DETAILED ACTION
This is the Office action based on the 16956753 application filed June 22, 2020, and in response to applicant’s argument/remark filed on June 6, 2025. Claims 1-2, 6-11, 13-14 and 18-21 are currently pending and have been considered below. Applicant’s cancelation of claims 3-5, 12, and 15-17 acknowledged. Claims 9-11 withdrawn from further consideration. All reference to the specification in the Office action are directed to the published specification.
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
Applicant has elected Group I, which is drawn to a chemical composition, in response to the Election/Restriction requirement. Note that the claims are directed towards a chemical composition and as such will be examined under such conditions. The process of using the composition or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details).
Claim 1 recites “A polishing composition for eliminating a protrusion around a laser mark on a laser mark-provided wafer, the polishing composition consisting of: a water-soluble compound having a unit structure of the following Formula (1), (2), or (3):…a chelating agent;a sol containing metal oxide particles, selected from the group consisting of silica, zirconia and ceria, wherein the sol contains sufficient metal oxide particles to provide the polishing composition with 0.01 to 10 mass% of the metal oxide particles, and wherein no greater than 0.1% by number of the metal oxide particles have a particle size greater than 0.5 microns; and at least one alkaline compound selected from the group consisting of ammonium hydroxide, primary ammonium hydroxide, secondary ammonium hydroxide, tertiary ammonium hydroxide, quaternary ammonium hydroxide, lithium carbonate, sodium carbonate, potassium carbonate, lithium hydrogen carbonate, sodium hydrogen carbonate, potassium hydrogen carbonate, sodium hydroxide, and potassium hydroxide, wherein the polishing composition has a pH of 9 to 12.” (emphasis added).. According to the specification, “The metal oxide particles may be added, as is, to the polishing composition. Alternatively, the metal oxide particles may be added in the form of a colloidal sol in an aqueous medium, more preferably a colloidal sol in water. The polishing composition may be prepared by addition of another component to a colloidal sol of metal oxide fine particles.” ([0035]). It is noted that the polishing composition does not contain any mixing medium, such as water, other than the medium provided in the sol. The claim does not indicate that the water-soluble compound, the chelating compound or the alkaline compound contains any other substance except said compounds. The specification further teaches that “(t)he pH of an aqueous metal oxide sol (e.g., silica sol, zirconia sol, or ceria sol) may be adjusted with, for example, ammonia, and a polymer, a chelating agent, etc. may be added to the aqueous sol. The pH adjustment of the metal oxide sol may be performed before, after, or before and after addition of the compound (polymer) or the chelating agent.
The pH of the polishing composition of the present invention can be adjusted to fall within a range of 7 to 12, 9 to 12, or 9.5 to 11, or 10 to 11.”
Therefore, for the purpose of examining the claimed polishing composition is interpreted as a kit containing (i) a first composition consisting of the water-soluble compound, the chelating compound and the alkaline compound, either separately or in a mixture, and (ii) a second composition, separate from the first composition, consisting of the colloidal sol containing the metal oxide particles in the aqueous medium. A similar interpretation is applied to claims 18 and 21
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.
Claims 1, 18 and 21 rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Examiner is unable to find support for the limitation “the polishing composition consisting of:…a sol containing metal oxide particles…” in the specification. Although the specification teaches that “The metal oxide particles may be added, as is, to the polishing composition. Alternatively, the metal oxide particles may be added in the form of a colloidal sol in an aqueous medium, more preferably a colloidal sol in water. The polishing composition may be prepared by addition of another component to a colloidal sol of metal oxide fine particles.” ([0035]), the limitation “the metal oxide particles may be added in the form of a colloidal sol in an aqueous medium, more preferably a colloidal sol in water” (emphasis added) in the specification is narrower in scope than the claimed limitation. See MPEP, 2173.05i. For the purpose of examining it will be assumed that there is support for the above limitation.
Claims 2, 6-8, 13-14, and 19-20 rejected under 35 U.S.C. 112(a) because they are directly or indirectly dependent on claim 1, 18 or 21.
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.
