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 .
Response to Amendment
Claims 1, 4-6 are pending.
Claims 1, 4-6 are rejected under Tamada, Huang, and Sato.
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.
Claim(s) 1, 4, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamada et al. (US 2015/0069016), and further in view of Huang et al. (US (US 20210202476).
With respect to claim 1, Tamada describes a semiconductor polishing composition comprising two or more oxidizing agent including hypobromous acid, chloric acid, chlorous acid, bromic acid and salts thereof, water (para 13, 47, 54). The composition has a pH preferably up to 12 (para 55). Hypobromous acid provides hypobromite ions in water at high pH (please see IC Controls reference for reactions of HOBr in water). These acids and salts thereof in water would provide chlorate ion, chlorite ion, chloride ion, bromate ion, and bromide ion. Even though Tamada doesn’t disclose the hypobromite ion is 0.1 umol/L or more and lower than 0.001 mol/L; however, Tamada discloses the oxidizing agent concentration including hypobromous acid is from 0.00001 mol/L to 1 mol/L (para 16), which is expected to provide a concentration of hypobromites that overlaps claimed 0.1 umol/L to 0.001 mol/L. Overlapping ranges are held obvious. See MPEP 2144.05. 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). Therefore, one skill in the art would find it obvious before the effective filing date of the invention to use ranges including claimed ranges to provide a polishing composition with expected results.
With respect to the composition contain hypobromite and at least one anion species selected from a chlorate ion, a chlorite ion, a chloride ion, a bromate ion, a bromite ion, and a bromide ion, Tamada suggests that the oxidizing agent may contain two or more kinds including hypobromous acid, chloric acid, chlorous acid, bromic acid, and salts thereof (para 13, 47). Therefore, it would have been obvious for one skill in the art before the effective filing date of the invention to use a combination of hypobromite ion with any of the listed anion species from Tamada because he suggests any two or more of those components have been successfully used as oxidizing agents for a polishing composition with expected results.
With respect to the pH is from 11-14, Tamada discloses the pH is from 3-12 (para 55). Overlapping ranges are held obvious. See MPEP 2144.05. 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). Therefore, one skill in the art would find it obvious before the effective filing date of the invention to use a pH in a ranges including claimed ranges of 11-14 to provide a polishing composition with expected results.
Unlike claimed invention, Tamada doesn’t describe the semiconductor comprises a transistor metal including Ru, W, Mo, or Cr;, where the these material can be etched while maintaining surface flatness when the composition is used; however, it is an intended use limitation of the composition, Tamada’s composition would be able to be used for a semiconductor comprises of a transition metal as he describes processing a MOSFET, which generally includes a transition metals such as Ti, Ni, W, Ru, Cu, Ta as shown here by Huang (para 74, claims 1, 6, 7). The intended use of a composition is not a basis for patentable distinction. In re Alberton 141 USPQ 730 (CCPA 1964); In re Heck 114 USPQ 161 (CCPA 1957); In re Tuominen 213 USPQ 89 (CCPA 1982); In re Thorpe 227 USPQ 964 (Fed. Cir. 1985); In re Best 195 USPQ 430 (CCPA 1977); In re Fessman 180 USPQ 324 (CCPA 1974); In re Brown 173 USPQ 685 (CCPA 1972).
With respect to claims 4 and 5, the oxidizing agent may contain two or more kinds including ozone water, hypochlorous acid, which is similar to that of hypobromous acid in water and is expected to provide hypochlorite ion in water (para 13, 47). (Please see IC Controls reference for reaction comparation of HOBr and HOCL in water). The ozone and hypochlorite ion provide the oxidizing agent that has a redox potential higher than that of a hypobromite ion/bromide ion system.
6. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamada and Huang as applied to claim 1 above, and further in view of Sato et al. (US 2012/0256122)
With respect to claim 6, Tamada doesn’t describe the composition further comprising a tetraalkylammonium ion. Tetraalkylammonium ion such as TMAH is known as a pH adjustor agent as disclosed by Sato here (para 43, 45). Therefore, it would have been obvious for one skill in the art before the effective filing date of the invention to add TMAH in order to adjust the pH of Tamada’s composition to basicity with expected results.
Response to Arguments
In response to applicant's argument that the claimed composition provides surface flatness when used on Ru, W, Mo or Cr, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case the composition contains the same components as that of the claimed invention and range of the components including claimed ranges. therefore, it is capable of providing claimed maintaining surface flatness when used in a process involving Ru, W, Mo, or Cr. Furthermore, the limitation of “the semiconductor comprises ruthenium, tungsten, molybdenum, or chromium, and the ruthenium, tungsten, molybdenum, or chromium in the semiconductor can be etched while maintaining surface flatness when the semiconductor treatment liquid is used” is a recitation of the intended use of the claimed invention, which must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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.
IC Controls reference is cited for reactions of HOBr and HOCL in water.
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/DUY VU N DEO/Primary Examiner, Art Unit 1713
9/12/2025