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 .
Election/Restrictions
Applicant’s election without traverse of claims 1–15 and 20 in the reply filed on 14 November 2025 is acknowledged.
Claims 16–19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 November 2025.
Claim Interpretation
Claims 1, 6, and 12–15 each recite statements of intended use. 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 claims 1 and 6, “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, 14 and 15 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 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.
Claims 1–15 and 20 are 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.
Claims 1 and 6 each recite “two or more specific compounds”, and subsequently limit “the specific compound”. This leads to indefiniteness because it is unclear whether “the specific compound” refers to just one of the “two or more specific compounds”, or if it is meant to apply to both/all specific compounds. Claims 2–5, 7–15 and 20, being dependent on claims 1 or 6, inherit the deficiencies of their parent claim, and are therefore rejected on the same grounds. For purposes of examination, the Examiner believes the broadest reasonable interpretation of these claims is for “the specific compound” to apply to each of the “two or more specific compounds”.
Claim 2 recites “the group consisting of…”, but there is no antecedent basis for “the group”. This should read “a group consisting of…”.
Claim 3 recites “a first specific compound having a nitrogen-containing group that is the polar group and the vertical alignment group”. This wording leads to indefiniteness because it sounds as if the nitrogen-containing group is serving as both the polar group and the vertical alignment group. Additionally, claim 3 recites “a second specific compound having the polar group other than the nitrogen-containing group and the vertical alignment group”. “The polar group” has unclear antecedent basis here, because parent claim 1 recites “a polar group”, but claim 3 already recites a separate “the polar group”. This latter limitation also suffers from ambiguous wording because it sounds like the nitrogen-containing group is serving as the polar group and the vertical alignment group. For purposes of examination, the Examiner will herein interpret this claim as requiring a first specific compound, wherein the polar group contains nitrogen, and a second specific compound, wherein the polar group does not contain nitrogen. Claim 4, being dependent on claim 3, inherits the deficiencies of its parent claim, and is therefore rejected on the same grounds.
Claim 5 recites the limitation “wherein the chemical liquid contains two or more third specific compounds”. This is indefinite because (i) parent claim 1 does not recite a “first” or “second” specific compound, so the use of the descriptor “third” has ambiguous antecedent basis; and (ii) if “third specific compound” is meant to differentiate from first and second specific compounds, it is unclear how there can be “two or more” of this third compound. Additionally, “the group consisting of…” lacks antecedent basis, and should instead read “a group consisting of…”. For purposes of examination, the Examiner will herein interpret this claim as requiring an additional specific compound that differs from the two compounds used to satisfy claim 1.
Claim 6 further recites “the group consisting of…”, which lacks antecedent basis and should read “a group consisting of…”. Claim 6 also recites “a hydrocarbon group which may have a halogen atom…”. “May have” leads to indefiniteness because it sounds like an optional limitation, and so it is unclear whether or not the limitation is actually required by the claim, or if it is merely a preferred embodiment (see MPEP 2173.05(h)). For purposes of examination, the Examiner will herein interpret this limitation as referring to a hydrocarbon group, wherein the optional limitations will not be required to anticipate or render obvious the claim. Claims 7–10 and 20, being dependent on claim 6, inherit the deficiencies of their parent claim, and are rejected on the same grounds.
Claim 7 recites “the group consisting of…”, but there is no antecedent basis for “the group”. This should read “a group consisting of…”.
Claim 8 recites “a fourth specific compound” and “a fifth specific compound”. These lead to indefiniteness because parent claim 6 does not recite or require a first, second, and third specific compound, so there is ambiguous antecedent basis. For purposes of examination, the Examiner will herein interpret claim 8 as requiring two specific compounds that differ from the compounds of claim 6, wherein one of the required compounds contains nitrogen in the polar group while the other compound does not contain nitrogen in the polar group.
Claim 10 recites the limitation “wherein the chemical liquid contains two or more sixth specific compounds”. This is indefinite because (i) parent claim 6 does not recite a “first” through “fifth” specific compound, so the use of the descriptor “sixth” has ambiguous antecedent basis; and (ii) if “sixth specific compound” is meant to differentiate from first through fifth specific compounds, it is unclear how there can be “two or more” of this sixth compound. Additionally, “the group consisting of…” lacks antecedent basis, and should instead read “a group consisting of…”. For purposes of examination, the Examiner will herein interpret this claim as requiring an additional specific compound that differs from the two compounds used to satisfy claim 6.
