DETAILED ACTION
Claims 1-12 and 15-23 are pending before the Office for review.
In the response filed January 5, 2026:
Claims 2, 18 and 19 were amended.
Claims 13 and 14 were canceled.Claims 22-23 were amended.
No new matter is present.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 5, 2026 has been entered.
Election/Restrictions
Claims 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 17, 2024.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-11 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over SATO et al (U.S. Patent Application Publication 2009/0194504) hereinafter Sato’504 in view of SINGH et al (U.S. Patent Application Publication 2015/0221520).
With regards to claim 1, Sato’504 discloses at least one abrasive (Paragraph [0025]) wherein the at least one silica-based abrasive is in an amount of from about 0.01-30 mass% (Paragraph [0025] discloses colloidal silica) which overlaps Applicant’s claimed range of about 0.01% to about 50% by weight of the composition; at least one organic acid or a salt thereof (Paragraph [0028]) wherein the at least one organic acid is in an amount of from about 0.01 to 10 mass% (Paragraph [0029]) which falls within Applicant’s claimed range of about 0.001% to about 10% by weight of the composition; at least one amine compound, the at least one amine compound comprising an amino acid comprising at least two amino groups, an alkylamine having a 10-24 carbon alkyl chain, or a mixture thereof (Paragraph [0028]); wherein the at least one amine compound is in an amount of from about 0.01 to 10 mass% (Paragraph [0029]) which overlaps applicant’s claimed amount of about 0.001% to about 5% by weight of the composition, an organic solvent (Paragraphs [0064]) and an aqueous solvent (Paragraph [0046]); wherein the polishing composition has a pH of about 2 -12 (Paragraph [0051]) which overlaps Applicant’s claimed amount of about 2 to about 5. 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). MPEP 2144.05(I)
Sato’504 does not explicitly disclose at least one nitride removal rate reducing agent, wherein the at least one nitride removal rate reducing agent is from 0.001% to about 10% by weight of the composition and wherein the polishing composition has a removal rate ratio of a removal rate for molybdenum to a removal rate for silicon nitride of from at least about 2:1 to at most about 1000:1, and wherein the polishing composition has a removal rate ratio of a removal rate for molybdenum to a removal rate for silicon oxide of from at least about 1:50 to at most about 50:1.
However Sato’504 discloses a surfactant wherein the surfactant comprises a phosphate ester having an alkyl group of 8 or more carbon atoms may be used (Paragraph [0031]) which renders obvious at least one nitride removal rate reducing agent and wherein the at least one nitride removal rate educing agent is 5 mass% or less (Paragraph [0036]) which renders obvious Applicant’s claimed amount of from 0.001% to about 10% by weight of the composition. 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). MPEP 2144.05(I)
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Sato’504 to include the nitride removal rate reducing agent (surfactant) as rendered obvious by the general disclosure of Sato’504 because the reference of Sato’504 teaches that such compound inhibits dishing (Paragraph [0032]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing composition using the nitride removal rate reducing agent (surfactant) as rendered obvious by Sato’504 . MPEP 2143D
Sato’504 discloses wherein the composition is provided to polish a fill of metal, for metal wiring to fill groves, barrier film and interlay dielectric film (Paragraphs [0059]-[0061]). Singh discloses a polishing composition for molybdenum comprising at least one silica based abrasive (Paragraph [0015]), an acid (Paragraph [0026]), a water surface active material including materials such as poly acrylic acid (PAA) polymethacyrlic acid (PMMA) which renders obvious at least one nitride removal rate reducing agent (Paragraphs [0017]-[0021]) at a pH in a range between about 3 to about 6 (Paragraph [0026]) wherein the polishing removal rate can be adjusted based on the abrasive content, pH and oxidizer content (Paragraphs [0035]-[0041]). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) MPEP 2144.05(II)(A) Therefore it would have been prima facie obvious to one of ordinary skill in the art to optimize the removal rate ratio to amounts including of a removal rate for molybdenum and/or its alloys to a removal rate for silicon nitride of from at least about 2:1 to at most about 1000:1 and a removal rate for molybdenum and/or its alloys to a removal rate for silicon oxide of from at least about 1:50 to at most about 50:1 as claimed in order to achieved the suitable surface roughness and removal rate as taught by the modified teachings of Sato’504 in view of Singh (Singh Paragraphs [0036]-[0041], MPEP 2144.05(II)(A)) In addition, one of ordinary skill in the art would recognize that the composition of Sato’504 as modified by Singh would provide Applicant’s claimed removal rate ratio as this is the property of the composition based off the processing conditions. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Sato’504 to include the adjusting removal rate as rendered obvious by Singh because one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing composition using the removal rate ratio as rendered obvious by Moringa. MPEP 2143D
With regards to claim 2, the modified teachings of Sato’504 renders obvious wherein the at least one abrasive is selected from the group consisting of colloidal silica, fumed silica and mixtures thereof (Sato’504 Paragraph [0025], Singh Paragraph [0015],[0023]).
