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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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
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.
Claims 1-7 and 9-10 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ahn et al, US 2003/0157441.
Ahn et al, US 2003/0157441, discloses a thinner composition comprising propylene glycol monomethyl ether acetate, ethyl 3-ethoxy propionate, and at least one of gamma-butyro lactone and propylene glycol monomethyl ether (see abstract and paragraphs 15-17). It is further taught by Ahn et al that the propylene glycol monomethyl ether acetate is present in an amount of 50-80% by weight (see paragraph 25), that the ethyl 3-ethoxy propionate is present in an amount of 10-45% by weight (see paragraph 27), that the gamma-butyro lactone is present in an amount of 1-12% by weight (see paragraph 28), that the propylene glycol monomethyl ether is present in an amount of 5-35% by weight (see paragraph 34), and that the thinner composition is used in a process to remove photoresist from a substrate (see paragraphs 36-56), per the requirements of the instant invention. Specifically, note Examples 1-5 and Experiments 1-8. Although Ahn et al is silent with respect to the Hansen solubility parameter value of their propylene glycol monomethyl ether component, the examiner asserts that the propylene glycol monomethyl ether component disclosed in Ahn et al would inherently meet this limitation, since products of identical chemical composition cannot have mutually exclusive properties. Therefore, instant claims 1-7 and 9-10 are anticipated by Ahn et al, US 2003/0157441.
In the alternative that 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.
Claims 1-10 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jeon et al, U.S. Patent No. 6,159,646.
Jeon et al, U.S. Patent No. 6,159,646, discloses a thinner composition for removing photoresist from a wafer comprising a mixture of ethyl lactate, ethyl-3-ethoxy propionate, and gamma-butyro lactone (see abstract). It is further taught by Jeon et al that the composition contains 70-80% by weight of ethyl-3-ethoxy propionate, 17-23% by weight of ethyl lactate, 3-7% by weight of gamma-butyro lactone (see col. 4, lines 13-35), and that the thinner composition may contain propylene glycol monomethyl ether acetate (see col. 3, lines 17-21), per the requirements of the instant invention. Specifically, note the Examples and Tables 1-9. Although Jeon et al is silent with respect to the Hansen solubility parameter value of their ethyl lactate component, the examiner asserts that the ethyl lactate component disclosed in Jeon et al would inherently meet this limitation, since products of identical chemical composition cannot have mutually exclusive properties. Therefore, instant claims 1-10 are anticipated by Jeon et al, U.S. Patent No. 6,159,646.
In the alternative that 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.
Claims 1-10 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chon et al, U.S. Patent No. 5,866,305.
Chon et al, U.S. Patent No. 5,866,305, discloses a thinner composition for washing a photoresist semiconductor device (see abstract and col. 1, lines 7-48) comprising 20-60% by weight of ethyl lactate, 39-72% by weight of ethyl-3-ethoxy propionate, and 1-8% by weight of gamma-butyrolactone (see col. 4, lines 9-22), wherein the composition may additionally contain ethylene glycol monoethyl ether acetate (see Tables 1-4), per the requirements of the instant invention. Specifically, note Examples 1-11 in Tables 1-4. Although Chon et al is silent with respect to the Hansen solubility parameter value of their ethyl lactate component, the examiner asserts that the ethyl lactate component disclosed in Chon et al would inherently meet this limitation, since products of identical chemical composition cannot have mutually exclusive properties. Therefore, instant claims 1-10 are anticipated by Chon et al, U.S. Patent No. 5,866,305.
In the alternative that 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.
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 1-4, 7, 9 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/537,790 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 19/537,790 claims a similar thinner composition for removing photoresist from a substrate comprising 0.5-20% by weight of a lactone-based organic solvent, such as gamma-butyrolactone, 0.0005-0.2% by weight of a compound of formula (I), 30-60% by weight of a ketone-based organic solvent, 35-65% by weight of an ester-based organic solvent, such as ethyl 3-ethoxypropionate and ethyl lactate, and adjunct ingredients (see claims 1-15 of copending Application No. 19/537,790), as required in the instant claims. Therefore, instant claims 1-4, 7, 9 and 10 are an obvious formulation in view of claims 1-15 of copending Application No. 19/537,790.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
September 22, 2026
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