DETAILED ACTION
This is the Office action based on the 17712945 application filed October 09, 2020, and in response to applicant’s argument/remark filed on October 30, 2025. Claims 1-9, 12-13 and 16-20 are currently pending and have been considered below. Applicant’s cancelation of claims 10-11 and 14-15 acknowledged. Claims 18-20 withdrawn from consideration.
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.
Claim Interpretations
Applicant has elected Group I, which is drawn to a chemical composition, in response to the Election/Restriction requirement. Note that the claims are directed towards a chemical composition and as such will be examined under such conditions. The process of using the composition or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details). Furthermore, the process of making the composition is viewed as directed to a product-by-process claim and is given little patentable weight. “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Please see MPEP 2113 for further details. In the present case, claim 1 is directed to a polishing composition but also recites a method of making a diluted polishing composition that is different from the polishing composition. The diluted polishing composition and the method of making it is considered an unrelated invention and is given little patentable weight.
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.
Claim 1 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 1 recites “A polishing composition for a semiconductor process, comprising: a solvent polishing particles; a chelator; and a surfactant, wherein the chelator comprises glycine, wherein the chelator is included in an amount of 0.1 parts by weight to 0.4 parts by weight based on 100 parts by weight of the solvent, wherein the surfactant is included in an amount of 0.002 parts by weight to 0.008 parts by weight based on 100 parts by weight of the solvent, wherein the polishing particles are included in an amount of 2 parts by weight to 10 parts by weight based on 100 parts by weight of the solvent, wherein the polishing composition has a value of 0.01 to 0.14 according to the following Equation 1: [Equation 1]
X x 500A _________
Y x P
wherein X is the number of particles having a diameter of 1 µm or more as measured by a large particle counter (LPC) using a test sample of the polishing composition,
Y is the number of particles having a diameter of 0.7 µm or more as measured by LPC using the same test sample,
P is a weight part of the polishing particles based on 100 parts by weight of the solvent of the polishing composition for a semiconductor process, and
A is a weight part of a surfactant based on 100 parts by weight of a solvent of the polishing composition for a semiconductor process, wherein the test sample of the polishing composition comprises a mixture of the polishing composition and ultrapure water at a weight ratio of 1:30, and the test sample being a temporarily diluted sample solely for particle counting analysis (LPC measurement) and not forming part of the claimed polishing composition.” (emphasis added) Claim 1 is not clear because:-- Regardless of the limitation “the test sample being a temporarily diluted sample solely for particle counting analysis (LPC measurement) and not forming part of the claimed polishing composition”, a practitioner would be required to possess or to prepare the test sample in order to determine the value of Equation 1. It is not clear whether the invention is directed to the polishing composition, the test sample, or a kit comprising the polishing composition and the test sample.--Claim 1, reciting a polishing composition but also recites a method of making a diluted polishing composition that is different from the polishing composition, is not clear according to MPEP § 2173.05(p). II, “(a) single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). In Katz, a claim directed to "[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data" was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph). In contrast, when a claim recites a product and additional limitations which focus on the capabilities of the system, not the specific actions or functions performed by the user, the claim may be definite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See Mastermine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 124 USPQ2d 1618 (Fed. Cir. 2017).”
Claim 12 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 12 recites “(t)he polishing composition for a semiconductor process of claim 1, wherein the polishing composition exhibits a change in a particle size distribution value of D50(average particle size) of the polishing particles is less than 5% as measured after storage at 60°C for one hour.”. It is noted that in order to determine a change in a particle size distribution value of D50 (average particle size) of the polishing particles is less than 5% as measured after storage at 60°C for one hour, particle size distribution value must be measured at a certain time then measured again an hour later. However, since the claim is directed to a composition, one of ordinary skill in the art would not be clear whether the method of making the stored polishing composition, i.e. putting the polishing composition in storage at 60°C for one hour, is a part of the invention. It is also not clear whether the invention is the polishing composition as recited in claim 1 or the polishing composition after storage at 60°C for one hour that has a new particle size distribution value.
Claims 2-9, 12-13 and 16-17 rejected under 35 U.S.C. 112(b) because they are directly or indirectly dependent on claim 1.
Claim Rejections - 35 USC § 102/35 USC § 103
The following is a quotation of 35 U.S.C. 102:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention..
