DETAILED ACTION
Claims 1-21 are pending before the Office for review.
In the response filed September 2, 2025:
Claims 1 and 17 were amended.
No new matter is present.
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 .
Election/Restrictions
Claims 18-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 21, 2025.
Applicant’s election without traverse of Group 1 (claims 1-17) in the reply filed on May 21, 2025 is acknowledged.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over SAKASHITA et al (U.S. Patent Application Publication 2016/0107286).
With regards to claim 1, Sakashita discloses a polishing composition, comprising: at least one abrasive (Paragraph [0042]); at least one organic acid or a salt thereof (Paragraph [0050]), at least one organic solvent (Paragraph [0118]-[0120]); at least one non-ionic surfactant (Paragraph [0122]); and an aqueous solvent (Paragraph [0124]).
Sakashita does not explicitly disclose at least one organic solvent in an amount of from about 4% to about 50% by weight of the composition.
Sakashita discloses a polishing composition comprising at least one organic solvent in an amount from about 0.2% by weight to about 50% by mass (Paragraph [0120]) which renders obvious at least one organic solvent in an amount of from about 4% to about 50% by weight of the composition. 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). MPEP 2144.05(I)
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of their invention to modify the composition of Sakashita to include an organic solvent in an amount as rendered obvious by the general disclosure of Sakashita because the reference of Sakashita disclose the inclusion of the organic solvent helps insure the dispersibility of the liquid (Paragraph [0120]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired composition using the organic solvent amount as rendered obvious by Sakashita. MPEP 2143D
With regards to claim 2, the modified teachings of Sakashita renders obvious wherein the at least one abrasive is selected from the group consisting of alumina, silica, titania, ceria, zirconia, co-formed products of alumina, silica, titania, ceria, or zirconia, coated abrasives, surface modified abrasives, and mixtures thereof (Paragraph [0042])
With regards to claim 3, the modified teachings of Sakashita renders obvious wherein the at least one abrasive is in an amount of from about 0.1% to about 50% by weight of the composition (Paragraph [0048]).
With regards to claim 4, the modified teachings of Sakashita renders obvious wherein the at least one organic acid is selected from the group consisting of a carboxylic acid, an amino acid, a sulfonic acid, a phosphonic acid, and mixtures thereof. (Paragraph [0052]-[0054])
With regards to claim 5, the modified teachings of Sakashita renders obvious wherein the at least one organic acid is selected from the group consisting of gluconic acid, lactic acid, citric acid, tartaric acid, malic acid, glycolic acid, malonic acid, formic acid, oxalic acid, acetic acid, propionic acid, peracetic acid, succinic acid, lactic acid, amino acetic acid, phenoxyacetic acid, bicine, diglycolic acid, glyceric acid, tricine, alanine, histidine, valine, phenylalanine, proline, glutamine, aspartic acid, glutamic acid, arginine, lysine, glycine, arginine, tyrosine, benzoic acid, 1,2-ethanedisulfonic acid, 4-amino-3-hydroxy-1-naphthalenesulfonic acid, 8-hydroxyquinoline-5-sulfonic acid, aminomethanesulfonic acid, benzenesulfonic acid, hydroxylamine O-sulfonic acid, methanesulfonic acid, m-xylene-4-sulfonic acid, poly(4-styrenesulfonic acid), polyanetholesulfonic acid, p-toluenesulfonic acid, trifluoromethane-sulfonic acid, phosphonic acid, hydroxyethylidene diphosphonic acid, 2-phosphono-1,2,4-butane tricarboxylic acid, aminotrimethylene phosphonic acid, hexamethylenediamine tetra(methylenephosphonic acid), bis(hexamethylene)triamine phosphonic acid, ethylenediaminetetracetic acid, iminodiacetic acid, N-hydroxyethyl-ethylenediaminetriacetic acid, nitrilotriacetic acid, diethylenetriaminepentacetic acid, hydroxyethylethylenediaminetriacetic acid, triethylenetetraaminehexaacetic acid, diaminocycloheanetetraacetic acid, nitrilotrimethylphosphonic acid, ethylenediaminetetra(methylenephosphonic acid), 1-hydroxyethylidene-1,1-diphosphonic acid, diethylenetriamine penta (methylene phosphonic acid), and mixtures thereof (Paragraph [0052]-[0054])
