DETAILED ACTION
This is the Office action based on the 16650691 application filed March 25, 2020, and in response to applicant’s argument/remark filed on May 15, 2026. Claims 1, 3-7, 9, 11-12, 14-24, 27-29, 31-33 and 35-46 are currently pending and have been considered below. Applicant’s cancellation of claims 2, 8, 10, 13, 25-26, 30 and 34 withdrawal of claims 15-17 and 20-24 acknowledged.
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 .
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 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.
Claim Interpretations
Claim 1 recites “(a) polishing liquid comprising abrasive grains, a copolymer, and a liquid medium, wherein the abrasive grains contain ceria,a zeta potential of the abrasive grains is -40 mV or less,the copolymer comprises a structure unit derived from at least one styrene compound selected from the group consisting of styrene and a styrene derivative, and a structural unit derived from at least one selected from the group consisting of acrylic acid and maleic acid,the styrene derivative does not having a sulfonic acid group, a ratio of the structure unit derived from the at least one styrene compound in the copolymer is 15 mol% or more, a weight average molecular weight of the copolymer is 6000 to 20000, andand a pH of the polishing liquid is 4.5 to 6.5” (emphasis added). The specification does not define the phrase “derived from”. According to Cambridge Dictionary, “derived from something” means to come from something. According to McMillan Dictionary, “derive” means “to receive or obtain something from something else”, or, in chemistry, means “to get a chemical substance from another substance”. It is noted that this is a product-by-process limitation within a product claim. Thus, the limitations “structure unit derived from” are interpreted as a product-by-process. Therefore, for the purpose of examining the phrase “derived from” is interpreted as “to get a chemical substance from another substance”. For example, a structure unit derived from at least one styrene compound would be interpreted as any chemical structure units that are capable of being obtained from one or more styrene compounds. It is noted that Applicant elected Group I, drawn to a product, in response to the Requirement for Restriction/Election filed Oct 3, 2022. According to MPEP 2113, “Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps”, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Thus, the patentability of a product does not depend on its method of production, and once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. Similar interpretations will be applied for the phrase “derived from” that are recited in other claims, such as in claims 3-6 and 11-12. Furthermore, for the purpose of examining, the limitation “a zeta potential of the abrasive grains is -40 mV or less” may applies either to the abrasive grains contain ceria in line 2 or the abrasive grains in line 1. Since claim 1 does not specify the denominator of the term “a ratio of the structure unit derived from the at least one styrene compound in the copolymer”, and the composition of the co-polymer is open-ended, i.e. “comprising”, for the purpose of examining the above term is interpreted as the ratio of the structure unit derived from the at least one styrene compound with respect to any other component, or any combination of the other components, of the co-polymer.
Claim 27 recites “(a) polishing liquid comprising abrasive grains, a copolymer, and a liquid medium, wherein the abrasive grains contain ceria,a zeta potential of the abrasive grains is -40 mV or less,the copolymer comprises a structure unit derived from at least one styrene compound selected from the group consisting of styrene and a styrene derivative, and a structural unit derived from at least one selected from the group consisting of acrylic acid and maleic acid,the styrene derivative does not have a sulfonic acid group”(emphasis added). The feature “the copolymer comprises a structure unit derived from at least one styrene compound selected from the group consisting of styrene and a styrene derivative, and a structural unit derived from at least one selected from the group consisting of acrylic acid and maleic acid” is a product-by-process limitation. Please see section 4 above regarding interpretation of a product-by-process claim. Similar interpretations will be applied for the phrase “derived from” that are recited in other claims, such as in claims 28-32 and 36. Since claim 27 does not specify the denominator of the term “a ratio of the structure unit derived from the at least one styrene compound in the copolymer”, and the composition of the co-polymer is open-ended, i.e. “comprising”, for the purpose of examining the above term is interpreted as the ratio of the structure unit derived from the at least one styrene compound with respect to any other component, or any combination of the other components, of the co-polymer.
Claims 11 and 35 recite the limitation “the abrasive grains contain cerium oxycarbonate-derived ceria”. The term “cerium oxycarbonate-derived ceria” is directed to a product-by-process. According to the specification, “(c)eria can be obtained by oxidizing cerium salts such as cerium carbonate, cerium oxycarbonate, cerium nitrate, cerium sulfate, cerium oxalate, and cerium hydroxide” ([0039]). Since the invention is directed to a product, a method of producing the product has little patentable weight. Since ceria abrasives are capable of being derived from cerium oxycarbonate, as taught by Applicant, it would have been obvious to one of ordinary skill in the art at the time the invention was made, in routine experimentations, to use ceria abrasive that have been produced by using cerium oxycarbonate.
