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 .
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 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 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over by Masuda et al (WO 2016/035346 A1) in view of Tsuchiya et al (US 10,344,185 B2) and Tsuchiya et al (US 2019/0015947 A1).
Masuda discloses a chemical-mechanical polishing composition for polishing a substrate (abstract), comprising:
an abrasive [0045],
a hydroxyethyl cellulose having a weight average molecular weight of 50,000 to 2,000,000 [0042], which overlaps with the cited range,
a basic component [0045],
a surfactant [0056], and
an aqueous carrier [0009].
Surfactants
Masuda discloses that the composition comprises an alkylene polyalkylene oxide amine polymer as cited [0037]-[0039]. The polymer is the same structure as that cited, and therefore inherently a surfactant. MPEP 2112.01 I.
Masuda discloses that the alkylene polyalkylene oxide amine polymer functions as a haze improver [0029]. In addition to the haze improver polymer, Masuda discloses to further include a surfactant [0050], [0056].
Masuda fails to disclose polyoxyalkylene alkyl ether as the surfactant.
Tsuchiya ’185 teaches a similar composition for polishing of silicon (abstract) including an abrasive (col. 8, lines 8-11), hydroxyethyl cellulose (col. 6, lines 33-35), a basic component (e.g., ammonia, col. 11, line 30), a surfactant (col. 4, lines 66-67), and an aqueous carrier (col. 7, lines 43-46). Further as to the surfactant, Tsuchiya teaches that a surfactant including polyoxyethylene alkyl ethers, such as polyoxyethylene decyl ether) are useful for the polishing composition (col. 5, lines 1-4, 38-41). The surfactant has low foaming properties and easy adjustment of the pH (col. 4, lines 66-67).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to also include polyoxyalkylene alkyl ether in the composition of Masuda because Tsuchiya teaches that it is a useful surfactant for polishing compositions to provide low foaming properties and ease of pH adjustment. The modified composition is expected to give the predictable result of surfactant properties, which Masuda recognizes is useful because Masuda discloses to include a surfactant in the composition as an additive.
Hydroxyethyl cellulose content
Further as to claim 1, Masuda fails to disclose the content of the hydroxyethyl cellulose, 0.01-1.0% by mass. Tsuchiya ’185 teaches in one comparative example to provide 0.017% by weight of hydroxyethyl cellulose (col.18, line 56; Table 1, Comp. Ex. 3), which is expected to be in the cited range.
Tsuchiya ’947 teaches a polishing composition similar to Masuda that comprises an abrasive [0025] with particle sizes that encompass the cited range [0027], a cellulose derivative such as hydroxyethyl cellulose [0033] with multiple molecular weight ranges including 200,00 or less or 100,000 or less [0034] and content that encompasses the cited range [0037], surfactant such as polyoxyethylene adducts [0057], an aqueous carrier [0067] and a basic compound [0040].
More specifically, Tsuchiya ’947 teaches several ranges of hydroxyethyl cellulose content including 0.005% by mass or more and 1.0% by mass or less [0037], which has large overlap with the cited range. Tsuchiya ’947 teaches to optimize within these ranges to improve dispersion stability of the polishing composition [0037].
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the cited amount of hydroxyethyl cellulose in the modified composition of Masuda because Tsuchiya ’947 teaches that a content in the cited range is useful to include in polishing compositions and can be optimized for best results of dispersion stability. MPEP 2144.05, II. A.
Abrasive size
As to claim 1 with respect to the abrasive’s primary particle size, Masuda discloses that the abrasive has a primary particle size of 0.01 to 3 μm (10 to 3000 nm), or particularly preferably 0.02 to 0.5 μm (20 to 500 nm). These ranges encompass or overlap with the cited range. Masuda teaches to vary the size from the viewpoint of improving polishing speed [0049].
Tsuchiya ’947 teaches several ranges for the particle size of the abrasives, but including the ranges of 40 nm or less and 10 nm or more [0026]. These ranges are the same as cited in claim 1. Tsuchiya ’947 teaches that particle sizes within these ranges can be optimized to improve the polishing removal rate [0026].