With regards to claim 3, the modified teachings of Sato’504 discloses wherein the at least one abrasive is in an amount of from about 0.01-30 mass% (Sato’504Paragraph [0025]) which overlaps Applicant’s claimed range of about 0.05% to about 45% by weight of the composition. 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). MPEP 2144.05(I)
With regards to claim 4, the modified teachings of Sato’504 renders obvious wherein the at least one organic acid is selected from the group consisting of gluconic acid, lactic acid, citric acid, tartaric acid, malic acid, glycolic acid, malonic acid, formic acid, oxalic acid, acetic acid, propionic acid, peracetic acid, succinic acid, lactic acid, amino acetic acid, phenoxyacetic acid, bicine, diglycolic acid, glyceric acid, and mixtures thereof (Sato’504Paragraph [0028] discloses glycolic acid, formic acid, acetic acid, propionic acid).
With regards to claim 5, the modified teachings of Sato’504 discloses wherein the at least one organic acid is in an amount of from about 0.01 to 10 mass% (Sato’504 Paragraph [0029]) which falls within Applicant’s claimed range of about 0.003% to about 9% by weight of the composition. 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). MPEP 2144.05(I)
With regards to claim 6, the modified teachings of Sato’504 renders obvious wherein the at least one amine compound is selected from the group consisting of histidine, arginine, lysine, and mixtures thereof (Sato’504Paragraph [0028]).
With regards to claim 7, the modified teachings of Sato’504 discloses wherein the at least one amine compound is in an amount of from about 0.01 to 10 mass% (Sato’504 Paragraph [0028])which overlaps applicant’s claimed amount of about 0.003% to about 4.5% by weight of the composition. 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). MPEP 2144.05(I)
With regards to claims 8-11, the modified teachings of Sato’504 discloses wherein the at least one nitride removal rate reducing agent comprises a phosphate ester having an alkyl group of 8 or more carbon atoms; the phosphate ester include alkyl phosphate esters such as octylphosphoric acid, decylphosphoric acid, laurylphosphoric acid, myristylphosphoric acid, cetylphosphoric acid, stearylphosphoric acid, secondary alkyl (average carbon number of 13) phosphoric acid, 2-ethylhexylphosphoric acid and oleylphosphoric acid; and polyoxyalkylene ether alkyl phosphate esters such as monostearyl glyceryletherphosphoric acid, monocetyl glyceryl ether phosphoric acid, monooleyl glyceryl ether phosphoric acid, isostearyl glyceryl ether phosphoric acid, polyoxyethylene octyl ether phosphoric acid, polyoxyethylene decyl ether phosphoric acid, polyoxyethylene lauryl ether phosphoric acid, polyoxyethylene myristyl ether phosphoric acid, polyoxyethylene cetyl ether phosphoric acid, polyoxyethylene stearyl ether phosphoric acid, polyoxyethylene secondary alkyl (average carbon number of 13) ether phosphoric acid, polyoxyethylene 2-methylhexyl ether phosphoric acid, polyoxyethylene 2-oleyl ether phosphoric acid and polyoxyethylene nonyl phenyl ether phosphoric acid (Sato’504 Paragraph [0031]) which renders obvious wherein the at least one nitride removal rate reducing agent comprises: a hydrophobic portion comprising a C6 to C4o hydrocarbon group; and a hydrophilic portion comprising at least one group selected from the group consisting of a sulfinite group, a sulfate group, a sulfonate group, a carboxylate group, a phosphate group, and a phosphonate group; and wherein the hydrophobic portion and the hydrophilic portion are separated by zero to ten alkylene oxide groups; wherein the hydrophobic portion comprises a C12 to C32 hydrocarbon group; wherein the hydrophilic portion comprises a phosphate group or a phosphonate group and wherein the at least one nitride removal rate reducing agent has zero alkylene oxide group separating the hydrophobic portion and the hydrophilic portion.
