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 .
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.
Response to Amendments/Arguments
Amendments made to claims 1, and 21-22, the cancelation of claims 2-5, 7, 15 and 23, and the withdrawal of claims 19-20, as filed on March 2, 2026, are acknowledged.
Applicant's arguments, see Remarks filed on March 2, 2026, with respect to amended claims 1 and 21-22 have been fully considered but they are not persuasive.
The Applicant argues that cited prior art references do not teach or suggest that “the CMP polishing liquid is configured to provide a difference between a first polishing rate at a load of 4 psi and a second polishing rate at a load of 3 psi of 6500 A/min or more” as recited in the amened claims. However, the cited prior art discloses a composition that is the same as the composition recited in the instant claim. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01. Additionally, it is noted that claim 1 is drawn to a composition claim and a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
The Applicant argues that “Brosnan teaches a polishing liquid for silicon oxide (SiO2) or silicon nitride (SiN), while Masato only teaches a polishing liquid for a carbon-containing silicon oxide (SiOC). These materials are fundamentally different, both in chemical composition and structure. A person skilled in the art would not use the same composition of a polishing liquid for SiO2 and SiOC”, and “Brosnan's teaching of a pH of about 3.0 to about 5.0 is inconsistent with Masato's teaching of a pH of 6.0, one of ordinary skill in the art would not combine these references”. However, Masato is not replied on using the composition of Masato to replace the composition of Brosnan. Instead, Masato is replied on to teach that a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin is a known equivalent of the cationic copolymer in the polishing liquid disclosed by Brosnan:
Brosnan: examples of cationic co-polymers in the polishing liquid include: poly(diallyldimethylammonium chloride) and poly(dimethylamine-co-epichlorohydrin) (paragraph 0016);
Masato: examples of cationic polymers used in a polishing liquid include: diallyldimethylammonium salt polymer and a cationic polymer containing a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin (condensates of dimethylamine, ammonia, and epichlorohydrin, paragraph 0054).
The Applicant further argues that “given Brosnan's disclosure that "[t]he polishing composition can have any suitable pH," one of ordinary skill in the art would use the pH of Masato, which is required to be 6.0 or more”; however, as discussed above, Masato is only relied on to teach a known equivalent of a cationic copolymer in the polishing composition of Brosnan. Brosnan discloses a pH of the polishing liquid being within the range as recited in the independent claims.
Claim Rejections - 35 USC § 103
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 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.
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, 6, 8-9, 16-18 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Brosnan et al. (US20190284434) in view of Masato et al. (JP2017139350, a machine-translated English version is used).
Regarding claim 1, Brosnan discloses a CMP polishing liquid (paragraph 0008) comprising: abrasive grains (paragraph 0008); and a cationic polymer (paragraph 0008), wherein the abrasive grains contain a cerium-based compound (ceria, paragraph 0009), the cationic polymer has a main chain containing a nitrogen atom and a carbon atom and a hydroxyl group bonded to the carbon atom, the cationic polymer contains a reaction product of a raw material containing at least dimethylamine and epichlorohydrin [poly(dimethylamine-co-epichlorohydrin), paragraph 0016], a weight average molecular weight of the cationic polymer is 10000 to 525000 (paragraph 0018), and a pH is less than 6.0 (about 3.5, paragraph 0040). Brosnan is silent about the cationic polymer contains a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin; however, Brosnan discloses that the polishing liquid comprises one or more cationic polymers, including cationic co-polymers such as poly(diallyldimethylammonium chloride) and poly(dimethylamine-co-epichlorohydrin) (paragraph 0016). In addition, Masato teaches that examples of cationic polymers used in a polishing liquid include diallyldimethylammonium salt polymer and a cationic polymer containing a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin (condensates of dimethylamine, ammonia, and epichlorohydrin, paragraph 0054). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known cationic polymer for a polishing composition, such as a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin, as taught by Masato in the composition of Brosnan, with a reasonable expectation of success. It has been held that substituting equivalents known for the same purpose is obvious. See MPEP 2144.06 II. Brosnan in view of Masato is silent about the CMP polishing liquid is configured to provide a difference between a first polishing rate at a load of 4 psi and a second polishing rate at a load of 3 psi of 6500 Amin or more. However, Brosnan in view of Masato discloses a composition that is the same as the composition recited in the instant claim. When the claimed and prior art products are identical or substantially identical in structure or composition, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01. Additionally, it is noted that claim 1 is drawn to a composition claim and a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claim 6, Brosnan discloses wherein the content of the cationic polymer is 0.005 parts by mass or more and less than 0.025 parts by mass with respect to 100 parts by mass of the CMP polishing liquid (5ppm to 250ppm, paragraph 0019).