The following is a quotation of 35 U.S.C. 103:
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-9, 12-13 and 16-17 rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Guo et al. (U.S. PGPub. No. 20210324236), hereinafter “Guo”:--Claim 1, 2, 3, 4, 5, 7, 8, 9: Guo teaches a polishing composition, comprisingcolloidal silica particles present at 0.1-40 wt.% ([0020]), wherein an amino acid, such as glycine ([0025]), or an aminosilane compounds, such as 3-aminopropyltriethoxysilane ([0027]), are incorporated on the surface of the colloidal silica particles at a concentration 0.1-10 wt.% based on the weight of the colloidal silica particles ([0026]);water ([0005]); a surfactant ([0005]), such as a non-ionic fluorine compound ([0038]) at a concentration 0.001-0.1 wt.% ([0039]). It is noted that the amount of water in the polishing composition is about 59.9-99.9 wt.%; therefore the amount of the surfactant in the polishing composition is about 0.001-0.167 wt.% based on the weight of the solvent, i.e. water, and the colloidal silica particles present at 0.1-67 wt.% based on the weight of the solvent, i.e. water. It is noted that since the amount of glycine is present at a concentration 0.1-10 wt.% based on the weight of the colloidal silica particles, which is present at 0.1-40 wt.%, it is present at 0.01-6.7 wt.% based on the weight of the solvent, i.e. water. It is noted that since the amount of the surfactant is present at a concentration 0.001-0.1 wt.% based on the weight of the composition, and the water is present at 50-99.8 wt.% based on the weight of the composition, the surfactant is present at a concentration 0.001-0.2 wt.% based on the weight of the solvent, i.e. water. Since the polishing composition taught by Guo is the same as Applicant’s, it must possess the property of having the value range 0.01-0.14 for Equation 1, as taught by Applicant since, according to MPEP 2112.01, II that applicable to the rejections under this section made in this Office action, “Products of identical chemical composition cannot have mutually exclusive properties.”. 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.”. Therefore, the composition identical to the composition as recited in claim 1 would possess the claimed property absent a showing to the contrary. In the alternative, when a reference discloses the limitations of a claim except for a property, and the Examiner cannot determine if the reference inherently possesses that property, the burden is shifted to Applicant(s). In re Fitzgerald, USPQ 594 and MPEP §2112. Alternatively, although Guo is silent about a value according to Equation 1 as recited in claim 1, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to create a polishing composition have such value in the invention of Guo since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
--Claim 6: Since the aminosilane compounds are present at a concentration 0.1-10 wt.% based on the weight of the colloidal silica particles, it is present at 0.01-6.7 wt.% based on the weight of the solvent, i.e. water.--Claim 12: Since the polishing composition taught by Guo is the same as Applicant’s, it must possess the property of having a change in a particle size distribution value of D50 (average particle size) of the polishing particles is less than 5% when stored for more than 6 months, as taught by Applicant. --Claim 13: Guo further teaches that the polishing composition may comprise a biocide ([0006]). --Claims 16, 17: Guo further teaches that the a pH adjusting agent, such as acetic acid, is added to the polishing composition to adjust the pH of the composition to less than 7 ([0032]).
Response to Arguments
Applicant's arguments filed October 30, 2025 have been fully considered as follows:--Regarding Applicant’s argument that the amended claim 1 is definite under 35 U.S.C. 112(b), this argument is not persuasive. Claim 1 is clearly indefinite under 35 U.S.C. 112(b), as explained above.--Regarding Applicant’s argument that the amended claim 12 is definite under 35 U.S.C. 112(b), this argument is not persuasive. Claim 12 is clearly indefinite under 35 U.S.C. 112(b), as explained above. --Regarding Applicant’s argument that the concentration ranges taught by Guo are much wider than the claimed ranges, and one of skill in the art would be unlikely to make a composition that meets all of the claimed concentration ranges, this argument is not persuasive. The concentration ranges taught by Guo clearly overlap the claimed ranges, and Applicant fails to show the claimed concentration ranges are superior than the concentrations that are outside the claimed ranges. Since the composition taught by Guo meets all requirements recited in claim 1, it must possess the property described in Equation 1. According to MPEP 2112.01, II, “Products of identical chemical composition cannot have mutually exclusive properties.”. 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.”.--Regarding Applicant’s argument that one of skills in the art, reading Guo, would have no clue how to arrive at Equation 1, it is noted that the property described by Equation 1 is inherent to any composition that meets the requirements recited in claim 1.--Regarding Applicant’s argument that the claimed concentrations are unexpected because Table B shows that compositions that possesses the property described by Equation 1 exhibit both long-term dispersion stability (12 months or more) and suppression of surface defects, this argument is not persuasive. Table B does not show the claimed range is unexpected because it fails to convincingly show the results are inferior for any condition outside of the claimed ranges.
Conclusion
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 extension fee 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 THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (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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/THOMAS T PHAM/Primary Examiner, Art Unit 1713