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 .
Status of the Claims
This is a final office action in response to the applicant’s arguments and remarks filed on 12/15/2025. Claims 1 and 3-10 are pending in the current office action. Claims 1 and 10 has been amended by the applicant.
Status of the Rejection
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
New grounds of rejection under 35 U.S.C. § 103 are necessitated by the amendments.
Claim Rejections - 35 USC § 103
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 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Asada et al. (WO 2017169154 A1, machine translation) in view of Sawai et al. (JP-2019172558-A, machine translation)
Regarding Claims 1, Asada teaches a polishing composition for silicon wafers (Paragraph [0001]), the polishing composition comprising silica particles (Paragraphs [0033-0035], abrasive grains are included that can be silica particles), a cellulose derivative (Paragraphs [0053-56] a water-soluble polymer is included that can be a cellulose derivative), a basic compound (Paragraph [0043]), and water (Paragraph [0068]).
Asada fails to explicitly teach in a single embodiment a composition where the silica particles have an average primary particle diameter of 30 nm or less, an average secondary particle diameter of 60 nm or less, the polishing composition contains the cellulose derivative in an amount of 5.29 parts by weight or more per 100 parts weight of the silica particles.
However, Asada teaches that silica particles of the composition have an average primary particle diameter that is 5-100nm (Paragraph [0040] provides range and Paragraph [0094] and Table 1 has examples with an average primary particle diameter of 12nm and 25nm). Asada further teaches that the average secondary particle diameter of the silica particles is 10-100nm (Paragraph [0040] provide ranges). Asada teaches that the composition contains 0.51-40 parts by weight cellulose derivative per 100 parts by weight of silica (Paragraph [0065] content of the polishing composition has a mass ratio of abrasive grains : water-soluble polymer within the range of 50-99 : 0.5-20 which is equivalent to a cellulose derivative content of 0.51-40 parts by weight per 100 parts by weight of silica particles).
It would have been obvious to one of ordinary skill in the art to have selected and utilized in a polishing composition silica particles with an average primary particle diameter within the disclosed range of 5nm to 100nm, including an average primary particle diameter that overlaps with the claimed range of 30 nm or less, and an average secondary particle diameter within the disclosed range of 10nm—100nm, including average secondary particle diameters that overlap with the claimed range of 60 nm or less. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
It would have been obvious to further include in the polishing composition the cellulose derivative in an amount within the disclosed range of 0.51-40 parts by weight per 100 parts by weight of silica particles, including an amount of cellulose derivative that overlaps with claimed range of 5.29 parts by weight or more per 100 parts by weight of silica particles. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Asada fails to teach that the cellulose derivative has a weight average molecular weight of more than 2,000,000 and less than 3,000,000.
Sawai teaches a polishing liquid that includes silica and a water-soluble polymer (Paragraph [0075]). Teaches that the water-soluble polymer can be a cellulose derivative (Paragraph [0076]). Sawai teaches that the mass average molecular weight of the water-soluble polymer can be 1000 to 3,000,000 (300X10^4) (Paragraph [0077]). Sawai teaches that when the water-soluble polymer has a mass average molecular weight in the range of 1000 to 3,000,000 the hydrophilicity of the polishing liquid is improved and there is an excellent polishing rate for silicon wafers (Paragraph [0077]).
It would have been obvious to one of ordinary skill in the art to have modified the composition of Asada by using the cellulose derivative with the weight average molecular weight taught by Sawai as the cellulose derivative. It would have been obvious to one of ordinary skill in the art to have selected and incorporated weight average molecular weight for the cellulose derivative at a level within the disclosed range of 1000-3,000,000, including at amounts that overlap with the claimed range of more than 2,000,000 and less than 3,000,000. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
One of ordinary skill in the art would have been motivated to make this modification because Sawai teaches that the use of a water-soluble polymer with this weight average molecular weight would improve the hydrophilicity of the polishing liquid and provide an excellent polishing rate for silicon wafers (Paragraph [0077]). Additionally, this modification would have been the simple substitution of one cellulose derivative for another in a polishing composition. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP §2143(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.07.
Regarding Claim 3, modified Asada teaches all the limitations of claim 1 as outlined above.
Asada fails to explicitly teach that the content of the cellulose derivative is 5.29 to 20 parts by weight per 100 parts by weight of silica particles.
However, Asada teaches that the composition contains 0.51-40 parts by weight cellulose derivative per 100 parts by weight of silica (Paragraph [0065] content of the polishing composition has a mass ratio of abrasive grains : water-soluble polymer within the range of 50-99 : 0.5-20 which is equivalent to a cellulose derivative content of 0.51-40 parts by weight per 100 parts by weight of silica particles).
It would have been obvious to further include in the polishing composition the cellulose derivative in an amount within the disclosed range of 0.51-40 parts by weight per 100 parts by weight of silica particles, including an amount of cellulose derivative that overlaps with claimed range of 5.29-20 parts by weight per 100 parts by weight of silica particles. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claim 4, modified Asada teaches all the limitations of claim 1 as outlined above. Asada further teaches wherein the polishing composition has a pH of 8.0 or more and 12.0 or less (the pH of the polishing composition is preferably 9-11.5. The disclosed pH range falls fully within the claimed pH range of 8.0-12.0 (Paragraph [0067]).
Regarding Claim 5, modified Asada teaches all the limitations of claim 1 as outlined above. Asada further teaches wherein the content of the silica particles is 0.01% by weight or more and 10% by weight or less (the content of silica particles is preferably 0.01-3% by mass in the polishing composition (Paragraph [0042]). The disclosed range of content of silica particles falls fully within the claimed content of silica particles range of 0.01-10%.