Claim 40 recites the limitation “a ratio of the structure unit in the copolymer is 15 mol% or more”. Since claim 40 does not specify the denominator of the term “a ratio”, and the copolymer does not exclude other components besides styrene, acrylic acid and maleic acid, for the purpose of examining the above term is interpreted as the ratio of the structure unit with respect to any other component, or any combination of the other components, of the co-polymer.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103:
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-7, 9, 11-12, 18-19, 27-29, 31-33, 35-36 and 38-46 rejected under 35 U.S.C. 103 as obvious over Izawa et al. (U.S. PGPub. No. 20140242798), hereinafter “Izawa”, in view of Kamei et al. (U.S. PGPub. No. 20150344739), hereinafter “Kamei”:--Claims 1, 3, 4, 6, 9, 19, 27, 28, 29, 32, 39, 40: Izawa teaches a polishing composition, comprisingabrasives, such as ceria abrasive ([0027]) at a concentration of preferably 0.01-20 wt.% ([0030-0031]);a surfactant, such as a phosphate surfactant ([0024]);an ionic surfactant (abstract), such as an ammonium salt of a styrene-maleic co-polymer having a molecular weight up to 100,000 at a concentration of 0.001 wt.% or more, preferably 0.01 wt.% or more ([0024-0026]) ;wherein the polishing composition has a pH of 3-7 ([0037]). Izawa further teaches the abrasives are surface-modified with a metal so that the zeta potential has a large negative value resulting in they strongly repel each other and satisfactorily dispersed and improve stability in storage condition ([0027-0028]). In an embodiment, Izawa discloses that the zeta potential may be -43 mV to -94 mV (Table 4). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use ceria abrasive having large negative value, such as -43 mV to -94 mV, in the invention of Izawa because Izawa teaches that such abrasives would be satisfactorily dispersed and improve stability in storage condition. Izawa is silent about a mole ratio of styrene monomer/maleic monomer in the co-polymer. Kamei, also directed to a polishing composition comprising a copolymer of a unsaturated carboxylic acid, such as acrylic acid, and an additional monomer, such as styrene, teaches that the unsaturated carboxylic acid is present at a ratio of 10 mole% or more, such as 50 mole% ([0029]). It is noted that the styrene may be present at a ratio of 90 mole% or less. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the copolymer of styrene-maleic having a mole ratio of styrene to be about 50 mole% with respect to the total mole of the copolymer because Izawa is silent about a mole ratio of styrene monomer/maleic monomer in the co-polymer and Kamei teaches that such mole ratio would be effective.--Claims 5, 31: Izawa further teaches that the water-soluble polymer may comprise polyacrylate. Otsuki also teaches that the co-polymer may comprise (meth)acrylate ( 0059-0060]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made, in routine experimentations, to use the co-polymer comprising a monomer derived from acrylate in the invention of Izawa.--Claims 7, 33: It is noted that the solubility of styrene in water at room temperature is 0.03 g/100 ml.--Claims 11, 35: Claim 11 recites the limitation “the abrasive grains contain cerium oxycarbonate-derived ceria”. The term “cerium oxycarbonate-derived ceria” is directed to a product-by-process. According to the specification, “(c)eria can be obtained by oxidizing cerium salts such as cerium carbonate, cerium oxycarbonate, cerium nitrate, cerium sulfate, cerium oxalate, and cerium hydroxide” ([0039]). Since the invention is directed to a product, a method of producing the product has little patentable weight. Since ceria abrasives are capable of being derived from cerium oxycarbonate, as taught by Applicant, it would have been obvious to one of ordinary skill in the art at the time the invention was made, in routine experimentations, to use ceria abrasives that have been produced by using cerium oxycarbonate.--Claims 12, 18, 36, 38: Izawa further teaches that the composition comprises a phosphate surfactant ([0024]).--Claims 41, 43, 45: Izawa does not teaches that the styrene monomer has a polyether group, a hydroxyl group, a carboxyl group, or an amino group.--Claims 42, 44, 46: Since the polishing composition taught by Izawa modified by Otsuki is the same as Applicant, it is capable of polishing an insulating film, as taught by Applicant.