Claim 1 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 1 recites “A polishing composition for eliminating a protrusion around a laser mark on a laser mark-provided wafer, the polishing composition consisting of: a water-soluble compound having a unit structure of the following Formula (1), (2), or (3):…a chelating agent;a sol containing metal oxide particles, selected from the group consisting of silica, zirconia and ceria, wherein the sol contains sufficient metal oxide particles to provide the polishing composition with 0.01 to 10 mass% of the metal oxide particles, and wherein no greater than 0.1% by number of the metal oxide particles have a particle size greater than 0.5 microns; and at least one alkaline compound selected from the group consisting of ammonium hydroxide, primary ammonium hydroxide, secondary ammonium hydroxide, tertiary ammonium hydroxide, quaternary ammonium hydroxide, lithium carbonate, sodium carbonate, potassium carbonate, lithium hydrogen carbonate, sodium hydrogen carbonate, potassium hydrogen carbonate, sodium hydroxide, and potassium hydroxide, wherein the polishing composition has a pH of 9 to 12.” (emphasis added). However, as explained in Claim Interpretations above, the polishing composition is interpreted as a kit containing:(i) a first composition consisting of the water-soluble compound, the chelating compound and the alkaline compound, either separately or in a mixture, and (ii) a second composition, separate from the first composition, consisting of the colloidal sol containing the metal oxide particles in the aqueous medium. It is not possible to determine the pH of the polishing composition when the polishing composition does not exist, i.e. the polishing composition does not exist until the first and second composition are mixed together. One of skill in the art would not be clear how to obtain the polishing composition consisting of such separate compositions that have such pH.
Claim 18 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 18 recites “A polishing composition for eliminating a protrusion around a laser mark on a laser mark-provided wafer, the polishing composition consisting of: a water-soluble compound that is a copolymer of the unit structures of the following Formulas (3-1) and (3.2):…a chelating agent;a sol containing metal oxide particles, selected from the group consisting of silica, zirconia and ceria, wherein the sol contains sufficient metal oxide particles to provide the polishing composition with 0.01 to 10 mass% of the metal oxide particles, and wherein no greater than 0.1% by number of the metal oxide particles have a particle size greater than 0.5 microns; and at least one alkaline compound selected from the group consisting of ammonium hydroxide, primary ammonium hydroxide, secondary ammonium hydroxide, tertiary ammonium hydroxide, quaternary ammonium hydroxide, lithium carbonate, sodium carbonate, potassium carbonate, lithium hydrogen carbonate, sodium hydrogen carbonate, potassium hydrogen carbonate, sodium hydroxide, and potassium hydroxide, wherein the polishing composition has a pH of 9 to 12.” (emphasis added). However, as explained in Claim Interpretations above, the polishing composition is interpreted as a kit containing:(i) a first composition consisting of the water-soluble compound, the chelating compound and the alkaline compound, either separately or in a mixture, and (ii) a second composition, separate from the first composition, consisting of the colloidal sol containing the metal oxide particles in the aqueous medium. It is not possible to determine the pH of the polishing composition when the polishing composition does not exist, i.e. the polishing composition does not exist until the first and second composition are mixed together. One of skill in the art would not be clear how to obtain the polishing composition consisting of such separate compositions that have such pH.
Claim 21 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 21 recites “A polishing composition for eliminating a protrusion around a laser mark on a laser mark-provided wafer, the polishing composition consisting of: a water-soluble compound having a unit structure of the following Formula (2):…a chelating agent selected from the group consisting of an aminocarboxylic acid chelating agent and a phosphonic acid chelating agent;a sol containing metal oxide particles, selected from the group consisting of silica, zirconia and ceria, wherein the sol contains sufficient metal oxide particles to provide the polishing composition with 0.01 to 10 mass% of the metal oxide particles, and wherein no greater than 0.1% by number of the metal oxide particles have a particle size greater than 0.5 microns; and at least one alkaline compound selected from the group consisting of ammonium hydroxide, primary ammonium hydroxide, secondary ammonium hydroxide, tertiary ammonium hydroxide, quaternary ammonium hydroxide, lithium carbonate, sodium carbonate, potassium carbonate, lithium hydrogen carbonate, sodium hydrogen carbonate, potassium hydrogen carbonate, sodium hydroxide, and potassium hydroxide, wherein the polishing composition has a pH of 9 to 12.” (emphasis added). However, as explained in Claim Interpretations above, the polishing composition is interpreted as a kit containing:(i) a first composition consisting of the water-soluble compound, the chelating compound and the alkaline compound, either separately or in a mixture, and (ii) a second composition, separate from the first composition, consisting of the colloidal sol containing the metal oxide particles in the aqueous medium. It is not possible to determine the pH of the polishing composition when the polishing composition does not exist, i.e. the polishing composition does not exist until the first and second composition are mixed together. One of skill in the art would not be clear how to obtain the polishing composition consisting of such separate compositions that have such pH.