With regards to claim 15, the modified teachings of Sato’504 discloses wherein the at least one nitride removal rate educing agent is 5 mass% or less (Sato’504Paragraph [0036]) which renders obvious Applicant’s claimed amount of from 0.003% to about 9% by weight of the composition. 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). MPEP 2144.05(I)
With regards to claim 16, the modified teachings of Sato’504 renders obvious wherein the composition further comprises at least one azole compound (Sato’504Paragraph [0037]-[0045]).
With regards to claim 17, the modified teachings of Sato’504 discloses wherein the at least azole compound is from about 0.001 to 1 mass% (Sato’504 Paragraph [0045]) which overlaps Applicant’s claimed amount of from about 0.001% to about 5% by weight for the composition. 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). MPEP 2144.05(I)
With regards to claims 18 and 19, the modified teachings of Sato’504 discloses wherein the composition comprise organic solvent/water mixed with the composition to form an aqueous composition (Sato’504Paragraph [0046]) wherein the organic solvent maybe an aqueous alcohol including aqueous ethanol, ethylene glycol and the link (Singh Paragraph [0014]) and added in sufficient amounts to dissolve the components prior to use (Sato’504Paragraphs [0046], [0064] Singh [0029]) which renders obvious wherein the organic solvent is selected from the group consisting of ethanol and ethylene glycol (Singh [0029]). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A) Therefore it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to optimize the concentration of organic solvent to amounts including applicants claimed amount of about 0.001 % to about 10% by weight in order to have a sufficient amount to dissolve to components at point of use as taught by the modified teachings of Sato’504 . (MPEP 2144.05(II)(A), Sato’504Paragraphs [0046], [0064] Singh [0029]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over SATO et al (U.S. Patent Application Publication 2009/0194504) hereinafter Sato’504 in view of SINGH et al (U.S. Patent Application Publication 2015/0221520), as applied to claims 1-11 and 15-19, in further view of SATO et al (U.S. Patent Application Publication 2009/0289217) hereinafter Sato’217.
With regards to claim 12, the modified teachings of Sato’504 renders obvious the limitations of claim 1 as previously discussed.
However the modified teachings of Sato’504 are silent as to wherein the at least one nitride removal rate reducing agent is selected from the group consisting of lauryl phosphate, myristyl phosphate, cetyl phosphate, stearyl phosphate, octadecylphosphonic acid, oleyl phosphate, behenyl phosphate, octadecyl sulfate, lacceryl phosphate, oleth-3-phosphate, oleth-10-phosphate, 1,4- phenylenediphosphonic acid, dodecylphosphonic acid, decylphosphonic acid, hexylphosphonic acid, octylphosphonic acid, phenylphosphonic acid, 1,8-octyldiphosphonic acid, 2,3,4,5,6- pentafluorobenzylphosphonic acid, heptadecafluorodecylphosphonic acid, and 12- pentafluorophenoxydodecylphosphonic acid.
Sato’217 discloses a polishing composition comprising a phosphate ester having an alkyl group of 8 or more carbon atoms wherein the phosphate esters include an alkyl phosphate ester such as lauryl phosphate, myristyl phosphate, cetyl phosphate, stearyl phosphate, secondary alkyl (average number of carbon atoms and oleyl phosphate (Paragraphs [0117]-[0118]) which renders obvious wherein the at least one nitride removal rate reducing agent is selected from the group consisting of lauryl phosphate, myristyl phosphate, cetyl phosphate, stearyl phosphate and oleyl phosphate
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Sato’504 to include the nitride removal rate reducing agent (phosphate ester) as rendered obvious Sato’217 because the reference of Sato’217 teaches that such compound further enhances the surface planarity (Paragraph [0117]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing composition using the nitride removal rate reducing agent (phosphate ester) as rendered obvious by Sato’217 . MPEP 2143D
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over SATO et al (U.S. Patent Application Publication 2009/0194504) hereinafter Sato’504 in view of SINGH et al (U.S. Patent Application Publication 2015/0221520), as applied to claims 1-11 and 15-19, in further view of SCOTT (U.S. Patent Application Publication 2005/0159085).
