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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/27/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 01/27/2026.
Claims 1-4 and 6-18 are presently pending; claim 5 is canceled; claims 17-18 are withdrawn; claims 1 and 14-15 are amended; claims 1-4 and 6-16 are under examination.
The objection to the abstract is withdrawn in light of the amendments to the abstract.
The 35 U.S.C. 103 rejections of claims 1-4, 6-9 and 12-16 over CAVANAUGH in view of MISHRA & claims 10-11 over CAVANAUGH in view of MISHRA and IZAWA are maintained.
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 1-4, 6-9 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Cavanaugh, et al. (U.S. Pub. No. 2016/0107289-A1) (hereinafter, “CAVANAUGH”) in view of Mishra (U.S. 2019/0359858-A1) (hereinafter, “MISHRA”).
Regarding claim 1, CAVANAUGH teaches a polishing composition (see CAVANAUGH at Abstract and paragraph [0019]), comprising:
an anionic silica abrasive (see CAVANAUGH at paragraphs [0019] and [0021]);
a pH adjuster (see CAVANAUGH at paragraph [0063], teaching ammonium hydroxide);
a nonionic surfactant (see CAVANAUGH at paragraphs [0059]-[0060], teaching ethylene oxide/propylene oxide block copolymer surfactant, which is a nonionic polyalkylene oxide block copolymer surfactant and is an example of a nonionic surfactant low-k removal rate inhibitor discussed in Applicant’s specification at pg. 7, lines 24-28);
a ruthenium removal rate enhancer comprising ammonium hydroxide or a salt thereof, a thiocyanate salt, nitric acid or a salt thereof, and/or a halide salt (see CAVANAUGH at paragraph [0063], teaching ammonium hydroxide, which is a ruthenium removal rate enhancer as discussed in Applicant’s specification at pg. 8, lines 21-22, and which can be used as both the pH adjuster and the ruthenium removal rate enhancer in the present invention, e.g., see present claims 3 and 8);
an azole-containing corrosion inhibitor (see CAVANAUGH at paragraphs [0008] and [0052]; CAVANAUGH teaches that the rate accelerator may also comprise imidazole, which is a corrosion inhibitor of the present invention; see present claim 14);
and water (see CAVANAUGH at paragraph [0067]);
wherein the polishing composition has a pH overlapping with and thereby rendering obvious the claimed range of about 7 to about 14 (see CAVANAUGH at paragraph [0063], teaching a pH range of 3 to 8.5).
As set forth in MPEP § 2144.05, 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)).
However, CAVANAUGH fails to explicitly mention that the anionic silica abrasive comprises terminal groups of formula (I): -Om-Si-(CH2)n-CH3 (I), in which m is an integer from 1 to 3; n is an integer from 0 to 10; and the –(CH2)-CH3 group is substituted by at least one carboxylic acid group.
MISHRA teaches an aqueous polishing composition (see MISHRA at Abstract and paragraph [0031]) comprising an anionic colloidal silica abrasive having terminal groups according to formula (I) as claimed (see MISHRA at paragraphs [0017], [0038] and [0045]-[0046], teaching anionic colloidal silica abrasive having terminal groups of formula Om-X-(CH2)n-Y, wherein m is an integer from 1 to 3, n is an integer from 1 to 10, X is Si, and Y is an anionic acid group, such as a carboxylic acid; i.e., the (CH2)-CH3 group according to formula (I) of the present claim is substituted by at least one carboxylic acid group).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the polishing composition of CAVANAUGH by simply substituting the anionic colloidal silica having unspecified terminal groups with the anionic colloidal silica having terminal groups according to formula (I) as claimed, as taught by MISHRA (see MISHRA at paragraphs [0017], [0038] and [0045]-[0046]). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of forming an aqueous polishing composition comprising a stable dispersion of anionic colloidal silica abrasive (see MISHRA at paragraphs [0006], [0012] and [0031]).
CAVANAUGH teaches using the polishing composition on copper and/or ruthenium substrates (see CAVANAUGH at paragraph [0072]), but does not explicitly mention that the composition has a ratio of a removal rate for copper to a removal rate for ruthenium of at most about 35:1. However, this limitation is directed toward an intended use of the composition, rather than being directed toward the composition itself. As set forth above, CAVANAUGH in view of MISHRA teaches a polishing composition as claimed by the present claim, therefore the polishing composition of CAVANAUGH in view of MISHRA would be expected to have the same or overlapping properties as the claimed composition and would be expected to exhibit the same performance when subjected to the same conditions, e.g., when performing the intended use of polishing a copper and/or ruthenium substrate; therefore the polishing composition of CAVANAUGH in view of MISHRA would be expected to have the same or overlapping copper and ruthenium removal rates, and resulting ratio, as the claimed composition. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 2, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the anionic silica abrasive is in an amount of from about 0.01 wt% to about 50 wt% of the composition (see CAVANAUGH at paragraph [0030], teaching 0.05 to 1 wt%).
Regarding claim 3, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the pH adjuster is ammonium hydroxide (see CAVANAUGH at paragraph [0063]).
Regarding claim 4, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the pH adjuster is in an amount of from about 0.0001 wt% to about 30 wt% of the composition (see CAVANAUGH at paragraphs [0063] and [0099], teaching that the pH adjuster may be used, e.g., in an amount of 0.042 wt%; further, the purpose of a pH adjuster is to adjust the composition pH, therefore the amount used is a result-effective variable which may be optimized by one of ordinary skill in the art in order to obtain the desired pH; see MPEP § 2144.05 (II)).
