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 § 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 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 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.
The factual inquiries 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, 4 – 5 and 7 - 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20180244956 (US’956, Hains), further in view of WO2018229005A1 or US20200198982. For the convenience, US20200198982 (US’982, Suda) is cited.
Regarding claims 1, and 4 - 5, US’956 discloses a chemical-mechanical polishing composition comprising an abrasive, a self-stopping agent, an aqueous carrier, and a cationic polymer for polishing a substrate (abstract). The cationic polymer is a quaternary amine, and the cationic polymer is poly(vinylimidazolium) ([0072]). The abrasive particles such as ceria can have a median particle size within about 40 nm to about 100 ([0021] and [0037]). The cationic polymer can be present in the polishing composition at any suitable concentration such as 1 ppm to about 500 ppm ([0074]). The polishing composition optionally further comprises one or more other additional components. Illustrative additional components include rate enhancers, conditioners, scale inhibitors, dispersants, etc. A rate enhancer desirably is an organic carboxylic acid that activates the polishing particle or substrate by forming hypercoordinate compounds (e.g., pentacoordinate or hexacoordinate silicon compounds). Suitable rate enhancers include, for example, picolinic acid and 4-hydroxybenzoic acid ([0090]). The polishing composition has a pH of about 3 to about 9 ([0019]). Suitable organic acid acetic acid is used for pH adjust ([0035]).Table 6, G6-G12 , discloses the using of acetic acid. The abrasive can be present in the polishing composition at a concentration of about 5 wt. % or less, for example, about 4 wt. % or less, about 3 wt. % or less, about 2 wt. % or less, or about 1 wt. % or less. Alternatively, or in addition, the abrasive can be present in the polishing composition at a concentration of about 0.001 wt. % or more, for example, about 0.005 wt. % or more, about 0.01 wt. % or more, about 0.05 wt. % or more, about 0.1 wt. % or more, or about 0.5 wt. % or more ([0039]).
But it is silent about the ceria being cubic and comprising the claimed cerium and lanthanum mixed oxide.
US’982 discloses cerium-based particles and their use as a component of a composition for polishing. The cerium - based parties are particles of a mixed oxide of cerium and of lanthanum having: a molar ratio La/(La+Ce) comprised between 0.01 and 0.15; a specific surface area (BET) between 3 and 14 m2/g; wherein the particles are substantially cubic (claim 1). The composition comprises a liquid medium ([0076]). US’982 discloses that cerium-based particles have a D50 between 100 nm and 150 nm ([0044]). US’982 discloses that the particles of the cerium-based cubic particles exhibit an improvement of the removal rate and abrasive properties ([0004] and [0145]). US’982 discloses that the proportion of cerium-based particles in the dispersion may be comprised between 1.0 wt % and 40.0 wt % ([0077]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to utilize the cerium-based cubic particles disclosed by US’982 into US’956 composition, motivated by the fact that US’982 discloses that the particles of the cerium-based cubic particles exhibit an improvement of the removal rate and abrasive properties ([0004] and [0145]).
Regarding claims 7-14, US’956 discloses a chemical-mechanical polishing composition comprising an abrasive, a self-stopping agent, an aqueous carrier, and a cationic polymer for polishing a substrate (abstract). The cationic polymer is a quaternary amine, and the cationic polymer is poly(vinylimidazolium)([0072]). The abrasive particles can have a median particle size within about 40 nm to about 100 ([0037]). The cationic polymer can be present in the polishing composition at any suitable concentration such as 1 ppm to about 500 ppm ([0074]). The polishing composition optionally further comprises one or more other additional components. Illustrative additional components include rate enhancers, conditioners, scale inhibitors, dispersants, etc. A rate enhancer desirably is an organic carboxylic acid that activates the polishing particle or substrate by forming hypercoordinate compounds (e.g., pentacoordinate or hexacoordinate silicon compounds). Suitable rate enhancers include, for example, picolinic acid and 4-hydroxybenzoic acid ([0090]). The polishing composition has a pH of about 3 to about 9 ([0099]). Poly(vinylimidazolium) has the claimed charge density.