Claims 14 and 37 rejected under 35 U.S.C. 103 as obvious over Izawa in view of Kamei as applied to claims 1 and 27 above, and further in view of Chien et al. (U.S. PGPub. No. 20190085205), hereinafter “Chien”:--Claims 14, 37: Izawa modified by Kamei teaches the invention as above, wherein the abrasives are surface-modified with a metal so that the zeta potential has a large negative value resulting in they strongly repel each other and satisfactorily dispersed and improve stability in storage condition (Izawa in paragraphs [0027-0028]). Izawa further teaches that the ionic surfactant is capable of changing the zeta potential, and reduces defects by adhering or bonding to one or both the surface to be polished and the surface of defective foreign matters to give a repulsive force between them ([0018-0023]). Izawa further teaches that the Izawa further teaches that when the charge possessed by the abrasive grains has the opposite sign to the charge possessed by the ionic additive, the abrasive grains may aggregate through the ionic additive ([0029]). Izawa and Kamei fail to teach the claimed feature of a kit comprising a first liquid containing the abrasive grains and a liquid medium, and a second liquid containing the ionic surfactant, e.g. the copolymer, and a liquid medium; however, since Izawa teaches that the ionic surfactant may change the zeta potential of the abrasives and cause the abrasives to aggregate during storage, it would have been obvious to one of ordinary skill in the art at the time the invention was made, in routine experimentations, to store the ionic surfactant and the abrasives separately before using. Chien, also directed to polishing composition, comprising ceria abrasives ([0008]) having zeta potential less than -30 mV ([0024]), a copolymer comprising repeating units selected from styrene derivatives, acrylic acid, maleic acid,… ([0021]), wherein the composition preferably has a pH of 1-7 ([0051]), teaches that “(t)he components of the polishing composition can be delivered to the point-of-use independently (e.g., the components are delivered to the substrate surface whereupon the components are mixed during the polishing process), or the components can be combined immediately before delivery to the point-of-use” ([0079]) and “(w)hen the polishing composition is to be produced using point-of-use mixing, the components of the polishing composition are separately stored in two or more storage devices.” ([0077]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to store the polishing composition as a first liquid comprising the ionic surfactant and a second liquid comprising the abrasives, as taught by Chien, in the invention of Izawa modified by Kamei.
Claims 1, 3-7, 9, 11-12, 18-19, 27-29, 31-33, 35-36 and 38-46 rejected under 35 U.S.C. 103 as obvious over Izawa, in view of Suzuki et al. (U.S. PGPub. No. 20080115422), hereinafter “Suzuki”:--Claims 1, 3, 4, 6, 9, 19, 27, 28, 29, 32, 39, 40: Izawa teaches a polishing composition, comprisingabrasives, such as ceria abrasive ([0027]) at a concentration of preferably 0.01-20 wt.% ([0030-0031]);a surfactant, such as a phosphate surfactant ([0024]);an ionic surfactant (abstract), such as an ammonium salt of a styrene-maleic co-polymer having a molecular weight up to 100,000 at a concentration of 0.001 wt.% or more, preferably 0.01 wt.% or more ([0024-0026]) ;wherein the polishing composition has a pH of 3-7 ([0037]). Izawa further teaches the abrasives are surface-modified with a metal so that the zeta potential has a large negative value resulting in they strongly repel each other and satisfactorily dispersed and improve stability in storage condition ([0027-0028]). In an embodiment, Izawa discloses that the zeta potential may be -43 mV to -94 mV (Table 4). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use ceria abrasive having large negative value, such as -43 mV to -94 mV, in the invention of Izawa because Izawa teaches that such abrasives would be satisfactorily dispersed and improve stability in storage condition. Izawa is silent about a mole ratio of styrene monomer/maleic monomer in the co-polymer. Suzuki, also directed to a polishing composition comprising ceria abrasives ([0035]) and a copolymer to suppress roll-off problem ([0011-0012]), wherein the copolymer comprises a hydrophilic monomer and a hydrophobic monomer, wherein the weight ratio of hydrophilic group to the hydrophobic groups is preferable 85/15 or less, and 25/75 or more ([0023]), wherein the hydrophobic group is preferably styrene ([0020]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the copolymer of styrene-maleic having a weight ratio of styrene to be about 75:25 with respect with respect to the maleic acid because Izawa is silent about a weight of styrene monomer/maleic monomer in the co-polymer and Kamei teaches that such weight would prevent roll-off problem.It is noted that this ratio would overlap the claimed ratio 15% or more recited in claim 1--Claims 5, 31: Izawa further teaches that the water-soluble polymer may comprise polyacrylate. Otsuki also teaches that the co-polymer may comprise (meth)acrylate ( 0059-0060]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made, in routine experimentations, to use the co-polymer comprising a monomer derived from acrylate in the invention of Izawa.