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 .
Response to Arguments
The amendment filed 17 June 2026 is accepted. Claims 1–5, 11–19 and 21 are pending, wherein claims 16–19 stand withdrawn with traverse. Claims 6–10 and 20 have been canceled.
Claims 1–5, 11 and 15 have been amended to overcome rejections previously set forth under 35 U.S.C. 112(b). The 112(b) rejections of claims 1–5, 11 and 15 are herein withdrawn. Claims 12–14 were rejected based on their dependence on rejected claim 1, and thus the 112(b) rejections of claims 12–14 are herein withdrawn.
The amendment to claim 1 further alters the scope, and overcomes the previous grounds of rejection under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103. The 102(a)(1) and 103 rejections of claim 1 and its dependent claims are herein withdrawn.
Claim 21 has been introduced as a new independent claim. It does not warrant restriction, and finds support in at least the originally filed claims and paragraph 0086 of the as-filed specification. Claim 21 therefore does not introduce new matter, and is examined herein as a new pending claim.
Claim Objections
Claim 1 is objected to because of the following informalities:
As amended, Claim 1 now recites Formula (A), but the sentence beginning “In Formula (A)” is improper because a claim must be one continuous sentence (37 C.F.R. 1.75). The sentence beginning with “In Formula (A)” must be incorporated into the body of the claim, e.g., “wherein, in Formula (A)”.
Appropriate correction is required.
Claim Interpretations
Claims 12–14 have not been amended, and so the interpretation applied to these claims pertaining to their “intended use” limitations will herein be repeated. Under MPEP 2111.02(II), recitations of intended use are only considered meaningful limitations if they result in structural limitations of the claimed product. In claim 1, “A chemical liquid” is a meaningful descriptor for the claimed product, but “for manufacturing a semiconductor” is merely a statement of intended use. Claims 12 and 14 each recite a limitation “wherein the chemical liquid is used for” a particular application. These limitations are also statements of intended use, and do not meaningfully limit the claimed chemical liquid. Claim 13 further limits claim 12, and so it relies on a statement of intended use as well. For purposes of examination, the Examiner will herein apply any prior art that reads on the meaningful limitations, with the reasonable expectation that any similar chemical liquids should at least be capable of fulfilling the recited intended uses.
Claim 15 has been amended to recite “wherein the chemical liquid is capable of forming a film. Newly introduced claim 21 recites this same capability. A capability is a functional limitation (see MPEP 2173.05(g)), and also qualifies as an intended use when it does not result in a meaningful structural difference (see MPEP 2111.02(II)). The chemical liquid recited in claims 1 and 21 is capable of forming a film, and thus any suitably similar chemical liquid should be capable of the same use. Therefore, the “capability” limitations are not given patentable weight based on their current drafting. The Examiner does note, however, that if Applicants were to amend the limitation to, e.g., “wherein the chemical liquid is applied to a metal region to form a film” (emphasis added), that would be a limitation with clear scope and definitive bounds; only prior art that actively recites the application of liquid on a metal region to form a film would be able to anticipate the limitation.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 21 is rejected 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.
Newly added claim 21 recites the limitation “wherein the chemical liquid is capable of forming a film containing the two or more specific compounds only on a metal region”. This wording is ambiguous due to the placement of the word “only”. The claim could reasonably be interpreted as reciting “wherein the chemical liquid is only capable of forming a film on a metal region”, or “wherein the chemical liquid is capable of forming a film, and is applied only to a metal region”. The wording leads to indefiniteness and requires clarification, but for purposes of examination, the indefiniteness requires no interpretation because the limitation in question is a functional statement of intended use (see the above Claim Interpretation section).
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.
Claims 1, 2, 5, 12–15 and 21 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Lal (US 2006/0079431 A1, hereinafter “Lal”).
