DETAILED ACTION
This is the Office action based on the 17951288 application filed September 23, 2022, and in response to applicant’s argument/remark filed on March 2, 2026. Claims 1-14 and 16-22 are currently pending and have been considered below. Applicant’s cancellation of claim 15 acknowledged. Claims 21 and 22 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
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. Note that the claims are directed towards a chemical composition and as such will be examined under such conditions. The process of using the composition or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details). Furthermore, the process of making the composition is viewed as directed to a product-by-process claim and is given little patentable weight. “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Please see MPEP 2113 for further details. It has been held that claim language that simply specifies an intended use or field of use for the invention generally will not limit the scope of a claim (See MPEP 2106; Walter, 618 F.2d at 769, 205 USPQ at 409).
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 1-14, 16 and 19-20 rejected under 35 U.S.C. 103 as being obvious over Rader et al. (U.S. PGPub. No. 20210332264), hereinafter “Rader”, in view of Izawa et al. (U.S. PGPub. No. 20190080927), hereinafter “Izawa”.--Claims 1, 2, 3, 4, 5, 6, 7, 8, 12, 16: Rader teaches a polishing composition, comprisingsilica abrasive particles, having size 50-200 nm, at a concentration 1-30 wt.% ([0064-0067]);a first viscosity modifying agent, such as a cellulose derivatives ([0010, 0015]), such as hydroxyethyl cellulose or carboxymethyl cellulose or microcrystalline cellulose ([0040]), at a concentration about 0.5 wt. % to about 5 wt. %, and may have a molecular weight 2500 kDa ([0038-0043]); a second viscosity modifying agent, such as an anionic polymer, such as polyacrylic acid, at a concentration about 0.05 wt. % to about 1 wt. % ([0102]), and may have a molecular weight 2500 kDa ([0044-0046]);water ([0010]); andwherein the polishing composition has a pH of 2-10 ([0060]) and a viscosity of about 10-300 cP ([0053]). It is noted that the molecular weight of the anionic polymer, the viscosity of the composition, the viscosity, the wt.% of silica abrasive, and the pH overlap the claimed ranges recited in claims 1, 2, 3, 4, 5, 6, 7, 8, 12, 19 and 20. Rader further teaches that “(t)he polishing compositions described herein are useful for polishing any suitable substrate” ([0112]), such as silicon carbide, silicon oxide or silicon ([0112-0114); “(t)he material and properties of the abrasive included in the polishing composition disclosed herein are not particularly limited and can be appropriately selected according to the purpose of use and application of the polishing composition “ ([0064]), “(t)he abrasive can have any suitable particle size” ([0065]), and “(t)he particle size of a particle is the diameter of the smallest sphere that encompasses the particle” ([0066]), but is silent about a shape or aspect ratio of the silica abrasive particles, and fails to teach the claimed feature “the silica abrasive has an average aspect ratio of about 1.1 to about 1.5” Izawa, also directed to a polishing composition comprising silica abrasive particles ([0021, 0024]) for polishing a silicon oxide or silicon layer ([0015-0017]), teaches that the shape of the silica abrasive particles is not particularly limited, and can be a spherical or non-spherical shape ([0025]). Izawa further teaches that the silica abrasive particles may have a size preferably 20-200 nm ([0030]), and an aspect ratio preferably 1.0-1.5 ([0033]). 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 silica abrasive particles having an aspect ratio 1 to 1.5 in the polishing composition of Rader modified by Izawa because Rader is silent about an aspect ratio of the silica abrasive particles, and Izawa teaches that silica abrasive particles having such aspect ratio would be effective for polishing the silicon oxide or silicon layer in the invention of Rader. It is noted that the aspect ratio 1 to 1.5 overlaps the claimed range of aspect ratio in claims 1 and 16.--Claims 9, 10: It is noted that acrylic acid is an anionic monomer comprising a carboxylate group.--Claim 11: It is noted that carboxymethyl cellulose reads on the polymer recited in claim 11. --Claims 13, 14: Rader further teaches that the silica abrasive particles may have any suitable size, such as average particle size 50-500 nm ([0066]). Although Rader discloses that the size of the silica abrasive particles “can be measures by a particle size analyzer”, such as Horiba Particle Size Distribution tool ([0066]), since the claims are directed towards a chemical composition, the process of making the composition is viewed as directed to a product-by-process claim and is given little patentable weight. It is noted that 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, and the process of making the composition is viewed as directed to a product-by-process claim and is given little patentable weight. “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Please see MPEP 2113 for further details. Alternately, although Rader does not disclose an average TEM equivalent particle diameter, since Rader teaches to use silica abrasive particles having average particle size range that contains the claimed average TEM equivalent particle diameter range, 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 composition slurry comprising the silica abrasive particles having a size range that overlaps the claimed average TEM equivalent particle diameter range in the absence of an unexpected result.--Claim 19: It is noted that the molecular weight of the anionic polymer, the viscosity of the composition, the viscosity, the wt.% of silica abrasive, aspect ratio, and the pH as shown above overlap the claimed ranges recited in claim 19.--Claim 20: Rader further teaches that the first viscosity modifying agent may comprise a cellulose derivative or a polysaccharide ([0010])
Claims 17-18 rejected under 35 U.S.C. 103 as being obvious over Rader as applied to claim 1 above, and further in view of Yoneda et al. (U.S. PGPub. No. 20130183889), hereinafter “Yoneda”. --Claims 17, 18: Rader teaches the invention as above. Rader further teaches that “(t)he material and properties of the abrasive included in the polishing composition disclosed herein are not particularly limited and can be appropriately selected according to the purpose of use and application of the polishing composition” ([0064]). Rader is silent about a surface area of the silica abrasive particles. Yoneda, also directed to a polishing composition comprising silica abrasive particles, teaches that the silica abrasive particles may have a BET specific surface area of about 20 cm2/g (Table 1).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 silica abrasive particles having a BET specific surface area of about 20 cm2/g in the polishing composition of Rader because Rader is silent about a surface area of the silica abrasive particles and Yoneda teaches that such specific surface area would be effective.
