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 Amendment
Claims 1, 3-5, 7-16, 21 are pending. claims 1, 3, 9-16 have prior art rejections. claims 4, 5, 7, 8, 18, and 19 are objected. Claim 21 is allowed.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim(s) 1, 3, 6, 9-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murayama (WO 2017126554A1).
With respect to claims 1, 3, 6 Murayama describes a composition comprising water, an organic solvent (page 4) and a pH of 7 or more, preferably 8 or more or claimed alkaline composition. Unlike claimed invention, Murayama doesn’t describe the composition contains a specific compound having two or more sulfur atoms and one or more heteroatoms other than a sulfur atom. However, he teaches the composition further includes a corrosion inhibitor, including cystine,
PNG
media_image1.png
464
478
media_image1.png
Greyscale
, which provides claimed specific compound having a disulfide group and a carbonyl group (page 8). It would have been obvious for one skilled in the art before the effective filing date of the invention to use cystine or claimed specific compound as a corrosion inhibitor in the composition with expected results.
With respect to claims 9, 10, and 19, the composition further includes a quaternary ammonium hydroxide (page 6).
With respect to claims 11 and 12, the organic solvent includes alcohol solvent such as glycol, alkane diol (page 4), which contains hydroxy groups and a content of organic solvent is 40-98 % by mass (page 5).
With respect to claims 13, 15, 16, Murayama teaches the composition further is applied for etching silicon (page 29), wherein the substrate further includes SiGe (page 30).
With respect to claim 14, the pH is preferably 13.4 (page 13).
Allowable Subject Matter
Claims 4, 5, 7, 8 are 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.
With respect to claim 4, Murayama doesn’t teach that the specific compound such as cystine has 3 or more hydroxy groups.
With respect to claim 5, neither Murayama nor Kiyokata teaches the compound has an aromatic hydrocarbon group substituted with a polar group containing a heteroatom other than a sulfur atom in combination with other limitations of claim 1.
With respect to claim 7, neither Murayama nor Kiyokata teaches the compound has a disulfide group and three or more hydroxy groups in combination with other limitations of claim 1.
With respect to claim 8 neither Murayama nor Kiyokata teaches the compound has a disulfide group and an aromatic hydrocarbon group substituted with a polar group containing a heteroatom other than a sulfur atom in combination with other limitations of claim 1.
Claim 21 is allowed because Murayama doesn’t teach that the specific compound such as cystine has 3 or more hydroxy groups in combination with other limitations of claim 21.
Response to Arguments
The amendment has overcome the rejections under Kiyokata.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e.,the carbonyl group does not include -CO- contained in the carboxy group) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 DUY VU NGUYEN DEO whose telephone number is (571)272-1462. The examiner can normally be reached 9-5 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, Joshua Allen can be reached at 571-272-3176. 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.
/DUY VU N DEO/Primary Examiner, Art Unit 1713
10/9/2026
