DETAILED ACTION
This is the Office action based on the 17910895 application filed September 12, 2022, and in response to applicant’s argument/remark filed on June 8, 2026. Claims 1-10 are currently pending and have been considered below. Claim 10 withdrawn from consideration.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 filed August 14, 2024. Note that the claims are directed towards a chemical composition and as such will be examined under such conditions.
Claim 8, which recites “The polishing composition according to claim 1, in use for polishing a surface made of silicon”, and Claim 9, which recites “The polishing composition according to claim 1, in use for final polishing of a silicon wafer”, recite a process of using the composition or the material that the composition acts upon, thus will be viewed as recitation of intended use and given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details).
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 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lee et al. (KR20040057045A, also published as KR100497412, see attached English translation), hereinafter “Lee”:--Claims 1, 2, 3, 4, 5, 6, 7: Lee teaches a polishing composition, comprisingsilica particles ([20]) having size 30-50 nm, present at a concentration 0.25 - 20 wt.% ([40]);an organic base ([22]), such as TMAH, present at a concentration 0.05 - 1 wt.% ([42]);a thickener ([23]), such as hydroxypropyl cellulose having molecular weight 100,000- 1,500,000, present at a concentration 0.02 - 2 wt.% ([43]);pH adjusting agent ([21]) to adjust the pH of the composition to 10.5 – 12 ([41]);pure water ([38]). Lee further discloses that the composition may have zeta potentials of -7.2 mV, -16.5 mV, -11.3 mV, -9.4 mV, -15.4 mV, -7.0 mV (Table 1 and Table 2). It is noted that the ranges of silica particle, organic base, thickener, pH and zeta potentials above overlap the claimed ranges recited in claim 1. Alternately, although Lee does not disclose the exact combination of components 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 use a polishing slurry comprising the above components from the list of possible components taught by Lee in the absence of an unexpected result.--Claims 8, 9: Lee further teaches that the polishing composition may be used to polish a silicon wafer ([1]). Although Lee is silent about using the polishing composition for a final polishing, 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 use the polishing composition for a final polishing.
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.
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.
Claims 1-5 and 8-9 rejected under 35 U.S.C. 103 as obvious over Ryuzaki et al. (U.S. PGPub. No. 20120129346), hereinafter “Ryuzaki”, in view of Tsuchiya et al. (U.S. PGPub. No. 20020095872), hereinafter “Tsuchiya”:--Claims 1, 2, 5: Ryuzaki teaches a polishing composition, comprisingabrasives having size 10-250 nm ([0051]), present at a concentration 0.1 - 5 wt.% ([0057]), wherein the abrasives have a zeta potentials about -30 mV to about 20 mV ([0027, 0055]);an alkaline component ([0071]), such as TMAH ([0073]);a water-soluble polymers to adjust the polishing properties such as the polishing rate, flatness and polishing selective ratio, and can increase the storage stability of the polishing agent ([0071]), such as carboxymethylcellulose ([0079]);DI water ([0081]). Ryuzaki further teaches that pH of the composition to 5.5-11 ([0028, 0082]). Ryuzaki fails to teach that the water-soluble polymers may include the cellulose compounds recited in claim 1. Tsuchiya, also directed to a polishing composition for a metal film, teaches that the polishing composition comprises a water-soluble polymer, such as hydroxyethylcellulose or carboxymethylcellulose, having a molecular weight preferably 100,000-2,000,000 ([0041, 0043]). Therefore, 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 use the hydroxyethylcellulose having molecular weight 100,000-2,000,000 as an equivalent substitution for the carboxymethylcellulose in the invention of Ryuzaki because Ryuzaki teaches that the water-soluble polymer may be carboxymethylcellulose and Tsuchiya teaches that either hydroxyethylcellulose or carboxymethylcellulose would be effective. It is noted that this overlap the claimed range of molecular weight recited in claim 2.--Claim 3: Tsuchiya further teaches that the water-soluble polymer is used as a thickener ([0037, 00557]), and may be added to a concentration of 0.01 wt.% (Table 3). Therefore, 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 add the hydroxyethylcellulose to a concentration of 0.01 wt.% in the invention of Ryuzaki. It is noted that according to MPEP 2144.05, “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)”.--Claim 4: Ryuzaki further teaches that the alkaline component adjust the polishing properties such as the polishing rate, flatness and polishing selective ratio, and can increase the storage stability of the polishing agent ([0071]). Although Ryuzaki is silent about a concentration for the alkaline component, since the alkaline component adjust the pH of the composition and Ryuzaki teaches that pH of the composition to 5.5-11 ([0028, 0082]), 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 use an optimum amount of the alkaline component, such as to a concentration of 0.001-0.1 wt.% in the invention of Ryuzaki. It is noted that according to MPEP 2144.05, “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)”.--Claims 8, 9: Ryuzaki further teaches that the polishing composition may be used to polish a silicon layer ([0094]). Although Ryuzaki is silent about using the polishing composition for a final polishing, 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 use the polishing composition for a final polishing.