Claim 11 recites the limitation “wherein the one or more specific compounds…”, but parent claim 1 recites “two or more specific compounds”. This leads to indefiniteness because it is unclear if claim 11 is only intended to limit as few as one of the specific compounds, or if it is meant to apply to each of the “two or more specific compounds” recited by the parent claim. For purposes of examination, the Examiner will herein interpret claim 11 as referring to just one of the two or more specific compounds.
Claim 15 recites the limitation “that functions as a mask in a case where a film is formed”. This is functional language, and leads to indefiniteness because it describes a result without explicitly defining which properties bring about the result. MPEP 2173.05(g) states that when claims merely recite a function or result achieved by the invention, the boundaries of the scope of the claim may be unclear. Furthermore, the phrase “in a case where” could reasonably be interpreted as “only when”, “assuming that”, or “in an example scenario”; each of these interpretations changes the scope of the claim, leading to indefiniteness. Additionally, “a film” is recited twice, and it is unclear if the second film is referring back to the first film, or if it is referring to a second, unrelated film. For purposes of examination, the Examiner will herein interpret this claim as requiring a capability to form a film (see the above Claim Interpretation section), wherein the film contains the two or more specific compounds, and wherein the film functions as a mask.
Claim 20 recites the limitation “wherein the one or more specific compounds…”, but parent claim 6 recites “two or more specific compounds”. This leads to indefiniteness because it is unclear if claim 20 is only intended to limit as few as one of the specific compounds, or if it is meant to apply to each of the “two or more specific compounds” recited by the parent claim. For purposes of examination, the Examiner will herein interpret claim 20 as referring to just one of the two or more specific compounds.
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 1–10 and 12–15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoko et al. (JP 2005/105045 A, hereinafter “Yoko”).
Regarding claim 1, Yoko teaches a surfactant composition (see generally abstract), comprising a solvent (see paragraph 0064 teaching the dissolution of surfactants in water, thus making this composition a chemical liquid), and two or more specific compounds, wherein the specific compounds are compounds having a polar group and a vertical alignment group (see paragraph 0008 teaching a fluorinated surfactant in combination with other water-soluble surfactants; also see paragraph 0041 teaching “other water-soluble surfactants” as including other fluorinated surfactants; the fluorinated surfactants disclosed by Yoko all have the general structure:
F(CF2)2m(CH2)n–Y,
wherein m and n are integers between 1 and 12, and Y represents a hydrophilic [i.e., polar] group; the partially fluorinated carbon chain would align vertically because the sp3 hybridization of the chain and the overall hydrophobicity would prevent it from folding or bending, i.e., the chain would remain linear and would align vertically with the surface of a substrate [see Specification, paragraphs 0035 and 0036]). Since Yoko teaches a specific compound that explicitly satisfies the requirements of the claim, and teaches that multiple fluorinated surfactants can be used in combination, this satisfies the “two or more specific compounds” limitations. Claim 1 is therefore anticipated by Yoko.
Regarding claims 2–5, Yoko teaches the chemical liquid according to claim 1, and further teaches the limitation wherein the polar group is one or more groups selected from a group consisting of a nitrogen-containing group, a phosphate group, a sulfo group, a carboxy group, a thiol group, and a hydroxy group (see paragraph 0014 teaching amine [which contain nitrogen], –PO(OH)3 [phosphate], –SO3H [sulfo], –COOH [carboxy], mercapto [thiol], and hydroxyl groups). Yoko explicitly states that the disclosed surfactant composition is a combination of a fluorinated surfactant with other water-soluble surfactants (see paragraph 0008), and clarifies that “other water-soluble surfactants” can include additional fluorinated surfactants, and can be used individually or in combination of two or more (see paragraph 0041). Yoko therefore teaches a surfactant composition comprising multiple fluorinated surfactants, each of which can have the claimed amphiphilic structure (i.e., a linear hydrophobic tail and a hydrophilic head), which means Yoko necessarily teaches embodiments that satisfy the limitations of claims 2–5. Claims 2–5 are therefore anticipated by Yoko.
Regarding claims 12–15, these each recite intended uses of the chemical liquid according to claim 1 (see the above Claim Interpretation section). Yoko teaches the chemical liquid according to claim 1, and therefore teaches a product that is capable of being applied towards the claimed intended uses. The composition of claim 1 is fully defined by its components (solvent + two or more specific compounds), and Yoko teaches those components, so Yoko’s composition must inherently possess the same capabilities as the claimed composition. Claims 12–15 are therefore anticipated by Yoko.
