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 .
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.
Response to Amendments/Arguments
The amendments made to claims 1, 5-6 and 10, and the cancelation of claim 4, as filed on June 5, 2026 are acknowledged.
Applicant's arguments, see Remarks filed on June 5, 2026, along with the declaration under 37 CFR section 1.132, with respect to rejections under 35 USC § 103 have been fully considered but they are not persuasive.
The Applicant argues that polishing compositions with P1/P2 and surfactant concentration within the recited ranges as recited in amended claim 1 show excellent haze reduction capability. The Examiner has thoroughly reviewed this data and has determined that it is insufficient to outweigh the prima facie case of obviousness set forth in the rejection below. Specifically, the data only concern results regarding two specific surfactants; however, the numbers of hydrophobic groups and hydrophilic groups in a surfactant of a specified concentration depends on the molecular structure of the surfactant. The results obtained using only two specific surfactants cannot be extended to broadly recited surfactant as recited in the amended claim 1. Therefore, the data presented are not commensurate in scope with the claimed invention.
The Applicant further argues that “Tsuchiya does not specifically suggest reducing the content to the recited range of "0.0005 wt.% to 0.0012 wt.%," which is tailored to the range Applicant has shown to afford improved haze reduction capability. Tsuchiya does not teach or suggest that such a low surfactant content would be advantageous.” However, Tsuchiya discloses that from the viewpoint of reducing haze and reducing agglomeration property, the content is preferably 0.00008% by mass or more, and 0.05% by mass or less (paragraph 0076), which encompasses the corresponding range recited in the amended claim 1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Tsuchiya specifically teaches that the content of the surfactant (organic compound B) is a result effective variable impacting haze and agglomeration (paragraph 0076). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to optimize the concentration of the surfactant in Tsuchiya’s composition (a result-effective variable) to reduce haze and agglomeration.
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.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya et al. (US20170081554) in view of Takemoto et al. (JP2015076494).
Regarding claim 1, Tsuchiya discloses a polishing composition (abstract) comprising an abrasive (paragraph 0047); a basic compound (paragraph 0061); a water-soluble polymer (amido group-containing polymer A and water-soluble polymer not containing an amido groups, paragraphs 0017 and 0031); a surfactant (paragraph 0028); and water (paragraph 0043), wherein the water-soluble polymer comprises at least a water-soluble polymer P1 and a water-soluble polymer P2, the water-soluble polymer P1 is a vinyl alcohol polymer (paragraph 0036), a ratio (P1/P2) of a content (% by weight) of the water-soluble polymer P1 to a content (% by weight) of the water-soluble polymer P2 is 1 (Example 3, Table 1), and the water-soluble polymer P2 is a water-soluble polymer other than vinyl alcohol polymer (PACMO, Example 3, Table 1); and the polyvinyl alcohol-based polymer has a weight average molecular weight of 2x104 or less (paragraph 0040); and the surfactant is present at a concentration of 0.00008 wt.% or more and 0.05 wt.% or less (paragraphs 0028 and 0076). Tsuchiya is silent about the vinyl alcohol polymer being an acetalized polyvinyl alcohol-based polymer comprising a structural unit represented by Formula (1), wherein in formula (1), R is a hydrogen atom or a linear or branched alkyl group. However, Tsuchiya teaches that the vinyl alcohol polymer is typically a polymer containing a vinyl alcohol unit as a main repeating unit (PVA), wherein the proportion of the mole number of a vinyl alcohol unit relative to the mole number of all repeating units is commonly 70% or more, and the types of repeating units other than the vinyl alcohol unit is not limited to particular types (paragraph 0036). In addition, Takemoto teaches that a water-soluble polymer with the proportion of the mole number of a vinyl alcohol unit relative to the mole number of all repeating units being 70% or more can be an acetalized polyvinyl alcohol-based polymer comprising a structural unit represented by Formula (1), wherein in formula (1), R is a hydrogen atom or a linear or branched alkyl group (paragraph 0012). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known water-soluble polymer with the proportion of the mole number of a vinyl alcohol unit relative to the mole number of all repeating units being 70% or more as taught by Takemoto in the composition of Tsuchiya, with a reasonable expectation of success. One of ordinary skilled artisan would be motivated to incorporate the acetalized structural unit in the PVC-based water-soluble polymer because Takemoto teaches that the structural unit has excellent adsoptivity to the wafer surface and increase the smoothness of the polished wafer surface (paragraphs 0010 and 0015). The concentration range of the surfactant disclosed by Tsuchiya encompasses the range recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 2, Takemoto discloses wherein the water-soluble polymer P1 is an acetalized polyvinyl alcohol-based polymer having a degree of acetalization of 1 mol % or more and less than 30 mol % (paragraph 0015).
Regarding claim 3, Tsuchiya discloses wherein the water-soluble polymer P2 is a nitrogen atom-containing polymer (amido group-containing polymer A, paragraph 0017).