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide abrasives with a primary particle size of 10 to 40 nm because Masuda already teaches that particles of those sizes are useful, and Tsuchiya ’947 further teaches that the cited range is useful and can be optimized for polishing removal rate.
Hydroxyethyl cellulose molecular weight – 120,000 or less
As to amended claim 1 as it relates to the molecular weight, Masuda discloses a hydroxyethyl cellulose having a weight average molecular weight of 50,000 to 2,000,000 [0042], which overlaps with the cited range.
Tsuchiya ’947 teaches several ranges of the hydroxyethyl cellulose molecular weight including 200,000 or less, or 100,000 or less [0034]. Tsuchiya ’947 teaches to optimize the molecular weight within these ranges in order to improve the stability of the polishing composition and to decrease polishing defects [0034].
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the cited range of molecular weight in the composition of Masuda because Masuda already discloses that values within the cited range are useful, and Tsuchiya ’947 provides further motivation to choose the cited range in order to improve the stability of the polishing composition and to decrease polishing defects.
Basic Compound – Ammonia
Further as to amended claim 1, Masuda discloses to include a basic compound [0045], but fails to disclose its composition. Tsuchiya ’947 teaches a polishing composition with the cited amount of ammonia. Tsuchiya ’947 teaches that the basic compound may comprise ammonia as a most preferable basic compound [0046]. Tsuchiya ’947 teaches several content ranges including 1.0 mass% or less [0047] and 0.005% by mass or more [0047]. These ranges overlap with the cited range with sufficient specificity. They have a (1) large overlapping range, (2) is used for the same purpose in a polishing composition, and (3) the instant description fails to describe criticality to the composition.
Tsuchiya ’947 teaches that the basic compound can be optimized within the cited ranges to suppress excessive polishing and improve smoothness of a polished surface [0047].
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include ammonia as cited in the composition of Masuda because Masuda already discloses to include a base, and Tsuchiya ’947 teaches ammonia is a useful basic compound and the concentration can be optimized for best results of suppressing excessive polishing and improving smoothness of the polished surface. MPEP 2144.05, II. A.
As to claim 7, Masuda discloses that the composition comprises an alkylene polyalkylene oxide amine polymer as cited [0037]-[0039]. The polymer is the same structure as that cited, and therefore inherently a surfactant. MPEP 2112.01 I.
As to claim 8, see the rejection of claim 1. The polyoxyalkylene alkyl ether in the modified composition of Masuda includes the cited formula, where in at least one example, polyoxyethylene decyl ether, R is a C10 alkyl group, A is an ethylene group, n is 2 or more because it is a polymer.
As to claims 9-10 and 12, Masuda discloses that the composition further comprises a water-soluble polymer comprising a polymer containing the cited polyvinyl alcohol structural unit [0016], [0023], [0026].
As to claim 11, Masuda discloses that the abrasive is selected from the group consisting of alumina, silica, ceria, zirconia and a combination thereof [0046].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 7-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,384,257 B2 in view Tsuchiya et al (US 2019/0015947 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are obvious over the ’257 patent in view of Tsuchiya. The ’257 patent discloses to include a polishing agent (claim 1), a polyoxyalkylene alkyl ether (claim 1), a cellulose derivative (claim 4), polyvinyl alcohol (claim 4) and alkylene polyalkyleneoxide amine polymer (claim 3).
The ’257 patent fails to explicitly disclose that the polishing agent includes abrasives and water, and that the cellulose derivative is the cited hydroxyethyl cellulose, and ammonia content.
Tsuchiya ’947 teaches several ranges for the particle size of the abrasives, but including the ranges of 40 nm or less and 10 nm or more [0026]. These ranges are the same as cited in claim 1. Tsuchiya ’947 teaches that particle sizes within these ranges can be optimized to improve the polishing removal rate [0026].
Tsuchiya ’947 teaches several ranges of a cellulose derivative of hydroxyethyl cellulose content including 0.005% by mass or more and 1.0% by mass or less [0037], which has large overlap with the cited range. Tsuchiya ’947 teaches to optimize within these ranges to improve dispersion stability of the polishing composition [0037].