Regarding Claim 6, modified Asada teaches all the limitations of claim 1 as outlined above. Asada further teaches that the polishing composition comprises a surfactant (Paragraph [0072]).
Regarding Claim 7, modified Asada teaches all the limitations of claim 1 as outlined above. Asada further teaches that the polishing composition contains, as the surfactant, a nonionic surfactant (Paragraph [0072]).
Regarding Claim 8, modified Asada teaches all the limitations of claim 1 as outlined above. Asada further teaches wherein the surfactant has a molecular weight of less than 4000 (the molecular weight of the surfactant is preferably 200-10,000 (Paragraph [0077])).
Asada fails to explicitly teach that the surfactant has a molecular weight of 4,000 or less.
It would have been obvious to one of ordinary skill in the art to have selected and incorporated a surfactant with a molecular weight within the disclosed range of 200-10,000, including a surfactant with a molecular weight that overlaps with the claimed range of 4,000 or less. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claim 9, modified Asada teaches all the limitations of claim 1 as outlined above. The limitation “in use for final polishing of a silicon wafer" is a functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, a polishing composition could be used in the polishing of any object and during any polishing step. Reciting that the claimed composition would be used for the “final polishing of a silicon wafer” does not result in any structural difference of the claimed composition. Assuming, arguendo, that the claim is afforded patentable weight, examiner notes that Asada teaches a final polishing composition and final polishing step (finish polishing composition and a method of using that composition in a finish polishing step (Paragraph [0005]).
Regarding Claim 10, Asada teaches a method for polishing a silicon wafer, the method comprising a stock polishing step and a final polishing step (Paragraph [0031] method of polishing a silicon wafer comprising a primary polishing step and a finish polishing step), wherein the final polishing step includes polishing a substrate to be polished using a polishing composition (the finish polishing composition is used to polish a substrate silicon wafer (Paragraphs [0005] and [0033]), wherein, the polishing composition silica particles (Paragraphs [0033-0035], abrasive grains are included that can be silica particles), a cellulose derivative (Paragraphs [0053-56] a water soluble polymer is included that can be a cellulose derivative), a basic compound (Paragraph [0043]), and water (Paragraph [0068]).
Asada fails to explicitly teach in a single embodiment a composition where the silica particles have an average primary particle diameter of 30 nm or less, an average secondary particle diameter of 60 nm or less, the polishing composition contains the cellulose derivative in an amount of 5.29 parts by weight or more per 100 parts weight of the silica particles.
However, Asada teaches that silica particles of the composition have an average primary particle diameter that is 5-100nm (Paragraph [0040] provides range and Paragraph [0094] and Table 1 has examples with an average primary particle diameter of 12nm and 25nm). Asada further teaches that the average secondary particle diameter of the silica particles is 10-100nm (Paragraph [0040] provide ranges). Asada teaches that the composition contains 0.51-40 parts by weight cellulose derivative per 100 parts by weight of silica (Paragraph [0065] content of the polishing composition has a mass ratio of abrasive grains : water-soluble polymer within the range of 50-99 : 0.5-20 which is equivalent to a cellulose derivative content of 0.51-40 parts by weight per 100 parts by weight of silica particles).
It would have been obvious to one of ordinary skill in the art to have selected and utilized in a polishing composition silica particles with an average primary particle diameter within the disclosed range of 5nm to 100nm, including an average primary particle diameter that overlaps with the claimed range of 30 nm or less, and an average secondary particle diameter within the disclosed range of 10nm—100nm, including average secondary particle diameters that overlap with the claimed range of 60 nm or less. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
It would have been obvious to further include in the polishing composition the cellulose derivative in an amount within the disclosed range of 0.51-40 parts by weight per 100 parts by weight of silica particles, including an amount of cellulose derivative that overlaps with claimed range of 5.29 parts by weight or more per 100 parts by weight of silica particles. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Asada fails to teach that the cellulose derivative has a weight average molecular weight of more than 2,000,000 and less than 3,000,000.
Sawai teaches a polishing liquid that includes silica and a water-soluble polymer (Paragraph [0075]). Teaches that the water-soluble polymer can be a cellulose derivative (Paragraph [0076]). Sawai teaches that the mass average molecular weight of the water-soluble polymer can be 1000 to 3,000,000 (300X10^4) (Paragraph [0077]). Sawai teaches that when the water-soluble polymer has a mass average molecular weight in the range of 1000 to 3,000,000 the hydrophilicity of the polishing liquid is improved and there is an excellent polishing rate for silicon wafers (Paragraph [0077]).
It would have been obvious to one of ordinary skill in the art to have modified the composition of Asada by using the cellulose derivative with the weight average molecular weight taught by Sawai as the cellulose derivative. It would have been obvious to one of ordinary skill in the art to have selected and incorporated weight average molecular weight for the cellulose derivative at a level within the disclosed range of 1000-3,000,000, including at amounts that overlap with the claimed range of more than 2,000,000 and less than 3,000,000. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
One of ordinary skill in the art would have been motivated to make this modification because Sawai teaches that the use of a water-soluble polymer with this weight average molecular weight would improve the hydrophilicity of the polishing liquid and provide an excellent polishing rate for silicon wafers (Paragraph [0077]). Additionally, this modification would have been the simple substitution of one cellulose derivative for another in a polishing composition. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP §2143(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.07.
Response to Arguments
Applicant’s arguments, see Remarks Pg. 1-3, filed 12/15/2025, with respect to the 35 U.S.C. § 103 rejection have been fully considered and are not persuasive.
Applicant’s arguments with respect to claims 1 and 10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/A.K.L./ Examiner, Art Unit 1713 /DUY VU N DEO/Primary Examiner, Art Unit 1713