Regarding claim 5, Tsuchiya discloses wherein the surfactant includes two or more kinds of surfactants selected from the group consisting of nonionic surfactants and anionic surfactant (paragraphs 0029).
Regarding claim 6, Tsuchiya discloses wherein the surfactant includes a combination of two anionic surfactants (paragraph 0029), with molecular weight of the surfactant ranging from 2x104 or less and 2x102 or more (paragraph 0040), which overlaps with the ranges recited in the instant claim.
Regarding claim 7, Tsuchiya discloses wherein the acetalized polyvinyl alcohol-based polymer has a weight average molecular weight of 2x104 or less (paragraph 0040).
Regarding claim 8, Tsuchiya discloses wherein the abrasive is a silica particle (paragraph 0014).
Regarding claim 9, Tsuchiya discloses which is used for polishing a surface of silicon (paragraph 0007).
Regarding claim 10, Tsuchiya discloses a polishing composition (abstract) comprising an abrasive (paragraph 0047); a basic compound (paragraph 0061); a water-soluble polymer (amido group-containing polymer A and water-soluble polymer not containing an amido groups, paragraphs 0017 and 0031); a surfactant (paragraph 0028); and water (paragraph 0043), wherein the water-soluble polymer comprises at least a water-soluble polymer P1 and a water-soluble polymer P2, the water-soluble polymer P1 is a vinyl alcohol polymer (paragraph 0036), a ratio (P1/P2) of a content (% by weight) of the water-soluble polymer P1 to a content (% by weight) of the water-soluble polymer P2 is 1 (Example 3, Table 1), and the water-soluble polymer P2 is a water-soluble polymer other than vinyl alcohol polymer (PACMO, Example 3, Table 1); and a content of the polyvinyl alcohol-based polymer with respect to 100 g of the abrasive is 2.2 g (Example 3, Table 1; the content of the abrasive in the polishing composition is 0.46%, paragraph 0106; the content of the polyvinyl alcohol-based polymer in the polishing composition is 0.01%, paragraph 0108), and the surfactant is present at a concentration of 0.00008 wt.% or more and 0.05 wt.% or less (paragraphs 0028 and 0076). Tsuchiya is silent about the vinyl alcohol polymer being an acetalized polyvinyl alcohol-based polymer comprising a structural unit represented by Formula (1), wherein in formula (1), R is a hydrogen atom or a linear or branched alkyl group. However, Tsuchiya teaches that the vinyl alcohol polymer is typically a polymer containing a vinyl alcohol unit as a main repeating unit (PVA), wherein the proportion of the mole number of a vinyl alcohol unit relative to the mole number of all repeating units is commonly 70% or more, and the types of repeating units other than the vinyl alcohol unit is not limited to particular types (paragraph 0036). In addition, Takemoto teaches that a water-soluble polymer with the proportion of the mole number of a vinyl alcohol unit relative to the mole number of all repeating units being 70% or more can be an acetalized polyvinyl alcohol-based polymer comprising a structural unit represented by Formula (1), wherein in formula (1), R is a hydrogen atom or a linear or branched alkyl group (paragraph 0012). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known water-soluble polymer with the proportion of the mole number of a vinyl alcohol unit relative to the mole number of all repeating units being 70% or more as taught by Takemoto in the composition of Tsuchiya, with a reasonable expectation of success. One of ordinary skilled artisan would be motivated to incorporate the acetalized structural unit in the PVC-based water-soluble polymer because Takemoto teaches that the structural unit has excellent adsoptivity to the wafer surface and increase the smoothness of the polished wafer surface (paragraphs 0010 and 0015). The concentration range of the surfactant disclosed by Tsuchiya encompasses the range recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 11, Takemoto discloses wherein the water-soluble polymer P1 is an acetalized polyvinyl alcohol-based polymer having a degree of acetalization of 1 mol % or more and less than 30 mol % (paragraph 0015).
Regarding claim 12, Tsuchiya discloses wherein the water-soluble polymer P2 is a nitrogen atom-containing polymer (amido group-containing polymer A, paragraph 0017).
Regarding claim 13, Tsuchiya discloses wherein the surfactant includes two or more kinds of surfactants selected from the group consisting of nonionic surfactants and anionic surfactant (paragraphs 0029).
Regarding claim 14, Tsuchiya discloses wherein the surfactant includes a combination of two anionic surfactants (paragraph 0029), with molecular weight of the surfactant ranging from 2x104 or less and 2x102 or more (paragraph 0040), which overlaps with the ranges recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claims 15-16, Tsuchiya discloses wherein the acetalized polyvinyl alcohol-based polymer has a weight average molecular weight of 1.25x104 or less (paragraph 0040), which encompasses the range recited in the instant claim.
Regarding claim 17, Tsuchiya discloses wherein the abrasive is a silica particle (paragraph 0014).
Regarding claim 18, Tsuchiya discloses which is used for polishing a surface of silicon (paragraph 0007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (571)270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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