Regarding claim 6, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the nonionic surfactant is polyalkylene oxide block copolymers (see CAVANAUGH at paragraphs [0059]-[0060], teaching ethylene oxide/propylene oxide block copolymer surfactant).
Regarding claim 7, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the nonionic surfactant is in an amount of from about 0.0005% to about 5% by weight of the composition (see CAVANAUGH at paragraph [0061], teaching 0.001 to 1% by weight of the ethylene oxide/propylene oxide block copolymer surfactant).
Regarding claim 8, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the ruthenium removal rate enhancer is ammonium hydroxide (see CAVANAUGH at paragraph [0063]).
Regarding claim 9, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the ruthenium removal rate enhancer is in an amount of from about 0.0001% to about 5% by weight of the composition (see CAVANAUGH at paragraph [0056], teaching including the rate accelerator comprising phosphonic acid in an amount of 0.05 to 5% by weight).
Regarding claim 12, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, further comprising an oxidizing agent selected from hydrogen peroxide (see CAVANAUGH at paragraph [0057]).
Regarding claim 13, as applied to claim 12 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 12, wherein the oxidizing agent is in an amount of from about 0.001% to about 5% by weight of the composition (see CAVANAUGH at paragraph [0058], teaching 0.1 to 5% by weight of oxidizing agent).
Regarding claim 14, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the azole-containing corrosion inhibitor selected from imidazole (see CAVANAUGH at paragraphs [0008] and [0052]; CAVANAUGH teaches that the rate accelerator may also comprise imidazole).
Regarding claim 15, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the azole-containing corrosion inhibitor is in an amount of from about 0.0001% to about 1% by weight of the composition (see CAVANAUGH at paragraph [0055], teaching including the rate accelerator comprising imidazole (which is a corrosion inhibitor according to the present claim) in an amount of 0.05 to 1% by weight).
Regarding claim 16, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, wherein the water is in an amount of from about 20 wt% to about 99 wt% of the composition (see CAVANAUGH at paragraphs [0069], [0099] and [0104]; CAVANAUGH provides examples comprising approximately 2 wt% of recited components and the remainder water, i.e., approximately 98 wt% water).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over CAVANAUGH in view of MISHRA as applied to claim 1 above, and further in view of Izawa, et al. (U.S. Pub. No. 2019/0080927-A1) (hereinafter, “IZAWA”).
Regarding claims 10-11, as applied to claim 1 above, CAVANAUGH in view of MISHRA teaches a polishing composition according to claim 1, further comprising a chelating agent (see CAVANAUGH at paragraph [0064]).
However, CAVANAUGH and MISHRA fail to explicitly mention that the chelating agent is selected from the group recited by the present claim 10, or that the chelating agent is in an amount of from about 0.001% to about 1% by weight of the composition, as required by claim 11.
IZAWA teaches an aqueous polishing composition comprising an anionic colloidal silica abrasive (see IZAWA at Abstract and paragraphs [0023]-[0024], [0029] and [0048]) and a chelating agent such as nitrilotriacetic acid (see IZAWA at paragraphs [0053] and [0059]), wherein the chelating agent is present in a small amount in the composition such as 1 g/L or more and 20 g/L or less (see IZAWA at paragraph [0060]); as the polishing composition of IZAWA is mostly comprised of water (see IZAWA at paragraphs [0048] and [0090]), 1 g/L to 20 g/L can be approximated as 0.001 to 0.02% by weight of the composition.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the polishing composition of CAVANAUGH in view of MISHRA by simply substituting the unspecified chelating agent used in an unspecified amount with nitrilotriacetic acid used in an amount of 0.001 to 0.02% by weight, as taught by IZAWA (see IZAWA at paragraphs [0059]-[0060]). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing an effective amount of a chelating agent for the polishing composition (see IZAWA at paragraphs [0059]-[0060]). Further, IZAWA teaches that it is known in the art to use nitrilotriacetic acid as a chelating agent in polishing compositions, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Cavanaugh describes imidazole as a “rate accelerator,” but not as a “corrosion inhibitor” contrary to the requirement of amended claim 1… Cavanaugh teaches compositions that “inhibitor-containing” compositions are substantially fee of aromatic azoles… there is no basis for assuming that Cavanaugh would have motivated skilled practitioners to include an azole as a corrosion inhibitor” (see Remarks at pg. 8-9).
“Cavanaugh… is silent regarding a removal rate for ruthenium… A removal rate for ruthenium… is also not suggested anywhere in Mishra” (see Remarks at pg. 9-10).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because CAVANAUGH describes imidazole as a rate accelerator rather than a corrosion inhibitor, the Examiner respectfully disagrees. As acknowledged by Applicant, CAVANAUGH explicitly teaches imidazole, which is one of the azole-containing corrosion inhibitors recited in the present claim 14. CAVANAUGH explicitly teaches the same compound, which is a corrosion inhibitor, and the terminology used to describe the compound is immaterial to meeting the limitations of the claims.
In response to Applicant’s argument that the present invention is not obvious because CAVANAUGH describes embodiments which do not include aromatic azoles, the Examiner respectfully disagrees. As acknowledged by Applicant and as set forth in the rejection above, CAVANAUGH explicitly teaches a polishing composition comprising imidazole. As set forth in MPEP § 2123, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
In response to Applicant’s argument that the present invention is not obvious because the prior art references do not explicitly mention a ruthenium removal rate, the Examiner respectfully disagrees. As set forth in the rejection above, CAVANAUGH in view of MISHRA teaches a composition as claimed by the present claim, therefore the composition would be expected to have the same or overlapping properties and exhibit the same behavior when subjected to the same conditions, e.g., when performing the intended use of polishing copper/ruthenium. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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