Regarding claim 1, Lal teaches compounds containing surface active agents (see generally abstract) which is applicable in semiconductor processing compositions (see paragraph 0002), which comprises a solvent (see paragraph 0030 teaching water-based solvent and optional co-solvents), and two or more specific compounds (see paragraph 0014 teaching “one or more” compounds according to formula (I); the phrase “one or more” includes “two or more”). Applicants define their specific compounds according to claimed Formula (A), which comprises Xa–Ya, wherein Xa represents a polar group, and Ya represents a vertical alignment group selected from a group consisting of a non-halogenated hydrocarbon group or a polyoxyalkylene group-containing group. Lal teaches Formula (I) as having the general structure R4OCH2CH(OH)CR2R3ZR1 (see paragraph 0006), wherein R4 is equivalent to Ya in Formula (A), and wherein OCH2CH(OH)CR2R3ZR1 is equivalent to Xa in Formula (A). R4 is defined as, inter alia, a C3–C30 alkyl (see paragraph 0023), which is a non-halogenated hydrocarbon group that serves the role of a vertical alignment group due to its linearity. R2 and R3 can each be hydrogen (see paragraph 0022), and thus their effect of overall polarity does not need to be considered. R1 is selected from, inter alia, C3–C16 groups, which can be functionalized with several polar substituents (see paragraph 0020), and Z is selected from S, SO, and SO2. Thus, Lal teaches structures such as C30H61–OCH2CH(OH)CH2SO2C3H4(PO3H2)3, which have a non-halogenated hydrocarbon tail and a polar head group comprising a tri-phospho-substituted propyl chain. This overlaps in scope with the claimed Formula (A), and thus claim 1 is anticipated by Lal.
Regarding claim 2, Lal teaches the chemical liquid according to claim 1, and further teaches the limitation wherein, in each of the two or more specific compounds, Xa is selected from a group consisting of, inter alia, a phosphate group, a sulfo group, and a carboxy group (see paragraph 0020 teaching the use of carboxy-, sulfo-, and phospho-groups).
Regarding claim 5, Lal further teaches the limitation wherein, in each of the two or more specific compounds, Xa is selected from a group consisting of, inter alia, a phosphate group, a sulfo group, and a carboxy group (see paragraph 0020), and wherein Xa in each of the two or more specific compounds is the same (see paragraph 0023 teaching R4 as including various hydrocarbons “or mixtures thereof”; if the polar head group remains unchanged during synthesis while R4 is introduced as a mixture of suitable hydrocarbons, the result will be multiple compounds with different vertical alignment groups but the same polar head group).
Regarding claims 12–15, Lal teaches a number of suitable applications for the compound of Formula (I) (see paragraph 0029). Although Lal does not explicitly teach the intended uses claimed in claims 12–15, there is sufficient reason to believe that Lal’s composition is at least capable of performing the intended use. Applicants attribute the capability of their Formula (A) to the polar head group (see specification, paragraph 0028), which allows the compound to interact with the atoms on a metal surface. As Lal teaches many of the same polar head groups as the Applicants, Lal’s composition is inherently capable of the same intended uses as claimed (see MPEP 2112.01). The burden now shifts to Applicants to prove that Lal’s composition is somehow not capable of the claimed intended uses.
Regarding claim 21, Lal teaches a chemical liquid which is suitable for use in manufacturing a semiconductor (see generally abstract; also see the above Claim Interpretation section regarding “intended use” limitations in the preamble), comprising a solvent (see paragraph 0030 teaching water-based solvent systems), two or more specific compounds (see paragraph 0014 teaching one or more compounds according to Formula (I)), wherein each of the two or more specific compounds is a compound having a polar group and a vertical alignment group (see paragraph 0020 teaching various polar substituents for the R1 group; see paragraph 0023 teaching various hydrocarbon chains as the R4 group, which function as a vertical alignment group). Lal’s Formula (I) is inherently capable of forming a film containing the two or more specific compounds on a metal region (see MPEP 2112.01 regarding compositional inherency; see the above Claim Interpretation section regarding intended use limitations; the limitation regarding the contact angle of water on the film formed in the metal region is a limitation on the intended use, and Applicants speculate that the contact angle of water on a film is attributable to the polar head group and the vertical alignment group [see paragraph 0012]; as Lal teaches a formula that sufficiently overlaps with the claimed formula, Lal is considered to teach the same structural features).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Lal as applied to claim 1 above, and further in view of Yoko (JP 2005/105045 A, hereinafter “Yoko”, previously cited).
