cleaning liquid for semiconductor and photoresist production that does not substantially contain water, since water can provide substantial corrosion. The quaternary ammonium hydroxide photoresist remover contains 2 - 10% mass of the quaternary ammonium hydroxide e.g. tetramethylammonium hydroxide (TMAH), along with a glycol solvents. These glycol solvents contain a plurality of hydroxy groups and thus would read on applicant’s “first organic solvent”.
Furjiwara et al. teaches the following glycol solvents:
propylene glycol (b.p. 188 degrees C)
polyethylene glycol
dipropylene glycol
Fujiwara et al. teaches the solvents can contain 10 – 60% mass glycols and an additional amide-based solvent. (paragraphs 1-2, 9-16, 18-19, 29, 32; claims, example, Table 1, see especially Working Example 1A).
Fujiwara et al. teaches:
“After each of the components is mixed, insoluble matter and foreign matter such as metal ions can be removed by a filter such as capsule filter and membrane filter. In addition, to remove the moisture, it is possible to use a moisture removing agent such as magnesium sulfate.”
“As the components for the cleaning liquid, it is preferable to use those which have as high purity as possible in order to reduce damage on the substrate to be processed or damage on the element such as semiconductor element, which is obtained by the substrate to be processed.” (paragraphs 31-32)
With regard to applicant’s new limitation for a “ratio of the water content (unit: mass%) in the composition to a total content of the at least one quaternary ammonium hydroxide (unit: mass%) in the composition (water / quaternary ammonium hydroxide) is no less than 0.0007 and no more than 0.42”, it would be reasonable to expect this small amount of water to be present in aliquots of Fujiwara et al.’s cleaning liquid, since Fujiwara et al.’s water soluble organic solvents, e.g. propylene glycol or polyethylene glycol, are hygroscopic and absorb small amounts of water from the air. Thus Fujiwara et al.’s limitation for their cleaning liquid that does not “substantially contain water” would reasonably be expected to read on applicant’s limitation for a water / quaternary ammonium hydroxide ratio of between 0.0007 - 0.42.
Applicant’s claimed lower endpoint of 0.0007 corresponds to only trace water levels. For example, at 5 wt% quaternary ammonium hydroxide, the claimed lower limit requires only 0.0035 wt% water, i.e., 35 ppm. Fujiwara et al.’s composition contains hygroscopic hydroxy-containing organic solvents such as propylene glycol and/or polyethylene glycol. A person of ordinary skill in the art would have reasonably expected such solvents, when used in semiconductor treatment-liquid compositions, to contain or absorb at least trace amounts of water during manufacture, storage, or handling. Thus, even a composition described as substantially water-free would have been expected to include a small positive amount of residual water within the claimed lower range. Thus applicant’s amendment requiring a water/quaternary ammonium hydroxide mass ratio of 0.0007 to 0.42 does not patentably distinguish the claimed composition.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Fujiwara et al. is deficient in the sense that it does not explicitly teach applicant’s low metal and salt impurity contents and ratios. Fujiwara et al. is also deficient in the sense that it does not exemplify applicant’s limitation for a water / quaternary ammonium hydroxide ratio of between 0.0007 - 0.42.
Hirose et al. exemplifies TMAH glycol stripping compositions for semiconductor and photoresist production, which exemplifies in Example 2 a composition containing 8.9 wt% TMAH, 90.0 wt% diethylene glycol, and 1.1 wt% water, corresponding to a water/TMAH mass ratio of 0.124, which falls within applicant’s claimed range of 0.0007 to 0.42. Hirose et al.’s Example 2 composition does not contain an amide-based solvent. (Example 2, paragraph 2, abstract)
Furthermore, Ferstl et al. teaches the benefits of low amounts of water in TMAH-containing semiconductor cleaning liquids, since when water is present in small amounts there is an improved cleaning of resist/residue from semiconductor substrates. (page 5, lines 29-34 to page 6, line 4; page 7, lines 6-14 and page 8, Table 1)
Ferstl et al. also exemplifies the following amounts in their compositions (page 5, second paragraphs; page 6, lines 1-4):
DMSO 90 wt%
TMAH 2 wt%
Ethyleneglycol 2 wt%
Water 6 wt%
Thus Ferstl et al. composition above reads on applicant’s limitation for “the composition does not contain a content (by mass) of the first organic solvent that is five times or more of a content (by mass) of the quaternary ammonium hydroxide” in new claim 26, since the amount of etheleneglycol (applicant’s first organic solvent) and TMAH (applicant’s quaternary ammonium hydroxide) are equal.
Therefore, applicant’s claimed small positive amount of water would have been obvious, not unexpected.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
However, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention, to optimize the purity of Fujiwara et al.’s TMAH organic solution to achieve high purity TMAH solutions with only trace amounts of impurities and water, since Fujiwara et al. teaches the benefits of achieving high purity for the liquid composition, absent evidence of unexpected results. These benefits include reducing damage to both the substrate and the semiconductor element, and reduction of corrosion. Furthermore, Fujiwara et al. already teaches their compositions contain substantially no water and that foreign matter and metal ions are removed from their solutions, since the purpose of Fujiwara et al.’s compositions is to remove metal ions and other impurities.