Regarding claim 8, Brosnan discloses wherein the cerium-based compound is cerium oxide (ceria, paragraph 0009).
Regarding claim 9, Brosnan discloses wherein a content of the abrasive grains is 0.01 to 7 parts by mass with respect to 100 parts by mass of the CMP polishing liquid (paragraph 0015).
Regarding claim 16, Brosnan discloses wherein a pH is about 3.5 (paragraph 0040).
Regarding claim 17, Brosnan discloses wherein the CMP polishing liquid is used for polishing an insulating material (a dielectric material, paragraph 0052).
Regarding claim 18, Brosnan discloses wherein the insulating material contains silicon oxide (paragraph 0052).
Regarding claim 22, Brosnan discloses a CMP polishing liquid (paragraph 0008) comprising: abrasive grains (paragraph 0008); and a cationic polymer (paragraph 0008), wherein the abrasive grains contain a cerium-based compound (ceria, paragraph 0009), the cationic polymer has a main chain containing a nitrogen atom and a carbon atom and a hydroxyl group bonded to the carbon atom, the cationic polymer contains a reaction product of a raw material containing at least dimethylamine and epichlorohydrin [poly(dimethylamine-co-epichlorohydrin), paragraph 0016], and a pH is about 3.5 (paragraph 0040). Brosnan is silent about the cationic polymer contains a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin; however, Brosnan discloses that the polishing liquid comprises one or more cationic polymers, including cationic co-polymers such as poly(diallyldimethylammonium chloride) and poly(dimethylamine-co-epichlorohydrin) (paragraph 0016). In addition, Masato teaches that examples of cationic polymers used in a polishing liquid include diallyldimethylammonium salt polymer and a cationic polymer containing a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin (condensates of dimethylamine, ammonia, and epichlorohydrin, paragraph 0054). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known cationic polymer for a polishing composition, such as a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin, as taught by Masato in the composition of Brosnan, with a reasonable expectation of success. It has been held that substituting equivalents known for the same purpose is obvious. See MPEP 2144.06 II.
Brosnan in view of Masato is silent about the CMP polishing liquid is configured to provide a difference between a first polishing rate at a load of 4 psi and a second polishing rate at a load of 3 psi of 6500 Amin or more. However, Brosnan in view of Masato discloses a composition that is the same as the composition recited in the instant claim. When the claimed and prior art products are identical or substantially identical in structure or composition, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01. Additionally, it is noted that claim 1 is drawn to a composition claim and a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Claims 1 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Choo et al. (CN108010878, a machine-translated English version is used) in view of Masato et al. (JP2017139350, a machine-translated English version is used) and Brosnan et al. (US20190284434).
Regarding claim 1, Choo discloses a CMP polishing liquid (paragraph 0075) comprising: abrasive grains (paragraph 0075); and a cationic polymer (paragraph 0084), wherein the abrasive grains contain a cerium-based compound (ceria, paragraph 0078), the cationic polymer has a main chain containing a nitrogen atom and a carbon atom and a hydroxyl group bonded to the carbon atom, the cationic polymer contains a reaction product of a raw material containing at least dimethylamine and epichlorohydrin [polydimethylamine-co-epichlorohydrin, paragraph 0086], and a pH between 4 to 8 (paragraph 0025). The pH range disclosed by Choo overlaps with the range recited in the instant claim. 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). MPEP 2144.05(I).