Regarding claims 3 and 4, Lal teaches the chemical liquid according to claim 1, but fails to explicitly teach the limitation wherein the two or more specific compounds include a specific compound in which Xa is a nitrogen-containing group. Lal does teach the optional use of nitrogen-containing aminoethylene groups (see paragraph 0023), but these are only discussed as substituents in the R4 hydrocarbon chain, not the polar head group R1. Yoko teaches a surfactant composition (see paragraph 0001) comprising polar groups linked to non-polar fluorinated hydrocarbon tails (see paragraph 0003). Yoko further teaches the polar head group as essential for improving affinity to various solvents, resins, pigments, fillers, etc. (see paragraph 0013), and there is no reason to believe that this wouldn’t also be true for a non-fluorinated compound like that of Lal. Yoko teaches suitable polar groups as including carboxy, phosphonate, and amino groups (see paragraph 0014; “amino” is nitrogen-containing). Based on the inclusion of amino groups as a suitable polar group, and also considering the fact that Lal teaches a compatibility of nitrogen-containing groups with the recited composition, a person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Lal can be modified according to Yoko to include amino groups as a suitable head group. The motivation supporting this combination most closely aligns with KSR Rationale B, which states it is prima facie obvious to simply substitute one known element (Lal’s polar head groups) for another (Yoko’s amino polar head groups) to obtain predictable results (both references teach surfactants with polar head groups and non-polar tails, and both references teach the inclusion of nitrogen-containing groups in their surfactant structures, so the results of the proposed modification are predictable). The proposed modification arrives at the invention of claim 3.
Further regarding claim 4, Lal teaches the limitation wherein the polar head group other than the nitrogen-containing group is, inter alia, a carboxy group (see paragraph 0020 teaching carboxy substituents on the polar portion).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lal.
Regarding claim 11, Lal teaches the chemical liquid according to claim 1, but fails to explicitly teach the limitation wherein at least one of the two or more specific compounds has a molecular weight of 600 or less. However, from the information provided by Lal in paragraphs 0019–0023, the molecular weight of at least one embodiment can be calculated. Using the general formula R4OCH2CH(OH)CR2R3ZR1, and taking Z to be SO2, R4 to be a C3 alkyl group, R3 and R2 to each be hydrogen, and R1 to be a C3 alkyl group functionalized with a carboxy group, the general formula becomes:
H3C-CH2-CH2-O-CH2-CH(OH)-CH2-SO2-CH2-CH2-CH-COOH
This formula contains 10 carbons, 19 hydrogens, 6 oxygens, and 1 sulfur, giving it a total molar mass of ~267.2 g/mol. This falls well within the claimed “600 or less”, and so even if heavier or larger substituents are used, the structure can still reasonably fall within the claimed molecular weight range (see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Based on the overlapping molecular weight, Claim 11 is rendered prima facie obvious.
Response to Arguments
Applicant’s arguments with respect to claims 1–5, 11–15 and 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicants argue that Yoko’s fluorinated surfactant is a key component of Yoko’s invention. While this is generally true, Yoko is no longer cited as the primary reference supporting the rejection. Lal teaches a compound that anticipates the claimed Formula (A), and Yoko is only cited as teaching the suitability of nitrogen-containing groups as polar groups in surfactants. This suitability is not considered to rely on the fluorination of the hydrocarbon tail, and thus Yoko is still considered sufficiently analogous to Lal’s invention to support an obviousness rejection (see MPEP 2141.01(a) discussing analogous art as being in the same field of endeavor [surfactant design] and being reasonably pertinent [suitable polar head groups for the surfactant]). Yoko is therefore still considered pertinent to the present invention as a supporting reference.
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 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 Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached Tue, Thu, Sat, Sun from 7 AM to 5 PM.
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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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