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
Claims 1-4, 6-13, 15-19, and 21-23 are pending. Claims 5, 14, and 20 have been canceled. Note that, Applicant’s amendment and arguments filed July 27, 2026, have been entered. Note that, the Examiner asserts that for purposes of restriction, instant claims 9 and 11-16 which are “use of” claims have been interpreted as method of use claims.
Applicant's election with traverse of Group I, claims 1-8, in the reply filed on July 27, 2026, is acknowledged. The traversal is on the ground(s) that a full search and examination of the entire application may be conducted without undue burden. This is not found persuasive because the invention of Group I, which is drawn to a fluorine-free cleaning agent, is materially different and patentably distinct from the invention of Group II, which is drawn to a cleaning method, wherein each Group would require a separate search due to their separate classification thereby placing an undue burden on the Examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-13 and 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 July 27, 2026.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 3/27/26 have been withdrawn:
The rejection of claim 6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention, has been withdrawn.
The rejection of claims 1-5 and 8 under 35 U.S.C. 102(a)(1) as being anticipated by CN107121901, has been withdrawn.
The rejection of claims 1, 3, 5, 7, and 8 under 35 U.S.C. 102(a)(1) as being anticipated by EP3,502,225, has been withdrawn.
The rejection of claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over EP3,502,225, has been withdrawn.
The rejection of claim 6 under 35 U.S.C. 103 as being unpatentable over EP3,502,225, further in view of EP3588535, has been withdrawn.
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.
(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.
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, 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, 2, 4, 7, 8, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over CN107121901.
With respect to independent, instant claim 1, ‘901 teaches a composition containing deionized water, organic quaternary amine compound, organic alcohol amine, organic stripping solvent, corrosion inhibitor and chelating assistant, characterized in that the content percentage of each composition is: 20-70% of water, 0.1-10% of organic quaternary amine compound, 0.1-20% of organic alcohol amine, 5-70% of organic stripping solvent, 0.01-15% of corrosion inhibitor and 0.01-10% of chelating agent. The organic quaternary ammonium compound is at least one selected from the group consisting of tetramethylammonium hydroxide, hydroxyethyltrimethylammonium hydroxide, tetraethylammonium hydroxide, tetrapropylammonium hydroxide, tetrabutylammonium hydroxide; the organic alcohol amine is preferably monoethanolamine, N-methylethanolamine, diethanolamine, tricthanolamine, isopropanolamine, 2-aminoethanolamine, cthyldicthanolamine, N, N-dimethylethanolamine, N- diethylethanolamine, N- (2-aminoethyl) ethanolamine, and diglycol amine; at least one of the organic stripping solvents is miscible with water, and among them, one or more of sulfoxides, sulfones, imidazolidinones, pyrrolidones, imidazolidinones, amides and alcohol ethers are preferred; the sulfoxides are one or more of dimethylsulfoxide and methylethylsulfoxide; the sulfone is preferably one or more of methylsulfone and sulfolane; the imidazolidinone is preferably 2-imidazolidinone and 1,3-dimethyl-2-imidazolidinone; the pyrrolidone is preferably N- methylpyrrolidone, N-ethylpyrrolidone, N-cyclohexylpyrrolidone; the imidazolinone is preferably 1,3- dimethyl-2-imidazolidinone; the amide is preferably dimethylformamide, diethylformamide, dimethylacetamide; and the alcohol ether is preferably one or more of diethylene glycol monobutyl ether and dipropylene glycol monomethyl ether.
The corrosion inhibitor is an organic corrosion inhibitor containing nitrogen, oxygen, sulfur and other atoms. Among them, one or more of polyols, phenols, azoles and organic carboxylic acids are preferred. The polyols are preferably 1,2-propanediol, glycerol, diethylene glycol, dipropylene glycol, erythritol, xylitol, sorbitol; the phenols are preferably catechol, 4- methylcatechol, 4-tert-butylcatechol, 4-carboxycatechol, pyrogallol, gallic acid, methyl gallate, ethyl gallate, gallic acid N-propyl ester; the azole is preferably 1,2,4-triazole, 3-amino-1,2,4-triazole, 4-amino- 1,2,4-triazole, 5-aminotetrazole, benzimidazole, citric acid, etc. Surfactants may also be added to the specific composition for enhancing surface wetting and cleaning performance. Suitable chelating agents include salicylic acid, etc. Specifically, ‘901 teaches cetyltrimethylammonium hydroxide, 10%; ethanolamine, 3%; dipropylene glycol methyl ether, 50%; benzotriazole, 2%; glycerol, 5%; ethylenediamine tetraacetic acid, 0.5%; methyl carbazate, 3%; 4,7- dimethyl-5-decyne-4,7-diol, 1%; and deionized water, 25.5%. Additionally, ‘901 teaches hydroxyethyltrimethylammonium hydroxide, 3%; ethanolamine, 8%; diethylene glycol monobutyl ether, 20%; catechol, 5%; 5-sulfosalicylic acid, 1 %; 2-hydroxyethylhydrazine, 5%; 2,4,7,9-tetramethyl-5- decyne-4,7-diol, 0.1%; deionized water, 58.8%. See Examples 2 and 3.