Claims 1-9 rejected under 35 U.S.C. 103 as obvious over Shoji et al. (JP2019203098, see attached English translation), hereinafter “Shoji”, in view of Bakshi et al. (U.S. PGPub. No. 20090098807), hereinafter “Bakshi”:--Claims 1, 3, 5, 6, 7: Shoji teaches a polishing composition for polishing a silicon wafer (Label 11), comprisingsilica or silicon carbide particles having size 3-30 um, present at a concentration 0.1 - 1 wt.% (Labels 2, 3, 4);a thickener, such as cellulose fibers having size 1-10,000 nm, present at a concentration 0.01 - 1 wt.% (Label 1, 5, 6, 7, 10, 12);pH adjusting agent to adjust the pH of the composition to 5.8 or higher, preferably 5.8-9.0 (Label 8, 9), such as an alkali metal base (Label 20);an additive, such as polyethyleneimine (Label 13);water (Label 14). It is noted that polyethyleneimine is a base. Shoji is silent about a specific chemical formula for the cellulose fiber. Bakshi, also discloses a polishing composition comprising abrasives, such as silicon carbide abrasive that may be coated with silica or behave similar to silica abrasive ([0024-0034]), a thickener comprising cellulose ([0037]), and a pH adjusting agent, such as KOH, to adjust the pH of the composition to 8 – 12 ([0046]), teaches that the thickener comprising cellulose may comprise hydroxypropyl cellulose ([0037]). Therefore, 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 use hydroxypropyl cellulose as the cellulose fiber in the invention of Shoji because Shoji is silent about a specific chemical formula for the cellulose fiber, and Bakshi teaches that hydroxypropyl cellulose would be effective as the thickening agent. Shoji further discloses that the zeta potentials depends on the pH of the composition (Label 15, 16, 17, 18), and the composition may have a zeta potential value -1.53 mV and -10.6 mV (Table 1, paragraph [0041] in the JP2019203098_original file). Therefore, 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 obtain a polishing composition that have a zeta potential of a silica particle, a silicon carbide particle or a cellulose fiber in a range -24 mV to 0 mV in the invention of Shoji modified by Bakshi.--Claim 2: Since a hydroxypropyl cellulose monomer has a length of about 0.5 nm, and has a mass of 380 g/mole, a hydroxypropyl cellulose fiber having a length of 3 um corresponds to an approximate molecular weight of 2,600,000 g/mol. Therefore, since the cellulose fibers having size 1-10,000 nm, 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 use a hydroxypropyl cellulose fiber having a molecular weight of greater than 800,000 g/mol.--Claim 4: Since Shoji teaches that the alkali metal base is used to adjust the pH of the composition, it is a result-effective variable. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to use an optimum amount of the alkali metal base, such as 0.001-0.1 wt.%, because it’s been well established that "[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). --Claims 8, 9: It is noted that the polishing composition is capable of polishing a silicon surface. Although Shoji is silent about using the polishing composition for a final polishing, 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 use the polishing composition for a final polishing.
Response to Arguments
Applicant's arguments filed June 8, 2026 have been fully considered as follows:--Regarding Applicant’s argument that Sook does not constitute prior art under 35 U.S.C. § 102(a)(1), 35 U.S.C. § 102(a)(2) or 35 U.S.C. § 103, this arguments is persuasive. Examiner notes that Sook is not a WIPO document. New grounds of rejection based on newly found prior arts are shown above. This Office action is made Non-Final.
Conclusion
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
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