Claims 2, 6-8, 13-14, and 19-20 rejected under 35 U.S.C. 112(b) because they are directly or indirectly dependent on claim 1, 18 or 21.
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 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 1-2, 6-8, 13-14 and 18-20 rejected under 35 U.S.C. 103 as obvious over Tsuchiya et al. (PCT/JP2016/000322, referred here as U.S. PGPub. No. 20180066161), hereinafter “Tsuchiya”, in view of Danielson et al. (U.S. Pat. No. 5407526), hereinafter “Danielson”:--Claims 1, 2, 6, 8: Tsuchiya teaches a polishing composition ([0018]), consisting of (abstract)metal oxide particles, such as silica, ceria, alumina particles,… or a combination of two or more kinds thereof ([0019-0020, 0028-0030]) having an average primary diameter more preferably 50 nm or less ([0025]);a chelating agent ([0018]), such as an aminocarboxylic-based chelating agent, such as nitrilotriacetic acid ([0046]); a water-soluble polymer ([0018]), such as hydroxyethylcellulose ([0033]), having a molecular weight of 10,000 – 2,000,000 ([0034-0035]), present at a concentration of preferably 0.0001-5 wt.% ([0036-0037]);
a basic compound ([0018]), such potassium hydroxide ([0039]); and water ([0050].wherein the composition may have a pH of 8-11 ([0051]). It is noted that the pH range above overlaps the claimed pH range in claim 1. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polishing composition consisting of the above compounds from the list of possible compounds taught by Tsuchiya. Since Tsuchiya teaches that the abrasives have an average primary diameter more preferably 50 nm or less ([0025]), it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use abrasives such as less than 0.1% by number of the abrasives have a diameter greater than 500 nm. It is noted that in a normal distribution, 0.1% is about 3.2 standard deviations from the mean. Tsuchiya further teaches that the polishing composition is supplied to a rotating polishing pad through a nozzle, then the substrate to be polished is pressed against the polishing pad ([0068-0069]), but fails to teaches the claimed limitation that the polishing composition consists of a first composition containing the abrasive sol and a second composition consisting of the other compounds. Danielson , also directed to a method of polishing a semiconductor substrate by using a slurry (Fig. 5), teaches that the chemical components of the slurry is mixed at the actual point of use of the slurry since pre-mixed compositions have limited shelf life (Col. 2, Lines 2-20), wherein silica sol, oxidant and buffer chemicals are delivered separately and synchronically to the polishing pad to avoid gelling (Col. 2, Lines 20-31). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to keep the abrasive separately as a sol then deliver the sol and the rest of the polishing composition separately to be mixed at the point of use in the invention of Tsuchiya because Danielson teaches that this would prevent gelling since pre-mixed compositions have limited shelf life. It is noted that hydroxyethylcellulose (shown below) has a chemical structure as shown in Formula (1) when n1=1. This unit has a molecular weight of 183. Thus, a hydroxyethylcellulose having a molecular weight of 10,000 - 2,000,000 has n=55 - 10900, which overlaps the range “n2 is an integer of 100-10,000” as recited in claim 1.
PNG
media_image1.png
432
546
media_image1.png
Greyscale
--Claim 7: Tsuchiya further teaches that the chelating agent may be ethylenediamine tetra(methylene phosphonic acid) ([0046]). --Claims 18, 19, 20: Tsuchiya further teaches that the water-soluble polymer may be polymers having a plurality of kinds of structures, such as a diblock type, a triblock type, a random type, and an alternate type thereof, and the like, wherein the structure may comprise vinyl structure, such as polyvinyl alcohol; poly(meth)acrylic acid; polyvinyl sulfonic acid,… ([0032]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a random or diblock copolymer comprising vinyl alcohol monomers and vinyl sulfonic monomers. Since vinyl alcohol has a molecular weight of 41 and vinyl sulfonic has a molecular weight of 108, and Tsuchiya teaches that the water-soluble polymer has a molecular weight of 10,000 – 2,000,000, the water-soluble polymer has about 93-48000 monomers, which overlaps the claimed range of 100-10,000 recited in claim 18. It is noted that the copolymer would read on Formula (3) as recited in claim 18, where R1 is a SO3H group.
