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 Group I, claims 1-7, in the reply filed on 7/8/2026 is acknowledged.
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.
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.
Claim(s) 1,3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takuma et al (EPO 3 480 288 A1).
Regarding claim 1, Takuma et al disclose a cleaning composition comprising a) from 1 to 5% by weight of total weight of the composition of ammonium fluoride; b) from 30 to 70% by weight of total weight of the composition of a water- soluble organic solvent; c) from 1.5 to 20% by weight of total weight of the composition of organic amine; and d) from 31 to 60% by weight of total weight of the composition of deionized water (abstract; [0008]), wherein the ammonium fluoride is used because it helps to achieve high concentration of fluoride anion [0023] and such corresponds to the compound capable of releasing a fluoride anion.
Takuma et al also disclose that the cleaning composition may further comprise one or more additional components selected from a surfactant selected from anionic surfactant, non-ionic surfactant and mixture thereof; a corrosion inhibitor selected from an azole compound [0050]; and aforesaid “azole compound” corresponds to the claimed “nitrogen-containing aromatic compound” because Azoles are a class of five-membered heterocyclic compounds containing a nitrogen atom and at least one other non-carbon atom (i.e. nitrogen, sulfur, or oxygen) as part of the ring.
Takuma et al disclose that the temperature of the composition is controlled t be below 40 degree C [0051]; and the composition is prepared or blended at a room temperature [0052] but fail to teach an anion content of the nitrogen-containing aromatic compound is 5 ppm -30 ppm at 25 degree C.
Without showing any criticality of such concentration of the nitrogen-containing compound, it would have been obvious to one of ordinary skill in the art would optimize such for predictable result.
Further, it has been held that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art in the absence of evidence indicating that said concentration is critical. See MPEP 2144.05.II.A.
Regarding claim 3, Takuma et al disclose that suitable water-soluble organic solvent is selected from the group consisting of N-methylpyrrolidone (NMP), dimethyl sulfoxide (DMSO), methyl diglycol (MDG), buthyl diglycol (BDG), N,N-dimethylformamide, N,N-dimethylacetamide, γ-butyrolactone, ethylene glycol, propylene glycol and mixtures thereof [0028], [0030].
Regarding claim 5, Takuma et al disclose that the cleaning composition comprises a water-soluble organic solvent from 30 to 70% by weight of total weight of the composition [0032] and water content is 31-60% [0043]; and aforesaid overlaps the claimed range of the total solvent content.
Regarding claims 6-7, Takuma et al disclose that the cleaning composition is used in a process of removing one or more of etching residue, residual photoresist, and photoresist by-products from a substrate, comprising steps of: contacting a substrate having one or more of etching residue, residual photoresist, and photoresist by-products [0010]; and the substrate having the specified layers to be clean, would have been purely an intended use of the composition; and the patentability of a composition is toward the composition as a whole, not toward an intended use of the composition or its method of manufacture or method of use, therefore claimed subject matter not related to the composition as a whole at a single point of time does not make a patentable distinction over the composition as taught above.
Claims are directed to a product must be distinguished from the prior art in terms of structure rather than function. In reSchreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir.1997) [MPEP2114]. The recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1729 (Fed. Cir. 1997).Since the product (composition) of the prior art teaches all of the components or ingredients of the claim, the product is considered capable of meeting the intended use limitation.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takuma et al (EPO 3 480 288 A1) as applied to claim 1 above, and further in view of Kumagai et al (US 2013/0330927).
Regarding claim 2, Takuma et al disclose above the claim 2 but fail to teach the cleaning composition further comprises ammonium hydroxide.
However, in the same field of endeavor, Kumagai et al disclose a cleaning composition for removing post-etch residue [0013], wherein, the composition comprises an alkali that can remove residue materials remaining after etching can be used without any limitation [0020]; for example, a quaternary ammonium hydroxide [0021].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Kumagai et al's teaching of introducing an alkali of ammonium hydroxide into the teaching of Takuma et al for efficient removal of the residue after etching as suggested by Kumagai et al.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takuma et al (EPO 3 480 288 A1) as applied to claim 1 above, and further in view of Cooper et al (US 2017/0200619).
Regarding claim 4, Takuma et al disclose above for the claim 1 but fail to teach the corrosion inhibitor of the azole compound comprises the specified compound as of claim 4.
However, in the same field of endeavor, Cooper et al disclose a cleaning composition for removing post-etch residue [0011], wherein the composition comprises fluoride-containing compounds include, but are not limited to, hydrogen fluoride, ammonium fluoride [0026] and a corrosion inhibitor includes imidazole, triazole, tetrazole or pyrazole ring containing compound [0028].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Cooper et al's teaching of using the specified azole compound into the teaching of Takuma et al because such would be a simple substitution of known materials as suggested by Cooper et al.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of co-pending Application No. 18/924,422 (reference application, herein after Application ‘422). Although the claims at issue are not identical, they are not patentably distinct from each other because the anion content of the nitrogen-containing compound or the mass ratio in application ‘422 would have been obvious in view of the instant invention because they are claiming a similar composition having same nitrogen-containing aromatic compound.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record, listed in the PTO-892 and not relied upon is considered pertinent to applicant's disclosure. Hayashi et al (US 2023/0101156) disclose a treatment liquid for removing residue after etching [0320],[0477]; the treatment liquid comprises fluoride ion source (HF)[0019], also contain nitrogen containing compound [0050],[0051] and examples of the ring structure having the structure of Formula (3) include an imidazole ring, a pyrazole ring, an oxazole ring, a thiazole ring, an imidazoline ring, a triazole ring, a tetrazole ring, a pyridine ring, a pyrimidine ring, a pyrazine ring, a benzimidazole ring, a benzotriazole ring, a quinoline ring, a quinazoline ring, a quinoxaline ring, a purine ring, a pteridine ring, and an acridine ring [0071]; solvent ethylene glycol [0209] or DMSO [0379].
Kamimura (US 2023/0099612) disclose a treatment liquid comprises fluoride ion source [0091], a basic compound of alkali metal hydroxide and ammonia [0387],[0388], heteroaromatic compound is at least one selected from the group consisting of a tetrazole compound, a triazole compound, an imidazole compound, and a pyrazole compound [0034], water and organic solvent of ethylene glycol-based solvent [0371],[0372],[0376].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/Primary Examiner, Art Unit 1713
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