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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed on 10/11/2024, 11/08/2024, and 04/21/2026. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see attached USPTO form.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP 2022-066552, filed on 04/13/2022.
Election/Restrictions
Applicant's election of Group I (claims 1-7, and 12-16) with traverse in the reply filed on 07/31/2026 is acknowledged.
The Applicant traverses on the grounds that all claims share a special technical feature that provides a contribution over the prior art (see Remarks, page 2). In the prior art of record (US20190307729), Kao teaches an acetyl sulfisoxazole antibacterial agent (see [0160]), the structure of which is shown below:
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The Applicant argues the compound disclosed by Kao is structurally different, due to its rhodamine backbone. The examiner asserts however, the acetyl sulfisoxazole compound taught by Kao above sufficiently meets the requirements of the isoxazolium salt special technical feature because it comprises of an isoxazolium. The special technical feature has no structural limitations besides being an isozaxolium salt.
Claims 8-11 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-7, and 12-16 are under examination and the requirement for restriction is made final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 depends from claim 1 which requires the liquid composition to be acidic. Claim 5 fails to further limit the scope of claim 1 because an acidic composition is understood to have a pH less than 7 at 25 C.
Claims 6-7 depend from claim 1 which requires an acidic liquid composition comprising an isoxazolium salt, and water. The use of the composition for oxidizing agents or bleaching agents fails to further limit the scope of the claim because intended use is not a structural limitation.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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, and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Visintin (WO2008157345A2) hereinafter Visintin.
Visintin teaches a composition for removal materials from microelectronic devices (see claim 1). With regards to claims 1 and 5, the composition comprises amine hydrogen fluoride complexes, such as isoxazoles (see claims 3-4), and optionally water (see claim 1). Formulations P-R specifically teach compositions comprising isoxazole, acetic acid, hydrogen fluoride acid, sulfolane, and water. A person of ordinary skill would reasonably expect fluoride anion dissolved in the solution from the hydrogen fluoride which could bind with the cationic isoxazole. The pH of the inventive composition is taught to be between 1-7, preferably from about 3-3.5 when diluted with water (see [0053]).
With regards to claim 3, Visintin teaches the use of an oxidizing agents such as hydrogen peroxide in the composition (see claim 5).
With regards to claim 4, Visintin does not explicitly disclose the isoxazole and hydrogen peroxide in the same composition. However, in Formulations P-U the use of 10.3-20.4 wt% of isozaxole is taught and in Formulations LL-PP 1-5 wt% of hydrogen peroxide is taught (see [0066]; see also [0097]). A person of ordinary skill would reasonably expect to optimize the ratio of isoxazole and hydrogen peroxide taught by Visintin to arrive at the amounts taught by the instant claim.
With regards to claims 6-7, Visintin does not explicitly disclose the use of the composition for oxidizing or bleaching agents. However, these are intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claims 1-2, and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yanada et. al (JP2013058400A) hereinafter Yanada.
Yanada teaches a liquid electrolyte solution for a dye-sensitized solar cell comprising of an organic solvent (see Abstract). With regards to claim 1, Yanada teaches the use of a halogen compound salt comprising isoxazolium cation and halogen anion in the composition (see claim 1; see also claim 7). Although the exact pH of the composition is not taught, Yanada teaches the use of boric acid and carboxylic acids in the composition (see page 11 paragraph 1, page 13 paragraph 3). A person of ordinary skill in the art would reasonably expect water from the reversible dissociation of the acid to be present in the composition. A person of ordinary skill would also reasonably expect the composition to be formulated to be acidic.
Although the halogenated isoxazolium salt, and acid are not recited in a single embodiment to the point of anticipation, it would have been obvious to a person of ordinary skill before the effective filing to combine these elements in an acidic electrolytic solution. This combination would have the expected benefit of improved conductivity of the electrolyte solution (see page 13 paragraph 6).
With regards to claims 2, and 12-15, Yamada teaches the use of 2-ethyl-3,5-dimethylisoxazolium in the composition (see claim 7). The structure is shown below:
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R1 is an ethyl group (C=2)¸ R2 is a methyl group (C=1), R3 is a hydrogen, and R4 is a methyl group (C=1). With regards to claim 16, the halogen counterion can comprise of bromide or iodide anions (see page 4 paragraph 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA PAUL whose telephone number is (571)272-1551. The examiner can normally be reached M-F: 7:30am-5:00pm.
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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/SP/Patent Examiner, Art Unit 1761
/BRIAN P MRUK/Primary Examiner, Art Unit 1761
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