Tsuchiya ’947 teaches that the basic compound may comprise ammonia as a most preferable basic compound [0046]. Tsuchiya ’947 teaches several content ranges including 1.0 mass% or less [0047] and 0.005% by mass or more [0047]. Tsuchiya ’947 teaches that the basic compound can be optimized within the cited ranges to suppress excessive polishing and improve smoothness of a polished surface [0047].
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the cited abrasive, molecular weight and amount of hydroxyethyl cellulose, and ammonia content in the composition of Masuda because Tsuchiya ’947 teaches that the molecular weight and content in the cited range is useful to include in polishing compositions and can be optimized for best results of stability of the polishing composition, polishing defects, dispersion stability, polishing rate, suppressing excessive polishing and improving smoothness of the polished surface. MPEP 2144.05, II. A.
Response to Amendment
Claims 1 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over by Masuda et al (WO 2016/035346 A1) in view of Tsuchiya et al (US 10,344,185 B2) and Tsuchiya et al (US 2019/0015947 A1).
Claims 1 and 7-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,384,257 B2 in view Tsuchiya et al (US 2019/0015947 A1).
Reliance upon White et al (US 2012/0058642 A1) and JP 2014-151424 are withdrawn because newly cited Tsuchiya et al (US 2019/0015947 A1) also teach the elements taught by White and JP ’424.
Response to Arguments
Applicant's arguments filed January 22, 2026, have been fully considered but they are not persuasive.
Applicant argues that Masuda provides no direction for useful molecular weight range or the amount of cellulose derivatives. This is acknowledged. Tsuchiya’s teachings are applied to teach the obviousness of these ranges. In addition, the courts have held that
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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.)
MPEP 2144.05 I.A.
Tsuchiya ’947 teaches several ranges of the hydroxyethyl cellulose molecular weight including 200,000 or less, or 100,000 or less [0034]. These ranges have large overlap with the cited range of 120,000 or less. Tsuchiya ’947 teaches to optimize the molecular weight within these ranges in order to improve the stability of the polishing composition and to decrease polishing defects [0034].
Tsuchiya ’947 teaches several ranges of hydroxyethyl cellulose content including 0.005% by mass or more and 1.0% by mass or less [0037], which has large overlap with the cited range of 0.01 to 1.0% by mass. Tsuchiya ’947 teaches to optimize within these ranges to improve dispersion stability of the optimized results of dispersion stability.
Accordingly, guidance to choose the molecular weight and content within the ranges of Masuda can be found in Tsuchiya ’947.
Applicants argues that the combination of molecular weight of 120,000, its content, plus the specific surfactants are important to achieve filtration and polishing performance. However, as described above in the rejection, these elements are taught by Masuda and the secondary references to Tsuchiya. The instant specification, at Figures 1-3 and the examples, contrast a higher molecular weight with a lower molecular weight (Tables 1-3, [0076]-[0079]). However, Tsuchiya ’947 teaches that it is preferable to use a lower molecular weight (“more preferably 200,000 or less, particularly preferably 100,000 or less”) – not to use a higher molecular weight. Tsuchiya ’947 guides the person having ordinary skill in the art to choose the lower molecular weight to improve the stability of the polishing composition and decrease polishing defects. Accordingly, a person having ordinary skill in the art would arrive at the claimed invention by reviewing the teachings of Masuda, Tsuchiya ’185 and Tsuchiya ’947. Applicant has not showed any unexpected results with the claimed combination of claim elements.
As to the ammonia content, applicant argues that Tsuchiya ’185 teaches 0.010% in the examples. However, Tsuchiya ’185 in the explanation of the invention fails to provide guidance on a range of ammonia content, even though ammonia is a particularly preferred basic compound (col.11, lines 39-40). Tsuchiya ’947 is a similar composition to Tsuchiya ’185 and makes up for the lack of description of the ammonia content. Tsuchiya ’947 renders the ammonia content obvious as explained above in the rejection.
As to the double patenting rejection, Tsuchiya ’947 is now relied upon to teach the obviousness of the abrasive size. Arguments about JP ’424 are moot and not applicable to the rejection above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
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/ANITA K ALANKO/Primary Examiner, Art Unit 1713
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