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
Amendments made to claims 1 and 6, the cancelation of claims 5, 10-11, 13 and 21-22, and the withdrawal of claims 23-25, as filed on February 12, 2026, are acknowledged.
Applicant's arguments, see Remarks filed on February 12, 2026, with respect to the data presented in the present specification being commensurate in scope with the invention claimed in amended claim 1 have been fully considered but they are not persuasive. As shown in data presented in Table 3 of the present specification, only two samples of phosphates, sample 3J (C18) and sample 3K(C22), are presented with a ramp up in TEOS RR/SiN RR to a range above 250:1. These two data points are not sufficient to demonstrate the criticality of the range C16-C22 as recited in the amended claim 1, because there is no data to establish the lower limit of the range. Therefore, the data presented are not commensurate in scope with the claimed invention.
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 1-2, 4, 6-9, 12, 16-18 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hou et al. (US20150221521) in view of Itoh et al. (US20070128872) and Kamimura et al. (US20090246957).
Regarding claim 1, Hou discloses a polishing composition (paragraph 0005) comprising: at least one abrasive comprising a silica-based abrasive (paragraph 0005); at least one anionic surfactant comprising: a hydrophobic portion comprising a hydrocarbon group (alkyl phosphate, paragraph 0008); a hydrophilic portion comprising a phosphate group (alkyl phosphate, paragraph 0008), and wherein the hydrophobic portion and the hydrophilic portion are separated by zero alkylene oxide group (alkyl phosphate, paragraph 0008); and water (paragraph 0031); wherein the polishing composition is free of an oxidizing agent, a salt, and an anionic polymer (paragraph 0005), and the polishing composition has a pH of about 2-5 (paragraph 0027).
Hou is silent about the alkyl phosphate having a hydrophobic portion comprising a C16-C22 hydrocarbon group. However, Hou discloses that the alkyl phosphate is included in the polishing composition used for polishing a metal film (paragraph 0005). In addition, Itoh teaches that examples of alkyl phosphate included in a polishing composition used for polishing a metal film include stearyl phosphate among a finite number of known alkyl phosphate (paragraph 0064), which comprises a hydrophobic portion comprising a C18 hydrocarbon 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 use stearyl phosphate, which is one of a finite number of known alkyl phosphates used in a polishing composition as taught by Itho, in the composition of Hou, with a reasonable expectation of success. It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious. See MPEP 2143 1(E).
Hou is silent about the polishing composition comprising an acid selected from the group consisting of formic acid, malonic acid, citric acid, propionic acid, malic acid, adipic acid, succinic acid, lactic acid, and mixtures thereof. However, Hou discloses that the polishing composition comprising a complexing agent (paragraph 0030). In addition, Kamimura teaches that examples of complexing agent used in a polishing composition include malic acid among a finite number of known acids (paragraphs 0106 and 0110). 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 malic acid, which is one of a few known complexing agent used in a polishing composition as taught by Kamimura, in the composition of Hou, with a reasonable expectation of success.
Hou in Itoh is silent about the phosphate being a nitride removal rate reducing agent, and wherein the polishing composition has a ratio of a removal rate for silicon oxide to a removal rate for silicon nitride of at least about 250:1. However, a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claim 2, Hou discloses the composition further comprising at least one metal corrosion inhibitor, wherein the at least one metal corrosion inhibitor comprises benzotriazole (paragraph 0030).
Regarding claim 4, Itoh discloses wherein the hydrophobic portion comprises a C18 hydrocarbon group (stearyl phosphate, paragraph 0064).
Regarding claim 6, Itoh discloses wherein the at least one nitride removal rate reducing agent is stearyl phosphate (paragraph 0064).
Regarding claim 7, Hou discloses wherein the polishing composition comprises at least two nitride removal rate reducing agents (multiple anionic surfactants, paragraph 0018).
Regarding claim 8, Hou discloses wherein the at least one nitride removal rate reducing agent is in an amount of from about 10ppm to about 5000ppm of the composition (paragraph 0018), which overlaps with the range recited in the instant claim. 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).
Regarding claim 9, Hou discloses wherein the at least one abrasive is substantially neutral abrasives (paragraph 0024).
Regarding claim 12, Hou discloses wherein the at least one abrasive is in an amount of from at least about 0.1 wt % to at most about 10 wt % of the composition (paragraph 0025).
Regarding claim 16, Hou discloses wherein the composition comprises a mixture of acids, the mixture of acids comprising an amino acid (paragraph 0030).
Regarding claim 17, Hou discloses wherein the amino acid is proline (paragraph 0030).
Regarding claim 18, Hou discloses wherein the mixture of acids further comprises acetic acid (paragraph 0030).
Regarding claim 20, Hou discloses wherein the water is in an amount of from at least about 89.5 wt % to at most about 99.9 wt % of the composition (the composition comprises mainly abrasive and surfactant in water carrier, the abrasive comprises about 0.1 to about 10 wt% of the composition, the surfactant comprises about 50-5000ppm of the composition, with the balance being water, paragraphs 0005, 0018, 0025 and 0031).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hou et al. (US20150221521) in view of Itoh et al. (US20070128872) and Kamimura et al. (US20090246957) as applied to claim 2 above, and further in view of Dockery et al. (US20190211227).
Regarding claim 3, Hou is silent about the concentration of the metal corrosion inhibitor. However, Dockery teaches that the concentration of a corrosion inhibitor in a polishing composition is a result-effective variable impacting polishing performance and stability (paragraph 0050). 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 a corrosion inhibitor (a result-effective variable) in the composition of Hou to achieve desirable polishing performance and stability as taught by Dockery, with a reasonable expectation of success. 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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hou et al. (US20150221521) in view of Itoh et al. (US20070128872) and Kamimura et al. (US20090246957) as applied to claim 1 above, and further in view of Tseng (US20190092974).
Regarding claim 14, Hou discloses wherein the composition further comprises a base (paragraph 0032). Hou is silent about the specific compound used in the polishing composition. However, Hou discloses that the base is used to adjust the pH of the polishing composition. In addition, Tseng teaches that examples of bases used to adjust pH in a polishing composition include potassium hydroxide (paragraph 0054). 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 potassium hydroxide, which is a known base used to adjust pH in a polishing composition as taught by Tseng, in the composition of Hou, 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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Hou et al. (US20150221521) in view of Itoh et al. (US20070128872) and Kamimura et al. (US20090246957) as applied to claim 1 above, and further in view of Bian et al. (US20070184661).
Regarding claim 15, Hou is silent about the concentration of the acid. However, Hou discloses that the acid is used as a complexing agent in the polishing composition (paragraph 0030). In addition, Bian teaches that the concentration of a complexing agent in a polishing composition is a result-effective variable impacting polishing rate (paragraph 0023). 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 a complexing agent (a result-effective variable) in the composition of Hou, to achieve desirable polishing rate as taught by Bian, with a reasonable expectation of success. 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.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hou et al. (US20150221521) in view of Itoh et al. (US20070128872) and Kamimura et al. (US20090246957) as applied to claim 16 above, and further in view of Bian et al. (US20070184661).
Regarding claim 19, Hou is silent about the concentration of the mixture of acids. However, Hou discloses that the mixture of acids is used as a complexing agent in the polishing composition (paragraph 0030). In addition, Bian teaches that the concentration of a complexing agent in a polishing composition is a result-effective variable impacting polishing rate (paragraph 0023). 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 a complexing agent (a result-effective variable) to achieve desirable polishing rate as taught by Bian. 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.
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 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
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