‘901 does not teach, with sufficient specificity, a composition containing an organic solvent, an amine, a corrosion inhibitor, an antioxidant such as sorbitol, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing an organic solvent, an amine, a corrosion inhibitor, an antioxidant such as sorbitol, and the other requisite components of the composition in the specific amounts independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of ‘901 suggest a composition containing an organic solvent, an amine, a corrosion inhibitor, an antioxidant such as sorbitol, and the other requisite components of the composition in the specific amounts independent, instant claim 1 and the respective dependent claims.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over CN107121901 as applied to claims 1, 2, 4, 7, 8, and 21 above, and further in view of EP3588535.
‘901 are relied upon as set forth above. However, ‘901 does not teach the use a surfactant such as cocamidopropyl betaine in addition to the other requisite components of the composition as recited by the instant claims.
‘535 teaches a post Chemical Mechanical Planarization(CMP) cleaning composition comprising: at least one organic acid or salts thereof selected from the group comprising dicarboxylic acid, hydroxycarboxylic acid, polycarboxylic acid, salts thereof, and combinations thereof; a fluoride compound selected from the group comprising hydrofluoric acid, ammonium fluoride, ammonium bifluoride, quaternary ammonium fluoride and combinations thereof; at least one polymeric additive selected from a group comprising anionic polymer, non-ionic polymer and cationic polymer and combinations thereof; and water; optionally a surfactant selected from the group consisting of non-ionic surfactants, anionic surfactants, cationic surfactants, ampholytic surfactants, and mixtures thereof; corrosion inhibitor; biological preservative; defoaming agent; and pH adjusting agent; wherein the composition has a pH of between 1 to 7. See Abstract. Suitable ampholytic surfactants include cocamidopropyl betaine, etc. See para. 62.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use a surfactant such as cocamidopropylbetaine in the composition taught by ‘901, with a reasonable expectation of success, because ‘535 teaches the use of cocamidopropyl betaine as a surfactant in a similar composition and further, ‘901 teaches the use of surfactants in general.
Claims 3, 22, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over CN107121901 as applied to claims 1, 2, 4, 7, 8, and 21 above, and further in view of EP3,502,225.
‘901 are relied upon as set forth above. However, ‘901 does not teach the use a an acid such as formic acid in addition to the other requisite components of the composition as recited by the instant claims.
‘225 teaches compositions which contain dimethyl sulfoxide (DMSO), a quaternary ammonium hydroxide, and an alkanolamine. One preferred embodiment contains from about 20% to about 90% dimethyl sulfoxide, from about 1 % to about 7% of a quaternary ammonium hydroxide, and from about 1 % to about 75% of an alkanolamine having at least two carbon atoms. Suitable alkanolamines include, but are not limited to, ethanolamine, N-methylethanolamine, N-ethylethanolamine, N-propylethanolamine, N-butylethanolamine, diethanolamine, triethanolamine, N-methyldiethanolamine, N-ethyldiethanolamine, isopropanolamine, diisopropanolamine, triisopropanolamine, N-methylisopropanolamine, N-ethylisopropanolamine, N-propylisopropanolamine, 2-aminopropane-1-ol, N-methyl-2-aminopropane-1-ol, N-ethyl-2-aminopropane-1-ol, 1-aminopropane-3-ol, etc. See para. 18. When used, a secondary solvent may comprise from about 0.2% to about 35%, or from about 0.2% to about 30%, or from about 0.2% to about 25%, or from about 0.2% to about 20%, or from about 0.2% to about 15%, or from about 0.2% to about 12%, or from about 5% to about 12% of the composition. The secondary solvent can include an alcohol, or a polyhydroxyl compound, or a combination of two or more of these. The polyhydroxyl compound as a secondary solvent can include, ethylene glycol; 1,2-propanediol (propyleneglycol); 1,3-propanediol, 1,2,3-propanetriol; 1,2-butanediol; 1,3-propanediol; 2,3-butanediol; 1,4-butanediol; 1,2,3-butanetriol; 1,2,4-butanetriol; 1,2-pentanediol; 1,3-pentanediol; 1,4-pentandiol; 2,3-pentanediol; 2,4-pentandiol; 3,4-pentane-diol; 1,2,3-pentanetriol; 1,2,4-pentanetriol; 1,2,5-pentanetriol; 1,3,5-pentanetriol; etohexadiol; p-methane-3,8-polyhydroxyl
compound; 2-methyl-2,4-pentanediol; 2,2-dimethyl-1,3-propanediol; glycerin, etc.
