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 .
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.
Response to Amendments/Arguments
The amendment made to claims 1 and 6, the cancelation of claim 5, and the withdrawal of claims 18-19 as filed on December 10, 2025 are acknowledged.
Applicant’s arguments with respect to amended claim 1 have been considered but are moot because the arguments do not apply to new ground(s) of rejection in this Office Action necessitated by the amendments made to the claims.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-13 and 16-17 are rejected under 35 U.S.C. 103 as being obvious over Dockery et al. (US20190211227).
Regarding claim 1, Dockery discloses a polishing composition (abstract), comprising: an anionic silica abrasive, wherein the anionic abrasive comprises terminal groups of formula —O—Si—(CH2) 4COOH (surface modified silica particles with a negative charged group reads on an anionic abrasive, paragraph 0014; the negative charged group has a structure discussed above, as evidenced by Scheme 1 in Yamaguchi et al., "Novel silane coupling agents containing a photolabile 2-nitrobenzyl ester for introduction of a carboxy group", Chemistry Letters, vol. 3, pages 228-229, year 2000, cited by Dockery in paragraph 0022); a transition metal catalyst (ferric nitrate, paragraph 0037); and an amino acid (aspartic acid, paragraph 0042); wherein the polishing composition has a pH of about 1.5 to about 4 (paragraph 0075); and wherein the polishing composition is free of anionic polymers and anionic surfactants (claim 1).
The difference between the composition of Dockery and the composition recited in the instant claim the position of the carboxylic acid group. In the composition of Dockery, the carboxylic acid group is located at the terminal carbon, while the instant claim recites the carboxylic group located at a middle carbon. However, the two chemical structures are similar because both terminal groups comprise a short chain (5 total carbon atoms) with carboxylic acid group and hydrocarbon groups. Therefore, it would be a prima facie case of obviousness to substitute the terminal group of Dockery wherein the carboxulic acid group located at the terminal carbon with a terminal group wherein the carboxulic acid group located at a middle carbon, with a reasonable expectation of success. Rejections based on close structural similarity is found on the expectation that compounds similar in structure will have similar properties. See MPEP 2144.09 I.
Regarding claim 2, Dockery discloses wherein the anionic silica abrasive is in an amount of from about 1.5 wt % to about 3.5 wt % of the composition (paragraph 0035).
Regarding claim 3, Dockery discloses wherein the pH adjuster is nitric acid (paragraphs 0112).
Regarding claim 4, Dockery is silent about the concentrations of the pH adjuster. However, Dockery discloses that the pH adjuster (pH adjusting agent) is used to adjust the pH value of the polishing composition (paragraph 0112). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to optimize the concentration of the pH adjuster (a result-effective variable) to achieve desirable pH value for the polishing composition. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable range by routine experimentation and there is no evidence of the criticality of the claimed range. See MPEP 2144.05 II.
Regarding claim 6, Dockery discloses wherein the transition metal catalyst comprises iron(III) nitrate (ferric nitrate, paragraph 0037).
Regarding claim 7, Dockery discloses wherein the transition metal catalyst is in an amount of from about 0.01 wt % to about 0.5 wt % of the composition (paragraph 0038).
Regarding claim 8, Dockery discloses wherein the amino acid comprises aspartic acid (paragraph 0042).
Regarding claim 9, Dockery discloses wherein the amino acid is in an amount of from about 0.005 wt % to about 0.05 wt % of the composition (paragraph 0044).
Regarding claim 10, Dockery discloses a chelating agent that is amino acetic acid (glycine, paragraph 0046).
Regarding claim 11, Dockery discloses wherein the chelating agent is in an amount of from about 0.1% to about 0.5% by weight of the composition (paragraph 0050).
Regarding claim 12, Dockery discloses an oxidizing agent comprising hydrogen peroxide (paragraph 0112).
Regarding claim 13, Dockery discloses wherein the oxidizing agent is in an amount of from about 0.3% to about 0.5% by weight of the composition (Table II).
Regarding claim 16, Dockery discloses the composition comprising water (paragraph 0051).
Regarding claim 17, Dockery discloses wherein the water is in an amount of about 96 wt % of the composition (paragraph 0112 and Table 2).
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dockery et al. (US20190211227) as applied to claim 1 above, in view of Yamada et al. (US20220389280).
Regarding claim 14, Dockery is silent about the polishing composition further comprising an azole-containing corrosion inhibitor. However, Dockery discloses that the polishing composition comprises a corrosion inhibitor, which can be any suitable
corrosion inhibitor, such as a tungsten-corrosion inhibitor (paragraph 0046). In addition, Yamada teaches an azole-containing corrosion inhibitor (anticorrosive) used in a polishing composition for polishing tungsten (abstract and paragraph 0068). In particular, Yamada teaches that examples of the anticorrosive include benzotriazole and derivatives therefor (paragraph 0068). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use benzotriazole, which is a known corrosion inhibitor in a composition for polishing tungsten as taught by Yamada, in the polishing composition of Dockery, with a reasonable expectation of success. It has been held that substituting equivalents known for the same purpose is obvious. See MPEP 2144.06 II.
Regarding claim 15, Dockery in view of Yamada discloses wherein the azole-containing corrosion inhibitor is in an amount of from about 0.01% to about 0.5% by weight of the composition (Dockery, paragraph 0050; Yamada, paragraph 0069).
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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (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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/JIONG-PING LU/
Primary Examiner, Art Unit 1713