PNG
media_image2.png
228
380
media_image2.png
Greyscale
PNG
media_image3.png
176
384
media_image3.png
Greyscale
--Claims 13, 14: Although Tsuchiya fails to teach the polishing composition has a property of eliminating a protrusion around the laser mark on a laser mark-provided wafer, wherein the laser mark is described according to claim 14, since the composition taught by Tsuchiya is the same as the composition recited in claim 1, it must be capable of such activity. The following is a quotation of MPEP 2112.01, II that applies to the rejections under this section made in this Office action:
““Products of identical chemical composition cannot have mutually exclusive properties.”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” It is also noted that Applicant has elected Group I, which is drawn to a chemical composition, in response to the Election/Restriction requirement. Note that the claims are directed towards a chemical composition and as such will be examined under such conditions. The process of using the composition or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details).
Claim 21 rejected under 35 U.S.C. 103 as obvious over Reiss et al. (U.S. PGPub. No. 20150102012), hereinafter “Reiss”, in view of Danielson:--Claim 21: Reiss teaches a polishing composition (abstract), consisting ofamino acid, such as proline, glutamic acid, or aspartic acid ([0038, 0120]);an organic solvent, such as glycerol ([0036]);
abrasives including ceria having size 30 nm and silica particles having size 1 nm ([0011, 0013-0031]);a pH adjustor, such as quaternary amine hydroxide to adjust the pH of the composition to 3.5-9 ([0033-0034]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polishing composition consisting of the above compounds from the list of possible compounds taught by Reiss. It is noted that the above amino acids read on the limitation “aminocarboxylic acid”, glycerol reads on Formula (2) where n3=1, ceria and silica abrasive are metal oxide particle, and the pH of about 3.5-9 reads on the limitation “pH of 9 to 12”. Since Reiss teaches that the abrasives may have an average primary diameter of 50 nm and 1 nm, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use abrasives such as less than 0.1% by number of the abrasives have a diameter greater than 500 nm. It is noted that in a normal distribution, 0.1% is about 3.2 standard deviations from the mean. Reiss further teaches that the polishing composition can be prepared prior to use, with one or more components added to the polishing composition just before use (e.g., within about 1 minute before use, or within about 1 hour before use, or within about 7 days before use). The polishing composition also can be prepared by mixing the components at the surface of the substrate during the polishing operation ([0046]) and “(a)lternatively, the polishing composition concentrate can comprise first and second abrasive particles, a polymer additive, a pH-adjusting agent, and water, in amounts such that, upon dilution of the concentrate with an appropriate amount of water, each component of the polishing composition will be present in the polishing composition in an amount within the appropriate range recited above for each component” ([0047]), and “(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” Danielson, also directed to a method of polishing a semiconductor substrate by using a slurry (Fig. 5), teaches that the chemical components of the slurry is mixed at the actual point of use of the slurry since pre-mixed compositions have limited shelf life (Col. 2, Lines 2-20), wherein silica sol, oxidant and buffer chemicals are delivered separately and synchronically to the polishing pad to avoid gelling (Col. 2, Lines 20-31). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to keep the abrasives separately as a sol then deliver the sol and the rest of the polishing composition separately to be mixed at the point of use in the invention of Reiss because Reiss teaches that he components of the polishing composition can be delivered to the point-of-use independently or the components can be combined immediately before delivery to the point-of-use, and Danielson teaches that this would prevent gelling since pre-mixed compositions have limited shelf life.
Response to Arguments
Applicant's arguments filed June 6, 2025 have been fully considered as follows:--Regarding Applicant’s argument that the previously cited prior arts do not teach the amended feature, this arguments is persuasive. New grounds of rejection based on newly found prior arts are shown above.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP §706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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