Choo is silent about wherein the cationic polymer contains a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin and a weight average molecular weight of the cationic polymer is 10000 to 1000000; however, Choo discloses that the polishing liquid comprises a cationic polymer such as distearyldimethyl ammonium chloride and polydimethylamine-co-epichlorohydrin (paragraph 0086). Masato teaches that examples of cationic polymers used in a polishing liquid include a cationic polymer containing a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin (condensates of dimethylamine, ammonia, and epichlorohydrin, paragraph 0054). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known cationic polymer for a polishing composition, such as a reaction product of a raw material containing at least dimethylamine, ammonia, and epichlorohydrin, as taught by Masato in the composition of Choo, with a reasonable expectation of success. It has been held that substituting equivalents known for the same purpose is obvious. See MPEP 2144.06 II. In addition, Brosnan teaches that a cationic polymer in a polishing composition can have any suitable molecular weight, such as in the range from 10000 to 525000 (paragraph 0018). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a cationic polymer in a known molecular range as taught by Brosnan in the composition of Choo in view of Mosato, with a reasonable expectation of success. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable range by routine experimentation and there is no evidence of the criticality of the claimed range. See MPEP 2144.05II.
Choo in view of Mosato and Brosnan is silent about the CMP polishing liquid is configured to provide a difference between a first polishing rate at a load of 4 psi and a second polishing rate at a load of 3 psi of 6500 Amin or more. However, Choo in view of Mosato and Brosnan discloses a composition that is the same as the composition recited in the instant claim. When the claimed and prior art products are identical or substantially identical in structure or composition, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01. Additionally, it is noted that claim 1 is drawn to a composition claim and a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claim 10, Choo discloses at least one cyclic compound selected from the group consisting of an amino group-containing aromatic compound and a nitrogen-containing heterocyclic compound (picolinic acid, paragraph 0088).
Regarding claim 11, Choo discloses wherein the cyclic compound contains the amino group-containing aromatic compound, and the amino group-containing aromatic compound contains a compound having an amino group and at least one selected from the group consisting of a carboxy group and a carboxylate group, as a functional group bonded to an aromatic ring (picolinic acid, paragraph 0088).
Regarding claim 12, Choo discloses wherein the cyclic compound contains the nitrogen-containing heterocyclic compound, and the nitrogen-containing heterocyclic compound contains a compound having a pyridine ring (picolinic acid, paragraph 0088).
Regarding claim 13, Choo discloses wherein the nitrogen-containing heterocyclic compound contains pyridinecarboxylic acid (picolinic acid, paragraph 0088).
Regarding claim 14, Choo discloses wherein a content of the cyclic compound is 0.003 parts by mass or more and less than 0.06 parts by mass with respect to 100 parts by mass of the CMP polishing liquid (paragraphs 0084 and 0091).
Claim 21 is rejected under 35 U.S.C. 103 as being obvious over Brosnan et al. (US20190284434).
Regarding claim 21, Brosnan discloses a CMP polishing liquid (paragraph 0008) comprising: abrasive grains (paragraph 0008); a cationic polymer (paragraph 0008), and a nitrogen-containing heterocyclic compound (imidazole, paragraph 0035), wherein the cationic polymer has a main chain containing a nitrogen atom and a carbon atom and a hydroxyl group bonded to the carbon atom [poly(dimethylamine-co-epichlorohydrin), paragraph 0016], a content of the cationic polymer is 0.0005 parts by mass or more and less than 0.025 parts by mass with respect to 100 parts by mass of the CMP polishing liquid (paragraph 0066), a weight average molecular weight of the cationic polymer is 10000 to 525000 (paragraph 0018), and a pH is less than 4.0 (about 3.5, paragraph 0040). The concentration range of the cationic polymer disclosed by Brosnan overlaps with the range recited in the instant claim. 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). MPEP 2144.05(I).
Brosnan is silent about the CMP polishing liquid is configured to provide a difference between a first polishing rate at a load of 4 psi and a second polishing rate at a load of 3 psi of 6500 Amin or more. However, Brosnan in view of Masato discloses a composition that is the same as the composition recited in the instant claim. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01. Additionally, it is noted that claim 1 is drawn to a composition claim and a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Conclusion
THIS ACTION IS MADE FINAL. 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (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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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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