DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
2. 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.
3. Claims 1-6, 9-11, 20-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 12,074,020 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of current application are broader than claims 1-21 of US Patent No. 12,074,020 B2 .
As to claim 1, US Patent No. 12,074,020 B2 claim 1 discloses an etching composition comprising:
at least one fluorine-containing acid, the at least one fluorine-containing acid comprising hydrofluoric acid or hexafluorosilicic acid;
at least one oxidizing agent;
at least one organic acid or an anhydride thereof, or a combination thereof;
at least one silicon-containing compound (i.e. hexafluorosilicate) and
water.
The following table will match claims in current application (18/931,148) vs. claims in US 12,074,020 B2
18/931,148 Claims US 12,074,020 B2 Claims
1 1
2 6
3 7
4 8
5 1 or 9
6 9
9 10
10 10
11 13
20 1
21 2
22 3
23 1
24 4
25 5
26 18
27 19
28 21
Claim Rejections - 35 USC § 112
4. 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.
5. Claim 16-17 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.
Claim 16 depends on claim 15. In claim 15, the applicants recite “wherein the silane-modified polymer comprises a silane-modified olefin polymer” (emphasis added). The examiner interprets the limitation “silane-modified olefin polymer” means an olefin polymer having silane groups attached to olefin polymer. However, in claim 16 the applicants recited a contradicted limitation “wherein the silane-modified olefin polymer is polyethylene, polypropylene, polybutadiene, polyisoprene, polystyrene, or copolymers thereof.” It is noted that polyethylene, polypropylene, polybutadiene, polyisoprene, polystyrene polymer does NOT comprise silane group. It is unclear whether “silane-modified olefin polymer” requires a silane group or not.
In claim 17, the limitation “the silane-modified olefine polymer comprises polybutadiene” is indefinite for the same reason as discussed above in claim 16. Specifically, polybutadiene does not comprise a silane group which is contradicted to the previous limitation “the silane-modified olefine polymer” which requires a silane group.
Claim Rejections - 35 USC § 102
6. 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.
7. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claims 1-12, 18-28 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Bjelopavlic et al. (US 2022/0081616 A1), herein after refers as Bjelopavlic (‘616).
As to claim 1, Bjelopavlic (‘616) discloses an etching composition, comprising:
at least one fluorine-containing acid, the at least one fluorine-containing acid comprising hydrofluoric acid or hexafluorosilicic acid (paragraph 0008, 0013-0014);
at least one oxidizing agent (paragraph 0008, 0013; 0015);
at least one organic acid or an anhydride thereof, or a combination thereof (paragraph 0008, 0013, 0022);
at least one silicon-containing compound (paragraph 0034); and
water.
As to claim 2, Bjelopavlic (‘616) discloses the at least one fluorine-containing acid is in an amount of from about 0.01 wt% to about 2 wt% of the composition (paragraph 0014).
As to claim 3, Bjelopavlic (‘616) discloses the at least one oxidizing agent comprises hydrogen peroxide or peracetic acid (paragraph 0015).
As to claim 4, Bjelopavlic (‘616) discloses wherein the at least one oxidizing agent is in an amount of from about 5 wt% to about 10 wt% of the composition. (paragraph 0016).
As to claim 5, Bjelopavlic (‘616) discloses the at least one organic acid comprises formic acid, acetic acid, propionic acid, or butyric acid (paragraph 0022).
As to claim 6, Bjelopavlic (‘616) discloses the at least one anhydride thereof comprises formic anhydride, acetic anhydride, propionic anhydride, or butyric anhydride (paragraph 0022).
As to claim 7, Bjelopavlic (‘616) discloses the composition comprises an organic acid and an anhydride thereof (paragraph 0022).
As to claim 8, Bjelopavlic (‘616) discloses wherein the organic acid is acetic acid and the anhydride is acetic anhydride (paragraph 0022).
As to claim 9, Bjelopavlic (‘616) discloses the at least one organic acid is in an amount of from about 30 wt.% of the composition (paragraph 0023).
As to claim 10, Bjelopavlic (‘616) discloses the at least one anhydride thereof is in an amount of from about 40 wt.% to about 70 wt.% of the composition (paragraph 0023).
As to claim 11, Bjelopavlic (‘616) discloses the water is in an amount of 10 wt.% to 30 wt.% of the composition (paragraph 0030).
As to claim 12, Bjelopavlic (‘616) discloses the silicon-containing compound comprises siloxane (i.e. polydimethylsiloxane; paragraph 0040).
As to claim 18, Bjelopavlic (‘616) discloses the silane-modified polymer comprises at least one trialkoxysilyl moiety (i.e. bis(trimethoxysilyl) methane; See paragraph 0034, 0040).
As to claim 19, Bjelopavlic (‘616) discloses each alkoxy moiety is independently C1 alkoxy (i.e. trimethoxy in bis(trimethoxysilyl) methane; See paragraph 0034
As to claim 20, Bjelopavlic (‘616) discloses the composition further includes at least one polymerized naphthalene sulfonic acid (paragraph 0024).