Additionally, with regard to applicant's limitation regarding the water content amounts and ratios, along with the metal and chlorine impurity content and ratios, (these metals include Na, Mg, Al, K, Ca, Ti, Cr, Mn, Fe, Ni, Cu and Zn), it is the position of the examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of these limitations to provide the best effective variable depending on the result desired. Because Fujiwara et al. teaches substantially no water, the benefits of low water to prevent corrosion, the benefits of high purities to reduce damage to the substrate and the semiconductor elements, and the removal of insoluble matter and metal ions, Hirose et al. exemplifies a composition with a water/TMAH mass ratio of 0.124 and Ferstl et al. teaches the benefits of low amounts of water in the TMAH compositions, the examiner asserts that the water content amounts and ratios, along with the metal and chlorine impurity content and ratios are art recognized result-effective variables. Thus it would be obvious in the optimization process to optimize the water content amounts and ratios, along with the metal and chlorine impurity content and ratios. The applicant does not show any unusual and/or unexpected results for the limitations stated. Note that the prior art provides the same effect desired by the applicant, the formation of pure quaternary ammonium hydroxide solutions with low salt and metal impurities for the semiconductor industry.
Furthermore, when claiming a purer form of a known compound, it must be demonstrated that the purified material possess properties and utilities not possessed by the unpurified material. Ex parte Reed, 135 U.S.P.Q. 34, 36 (P.O.B.A. 1961), on reconsideration, Ex parte Reed, 135 U.S.P.Q. 105 (P.O.B.A. 1961).
It has been well established that the mere purity of compound, in itself, does not render a substance unobvious Ex Parte Gray (BPAI 1989) 10 PQ2D 1922.
As stated in Aventis Pharma Deutschland Gmbh and King Pharmaceuticals, Inc., v. Lupin, Ltd., 84 USPQ2d 1197:
“The ‘reason or motivation’ need not be an explicit teaching that the claimed compound will have a particular utility; it is sufficient to show that the claimed and prior art compounds possess a ‘sufficiently close relationship . . . to create an expectation,' in light of the totality of the prior art, that the new compound will have ‘similar properties’ to the old.”
“However, if it is known that some desirable property of a mixture derives in whole or in part from a particular one of its components, or if the prior art would provide a person of ordinary skill in the art with reason to believe that this is so, the purified compound is prima facie obvious over the mixture even without an explicit teaching that the ingredient should be concentrated or purified….”
“Ordinarily, one expects a concentrated or purified ingredient to retain the same properties it exhibited in a mixture, and for those properties to be amplified when the ingredient is concentrated or purified; isolation of interesting compounds is a mainstay of the chemist’s art. If it is known how to perform such an isolation, doing so ‘is likely the product not of innovation but of ordinary skill and common sense.’”
Additionally, the recited intended use of does not have weight, because MPEP 2111.02(11) states that when a claim recites a product with an intended use (i.e. A product “for use as_” or other similar language), that intended use is only given patentable weight if it results in any structural difference to the product itself. If, as is usually the case, the body of the claim fully sets forth all limitations of the claimed invention, and the preamble merely recites an intended use or purpose, then the preamble is not considered as a limitation and is of no significance to claim construction. In this case, prior art teaches the same components and the recited amounts are obvious variants as explained above.
It appears the claimed composition is a pure combination of quaternary ammonium hydroxide and the solvent. The impurities can originate from one of the components in the composition or can be from both. For example, recited limitations of no more than 1.0 mass% or no more than 100 mass ppb can be interpreted as a zero amount and a 100% pure composition. Since Fujiwara et al. does not specifically mention impurities in their composition, another reasonable interpretation is that their composition is free of impurities, absent evidence to the contrary. Accordingly, Fujiwara et al. teachings can also be interpreted as being a 100% pure composition of a quaternary ammonium hydroxide with only trace amounts of water (or substantially free of water).
With regard to applicant’s claim limitation in claim 13, which recites the process for producing the composition, and dependent claims 14-19, the examiner asserts that this claim limitation and these dependent claims are product by process claims and limitations.
Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of productions. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) Also see MPEP 2113. Thus this product by process claim limitation and these product by process dependent claims have no patentable weight. The examiner reminds the applicant that they elected composition claims drawn to a treatment liquid composition and not method of making claims drawn to a method of producing a treatment liquid or a method of producing a solution of the quaternary ammonium hydroxide, in the restriction response filed on 8/4/25. Thus the examiner interprets the elected composition claims as reading on the products that are produced, since patentability is based on the product(s) itself.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive for the following reasons:
The examiner acknowledges applicant’s argument that Fujiwara et al. teaches applicant’s specific range of no less than 0.0007 and also discusses the benefits of including small amounts of water.
The examiner responds by stating that the examiner’s new 103 rejection includes the teachings of Hirose et al. and Ferstl et al., which exemplify applicant’s range and teaches the benefits of a small amount of water in the composition, respectively. Thus it was already known in the art that small amounts of water provided benefits to a semiconductor and/or photoresist composition. Therefore, applicant’s claimed small positive amount of water would have been obvious, not unexpected.
Conclusion
No claim is allowed.
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 Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
Prosecution Insights