Suitable corrosion inhibitors include, but are not limited to, aromatic hydroxyl compounds such as catechol and resorcinol; alkylcatechols such as methylcatechol, ethylcatechol and t-butylcatechol, phenols and pyrogallol; aromatic triazoles such as benzotriazole; alkylbenzotriazoles; sugar alcohols such as glycerol and sorbitol; carboxylic acids such as formic acid, acetic acid, propionic acid, butyric acid, isobutyric acid, oxalic acid, malonic acid, succinic acid, glutaric acid, maleic acid, fumaric acid, benzoic acid, phtahlic acid, 1,2,3-benzenetricarboxylic acid, glycolic acid, lactic acid, malic acid, citric acid, etc. A single corrosion inhibitor may be used or a combination of corrosion inhibitors may be used. Corrosion inhibitors have proven useful at levels ranging from about 1 ppm to about 10%. In an embodiment, the solution may contain about 0.05 weight percent to about 7 weight percent of a first corrosion inhibitor and about 0.001 weight percent to about 3 weight percent of a second corrosion inhibitor. In other embodiments, the solution may contain at least 0.05 weight percent, or at least 0.1 weight percent, or at least 1 weight percent, and/or less than about 3 weight percent, and/or less than about 7 weight percent of the first corrosion inhibitor. See para. 25. The stripping formulations can also contain an optional one or more surfactants, typically at levels in the range of about 0.01 % to about 3% or from about 0.01 to about 1 wt.%. See para. 26. The solutions may contain greater than 1 wt.%, or 2 wt.%, or 3 wt.% water. In other embodiments, the solutions may contain between about 1 wt.% or about 2 wt.% or about 3 wt.% to about 7 wt.% or about 8 wt.% water. See para. 15.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use formic acid in the composition taught by ‘901, with a reasonable expectation of success, because ‘225 teaches the equivalence of formic acid to citric acid as a corrosion inhibitor in a similar composition and further, ‘901 teaches the use of citric acid.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using CN107121901, Applicant states that the amine compound as recited in amended claim 1 includes an amine compound other than the organic alcohol amines that is not taught, or even suggested, by ‘901. In response, note that, the Examiner asserts that ‘901clearly teaches the use of compounds such as tetraethylammonium hydroxide, tetrapropylammonium hydroxide and tetrabutylammonium hydroxide, wherein these compounds are the same as recited by instant claim 1 as suitable amine compounds. Additionally, the Examiner asserts that instant claim 1 recites “comprising” which would open the claim up to any additional components including alkanolamine compounds as taught by ‘901. Thus, the Examiner asserts that the teachings of ‘901 are sufficient to render the claimed invention obvious under 35 USC 103.
With respect to the rejection of instant claim 6 under 35 USC 103 using CN107121901, further in view of EP3588535, Applicant states that the teachings of ‘901 are not sufficient to suggest the claimed invention and that the teachings of ‘535 are not sufficient to remedy the deficiencies of ‘901. In response, note that, the Examiner asserts that the teachings of ‘901 are sufficient to suggest the claimed invention for the reasons set forth above. Additionally, the Examiner asserts that ‘535 is analogous prior art relative to the claimed invention and ‘901 and that one of ordinary skill in the art clearly would have looked to the teachings of ‘535 to cure the deficiencies of ‘901 with respect to instant claim 6. ‘535 is a secondary reference relied upon for its teaching a surfactant such as cocoamidopropyl betaine. The Examiner asserts that one of ordinary skill in the art clearly would have been motivated to use a surfactant such as cocoamidopropylbetaine in the composition taught by ‘901, with a reasonable expectation of success, because ‘535 teaches the use of cocoamidopropyl betaine as a surfactant in a similar composition and further, ‘901 teaches the use of surfactants in general. Thus, the Examiner asserts that the teachings of ‘901, further in view of ‘535, are sufficient to render the claimed invention obvious under 35 USC 103.
Further, Applicant states that data has been provided in the instant specification which is sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. Specifically, Applicant states that Examples 9-18 of the instant specification provide data showing the unexpected and superior corrosion resistant and cleaning properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
In response, note that, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims. The data provided in the instant specification is not commensurate in scope with the instant claims. Note that, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); See MPEP 716.02(d)(I). Applicant has not provided on this record a sufficient basis for concluding that the generic scope of protection sought by claim 1 is reasonably commensurate with the showing of alleged unexpected results. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (obviousness rejection affirmed because evidence establishing that one (or a small number of) species gives unexpected results is inadequate proof); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively, Harris needed to narrow the claims). Note that, the evidence in the Specification is not commensurate in scope with the appealed claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (concluding that unexpected results “limited to sodium only” were not commensurate in scope with claims to a catalyst having an “alkali metal”. Appellants have not established that the results using the single embodiment in (Example 3) is representative of the results which would be obtained over the broad scope of compositions covered by the claims). For example, the instant claims are open to a broad group of organic solvents in broad amounts and a broad group of amine compound, while the instant specification provides data with respect to only several specific embodiments which is not commensurate in scope with the instant claims.
Additionally, the Examiner would like to point out that while Examples 5 and 6 contain an alkanolamine, they have corrosion rates of <10 and exhibit “almost no corrosion” which is comparable to Examples 9-18. Also, it is not clear what is meant by “<10”; does that mean 5, 2, 1? Therefore, the Examiner asserts that no objective determination as to the unexpected and superior corrosion rate properties of the claimed invention can be made. Thus, the Examiner asserts that the data provided in the instant specification is not sufficient to show the unexpected and superior properties of the claimed invention in comparison to compositions falling outside the scope of the instant claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/October 1, 2026