Regarding claims 15-18, US’956 discloses a chemical-mechanical polishing composition comprising an abrasive, a self-stopping agent, an aqueous carrier, and a cationic polymer for polishing a substrate (abstract). The cationic polymer is a quaternary amine, and the cationic polymer is poly(vinylimidazolium) ([0072]). The abrasive particles can have a median particle size within about 40 nm to about 100 ([0037]). The cationic polymer can be present in the polishing composition at any suitable concentration such as 1 ppm to about 500 ppm ([0074]). The polishing composition optionally further comprises one or more other additional components. Illustrative additional components include rate enhancers, conditioners, scale inhibitors, dispersants, etc. A rate enhancer desirably is an organic carboxylic acid that activates the polishing particle or substrate by forming hypercoordinate compounds (e.g., pentacoordinate or hexacoordinate silicon compounds). Suitable rate enhancers include, for example, picolinic acid and 4-hydroxybenzoic acid ([0090]). The polishing composition has a pH of about 3 to about 9 ([0099]). The abrasive can be present in the polishing composition at a concentration of about 5 wt. % or less, for example, about 4 wt. % or less, about 3 wt. % or less, about 2 wt. % or less, or about 1 wt. % or less. Alternatively, or in addition, the abrasive can be present in the polishing composition at a concentration of about 0.001 wt. % or more, for example, about 0.005 wt. % or more, about 0.01 wt. % or more, about 0.05 wt. % or more, about 0.1 wt. % or more, or about 0.5 wt. % or more ([0039]).
Claims 1, 4 – 5 and 7 - 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20180244956 (US’956, Hains), further in view of KR20180068424A.
Regarding claims 1, and 4 - 5, US’956 discloses a chemical-mechanical polishing composition comprising an abrasive, a self-stopping agent, an aqueous carrier, and a cationic polymer for polishing a substrate (abstract). The cationic polymer is a quaternary amine, and the cationic polymer is poly(vinylimidazolium) ([0072]). The abrasive particles such as ceria can have a median particle size within about 40 nm to about 100 ([0021] and [0037]). The cationic polymer can be present in the polishing composition at any suitable concentration such as 1 ppm to about 500 ppm ([0074]). The polishing composition optionally further comprises one or more other additional components. Illustrative additional components include rate enhancers, conditioners, scale inhibitors, dispersants, etc. A rate enhancer desirably is an organic carboxylic acid that activates the polishing particle or substrate by forming hypercoordinate compounds (e.g., pentacoordinate or hexacoordinate silicon compounds). Suitable rate enhancers include, for example, picolinic acid and 4-hydroxybenzoic acid ([0090]). The polishing composition has a pH of about 3 to about 9 ([0019]). Suitable organic acid acetic acid is used for pH adjust ([0035]). The abrasive can be present in the polishing composition at a concentration of about 5 wt. % or less, for example, about 4 wt. % or less, about 3 wt. % or less, about 2 wt. % or less, or about 1 wt. % or less. Alternatively, or in addition, the abrasive can be present in the polishing composition at a concentration of about 0.001 wt. % or more, for example, about 0.005 wt. % or more, about 0.01 wt. % or more, about 0.05 wt. % or more, about 0.1 wt. % or more, or about 0.5 wt. % or more ([0039]).
But it is silent about the ceria being cubic and comprising the claimed cerium and lanthanum mixed oxide.
KR20180068424A discloses a chemical mechanical polishing (CMP) slurry composition comprising cerium oxide particles and a solvent. The cerium oxide particles are doped or coated with a rare earth metal and have a cubic shape. The slurry can be provided, in which a particle size is dense, a shape is uniform, and a polishing rate of the film to be polished is enhanced. The rare earth metal may be La and 0.1 to 20 parts by weight of rare earth metal based on 100 parts by weight of the cerium oxide particles (claims 1-2, 5 and 7). After the mass to mole ratio conversion, it appears that the prior art discloses at least the overlapping range. KR20180068424A discloses that such slurry composition improves the polishing rate of a film to be polished, and as a result, provides a slurry composition for chemical mechanical polishing capable of planarizing a thick film and simplifying the process (Problem to be resolved).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to utilize the cerium-based cubic particles disclosed by KR20180068424A into US’956 composition, motivated by the fact that KR20180068424A disclose that such slurry composition improves the polishing rate of a film to be polished, and as a result, provides a slurry composition for chemical mechanical polishing capable of planarizing a thick film and simplifying the process( Problem to be resolved).
KR20180068424A discloses that the cerium oxide particles may have a primary particle size of 10 to 80 nm and a secondary particle size of 200 nm or less. It appears the claimed surface area is met because the claimed surface area is related to the particle size (means to solved problem).
Regarding claims 7-14, US’956 discloses a chemical-mechanical polishing composition comprising an abrasive, a self-stopping agent, an aqueous carrier, and a cationic polymer for polishing a substrate (abstract). The cationic polymer is a quaternary amine, and the cationic polymer is poly(vinylimidazolium)([0072]). The abrasive particles can have a median particle size within about 40 nm to about 100 ([0037]). The cationic polymer can be present in the polishing composition at any suitable concentration such as 1 ppm to about 500 ppm ([0074]). The polishing composition optionally further comprises one or more other additional components. Illustrative additional components include rate enhancers, conditioners, scale inhibitors, dispersants, etc. A rate enhancer desirably is an organic carboxylic acid that activates the polishing particle or substrate by forming hypercoordinate compounds (e.g., pentacoordinate or hexacoordinate silicon compounds). Suitable rate enhancers include, for example, picolinic acid and 4-hydroxybenzoic acid ([0090]). The polishing composition has a pH of about 3 to about 9 ([0099]). Poly(vinylimidazolium) has the claimed charge density.