Regarding claim 6, Yoko teaches a surfactant composition (see generally abstract), comprising a solvent (see paragraph 0064 teaching the dissolution of surfactants in water, thus making this composition a chemical liquid), and two or more specific compounds, wherein the specific compounds are compounds having a polar group and a specific group selected from a group consisting of a hydrocarbon group (see paragraph 0008 teaching a fluorinated surfactant in combination with other water-soluble surfactants; also see paragraph 0041 teaching “other water-soluble surfactants” as including other fluorinated surfactants; the fluorinated surfactants disclosed by Yoko all have the general structure:
F(CF2)2m(CH2)n–Y,
wherein m and n are integers between 1 and 12, and Y represents a hydrophilic [i.e., polar] group; the hydrophobic chain includes a hydrocarbon group [CH2], and may also have a halogen atom [fluorine is a halogen]). Since Yoko teaches a specific compound that explicitly satisfies the requirements of the claim, and teaches that multiple fluorinated surfactants can be used in combination, this satisfies the “two or more specific compounds” limitations. Claim 6 is therefore anticipated by Yoko.
Regarding claims 7–10, Yoko teaches the chemical liquid according to claim 6, and further teaches the limitation wherein the polar group is one or more groups selected from a group consisting of a nitrogen-containing group, a phosphate group, a sulfo group, a carboxy group, a thiol group, and a hydroxy group (see paragraph 0014 teaching amine [which contain nitrogen], –PO(OH)3 [phosphate], –SO3H [sulfo], –COOH [carboxy], mercapto [thiol], and hydroxyl groups). Yoko explicitly states that the disclosed surfactant composition is a combination of a fluorinated surfactant with other water-soluble surfactants (see paragraph 0008), and clarifies that “other water-soluble surfactants” can include additional fluorinated surfactants, and can be used individually or in combination of two or more (see paragraph 0041). Yoko therefore teaches a surfactant composition comprising multiple fluorinated surfactants, each of which can have the claimed amphiphilic structure (i.e., a linear hydrophobic tail and a hydrophilic head), which means Yoko necessarily teaches embodiments that satisfy the limitations of claims 7–10. Claims 7–10 are therefore anticipated by Yoko.
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:
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 11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yoko.
Regarding claim 11, Yoko teaches the chemical liquid according to claim 1, but fails to explicitly teach the limitation wherein the specific compounds have a molecular weight of 600 or less. Yoko teaches all fluorinated surfactants as having the general structure:
F(CF2)2m(CH2)n–Y,
wherein m and n are integers between 1 and 12. Disregarding the polar head group “Y”, the range of molecular weights for the hydrophobic tail can be calculated using the allowed values for m and n. If m and n are both 1, the structure is F(CF2)2(CH2)–, which has a total mass of 133.04 g/mol. If m and n are both 12, the structure becomes F(CF2)24(CH2)12–, which has a molar mass of 1387.50 g/mol. Of the hydrophilic head groups disclosed by Yoko, hydroxyl groups have the lowest molar mass (OH-, 17.01 g/mol), while phosphate groups have the highest (PO(OH)3, 98 g/mol). Yoko therefore teaches a range of molecular weights from 150.05 g/mol to 1485.50 g/mol. This range includes embodiments that fall within the claimed molecular weight of 600 or less, and thus renders the claim obvious (see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 20, Yoko teaches the chemical liquid according to claim 6, but fails to explicitly teach the limitation wherein the specific compounds have a molecular weight of 600 or less. Yoko teaches all fluorinated surfactants as having the general structure:
F(CF2)2m(CH2)n–Y,
wherein m and n are integers between 1 and 12. Disregarding the polar head group “Y”, the range of molecular weights for the hydrophobic tail can be calculated using the allowed values for m and n. If m and n are both 1, the structure is F(CF2)2(CH2)–, which has a total mass of 133.04 g/mol. If m and n are both 12, the structure becomes F(CF2)24(CH2)12–, which has a molar mass of 1387.50 g/mol. Of the hydrophilic head groups disclosed by Yoko, hydroxyl groups have the lowest molar mass (OH-, 17.01 g/mol), while phosphate groups have the highest (PO(OH)3, 98 g/mol). Yoko therefore teaches a range of molecular weights from 150.05 g/mol to 1485.50 g/mol. This range includes embodiments that fall within the claimed molecular weight of 600 or less, and thus renders the claim obvious (see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Conclusion
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 M, T, Th, F 6:30-4:30.
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, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731