With regards to claims 22-23, the modified teachings of Sato’504 renders obvious the limitations of claim 1 as previously discussed.
However the modified teachings of Sato’504 are silent as to the composition further comprising a chelating agent selected from the group consisting of 1,2-ethanedisulfonic acid, 4-amino-3-hydroxy-1- naphthalenesulfonic acid, 8-hydroxyquinoline-5-sulfonic acid, aminomethanesulfonic acid, benzenesulfonic acid, hydroxylamine O-sulfonic acid, methanesulfonic acid, m-xylene-4- sulfonic acid, poly(4-styrenesulfonic acid), polyanetholesulfonic acid, p-toluenesulfonic acid, trifluoromethane-sulfonic acid, ethylenediaminetetraacetic acid, diethylenetriaminepentaacetic acid, nitrilotriacetic acid, acetylacetone, aminotri(methylenephosphonic acid), 1- hydroxyethylidene (1,1-diphosphonic acid), 2-phosphono-1,2,4-butanetricarboxylic acid, hexamethylenediaminetetra(methylenephosphonic acid), ethylenediaminetetra(methylenephosphonic acid), diethylenetriaminepenta(methylenephosphonic acid), salts thereof, and mixtures thereof and wherein the chelating agent is in an amount of from 0.001% to about 10% by weight of the composition.
Scott discloses a polishing composition for polishing a metal substrate comprising a complexing agent (chelating agent or selectivity enhancer) wherein suitable complexing agents (chelating agent or selectivity enhancer) includes compounds such as disodium EDTA (Paragraphs [0038], [0047]) rendering obvious a salt of ethylenediaminetetraacetic acid wherein the chelator can be in a range from 50ppm to 5% (Paragraph [0047]) which overlaps Applicant’s claimed amount of wherein the chelating agent is in an amount of from 0.001% to about 10% by weight of the composition. 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). MPEP 2144.05(I)
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Sato’504 to include the chelating agent (complexing agent) as rendered obvious Scott because one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing composition using the chelating agent (complexing agent) as rendered obvious by Scott . MPEP 2143D
Response to Arguments
Applicant’s arguments, see pages 9-11 of Applicant’s response, filed January 5, 2026, with respect to the rejection(s) of claim(s) 18-19 under 103 have been fully considered and are persuasive. In particular, Applicant’s amendment has overcome the rejection of record. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Scott (U.S. Patent Application Publication 2005/0159085).
Applicant's remaining arguments filed January 5, 2026 have been fully considered but they are not persuasive.
Applicant argues on pages 7-12 of Applicant’s response that the cited prior art fails to teach or render obvious Applicant’s claimed invention. Applicant argues that the cited prior art does not teach or render obvious Applicant’s claimed composition as presented in amended claim 1. It is Applicant’s position that with the cancellation of claims 13 and 14, the "water-soluble surface active materials" of Singh are not encompassed by the "at least one nitride removal rate reducing agent" recited in the present claims. Applicant argues that the anionic polymers as described in Singh are critical for suitable molybdenum removal rates but not relevant to nitride removal rate. In addition, "Sato'504 does not explicitly disclose at least one nitride removal rate reducing agent," an inclusion of Singh's "water-soluble surface active material" would not lead a person of ordinary skill in the art to a composition of the present claims, as Singh's "water-soluble surface active materials" are not encompassed by the "at least one nitride removal rate reducing agent" recited in the present claims.
Applicant argues that hindsight knowledge is requires in order for a person of skill in the art to arrive at the claimed removal rate ratios, in particular because the claimed compositions differ from the compositions of Sato’54 and Singh with respect to the nitride removal rate. As such Sato’504 as modified by Singh fails to teach or render obvious Applicant’s claimed invention.
