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 November 24, 2025. 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 Claim 10 withdrawn from consideration.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 § 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 and 3-9 rejected under 35 U.S.C. 103 as obvious over Sook et al. (KR20200082386), hereinafter “Sook”, in view of Nakamura et al. (U.S. PGPub. No. 20160177155), hereinafter “Nakamura”:--Claims 1, 3, 4, 5, 6, 7: Sook teaches a polishing composition for a metal film, comprisingiron particle-substituted silica abrasive particles having a zeta potential of -1 to -100 mV and having an average particle size of 10 to 100 nm and present at a concentration 0.0001-20 wt.%. (Page 3, Lines 11-45);a polymer, such as carboxymethyl cellulose, at a concentration 0.01-5 wt.% (Page 4, Lines 39-47); a quaternary ammonium compound, such as tetramethylammonium hydroxide, at a concentration 0.001-1 wt.% (Page 4, Lines 28-37);a pH adjusting agent to adjust the pH of the polishing composition to 1-12 (Page 3, Lines 41-45); Sook fails to teach that the polishing composition may comprise hydroxyethylcellulose. Nakamura, also directed to a polishing composition for a metal film ([0030, 0056]) comprising silica abrasives having a content of iron ([0018]) having size about 100 nm ([0051]) at a concentration of 1-60 wt.% ([0055]), tetramethylammonium hydroxide ([0059]), and a pH of 8-11, teaches that the polishing composition may further comprise a surfactant such as hydroxyethylcellulose or carboxymethylcellulose ([0064]). 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 hydroxyethylcellulose as an equivalent substitution for the carboxymethylcellulose in the invention of Sook because Nakamura teaches that this would be effective. It is noted that the tetramethylammonium hydroxide is a basic compound.--Claims 8, 9: 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. 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). It is further noted that Sook discloses that the metal film may include “Indium (In), tin (Sn), silicon (Si), titanium (Ti),vanadium (V), gadolium (Ga), manganese (Mn), iron (Fe), cobalt (Co), copper (Cu) , Zinc (Zn),Zirconium (Zr), Hafnium (Hf), Aluminum (Al), Niobium (Nb), Nickel (Ni), Chromium (Cr), Molybdenum(Mo), Tantalum (Ta), Ruthenium ( Ru) and tungsten (W)”
Claim 2 rejected under 35 U.S.C. 103 as being obvious over Sook in view of Nakamura as applied to claim 1 above, and further in view of Tsuchiya et al. (U.S. PGPub. No. 20020095872), hereinafter “Tsuchiya”.--Claim 2: Sook modified by Nakamura teaches a polishing composition for a metal film comprising hydroxyethylcellulose as shown above. Sook modified by Nakamura is silent about a molecular weight of the hydroxyethylcellulose.Tsuchiya, also directed to a polishing composition for a metal film, teaches that the polishing composition comprises a polymer, such as hydroxyethylcellulose or carboxymethylcellulose, having a molecular weight preferably 100,000-2,000,000. 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 in the invention of Sook modified by Nakamura because Sook and modified by Nakamura are silent about a molecular weight of the hydroxyethylcellulose and Tsuchiya teaches that such molecular weight would be effective. It is noted that this overlap the claimed range of molecular weight recited in claim 2.
Response to Arguments
Applicant's arguments filed November 24, 2025 have been fully considered as follows:--Regarding Applicant’s argument that the previously cited prior arts fail to teach the amended feature, this arguments is persuasive. New grounds of rejection based on newly found prior arts are shown 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 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