Response to Arguments
Applicant's arguments filed March 2, 2026 have been fully considered as follows:--Regarding Applicant’s argument that the cited prior arts do not teach the claimed aspect ratios recited in claims 1 and 19 because Rader does not teach CMP composition for a dielectric material, this argument is not commensurate with the scope of the claim, since the claim does not recite polishing any dielectric material. Nevertheless, Rader clearly teaches “(t)he polishing compositions described herein are useful for polishing any suitable substrate” ([0112]), such as silicon carbide, silicon oxide or silicon ([0112-0114]), and is used for CMP ([0025]).--Regarding Applicant’s argument that the Izawa does not teach or suggest any importance to the aspect ratio of the silica particle, and the Office action provides no suggestion from the prior art of the desirability of the modification, it is noted that aspect ratio is an inherent property of the silica abrasive particles used in the invention of Rader. Although Rader is silent about an aspect ratio value of the silica abrasive particles, Rader teaches that “(t)he polishing compositions described herein are useful for polishing any suitable substrate” ([0112]), such as silicon carbide, silicon oxide or silicon ([0112-0114); “(t)he material and properties of the abrasive included in the polishing composition disclosed herein are not particularly limited and can be appropriately selected according to the purpose of use and application of the polishing composition “ ([0064]), “(t)he abrasive can have any suitable particle size” ([0065]), and “(t)he particle size of a particle is the diameter of the smallest sphere that encompasses the particle” ([0066]), but is silent about a shape or aspect ratio of the silica abrasive particles, and fails to teach the claimed feature “the silica abrasive has an average aspect ratio of about 1.1 to about 1.5”. Izawa, also directed to a polishing composition comprising silica abrasive particles ([0021, 0024]) for polishing a silicon oxide or silicon layer ([0015-0017]), teaches that the shape of the silica abrasive particles is not particularly limited, and can be a spherical or non-spherical shape ([0025]). Izawa further teaches that the silica abrasive particles may have a size preferably 20-200 nm ([0030]), and an aspect ratio preferably 1.0-1.5 ([0033]). 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 silica abrasive particles having an aspect ratio 1 to 1.5 in the polishing composition of Rader modified by Izawa because Rader is silent about an aspect ratio of the silica abrasive particles, and Izawa teaches that silica abrasive particles having such aspect ratio would be effective for polishing the silicon oxide or silicon layer in the invention of Rader. --Regarding Applicant’s argument that the cited prior arts do not teach the claimed BET surface area in claims 1 and 19 because Rader does not disclose a BET surface area, and Yoneda attributes no benefits from this measurement, it is noted that BET surface area is an inherent property of the silica abrasive particles used in the invention of Rader. Although Rader is silent about a surface area of the silica abrasive particles that are used, Rader further teaches that “(t)he material and properties of the abrasive included in the polishing composition disclosed herein are not particularly limited and can be appropriately selected according to the purpose of use and application of the polishing composition” ([0064]). Yoneda, also directed to a polishing composition comprising silica abrasive particles, teaches that the silica abrasive particles may have a BET specific surface area of about 20 cm2/g (Table 1).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 silica abrasive particles having a BET specific surface area of about 20 cm2/g in the polishing composition of Rader because Rader is silent about a surface area of the silica abrasive particles and Yoneda teaches that such specific surface area would be effective. It is well established that an examiner’s belief is reasonable where starting materials and processing of the prior art are so similar to those disclosed by the applicant that it appears that the claimed function or property would naturally result when conducting the process as taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Best, at 1255. “Inherency may supply a missing claim limitation in an obviousness analysis’ where the limitation at issue is ‘the natural result of the combination of prior art elements'.'''’ Id. (quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014). It is further noted that 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. The process of using the composition or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details). Furthermore, the process of making the composition is viewed as directed to a product-by-process claim and is given little patentable weight. “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Please see MPEP 2113 for further details.
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
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