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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of filling a container by using (a) an etchant composition as cited in claim 3, (b) a raw material of the filling port as described in the specification of polypropylene, perfluoroalkoxyalkane, polytetrafluoroethylene, and (c) a viscosity as cited in claim 2, does not reasonably provide enablement for filling a container that does not include the combination of (a), (b) and (c) in order to achieve the cited receding contact angle and ratio of advancing contact angle to receding contact angle. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
The broadest reasonable interpretation of claims 1-15 encompasses a method in which “a receding contact angle of the etchant composition with respect to a raw material of the filling port of the filling nozzle is 60° or more, and a ratio of an advancing contact angle to a receding contact angle (advancing contact angle/receding contact angle) of the etchant composition is 1.4 or less.” In other words, the contact angle is a value of 60° or more, and the ratio of contact angles is 1.4 or less. The broadest reasonable interpretation is that these values are achieved for (a) any etchant composition, (b) any material of a filling port, and (c) any viscosity value.
The specification discloses sufficient information for one of ordinary skill in the art to make and use a method including the combination of specific materials used for (a), (b), and (c), as described in dependent claims 2 and 3 and the specification. However, the specification does not provide direction on how to make and use a method with (a), (b) and (c) as broadly recited in claim 1, nor does the specification provide direction on how to make and use a method with the more particular materials recited for a subset of these conditions, such as one or two conditions selected from the group consisting of (a) as cited in claim 3, (b) the examples described in in the specification, and (c) as cited in claim 2.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
At the time of filing, the following determinations are made with respect to the Wands factors.
(A) The breadth of the claims
Claims 1 and 15 recite that a contact angle is a value of 60° or more, and the ratio of contact angles is 1.4 or less. However, the materials and surface chemistry required to obtain the cited contact angle and ratio of contact angles are either not recited as in claims 1 and 15, and thus the claims are broad in scope. The dependent claims, claims 2-11, provide one aspect of the required surface chemistry (such as viscosity or etchant composition), but not in combination with the remaining materials and surface chemistries. In other words, the dependent claims provide a part of the puzzle, but not the complete puzzle of materials and steps required to obtain the cited contact angle and ratio of contact angles.
(B) The nature of the invention
The nature of the invention is described in the brief “Summary of the Invention.” 37 CFR 1.73, MPEP 608.01(d). The instant specification describes the “Disclosure of the Invention” at paragraphs 4-7, and essentially mirrors the language of the independent claims.1 Accordingly, the nature of the invention is a method that includes filling a container, where the receding contact angle of an etchant composition and a ratio of contact angles are certain values.
(C) The state of the prior art
As admitted by applicant in the background of the invention, etching compositions with phosphoric acid, nitric acid and acetic acid for etching metal films is generally known in the art (specification at pages 1-2). Nozzle materials such as polypropylene, polyethylene, polytetrafluoroethylene for dispensing etching compositions are known. (LaBrie et al, US 2017/0294332 A1, [0039]).
With respect to contact angles, a search of the prior art revealed Hu et al (Experimental Thermal and Fluid Sciences 2021). Hu describes that when a liquid stream is ejected from a nozzle, the wetting near the orifice affects the transition from dripping to jetting a liquid (page 4, last sentence of section 2.2 (iv)). Moreover, increasing the wetting boundary is a function of the advancing contact angle, and shrinking the wetting boundary is a function of the receding contact angle (page 4, section 3.1, right column, lines 19-22). Hu is a general teaching about handling dripping and jetting with aqueous solutions.
(D) The level of one of ordinary skill
The level of one of ordinary skill in the art is a person having training and/or experience in the preparation and use of etching compositions for processing substrates.
(E) The level of predictability in the art
The chemical field by its nature is unpredictable, however the surface chemistry involved when using etching compositions and various surface raw materials requires experimentation to determine the combination that achieves the best results for filling a container.
(F) The amount of direction provided by the inventor
The inventor provides examples of etching compositions, raw materials for the filling port, and preferred viscosities. However, there is no guidance as to how to extend this information to other etching compositions, for example basic compounds such as ammonia, to other raw materials such as stainless steel, or whether the viscosity levels are the sole determining factor in obtaining the desired contact angles for the wide variety of etching compositions and raw materials that are available.
