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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/23/2026 has been entered.
Election/Restrictions
Claims 26 and 27 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/15/2024.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 01/23/2026, has been entered. Claims 1 and 25 are amended, no claims are newly cancelled, and claim 28 is newly added. Accordingly, claims 1-23 and 25-28 are pending with claims 1-23, 25, and 28 considered in this Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/22/2025 has been considered by the examiner.
Claim Rejections - 35 USC § 112
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 25 and 28 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.
Claim 25 features the closed transitional phrase “consisting of” as well as “at least one abrasive; at least one organic acid; at least one azole containing compound;…”. The metes and bounds of the claim are indefinite because it is unclear what materials and/or compounds are disavowed in the composition because the boundaries of the phrases “at least one abrasive”, “at least one organic acid” and “at least one azole containing compound” are not delineated such that it is apparent what species are covered (MPEP 2173.02.I.).
Put another way, the closed transitional phrase ‘consisting of’ is contradictory with the body of the claim, which utilizes broad, open language, such that the person of ordinary skill in the art would not know where infringement of such a claim begins. Additionally, Applicant’s specification does not provide definitions of “abrasive”, “organic acid”, and/or “azole containing compound”. Thus, these phrases are given their plain meaning and construed using BRI.
Claim 28 depends from claim 25.
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.
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.
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 1-16, 18-23, 25, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Itoh et al. (U.S. 2007/0128872) in view of Dysard et al. (U.S. 2007/0251155).
Regarding claim 1, Itoh et al. (hereinafter “Itoh”) teaches a polishing composition (meeting BRI of claimed chemical-mechanical polishing composition) comprising at least one abrasive (Paragraph 0041), at least one organic acid (Paragraph 0038), at least one azole containing compound (Paragraph 0047), a first amine compound having a 6-24 carbon alkyl chain (Paragraph 0068; various amines including at least 2-ethylhexylamine, cyclohexylamine, benzylamine, among others), and an aqueous solvent (i.e., water; Abstract, Paragraph 0018, 0060, 0098, etc).
Itoh additionally teaches that the polishing composition is suitable for polishing a metal film wherein the metal may be tungsten (Paragraph 0099).
Itoh is silent to the pH adjuster being selected from the group as claimed.
Dysard et al. (hereinafter “Dysard”) teaches a polishing composition that includes an amine such as tetramethylammonium hydroxide (TMAH) (Paragraph 0024) that has the ability to increase the rate of removal of polysilicon as well as suppress the rate of removal of silicon oxide (Paragraph 0024). The person of ordinary skill in the art would find it obvious to include the TMAH of Dysard into the composition of Itoh so as to advantageously increase the rate of removal of polysilicon as well as suppress the rate of removal of silicon oxide.
It would be obvious to combine the teachings of Itoh and Dysard so as to create a polishing composition that would lead to improved polishing because Itoh appreciates the achievement of improving dishing among other advantages for polishing (Paragraph 0073) while Dysard appreciates the advantage of increased rate of removal of polySi and suppression of the rate of removal of silicon oxide.
The person of ordinary skill in the art could have combined the elements taught by Itoh and Dysard according to known methods and, that in combination, each element merely performs the same function as it does separately and that person would also have recognized that the results of the combination would predictably result in the improved polishing composition. To be clear, a composition satisfying Applicant’s independent claim 1 would be achieved by following the compositional road map/recipe provided by Itoh as modified by Dysard with a reasonable expectation of success.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and reaffirmed principles based on its precedent that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”.
Regarding claim 2, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches the inclusion of ethanolamine (Paragraph 0068) and that a combination of a plurality of species may be used (Paragraph 0069). Thus, it would be obvious to combine a first and second amine selected from the disclosure of Itoh to yield predictable results.
Regarding claim 3, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches that the abrasive can be selected to include silica, aluminium oxide (i.e. alumina), cerium oxide (i.e. ceria), titanium dioxide (i.e. titania) (Paragraph 0072).
Regarding claim 4, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches that the abrasive is included in an amount of 30 mass% or less which overlaps the claimed range of “from about 0.01 to about 25%” as claimed (Paragraph 0072).
Regarding claims 5 and 6, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches the inclusion of an organic acid (Paragraph 0038) that shares substantial overlap with the species listed in this claim including, but not limited to, glycolic acid, oxalic acid, malonic acid, malic acid, lactic acid, etc. In the interest of compact prosecution, Itoh expressly teaches carboxylic acids (Paragraph 0038) as well as amino acids (Paragraph 0046).
Regarding claim 7, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches that the organic acid is included in an amount of 0.001 to 10% (Paragraph 0086) which overlaps the claimed range of 0.001 to about 1%.