With regards to claim 6, the modified teachings of Sakashita renders obvious wherein the at least one organic acid or a salt thereof is in an amount of from about 0.01 to about 1% by mass (Paragraph [0057]) which falls within Applicant’s claimed range of about 0.001% to about 5% by weight of the composition. 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). MPEP 2144.05(I)
With regards to claim 7, the modified teachings of Sakashita renders obvious wherein the at least one organic solvent is in an amount from about 0.2% to about 50% by mass (paragraph [0120]) which renders obvious Applicant’s claimed amount of about 10% to about 50% by weight of the composition. 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). MPEP 2144.05(I)
With regards to claim 8, the modified teachings of Sakashita renders obvious wherein the at least one organic solvent is selected from the group consisting of methanol, ethanol, 1-propanol, 2-propanol, 1-butanol, 2- butanol, t-butyl alcohol, 1-pentanol, 2-pentanol, 3-pentanol, cyclohexanol, ethylene glycol, propylene glycol, 2-methoxyethanol, 2-ethoxyethanol, 2-propoxyethanol, 2-isopropoxyethanol, 2-butoxyethanol, propylene glycol methyl ether, propylene glycol propyl ether, diethylene glycol butyl ether, ethylene glycol dimethyl ether, ethylene glycol diethyl ether, acetone, acetonitrile, dimethyl sulfoxide, dimethylformamide, dimethylacetamide, tetrahydrofuran, 1-methyl-2- pyrrolidone, 3-methyl-2-oxazolidinone, N,N'-dimethylimidazolidinone, ethylene carbonate, propylene carbonate, glycerol, diethylene glycol, diglyme, dioxane, morpholine, butanone, 2- pentanone, 3-pentanone, monoethanolamine, 2-(2-aminoethoxy)ethanol, 2-amino-2-methyl-1,3- propanediol, 2-amino-2-hydroxymethyl-propane- 1,3 -diol, piperazine, 1-(2- hydroxyethyl)piperazine, and any combinations thereof. (Paragraph [0119]).
With regards to claim 9, the modified teachings of Sakashita renders obvious wherein the at least one organic solvent has a polarity index of from about 2 to about 10 (Paragraph [0119]).
With regards to claims 10-12, the modified teachings of Sakashita renders obvious further comprising at least one azole compound wherein the at least one azole compound is selected from the group consisting of substituted or unsubstituted triazoles, substituted or unsubstituted tetrazoles, substituted or unsubstituted benzotriazoles, substituted or unsubstituted pyrazoles, substituted or unsubstituted imidazoles, substituted or unsubstituted benzimidazoles, substituted or unsubstituted thiadiazoles, substituted or unsubstituted adenines, substituted or unsubstituted xanthines, and substituted or unsubstituted guanines and wherein the at least one azole compound is selected from the group consisting of 1,2,4-triazole, 1,2,3-triazole, tetrazole, benzotriazole, tolyltriazole, methyl benzotriazole, ethyl benzotriazole, propyl benzotriazole, butyl benzotriazole, pentyl benzotriazole, hexyl benzotriazole, dimethyl benzotriazole, chloro benzotriazole, dichloro benzotriazole, chloromethyl benzotriazole, chloroethyl benzotriazole, phenyl benzotriazole, benzyl benzotriazole, aminotriazole, aminobenzimidazole, aminotetrazole, pyrazole, imidazole, adenine, xanthine, guanine, benzimidazole, thiabendazole, 1- hydroxybenzotriazole, 2-methylbenzothiazole, 2-aminobenzimidazole, 2-amino-5 -ethyl- 1,3,4- thiadiazole, 3,5-diamino- 1,2,4-triazole, 3 -amino-5-methylpyrazole, 4-amino-4H-1,2,4-triazole and mixtures thereof. (Paragraph [0065]-[0067]).