(G) The existence of working examples
The specification has working examples 1-12 and comparative examples 1-6 with an etching composition comprising varying concentrations of phosphoric acid, nitric acid, acetic acid (as the organic acid), viscosity values that vary between 10 and 37 mPa∙s, polyethyleneimine or diethylenetriamine as etching inhibitor, and that uses a PTFE, PFA, PP, PE, PVC filling nozzle (paragraphs 55-66, Tables 1-2). Extending the teachings of the working examples for other etching compositions, other viscosity values, and other raw materials is not contemplated or described.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
While the working examples provide some guidance, the characteristics of etching compositions vary widely. Compositions can be acidic, basic, or even include polishing slurries with abrasives. Their viscosities can vary also. The raw materials can vary depending on the composition of the etching composition. For example, Hu discloses stainless steel nozzles or various coatings on the nozzles. (Hu, page 3, paragraph immediately below Table 1). Experimentation would be needed to reach the full scope of the claims and obtain the cited contact angle and ratio of contact angles.
Based on a consideration of all of the above Wands factors, while the claims are enabled for a particular combination of etching composition, viscosity and raw material of the filling port, and some working examples are provided, on balance, obtaining the cited contact angles and ratio of contact angles in an unpredictable field without any direction by the specification as to how they relate to other compositions, viscosities and raw materials, favors that a person having ordinary skill in the art would need to conduct undue experimentation to make and use the full scope of the invention as recited in claims 1-15.
This is a scope of enablement rejection. While the claims are enabled for using (a) an etchant composition as cited in claim 3, (b) a raw material of the filling port as described in the specification of polypropylene, perfluoroalkoxyalkane, polytetrafluoroethylene, and (c) a viscosity as cited in claim 2, the specification fails to enable a person having ordinary skill in the art before the effective filing date of the invention to make and use the full scope of the invention, as recited in claims 1-15.
For the reasons described above, claims 1-15 are rejected under 35 USC 112 (a) as failing to comply with the enablement requirement for the scope of the invention as recited in claims 1-15.
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.
Claims 1-15 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.
In claim 1, it is unclear how the body of the claim, which recites a method for filling a container, relates to a method for producing an etching composition, as recited in the preamble. Claim 1, line 2, also recites that the etching composition is provided, but gives no details about how the etching composition is manufactured.
Claims 12-13 disclose limitations about the metal film to be etched, and a substrate to be etched. However, the base claim is directed to a method for producing an etchant composition. A method of producing an etchant composition is unrelated to an intended use for a metal film or a particular substrate. It is unclear how these limitations further limit a method of producing an etchant composition.
In claim 14, lines 1-2, the requirement that the composition is “used for the method according to claim 6” renders the claim indefinite. A composition is defined by what it is, not by how it is used in a method. Therefore, it is unclear how the method of claim 6 limits claim 14.
In claim 15, lines 7-9, the limitation “a receding contact angle …is 60° or more, and a ratio …is 1.4 or less” renders the claim indefinite. The receding contact angle and the advancing contact angle relate to a method of using the composition, and does not add a structural limitation to the manufacture claimed, “an etchant composition in a container.” It is thus unclear how this limitation limits the claim.
Claims 2-11 fail to cure the indefiniteness of the base claim and are therefore also rejected.
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 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jang et al (TW 201716546 A).
Jang discloses a mixed acid composition comprising phosphoric acid, nitric acid and organic acid (acetic acid) (see abstract).
The limitation “used for the method according to claim 6” is a method limitation. A composition is defined by its structure, not by how it is used. Therefore, this limitation is given little patentable weight. The composition is capable of being used as cited.
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.
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 1-2 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al (TW 201716546 A) in view of LaBrie et al (US 2017/0294332 A1) and Hu et al (Experimental Thermal and Fluid Sciences 2021).