Regarding claims 15-18, US’956 discloses a chemical-mechanical polishing composition comprising an abrasive, a self-stopping agent, an aqueous carrier, and a cationic polymer for polishing a substrate (abstract). The cationic polymer is a quaternary amine, and the cationic polymer is poly(vinylimidazolium) ([0072]). The abrasive particles can have a median particle size within about 40 nm to about 100 ([0037]). The cationic polymer can be present in the polishing composition at any suitable concentration such as 1 ppm to about 500 ppm ([0074]). The polishing composition optionally further comprises one or more other additional components. Illustrative additional components include rate enhancers, conditioners, scale inhibitors, dispersants, etc. A rate enhancer desirably is an organic carboxylic acid that activates the polishing particle or substrate by forming hypercoordinate compounds (e.g., pentacoordinate or hexacoordinate silicon compounds). Suitable rate enhancers include, for example, picolinic acid and 4-hydroxybenzoic acid ([0090]). The polishing composition has a pH of about 3 to about 9 ([0099]). The abrasive can be present in the polishing composition at a concentration of about 5 wt. % or less, for example, about 4 wt. % or less, about 3 wt. % or less, about 2 wt. % or less, or about 1 wt. % or less. Alternatively, or in addition, the abrasive can be present in the polishing composition at a concentration of about 0.001 wt. % or more, for example, about 0.005 wt. % or more, about 0.01 wt. % or more, about 0.05 wt. % or more, about 0.1 wt. % or more, or about 0.5 wt. % or more ([0039]).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 4 -5 and 7-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 - 7, 9, and 11 - 31 of copending Application No. 17/077414 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications disclose polishing compositions comprising cubiform ceria and cationic polymers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 12/24/2025 have been fully considered but they are not persuasive.
The rejection of claims 1, 4-5 and 7-18 under 35 U.S.C. §103 as being unpatentable over Lauter (US’778) in view of Ota (US’898) has been withdrawn.
The Applicant argues that Hains does not teach acetic acid as a rate enhancer, nor the combination of picolinic acid and acetic acid as a rate enhancer. Hains mentions acetic acid only in the preparation of the ceria abrasive, prior to milling to reduce their particle size (see paragraphs [0035] and [0036]). Hains fails to teach acetic acid as a slurry component.
The Examiner respectfully submits that Hains discloses rate enhancer desirably is an organic carboxylic acid that activates the polishing particle or substrate by forming hypercoordinate compounds (e.g., pentacoordinate or hexacoordinate silicon compounds). Suitable rate enhancers include, for example, picolinic acid and 4-hydroxybenzoic acid ([0090]). The polishing composition has a pH of about 3 to about 9 ([0019]). Suitable organic acid acetic acid is used for pH adjust ([0035]). Table 6, G6-G12, discloses the using of acetic acid.
The Applicants have previously argued that a person of skill in the art would not have been motivated to use the abrasive particle from Suda in the composition of Hains to increase the removal rate because Hains is concerned with planarization efficiency and not increased removal rates.
Please refer to the response set forth in the previous office action.
The Applicant argues that the combination of Suda and Hains fail to teach the combination of acetic acid and picolinic acid, as required by the present claims.
The Examiner respectfully submits that Hains discloses rate enhancer desirably is an organic carboxylic acid that activates the polishing particle or substrate by forming hypercoordinate compounds (e.g., pentacoordinate or hexacoordinate silicon compounds). Suitable rate enhancers include, for example, picolinic acid and 4-hydroxybenzoic acid ([0090]). The polishing composition has a pH of about 3 to about 9 ([0019]). Suitable organic acid acetic acid is used for pH adjust ([0035]). Table 6, G6-G12, discloses the using of acetic acid.
The Applicant argues that Lee discloses 2% Zr will result in a removal rate decrease.
The Examiner respectfully submits that in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the zirconium content) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Applicant argues that Lee and Haines fail to teach the combination of acetic acid and picolinic acid.
The Examiner respectfully submits that Hains discloses rate enhancer desirably is an organic carboxylic acid that activates the polishing particle or substrate by forming hypercoordinate compounds (e.g., pentacoordinate or hexacoordinate silicon compounds). Suitable rate enhancers include, for example, picolinic acid and 4-hydroxybenzoic acid ([0090]). The polishing composition has a pH of about 3 to about 9 ([0019]). Suitable organic acid acetic acid is used for pH adjust ([0035]). Table 6, G6-G12, discloses the using of acetic acid.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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