Response to Amendment
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 .
Claim Rejections - 35 USC § 112
Claims 1-12 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matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant) is withdrawn.
Claim Rejections - 35 USC § 103
Claim(s) 1-7, 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR (20130115925).
KR ‘925 discloses (A) inorganic alkali compound; ( B) 1, or two or more organic solvents; (C) an aliphatic polyhydric alcohol; oil comprising the water and the remaining amount of inorganic hybrid type alignment film removal composition
The composition and method includes adding alkali to an organic compound characterized in that it further comprises organic-inorganic hybrid type alignment film removal composition.
Additionally, (A) inorganic alkaline compound 0.1 to 5 wt%; (B) one or two or more organic solvents 30 to 80 wt%; (C) an aliphatic polyhydric alcohol, which includes glycerol 5 to 50% by weight and oil comprising the water and the remaining amount, with the inorganic alkali hydroxide compound being potassium (potassium hydroxide) or sodium hydroxide (sodium hydroxide) (claim 1 and Table 1). The organic alkali compound is tetramethylammonium hydroxide or alkanolamines or mixtures thereof (claim 2).
The organic solvent is ethylene glycol monomethyl ether, ethylene glycol monoethyl ether, diethylene glycol monomethyl ether, diethylene glycol monoethyl ether, diethylene glycol monobutyl ether, triethylene glycol monomethyl ether, dimethyl formamide (DMF), N- methyl formamide, dimethyl acetamide (DMAc), N- methyl acetamide, diethyl acetamide (DEAc), N- methylpyrrolidone (NMP), N- ethyl-pyrrolidone (NEP) , N- Pro teal pyrrolidone (NPP), N- hydroxy-methyl-pyrrolidone and N- hydroxyethyl pyrrolidone and the like, characterized in that as oil is any one selected from the group consisting of or mixtures (claim 3). Moreover, aliphatic polyhydric alcohol is glycerol and adjunct ingredients utilized in stripping and cleansing methods.
The above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility. Furthermore, the amounts of ingredients such as glycerol appear outside of the claimed range of 4% as they are suggested at 5% (see Table 1). One skilled in the art would have optimized the amount of polyhydric even outside of the claimed range to effectively utilize the polyhydric to aid in cleansing or stripping, in the absence of a showing to the contrary, commensurate in scope with the claims.
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
[W]hen a patent 'simply arranges old elements with each performing the same function it had known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious. [KSR Int'l Co. v.Teleflex Inc., 550 U.S. at 418 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976).]
Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
Response to Arguments
Applicants’ arguments filed 7-21-2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed amount of glycerol is outside of the scope of KR ‘925.
The examiner contends that the claimed amount of glycerol lies outside of the 4% at 5% but it close enough where the skilled artisan would have optimized the amount to suggest the 4% given that glycerol at 4 or 5% are expected to have the same properties in the absence of showing of unexpected results to the contrary.
Applicant argues that Table 2 of their specification shows that less than 4% glycerol shows greater stripping of the photoresist.
The examiner contends that the showing in applicant’s Table 2 is not commensurate in scope with the claimed invention, given that the Table utilizes very narrow ranges and very specific ingredients in addition to glycerol and one skilled in the art would be unable to determine criticality of the ranges and compositional behavior.
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)
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 NECHOLUS OGDEN JR whose telephone number is (571)272-1322. The examiner can normally be reached 8-4:30 EST M-F.
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 571-272-1498. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NECHOLUS OGDEN JR/Primary Examiner, Art Unit 1761
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