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 .
Response to Amendment
This office action is in response to the Amendment filed on 07/22/2026.
Claims 1-4 and 7-18 are presently pending; claim 5-6 are canceled; claims 17-18 are withdrawn; claims 1 is amended; claims 1-4 and 7-16 are under examination.
The 35 U.S.C. 103 rejections of claims 1-4, 7-9 and 12-16 over CAVANAUGH in view of MISHRA and claims 10-11 over CAVANAUGH in view of MISHRA and IZAWA are maintained; the rejection of claim 6 is moot as this claim has been canceled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/22/2026 was filed after the mailing date of the non-final action on 03/27/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 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 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 1-4, 7-9 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”), with evidence from Booth, et al. (WO-9621668-A1) (hereinafter, “BOOTH”) as to the rejection of claim 1.
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 (EO/PO) block copolymer surfactant, which is a nonionic an example of a nonionic surfactant low-k removal rate inhibitor discussed in Applicant’s specification at pg. 7, lines 24-28) selected from the group consisting of alcohol alkoxylates, alkylphenol alklxylates, tristyrylphenol alkoxylates, sorbitan ester alkoxylates, polyalkoxylates, alkoxylated diamenes, and mixtures thereof (see CAVANAUGH at paragraphs [0059]-[0060], teaching EO/PO block copolymer, which is a polyalkoxylate as evidenced by BOOTH; see BOOTH at pg. 2, lines 26-28 and pg. 3, lines 28-30);
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 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 07/22/2026 have been fully considered but they are not persuasive.
Applicant argues:
“claim 1 is amended herein to incorporate the subject matter of claim 6 excluding ‘polyalkylene oxide block copolymers’… Cavanaugh… does not explicitly teach nonionic surfactants. In particular, Cavanaugh fails to disclose or suggest any one of the nonionic surfactants recited in amended claim 1” (see Remarks at pg. 6-7).
“neither of Cavanaugh, Mishra, and Izawa provides a reasonable expectation of the results shown in the instant specification for carboxylic acid modified abrasives over unmodified abrasives and sulfonic acid modified abrasives… carboxylic acid modified abrasive is more stable during a polishing process and has less potential for defect formation… A person of ordinary skill in the art would not have reasonably expected these results” (see Remarks at pg. 7-8).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that CAVANAUGH does not teach the claimed nonionic surfactants, the Examiner respectfully disagrees. As set forth in the rejection of amended claim 1 above and as acknowledged by Applicant, CAVANAUGH explicitly teaches EO/PO block copolymer, which is a nonionic surfactant. EO/PO block copolymers have not been excluded from amended claim 1 because, as discussed in the rejection above, EO/PO block copolymer is a type of polyalkoxylate, which is recited by amended claim 1. CAVANAUGH explicitly teaches a polyalkoxylate.
In response to Applicant’s argument that the present invention is nonobvious because it provides unexpected results of improved stability and less potential for defect formation during a polishing process, the Examiner respectfully disagrees. Arguments regarding unexpected results are discussed in MPEP 716.02. The results do not appear to be unexpected, as Fig. 1 of the present application shows that carboxylic acid abrasive has a more negative zeta potential than sulfonic acid abrasive in a pH range of about 4.5 to 11, and as both Applicant’s specification and the disclosure of MISHRA clearly teach that more negative zeta potential is expected to result in increased stability which results in decreased defects (see Applicant’s specification at pg. 15 and 18; see MISHRA at paragraphs [0035]-[0036]). Additionally, the results are not shown to be commensurate in scope with the claimed invention, which can include any amount of the recited components, requires a specific nonionic surfactant, a specific ruthenium removal rate enhancer, includes a pH range of 7 to 14, etc.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
Prosecution Insights