Jang discloses a method for producing an etching composition (“Manufacture of Silver Etching Composition” page 8, last 3 paragraphs),
the etchant composition for etching a metal film (silver, see page 3, “Tech-Problem”) on a substrate (e.g., a TFT substrate, page 7, third paragraph).
Jang fails to disclose filling a container with the etchant composition. However, the etching composition is useful to store prior to use. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to store the etching composition so that it can be efficiently used when desired at point of use.
Jang also fails to disclose using a filling nozzle with a filling port. LaBrie teaches that nozzles 256 are known to distribute etching solution onto a wafer surface 224 during etching [0039]. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to use a filling nozzle with a filling port as cited in the method of Jang because LaBrie teaches that nozzles are useful for dispensing etching solutions, and such is expected to give the predictable result of a filled container.
Jang teaches a contact angle of 24 to 61 degrees (see abstract). Jang fails to disclose the cited receding contact angle and ratio of advancing contact angle to receding contact angle. Hu teaches that when a liquid stream is ejected from a nozzle, the wetting near the orifice affects the transition from dripping to jetting a liquid (page 4, last sentence of section 2.2 (iv)). Hu teaches that increasing the wetting boundary is a function of the advancing contact angle, and shrinking the wetting boundary is a function of the receding contact angle (page 4, section 3.1, right column, lines 19-22). Hu is a general teaches that dripping or jetting can be optimized by changing the advancing contact angle and receding contact angle.
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the cited receding contact angle and ratio of advancing contact angle to receding contact angle in the modified method of Jang because Hu teaches that the angles can be optimized for best properties of filling, whether by dripping or jetting a solution from a nozzle, and it is expected that jetting the composition would provide for efficient filling of the container.
As to claim 2, Jang discloses a viscosity of 4-43 mPa∙s, which is expected to be measured at 40 °C (1 cP=1 mPa∙s, page 4, paragraph 4; page 9, paragraph 2). Even at 25 °C, the range of viscosity levels is expected to fall within the cited range because the temperatures are close to one another. It would have been obvious to provide the cited viscosity in the modified method of Jang because the large overlapping values suggest that at 25 °C, the viscosities are expected to fall within the cited range.
As to claims 9-10, Jang fails to disclose to include hydrogen peroxide or a fluorine compound.
As to claim 11, Jang fails to disclose the pH. However, Jang teaches that pH adjuster may be included to control the pH (page 6, paragraph 10). Thus, Jang recognizes that the pH may be adjusted to optimize the etching composition for best results. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to adjust the pH to the cited range in the modified method of Jang in order to optimize the pH for best results, Jang teaches to vary the pH is useful, and the cited pH is expected to give the predictable result of a pH suitable for etching.
As to claims 12-13, these limitations are given little patentable weight because they are unrelated to a method of producing a composition. Substrates “for” a particular application recite limitations of intended use and given little patentable weight. The substrate need only be capable of being used in the cited manner. Nonetheless, Jang discloses a metal film may contain tungsten (W), molybdenum (Mb), niobium (Nb), nickel (Ni), copper (Cu), titanium (Ti) (page 7, paragraph 7) and the substrate may include a substrate for a liquid crystal display (LCD, page 7, paragraph 3).
Claim 3-8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al (TW 201716546 A), LaBrie et al (US 2017/0294332 A1) and Hu et al (Experimental Thermal and Fluid Sciences 2021), as applied to claims 1-2, and further in view of Kitagawa et al (US 2022/0310401 A1).
As to claim 3, Jang discloses that the etchant composition contains phosphoric acid, nitric acid, organic acid (acetic acid) and water (see abstract). Jang fails to disclose to include an etching inhibitor in the etching composition. Kitagawa teaches that etching compositions, like Jang, that include phosphoric acid [0030], nitric acid [0031], acetic acid [0032], water [0033] may also include polyethyleneimine (“PEI”) [0034]. Kitagawa, like Jang, etches a method film that contains molybdenum [0029] and includes the PEI for its anticorrosion effect [0029]. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include PEI in the etching composition of Jang because Kitagawa teaches that it is useful for its anticorrosion effect. Because PEI is the same as the etching inhibitor in the instant invention, PEI is also expected serve as an etching inhibitor, at least to some degree, inherently. MPEP 2112.01, II (If the composition is physically the same, it must have the same properties).