With regards to claim 13, the modified teachings of Sakashita renders obvious wherein the at least one azole compound is in an amount of from about 0.001-10 mass% by weight (Paragraph [0068]) which renders obvious about 0.001% to about 3% by weight of the composition. 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). MPEP 2144.05(I)
With regards to claim 14, the modified teachings of Sakashita renders obvious where the at least one non-ionic surfactant is selected from the group consisting of alcohol alkoxylates, alkylphenol alkoxylates, tristyrylphenol alkoxylates, sorbitan ester alkoxylates, polyalkoxylates, polyalkylene oxide block copolymers, alkoxylated diamines, and mixtures thereof (Paragraph [0122])
With regards to claim 15, the modified teachings of Sakashita renders obvious wherein the at least one non-ionic surfactant is in an amount of from about 0.0001 % to about 0.1% by mass (Paragraph [0122]) about 0.001% to about 2% by weight of the composition. 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). MPEP 2144.05(I)
With regards to claim 16, the modified teachings of Sakashita renders obvious wherein the polishing composition has a pH from about 3 to 7 (Paragraph [0126]) which renders obvious form about 2 to about 13. 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). MPEP 2144.05(I)
With regards to claim 17, Sakashita discloses a polishing composition, comprising: at least one abrasive (Paragraph [0042]); at least one organic acid or a salt thereof (Paragraph [0050]), at least one organic solvent, the at least one organic solvent comprising, 2-butanol, t-butyl alcohol, 1- pentanol, 2-pentanol, 3-pentanol, cyclohexanol, 2-propoxyethanol, 2-isopropoxyethanol, 2- butoxyethanol, propylene glycol methyl ether, diethylene glycol butyl ether, ethylene glycol dimethyl ether, ethylene glycol diethyl ether, acetone, acetonitrile, dimethyl sulfoxide, dimethylformamide, dimethylacetamide, tetrahydrofuran, 1-methyl-2-pyrrolidone, 3-methyl-2- oxazolidinone, N,N'-dimethylimidazolidinone, ethylene carbonate, propylene carbonate, glycerol, diethylene glycol, diglyme, dioxane, morpholine, butanone, 2-pentanone, 3-pentanone, monoethanolamine, 2-(2-aminoethoxy)ethanol, 2-amino-2-methyl-1,3-propanediol, 2-amino-2- hydroxymethyl-propane- 1,3 -diol, piperazine, 1-(2-hydroxyethyl)piperazine, or a mixture thereof (Paragraph [0118]-[0120]); at least one non-ionic surfactant (Paragraph [0122]); and an aqueous solvent (Paragraph [0124]).
Sakashita does not explicitly disclose at least one organic solvent in an amount of from about 4% to about 50% by weight of the composition.
Sakashita discloses a polishing composition comprising at least one organic solvent in an amount from about 0.2% by weight to about 50% by mass (Paragraph [0120]) which renders obvious at least one organic solvent in an amount of from about 4% to about 50% by weight of the composition. 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). MPEP 2144.05(I)
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of their invention to modify the composition of Sakashita to include an organic solvent in an amount as rendered obvious by the general disclosure of Sakashita because the reference of Sakashita disclose the inclusion of the organic solvent helps insure the dispersibility of the liquid (Paragraph [0120]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired composition using the organic solvent amount as rendered obvious by Sakashita. MPEP 2143D
Response to Arguments
Applicant’s arguments, see pages 7-8 of Applicant’s response, filed September 2, 2025, with respect to 103 rejection of claims 1-6 and 8-17 under Liang have been fully considered and are persuasive. Applicant’s amendments and arguments filed September 2, 2025 has overcome the rejection of record. The 103 rejection of claims 1-6 and 8-17 under Liang has been withdrawn.
Applicant's remaining arguments filed September 2, 2025 have been fully considered but they are not persuasive. Applicant argues on pages 8-10 of Applicant’s response that the cited prior art fails to teach or render obvious Applicant’s claimed invention including "at least one organic solvent in an amount of from about 4%to about 50% by weight of the composition." Applicant argues that Sakashita discloses the organic solvent as an option component and does not disclose any working examples. Therefore Sakashita provides no motivation for skilled practitioners to include an organic solvent into the CMP polishing liquid described therein in "an amount of from about 4% to about 50%," as required by amended claims 1 and 17.
In addition, Applicant’s specification "showed that surprisingly the increase in the amount of organic solvent was able to enhance copper oxide dissolution, which indicates that any copper oxides present or formed during the polishing can be increasingly removed in the presence of a polishing composition that includes higher levels of organic solvent," and "that surprisingly the increase in the amount of organic solvent content dramatically increases the solubility of organic residue complexes," which in turn "leads to reduced total defect counts." One of ordinary skill would not have expected these results in view of the teachings of Sakashita. Therefore claims 1 and 17 are allowed over the prior art. The dependent claims are allowable based on their dependency. This is found unpersuasive.
It is the Examiner’s position that the cited prior art renders Applicant’s claimed composition as provided for in claims 1 an d17 including "at least one organic solvent in an amount of from about 4%to about 50% by weight of the composition." It is the Examiner’s position that Sakashita discloses:
[0117] (Organic Solvent)
[0118] The CMP polishing liquid according to the present embodiment can further comprise an organic solvent. Thereby, the wettability of the CMP polishing liquid on the base such as substrates can be enhanced to increase the polishing rate of the barrier metal other than the ruthenium-based metal, or the like. Any organic solvent can be used without limitation; solvents which can be arbitrarily mixed with water are preferred.