Regarding claims 8-10, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches the anionic surfactant as claimed (Paragraph 0074). Specifically, Itoh identifies alkylbenzenesulfonic acids and salts thereof, among other species, that meet the claims. To be clear, alkylbenzensulfonic acid and salts thereof meets ‘sulfonic acid salts’ of claim 8, ‘sulphonate group’ of claim 9, and ‘alkylaryl sulphonate’ of claim 10.
Regarding claim 11, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches that the surfactant is incorporated from 5% or less (Paragraph 0075) which overlaps the claimed range of 0.001 to about 0.5%.
Regarding claims 12 and 13, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches the at least one azole includes 1,2,3-triazole among others (Paragraph 0088).
Regarding claim 14, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches the at least one azole is in an amount of 0.001 to 5% (Paragraph 0089) which overlaps the claimed range of about 0.001 to about 0.5%.
Regarding claim 15, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches the inclusion of various amines including at least 2-ethylhexylamine (meeting claimed ‘first amine’) which is a C8 monoalkylamine (Paragraph 0068).
Regarding claim 16, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches the inclusion of the first amine in an amount of 0.01 to 10% (Paragraph 0069) which overlaps the claimed range of “about 0.0005% to about 0.5%”.
Regarding claim 18, Itoh and Dysard teach the composition as applied to claim 2 above and Itoh further teaches the inclusion of ethanolamine (Paragraph 0068) and that a combination of a plurality of species may be used (Paragraph 0069). Thus, it would be obvious to combine a first and second amine selected from the disclosure of Itoh to yield predictable results.
Regarding claim 19, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches that the amounts are preferably 0.01 to 10% (Paragraph 0069) which overlaps the claimed range of ‘from about 0.001% to about 0.5%”.
Thus, the person of ordinary skill in the art could routinely determine the optimum amounts of the desired/selected first and second amines to achieve optimal polishing performance without undesirable/detrimental dishing (Paragraph 0073; “polishing composition of the present invention improves dishing”).
Regarding claim 20, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches that the pH of the composition is within a range of 5 to 11 (Paragraph 0069) which overlaps the claimed range of about 1 to about 7.
Regarding claim 21, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh further teaches the inclusion of n-propanol (i.e. an organic solvent; Paragraph 0123) but is silent to the n-propanol being in an amount of from about 0.01% to about 5%.
However, the person of ordinary skill in the art before the effective filing date of the claimed invention could routinely determine the suitable amount of additional organic solvent to include to prepare Itoh’s polishing composition such that the addition of about 0.01 to about 5% of organic solvent would not patentably distinguish a new composition from that already taught by Itoh. In the absence of evidence demonstrating that this organic solvent amount is critical or produces unexpected results, this feature appears to be obvious as it is a practical and routine matter for ordinarily skilled artisans before the effective filing date.
Regarding claim 22, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh teaches the inclusion of n-propanol (Paragraph 0123) which is also known as 1-propanol.
Regarding claim 23, Itoh and Dysard teach the composition as applied to claim 1 above and Itoh chooses to use an oxidizing agent but notes that “the amount of the oxidizing agent is not particularly specified because a different appropriate range exists for each case depending on a metallic species to be polished or a pH of a solution or the like” (Paragraph 0071).
Thus, it would be obvious to try a polishing solution without oxidizing agent depending upon the metallic surface to be polished and/or the pH of the resultant polishing solution as well as cost. Notably, Itoh explains that ‘a large amount thereof may cause economically disadvantageous treatment of waste of the polishing composition’. The choice to proceed without an oxidizing agent would be within the routine level of skill for the ordinary artisan.
Regarding claim 25, Itoh teaches a polishing composition (meeting BRI of claimed chemical-mechanical polishing composition) comprising at least one abrasive (Paragraph 0041), at least one organic acid (Paragraph 0038), at least one azole containing compound (Paragraph 0047), a first amine compound having a 6-24 carbon alkyl chain (Paragraph 0068; various amines including at least 2-ethylhexylamine, cyclohexylamine, benzylamine, among others), and an aqueous solvent (i.e., water; Abstract, Paragraph 0018, 0060, 0098, etc).
Itoh additionally teaches the inclusion of ethanolamine (Paragraph 0068; meeting claimed second amine comprising an aminoalcohol) and that a combination of a plurality of species may be used (Paragraph 0069). Thus, it would be obvious to combine a first and second amine selected from the disclosure of Itoh to yield predictable results.
Itoh additionally teaches that the polishing composition is suitable for polishing a metal film wherein the metal may be tungsten (Paragraph 0099).
Itoh is silent to the pH adjuster being selected from the group as claimed.