Applicant further argues that the reference of Sato’504 teaches that the organic solvent is merely present in the synthesis of the water soluble azole group containing compound and is replaced with water. Finally Applicant argues that the present claimed invention has a much smaller pH range than that presented in the prior art. In addition the working examples of the prior art are at pH’s outside of Applicant’s claimed range. Applicant’s specification demonstrates that a pH of about 2 to about 5 provides a higher molybdenum removal rate and a stable static etch rate for molybdenum. In addition, Sato’504 is silent regarding molybdenum and Singh is silent as with respect to the recited ratios of removal rates for molybdenum to removal rates for silicon nitride and for silicon oxide and describes that "water-soluble surface active materials" distinct from the claimed nitride removal rate reducing agent are critical to provide "suitable Mo removal rates." Therefore Applicant’s specification demonstrates expected ratios of removal rates for molybdenum to removal rates for a nitride material and for silicon oxide recited in claim 1
With regards to claim 12, Sato’217 does not cure the deficiencies of Sato’504 and Singh. As to the remaining dependent claims they are allowable based on their dependency. This is found unpersuasive.
It is the Examiner’s position that the cited prior art renders obvious Applicant’s claimed invention including the inclusions of an organic solvent in amended claim 1. Sato’504 as modified by Singh renders obvious a composition comprising each of the components of the claimed composition. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I) "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. MPEP 2112.01(II)
While Sato’504” does not explicitly disclose “at least one nitride removal reducing agent”, Sato’504 discloses a surfactant wherein the surfactant comprises a phosphate ester having an alkyl group of 8 or more carbon atoms may be used (Paragraph [0031]). Applicant’s Published specification discloses a nitride removal rate reducing compound can be a number of compounds including PVA and a number of phosphate group compounds (See Paragraphs [0023]-[0025]) which is render obvious by Sato’504’s disclosure (Paragraph [0031]). The claim is rendered obvious by the combination of the composition and not the function of the component. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112(I) Therefore while the Sato’504 may not explicitly discloses a “nitride removal rate reducing agent”, Sato’504’s disclosure of the “water surface active material” comprises compounds which renders obvious Applicant’s claimed element.
In addition the Examiner maintains that Sato’504 is properly modified by the reference of Singh. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Sato’504 and Singh are broth directed towards polishing compositions for polishing a metal surface, wherein Singh specifically discloses suitable amounts of PAA, PMMA can adjust the polishing rates of molybdenum (See Paragraph 11 of Final Office Action 09/05/2025). Therefore it is the Examiner’s position that one of ordinary skill in the art would have modified the composition of Sato’504 to include the teachings of Singh in order to produce a composition suitable for polishing the desired metal.
While the prior art does not explicitly discloses Applicant’s claimed removal rate ratio, it is the Examiner’s position that one would optimize the removal rate ratios. it would have been prima facie obvious to one of ordinary skill in the art to optimize the removal rate ratio to amounts including of a removal rate for molybdenum and/or its alloys to a removal rate for silicon nitride of from at least about 2:1 to at most about 1000:1 and a removal rate for molybdenum and/or its alloys to a removal rate for silicon oxide of from at least about 1:50 to at most about 50:1 as claimed in order to achieved the suitable surface roughness and removal rate as taught by the modified teachings of Sato’504 in view of Singh (Singh Paragraphs [0036]-[0041], MPEP 2144.05(II)(A))
With regards to the organic solvent; it is the Examiner’s position that Sato’504 discloses “the abrasive composition of the present invention can be used in any form of an organic solvent composition, an organic/solvent water mixed composition and an aqueous composition” (Paragraph [0046]) rendering obvious the inclusion of an organic solvent.
With regards to the pH, it is the Examiner’s position that Sato’504 discloses a range that renders obvious Applicant’s claimed range. Applicant has not shown the criticality of the claimed range.
Applicant has pointed to Applicant’s specification for a showing of unexpected results. However, Applicant’s showing of unexpected results is not commensurate in scope with the claim. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) MPEP 716.02(d) To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).MPEP 716.02(d)(II)
Applicant’s specification provides for particular compositions which does not provide a sufficient basis that one of ordinary skill in the art would understand Applicant’s desired unexpected results to occur across Applicant’s currently presented claim. Applicant’s claims are broader than Applicant’s showing of unexpected results. Therefore Applicant’s showing of unexpected results is not commensurate in scope with the claim. As to the remaining dependent claims, they remain rejected as no separate arguments have been provided.
Conclusion
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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713