[0119] Specific examples of the organic solvents include carbonate esters such as ethylene carbonate, propylene carbonate, dimethyl carbonate, diethyl carbonate, and methylethyl carbonate; lactones such as butyrolactone and propiolactone; glycols such as ethylene glycol, propylene glycol, diethylene glycol, dipropylene glycol, triethylene glycol, and tripropylene glycol; derivatives of glycols such as glycol monoethers such as ethylene glycol monomethyl ether, propylene glycol monomethyl ether, diethylene glycol monomethyl ether, dipropylene glycol monomethyl ether, triethylene glycol monomethyl ether, tripropylene glycol monomethyl ether, ethylene glycol monoethyl ether, propylene glycol monoethyl ether, diethylene glycol monoethyl ether, dipropylene glycol monoethyl ether, triethylene glycol monoethyl ether, tripropylene glycol monoethyl ether, ethylene glycol monopropyl ether, propylene glycol monopropyl ether, diethylene glycol monopropyl ether, dipropylene glycol monopropyl ether, triethylene glycol monopropyl ether, tripropylene glycol monopropyl ether, ethylene glycol monobutyl ether, propylene glycol monobutyl ether, diethylene glycol monobutyl ether, dipropylene glycol monobutyl ether, triethylene glycol monobutyl ether, and tripropylene glycol monobutyl ether, and glycol diethers such as ethylene glycol dimethyl ether, propylene glycol dimethyl ether, diethylene glycol dimethyl ether, dipropylene glycol dimethyl ether, triethylene glycol dimethyl ether, tripropylene glycol dimethyl ether, ethylene glycol diethyl ether, propylene glycol diethyl ether, diethylene glycol diethyl ether, dipropylene glycol diethyl ether, triethylene glycol diethyl ether, tripropylene glycol diethyl ether, ethylene glycol dipropyl ether, propylene glycol dipropyl ether, diethylene glycol dipropyl ether, dipropylene glycol dipropyl ether, triethylene glycol dipropyl ether, tripropylene glycol dipropyl ether, ethylene glycol dibutyl ether, propylene glycol dibutyl ether, diethylene glycol dibutyl ether, dipropylene glycol dibutyl ether, triethylene glycol dibutyl ether, and tripropylene glycol dibutyl ether; ethers such as tetrahydrofuran, dioxane, dimethoxyethane, poly(ethylene oxide), ethylene glycol monomethyl acetate, diethylene glycol monoethyl ether acetate, and propylene glycol monomethyl ether acetate; alcohols such as methanol, ethanol, propanol, n-butanol, n-pentanol, n-hexanol, and isopropanol; ketones such as acetone and methyl ethyl ketone; phenols; amides such as dimethyl formamide; n-methylpyrrolidone; ethyl acetate; ethyl lactate; and sulfolanes. Among these, carbonate esters, glycol monoethers, and alcohols are preferred. The organic solvent may be used singly or in combinations of two or more.
[0120] The content of the organic solvent is preferably 0.1% by mass or more, more preferably 0.2% by mass or more, further preferably 0.5% by mass or more based on the total mass of the CMP polishing liquid from the viewpoint that the wettability of the CMP polishing liquid on the base such as substrates is sufficiently ensured. The content of the organic solvent is preferably 50.0% by mass or less, more preferably 30.0% by mass or less, further preferably 10.0% by mass or less based on the total mass of the CMP polishing liquid from the viewpoint that dispersibility is sufficiently ensured.
It is the Examiner’s position that the cited prior art explicitly discloses the inclusion of Applicant’s claimed organic solvent at an amount which includes Applicant’s claimed amount. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) MPEP 2123(I) 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). MPEP 2123(II) Therefore while Sakashita does not explicitly disclose examples comprising the claimed organic solvent, it does not take away from the general teachings of Sakashita. Therefore Sakashita renders obvious Applicant’s claimed invention absent a showing of unexpected results.
Applicant’s arguments with regards to unexpected results is found unpersuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d) Applicant’s examples are provide for particle compositions, at specific concentrations which are more specific that Applicant’s currently pending claims. It is unclear from Applicant’s limited disclosure that Applicant’s unexpected results would result for a composition comprising any abrasive, organic acid, non-ionic surfactant at any amount or type with any organic solvent between Applicant’s claimed range. Applicant’s currently presented claims are broader than Applicant’s showing of unexpected results.
In addition Applicant has failed to demonstrate the criticality of Applicant’s presented claimed amounts. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).MPEP 716.02(d)(II) Therefore while Applicant’s specification may demonstrate unexpected results such showing is not commensurate in scope with the claims. As to the dependent claims they are not allowable as separate arguments have not been provided.
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 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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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713