Dysard teaches a polishing composition that includes an amine such as tetramethylammonium hydroxide (TMAH) (Paragraph 0024) that has the ability to increase the rate of removal of polysilicon as well as suppress the rate of removal of silicon oxide (Paragraph 0024). The person of ordinary skill in the art would find it obvious to include the TMAH of Dysard into the composition of Itoh so as to advantageously increase the rate of removal of polysilicon as well as suppress the rate of removal of silicon oxide.
It would be obvious to combine the teachings of Itoh and Dysard so as to create a polishing composition that would lead to improved polishing because Itoh appreciates the achievement of improving dishing among other advantages for polishing (Paragraph 0073) while Dysard appreciates the advantage of increased rate of removal of polySi and suppression of the rate of removal of silicon oxide.
The person of ordinary skill in the art could have combined the elements taught by Itoh and Dysard according to known methods and, that in combination, each element merely performs the same function as it does separately and that person would also have recognized that the results of the combination would predictably result in the improved polishing composition. To be clear, a composition satisfying Applicant’s independent claim 25 would be achieved by following the compositional road map/recipe provided by Itoh as modified by Dysard with a reasonable expectation of success.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and reaffirmed principles based on its precedent that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”.
Regarding claim 28, Itoh and Dysard teach the composition as applied to claim 25 above and Itoh expressly teaches carboxylic acids (Paragraph 0038) as well as amino acids (Paragraph 0046), that the abrasive can be selected to include silica, aluminium oxide (i.e. alumina), cerium oxide (i.e. ceria), titanium dioxide (i.e. titania) (Paragraph 0072), and that the at least one azole includes 1,2,3-triazole, i.e. a heterocyclic azole, among others (Paragraph 0088).
It has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and reaffirmed principles based on its precedent that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”.
In the instant case, the combination of abrasive, organic acid, and azole component as taught by Itoh and modified by Dysard is prima facie obvious absent evidence of criticality and/or unexpected results because the elements are known in the prior art and are known for their suitability for polishing purposes.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Itoh and Dysard as applied to claims 1 and/or 2 above, and further in view of Lee et al. (U.S. 2004/0211337).
Regarding claim 17, Itoh and Dysard teach the composition as applied to claim 2 above but fail to expressly teach that the second amine compound is a β-hydroxyl-alkylamine or a derivative thereof.
Lee et al. (hereinafter “Lee”) teaches a polishing slurry comprising silica-coated ceria dispersed in an aqueous medium that is beneficially used in the planarization of the surfaces of various film layers of semiconductors and electroluminescent devices (Abstract). Lee particularly notes that an additive may be included for improving polishing performance (Paragraph 0027) and identifies that the additive may be an amine containing organic compound such as a hydroxylalkylamine, e.g., methanolamine (Paragraph 0028).
While Lee does not particularly identify species or derivatives of β-hydroxyl-alkylamine, the suggestion of a hydroxylalkylamine such as methanolamine has been known since at least the publication of the Lee document in 2004. Thus, this knowledge has been publicly available for at least the past 21 years.
As of the effective filing date of the claimed invention, it would be well within the ordinary skill of an artisan to identify and select appropriate species, such as β-hydroxyl-alkylamine or a derivative thereof in view of a two-decade old disclosure from Lee of a suitable and beneficial genus (i.e. hydroxylalkylamine).
In the absence of evidence establishing that the β-hydroxyl-alkylamine or a derivative thereof is critical or produces unexpected results, this feature appears to be an obvious modification and cannot confer patentable distinction from the prior art.
Response to Arguments
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive.
With regard to Applicant’s argument that the 112b over claim 25 is improper because ‘at least one’ refers to the number of each element or ingredient and thus does not conflict with the closed transitional phrase ‘consisting of’, Examiner respectfully disagrees and maintains that the language is indefinite. The public would not understand where infringement of the claim would begin. Again, the metes and bounds of the claim are indefinite because it is unclear what materials and/or compounds are disavowed in the composition because the boundaries of the phrases “at least one abrasive”, “at least one organic acid” and “at least one azole containing compound” are not delineated such that it is apparent what species are covered (MPEP 2173.02.I.). Specifically, a genus claim that could be interpreted in such a way that it is not clear which species are covered would be indefinite.
With regard to Applicant’s argument that there is no reason to combine Dysard with Itoh because Dysard is directed to polysilicon or silicon oxide surfaces and Itoh is only directed to metal, Examiner respectfully notes that this argument is unpersuasive because both references are directed to polishing compositions for semiconductors and it is known that semis utilize variously applied layers/stacks of different materials such that each reference’s specific mention of polySi or silicon oxide or metal is not, and would not, be understood by persons of ordinary skill as being exclusive and so limited as argued herewith by Applicant.
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are a part of the literature of the art, relevant for all they contain” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
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