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
Amendments made to claims 1, 3, 5-9, 11 and 15, the cancelation of claims 2 and 4, the withdrawal of claims 16-20, and the addition of claims 21-22, as filed on August 14, 2026, are acknowledged.
Applicant’s arguments with respect to amended claims 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.
Election/Restrictions
Newly submitted claims 21-22 are directed to an invention that is independent or distinct from the invention originally elected for prosecution, see the Office Action mailed on May 20, 2026 for more details.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-22 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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, 3 and 6-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takahashi et al. (WO2022044893, an English equivalent version, US20230287304 is used).
Regarding claim 1, Takahashi discloses an etching composition (abstract and paragraph 0231) comprising: an oxidizing agent (paragraph 0231), wherein the oxidizing agent is hydrogen peroxide (paragraph 0232); an acid, wherein the acid comprises phosphoric acid (paragraph 0186); and a copolymer including a first repeating unit and a second repeating unit, the first repeating unit is different from the second repeating unit, the first repeating unit is a nitrogen-containing repeating unit including a repeating unit represented by Formula 1-4 as recited in the instant claim, the second repeating unit comprises at least one of a repeating unit derived from a sulfur dioxide-containing compound, and a repeating unit derived from a carboxylic acid-containing compound (formulae P13-P-17, paragraph 0125), wherein an amount of the phosphoric acid is 0.01 wt% to 20 wt% with respect to 100 wt% of the etching composition (paragraph 0186). Takahashi is silent about the copolymer being a selective etching inhibitor. However, Takahashi’s copolymer P-16 disclosed in paragraph 0125 is the same as Polymer 13 recited in claim 11 of current application. 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 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 3, Takahashi discloses wherein an amount of the oxidizing agent is in a range of 0.1 wt % to 20 wt % with respect to 100 wt % of the etching composition (paragraph 0235).
Regarding claim 6, Takahashi discloses wherein an amount of the oxidizing agent is in a range of 0.1 wt% to 20 wt% with respect to the 100 wt% of the etching composition (paragraph 0235).
Regarding claim 7, Takahashi discloses wherein the first repeating unit includes the repeating unit represented by Formula 1-4, and the repeating unit represented by Formula 1-4 is a repeating unit represented by Formula 1-4 (1) (formula P-16, paragraph 0125).
Regarding claim 8, Takahashi discloses wherein the copolymer comprises Polymer 2 as recited in claim 11, upon which the instant claim depends (formula P-13, paragraph 0125).
Regarding claim 9, Takahashi discloses wherein the second repeating unit comprises a repeating unit represented by Formula 2-1 (formula P-13, paragraph 0125).
Regarding claim 10, Takahashi discloses wherein the copolymer further comprises a third repeating unit, and the third repeating unit is different from each of the first repeating unit and the second repeating unit (formula P-7, paragraph 0125).
Regarding claim 11, Takahashi discloses wherein the copolymer comprises Polymer 13 (formula P-16, paragraph 0125).
Regarding claims 12-13, Takahashi discloses wherein the selective etching inhibitor further comprises an amine-containing compound, and the amine-containing compound is different from the copolymer, wherein the amine-containing compound comprises an alkylamine (paragraph 0167).
Regarding claim 14, Takahashi discloses wherein an amount of the selective etching inhibitor is in a range of 0.005 wt % to 0.1 wt % with respect to the 100 wt % of the etching composition (50 ppm to 1000ppm, paragraph 0134).
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 15 is rejected under 35 U.S.C. 103 as being obvious over Takahashi et al. (WO2022044893, an English equivalent version, US20230287304 is used) as applied to claim 1 above.
Regarding claim 15, Takahashi discloses wherein an amount of the oxidizing agent is in a range of 0.1 wt% to 20 wt% with respect to the 100 wt% of the etching composition (paragraph 0235); an amount of the selective etching inhibitor is in a range of 0.005 wt % to 0.1 wt % with respect to the 100 wt % of the etching composition (50 ppm to 1000ppm, paragraph 0134), and the etching composition has a pH of 0 to 14 (paragraph 0336). The pH range disclosed by Takahashi encompasses 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).
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 5, the cited prior art of record, taken either alone or in combination, fails to disclose or render obvious a composition wherein the amount of the phosphoric acid is 40 wt% to 70 wt% with respect to the 100 wt% of the etching composition, in the context of the instant claim. The closest cited prior art of Takahashi discloses wherein the amount of the phosphoric acid is 0.01 wt% to 20 wt% with respect to the 100 wt% of the etching composition (paragraph 0186), which is significantly less than the range recited in the instant claim.
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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