As to claim 4, Jang discloses to include acetic acid (see abstract).
As to claim 5, Jang discloses to include 33-50% by weight acetic acid (page 6, paragraph 2), which is expected to overlap with the cited rang.
As to claim 6, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to blend as cited because it is expected that adding the etching inhibitor to the mixed acid is a useful technique after storing them separately.
An "obvious to try" rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. " [A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007).
Here, the components of the composition must be added to one another in order to obtain the final composition. There are a finite number of ways to combine the acids and etching inhibitor. One of ordinary skill in the art would have pursued the potential options of the order of combining the acids and etching inhibitor in order to obtain the final solution. A person having ordinary skill in the art could have pursued the known potential options, including the cited adding of etching inhibitor to a mixed acid composition as cited with a reasonable expectation of success because ultimately the etchant composition requires that all components are blended. It would have been obvious to one with ordinary skill in the art at the time the invention was filed to blend as cited because it would have been obvious to try the cited order.
As to claim 7, the modified method of Jang includes PEI, which is a polyalkyleneimine.
As to claim 8, Jang teaches to include an azole compound as an anticorrosive agent (page 6, paragraph 4). However, Kitagawa teaches that PEI is an effective anticorrosive agent. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to not include an azole compound in the modified method of Jang because Kitagawa teaches that PEI is effective as an anticorrosive compound, and such is expected to give the predictable result of an etching composition ready for etching with anticorrosive properties.
As to claim 15, see the rejection of claim 1. As explained in the rejection of claim 1, Jang as modified by LaBrie and Hu discloses an etchant composition in a container comprising:
the etchant composition with which the container is filled (this is obvious as explained in the rejection of claim 1 because compositions necessarily are stored),
the etchant composition for etching a metal film that is disposed on a substrate (silver, see page 3, “Tech-Problem”; LCD substrate page 7, paragraph 3),
wherein the etchant composition contains phosphoric acid, nitric acid, organic acid and water (page 5, paragraphs 3, 7, 10; page 6, paragraph 9) and has the cited viscosity (page 4, paragraph 4; page 9, paragraph 2), and
a receding contact angle and ratio of advancing contact angle to receding contact angle is obvious for the reasons cited in the rejection of claim 1.
The limitation of claim 15, lines 7-9 is given little patentable weight because it is treated as a method limitation that fails to further define structurally an etchant composition in a container.
Jang fails to disclose to include an etching inhibitor in the etching composition. Kitagawa teaches that etching compositions, like Jang, that include phosphoric acid [0030], nitric acid [0031], acetic acid [0032], water [0033] may also include polyethyleneimine (“PEI”) [0034]. Kitagawa, like Jang, etches a method film that contains molybdenum [0029] and includes the PEI for its anticorrosion effect [0029]. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include PEI in the etching composition of Jang because Kitagawa teaches that it is useful for its anticorrosion effect. Because PEI is the same as in the instant invention, it is also expected serve as an etching inhibitor, at least to some degree, inherently. MPEP 2112.01, II (If the composition is physically the same, it must have the same properties).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Xu et al (US 2020/0148949 A1) is cited for its general teachings of a phosphoric acid composition and changing the viscosity by addition of inhibitor or dispersant [0042]. Brask et al (US 2005/0218371 A1) is cited for its teaching of changing a viscosity of etchants by thickening agents or dehydrating the composition [0010]. Yamamoto et al (US 6,329,300 B1) is cited for its teachings about a nitric acid, phosphoric acid, acetic acid solution and viscosity (col.3, lines 26-31). Meikle (US 5,942,449) is cited for its teaching of a phosphoric acid, nitric acid, hydrofluoric acid etchant with viscosity of 0.5-100 mPa∙s (col.4, lines 44-50).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
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/ANITA K ALANKO/Patent Examiner, Art Unit 1713
1 Paragraph 7 of the specification mirrors independent claim 16, which was cancelled in pre-amendment dated 6 March 2025.