As to claim 21, Bjelopavlic (‘616) discloses the at least one polymerized naphthalene sulfonic acid comprises a sulfonic acid having a structure of
PNG
media_image1.png
198
364
media_image1.png
Greyscale
in which n is 3 to 6 (paragraph 0024).
As to claim 22, Bjelopavlic (‘616) discloses wherein the at least one polymerized naphthalene sulfonic acid is in an amount of from about 0.005 wt% to about 0.15 wt% of the composition (paragraph 0025).
As to claim 23, Bjelopavlic (‘616) discloses the composition further comprising at least one amine, the at least one amine comprising an amine of formula (I): N-R1R2R3, wherein R1 is C1-C8 alkyl optionally substituted by OH or NH2, R2 is H or C1-C8 alkyl optionally substituted by OH, and R3 is C1-C8 alkyl optionally substituted by OH (paragraph 0028).
As to claim 24, Bjelopavlic (‘616) discloses wherein the amine of formula (I) is diisopropylamine, N-butyldiethanolamine, N-(3-aminopropyl)-diethanolamine, N-octylglucamine, N-ethylglucamine, N-methylglucamine, or 1-[bis(2-hydroxyethyl)amino]-2-propanol (paragraph 0028).
As to claim 25, Bjelopavlic (‘616) discloses the at least one amine is in an amount of from about 0.001 wt% to about 0.15 wt% of the composition (paragraph 0029).
As to claim 26, Bjelopavlic (‘616) discloses the composition further comprising an inorganic acid (paragraph 0008, 0015, 0017).
As to claim 27, Bjelopavlic (‘616) discloses the inorganic acid is sulfuric acid, nitric acid or phosphoric acid (paragraph 0015, 0017, Bjelopavlic’s claim 5, Table 3, Table 5).
As to claim 28, Bjelopavlic (‘616) discloses the composition has a pH less than 1 (paragraph 0039).
Claim Rejections - 35 USC § 103
9. 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 should not be negated by the manner in which the invention was made.
10. 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.
11. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Bjelopavlic (US 2022/0081616 A1) as applied to claims 1-12, 18-28 above, and further in view of Mizutani (JP 2014099480 A).
As to claim 13, Bjelopavlic (‘616) fails to disclose the silicon-containing compound is tetraethoxysilane, triethoxymethylsilane, hexamethyldisilazane, or tetramethyldisilazane. However, Bjelopavlic (‘616) clearly disclose to use silicon-containing compound comprises silane group (See paragraph 0034). Mizutani teaches silicon-containing compounds including tetraethoxysilane, triethoxymethylsilane (also known as methyltriethoxysilane) (See paragraph 0021-0024). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Bjelopavlic (‘616) in view of Mizutani by using silicon-containing compounds including tetraethoxysilane, triethoxymethylsilane because it enhances the etching selectivity between the first layer and the second layer (See paragraph 0025)
12. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Bjelopavlic (US 2022/0081616 A1) as applied to claims 1-12, 20-28 above, and further in view of Oh et al. (US 2023/0212457 A1).
As to claim 14, Bjelopavlic (‘616) fails to disclose the silicon-containing compound is a silane-modified polymer. However, Bjelopavlic (‘616) clearly teaches the composition comprises silane-containing organic material (See paragraph 0034). Oh teaches am etching composition comprises a silane-modified polymer (paragraph 0014, 0043). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Bjelopavlic (‘616) in view of Oh by using a silane-modified polymer because it improves etch selectivity (See paragraph 0043).
13. Claim 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bjelopavlic (US 2022/0081616 A1) as applied to claims 1-12, 20-28 above, and further in view of Hayashi et al. (US 2024/0279549 A1).
As to claim 14, Bjelopavlic (‘616) fails to disclose the silicon-containing compound is a silane-modified polymer. However, Bjelopavlic (‘616) clearly teaches the composition comprises silane-containing organic material (See paragraph 0034). Hayashi teaches am etching composition comprises a silane-modified polymer (paragraph 0017-0018). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Bjelopavlic (‘616) in view of Hayashi by using a is a silane-modified polymer because it improves etch selectivity (See paragraph 0017-0018).
As to claim 15, Bjelopavlic (‘616) fails to disclose the silane-modified polymer comprises a silane-modified olefin polymer. As to claim 16, Bjelopavlic (‘616) fails to disclose the silane-modified olefin polymer is polyethylene, polypropylene, polybutadiene, polyisoprene, polystyrene, or copolymers thereof. Hayashi discloses the silane-modified olefin polymer is polyethylene (paragraph 0017-0018). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Bjelopavlic (‘616) in view of Hayashi by having the silane-modified olefin polymer is polyethylene because it improves etch selectivity (See paragraph 0017-0018).
Conclusion
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH X TRAN whose telephone number is (571)272-1469. The examiner can normally be reached Monday-Friday.
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 571-270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/ Primary Examiner, Art Unit 1713
Prosecution Insights