--Claims 7, 33: It is noted that the solubility of styrene in water at room temperature is 0.03 g/100 ml.--Claims 11, 35: Claim 11 recites the limitation “the abrasive grains contain cerium oxycarbonate-derived ceria”. The term “cerium oxycarbonate-derived ceria” is directed to a product-by-process. According to the specification, “(c)eria can be obtained by oxidizing cerium salts such as cerium carbonate, cerium oxycarbonate, cerium nitrate, cerium sulfate, cerium oxalate, and cerium hydroxide” ([0039]). Since the invention is directed to a product, a method of producing the product has little patentable weight. Since ceria abrasives are capable of being derived from cerium oxycarbonate, as taught by Applicant, it would have been obvious to one of ordinary skill in the art at the time the invention was made, in routine experimentations, to use ceria abrasives that have been produced by using cerium oxycarbonate.--Claims 12, 18, 36, 38: Izawa further teaches that the composition comprises a phosphate surfactant ([0024]).--Claims 41, 43, 45: Izawa does not teaches that the styrene monomer has a polyether group, a hydroxyl group, a carboxyl group, or an amino group.--Claims 42, 44, 46: Since the polishing composition taught by Izawa modified by Otsuki is the same as Applicant, it is capable of polishing an insulating film, as taught by Applicant.
Claims 14 and 37 rejected under 35 U.S.C. 103 as obvious over Izawa in view of Suzuki as applied to claims 1 and 27 above, and further in view of Chien:--Claims 14, 37: Izawa modified by Suzuki teaches the invention as above, wherein the abrasives are surface-modified with a metal so that the zeta potential has a large negative value resulting in they strongly repel each other and satisfactorily dispersed and improve stability in storage condition (Izawa in paragraphs [0027-0028]). Izawa further teaches that the ionic surfactant is capable of changing the zeta potential, and reduces defects by adhering or bonding to one or both the surface to be polished and the surface of defective foreign matters to give a repulsive force between them ([0018-0023]). Izawa further teaches that the Izawa further teaches that when the charge possessed by the abrasive grains has the opposite sign to the charge possessed by the ionic additive, the abrasive grains may aggregate through the ionic additive ([0029]). Izawa and Suzuki fail to teach the claimed feature of a kit comprising a first liquid containing the abrasive grains and a liquid medium, and a second liquid containing the ionic surfactant, e.g. the copolymer, and a liquid medium; however, since Izawa teaches that the ionic surfactant may change the zeta potential of the abrasives and cause the abrasives to aggregate during storage, it would have been obvious to one of ordinary skill in the art at the time the invention was made, in routine experimentations, to store the ionic surfactant and the abrasives separately before using. Chien, also directed to polishing composition, comprising ceria abrasives ([0008]) having zeta potential less than -30 mV ([0024]), a copolymer comprising repeating units selected from styrene derivatives, acrylic acid, maleic acid,… ([0021]), wherein the composition preferably has a pH of 1-7 ([0051]), teaches that “(t)he components of the polishing composition can be delivered to the point-of-use independently (e.g., the components are delivered to the substrate surface whereupon the components are mixed during the polishing process), or the components can be combined immediately before delivery to the point-of-use” ([0079]) and “(w)hen the polishing composition is to be produced using point-of-use mixing, the components of the polishing composition are separately stored in two or more storage devices.” ([0077]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to store the polishing composition as a first liquid comprising the ionic surfactant and a second liquid comprising the abrasives, as taught by Chien, in the invention of Izawa modified by Suzuki.
Response to Arguments
Applicant's arguments filed May 15, 2026 have been fully considered as follows:--Regarding Applicant’s argument that Otsuki Does Not Qualify as Prior Art Under 35 U.S.C. §§ 102(a)(1) or 102(a)(2), this argument is persuasive. New grounds of rejection based on newly found arts are shown above. This Office action is made non-final.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (571) 270-3176. 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.
/THOMAS T PHAM/Primary Examiner, Art Unit 1713
Prosecution Insights