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 1-4 and 20-23, the cancelation of claims 5-12 and 14-19, and the withdrawal of claims 24-34, as filed on July 20, 2026, are acknowledged.
Applicant’s arguments, see Remarks filed on July 20, 2026, with respect to amended claim 1 have been fully considered but they are not persuasive.
The Applicant argues that Takahashi et al. (JP2009087966) discloses a chemical mechanical polishing composition containing components (1) to be an amino acid derivative represented by general formula (1), wherein R1 represents an alkyl group having 1 to 4 carbon atoms, and R2 represents an alkylene group having 1 to 4 carbon atoms, while amended Claim 1 of current application does not disclose the use of this required component (1) in Takahashi et al.. However, an amino acid derivative represented by general formula (1) can be broadly interpreted as an amino acid, as evidenced by claim 20 of current application as originally filed. Claim 20 of current application as originally filed recites sarcosine as an example of amino acid, which is represented by the general formula (1) disclosed by Takahashi, wherein R1 represents an alkyl group having 1 carbon atom, and R2 represents an alkylene group having 1 carbon atom. During patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim (see MPEP 2111).
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, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (JP2009087966, a machine-translated English version is used) in view of Minamihata et al. (US20030017786).
Regarding claim 1, Takahasshi discloses a chemical mechanical polishing composition for a copper (claim 1 and paragraph 0141) consisting of: a) abrasive (component 5, claim 1); b) at least two chelators are different chelators and independently selected from amino acids (the amino acids, such as N-methylglycine, N-methylalamine and glycine, read on chelators; components 1 and 2, claims 1-3); c) oxidizing agent (component 3, claim 1); d) at least one Cu static etching rate reducing agent (an alkyl sulfonate reads on a Cu static etching rate reducing agent, claim 5 and paragraph 0100); e) water (paragraph 0027); and f) corrosion inhibitor selected from the group consisting of hetero aromatic compounds containing nitrogen atom in their aromatic rings (passivation film forming agent such as a tetrazole reads on a corrosion inhibitor, claims 1 and 8; paragraph 0061). Takahashi is silent about the alkyl sulfonate being dodecyl sulfonate, ammonium dodecyl sulfonate, potassium dodecyl sulfonate, sodium dodecyl sulfonate, or combinations thereof. However, Minamihata teaches that dodecyl sulfonate is a known surfactant in a composition for polishing copper (paragraph 0073 and claim 15). 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 dodecyl sulfonate as taught by Minamihata for the alkyl sulfonate surfactant in the composition of Takahashi, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
It is noted that claim 1 is drawn to a composition claim and the recitation of "for a copper bulk and Through Silica Via (TSV)" in preamble is considered as intended use of the claimed composition/function of the claimed composition, the amino acids being chelators. 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."). The pH range disclosed by Lakrout 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 4, Takahasshi in view of Minamihata discloses wherein the abrasive is colloidal silica (Takahashi, paragraph 0077); the at least two chelators include glycine and alanine (Takahashi, claim 1); the oxidizing agent includes hydrogen peroxide (Takahashi, paragraph 0042); and the at least one Cu static etching rate reducing agent is dodecyl sulfonate (Takahashi, paragraph 0100; Minamihata, paragraph 0073).
Regarding claim 20, Takahasshi in view of Minamihata discloses wherein the chemical mechanical polishing composition consisting of colloidal silica (Takahashi, paragraph 0077); the at least two chelators are different and are independently selected from glycine and alanine (Takahashi, claim 1); the at least one Cu static etching rate reducing agent is dodecyl sulfonate (Minamihata, paragraph 0073); hydrogen peroxide (Takahashi, paragraph 0042); and the pH of the chemical mechanical polishing composition is from 5-8 (Takahashi, paragraph 0124).
Regarding claim 22, Takahasshi in view of Minamihata discloses wherein the chemical mechanical polishing composition consisting of colloidal silica (Takahashi, paragraph 0077); the at least two chelators are different and are independently selected from glycine and alanine (Takahashi, claim 1); the at least one Cu static etching rate reducing agent is dodecyl sulfonate (Takahashi, paragraph 0100; Minamihata, paragraphs 0031); hydrogen peroxide (Takahashi, paragraph 0042); and the pH of the chemical mechanical polishing composition is from 6-8 (Takahashi, paragraph 0124).
Claims 2-3, 13, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (JP2009087966, a machine-translated English version is used) in view of Minamihata (US20030017786) as applied to claim 1 above, and further in view of in view of Shi et al. (US20150132956).
Regarding claim 2, Takahasshi discloses wherein the abrasive is colloidal silica (paragraph 0077); the at least two chelators includes glycine and beta-alanine (claim 1); the oxidizing agent includes permanganate (paragraph 0042). Takahashi is silent about the permanganate being potassium permanganate. However, Shi teaches that an example of an oxidizer used in a composition for polishing copper is potassium permanganate (abstract and paragraph 0077). 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 permanganate as taught by Shi for the permanganate in the composition of Takahashi, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Regarding claim 3, Takahasshi discloses wherein the abrasive is colloidal silica (paragraph 0077); the at least two chelators include glycine and L-alanine (beta-alanine, claim 1); the oxidizing agent includes permanganate (paragraph 0042); and the at least one Cu static etching rate reducing agent is a surfactant including alkyl sulfonate (paragraph 0100). Takahashi is silent about the permanganate being potassium permanganate. However, Shi teaches that an example of an oxidizer used in a composition for polishing copper is potassium permanganate (abstract and paragraph 0077). Takahashi is silent about the alkyl sulfonate being dodecyl sulfonate, ammonium dodecyl sulfonate, potassium dodecyl sulfonate, sodium dodecyl sulfonate, or combinations thereof. However, Minamihata teaches that dodecyl sulfonate is a known surfactant in a composition for polishing copper (paragraph 0073 and claim 15). 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 permanganate as taught by Shi for the permanganate in the composition of Takahashi, and to use dodecyl sulfonate as taught by Minamihata for the alkyl sulfonate surfactant in the composition of Takahashi, with a reasonable expectation of success.
Regarding claim 13, Takahasshi discloses wherein the corrosion inhibitor is tetrazole (paragraph 0061); and the composition includes an organic quaternary ammonium salt (paragraph 0101). Takahashi is silent about the quaternary ammonium salt being a choline salt as recite din the instant claim, and the composition comprises a biocide as recited in the instant claim. However, Shi teaches that a choline bicarbonate salt (a quaternary ammonium salt) in a composition for polishing copper reduces total defects and increases the copper removal rate (paragraphs 0120 and 0124), and the composition includes a biocide, which is a well-known component in a polishing composition, comprising active ingredient selected from the group consisting of 5-chloro-2- methyl-4-isothiazolin-3-one, 2-methyl-4-isothiazolin-3-one, and combinations thereof (Kathan type of biocides, paragraphs 0057 and 0088). 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 a choline bicarbonate salt and known biocide as taught by Shi in the composition of Takahashi, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Regarding claim 21, Takahasshi in view of Minamihata and Shi discloses wherein the chemical mechanical polishing composition consisting of colloidal silica (Takahashi, paragraph 0077); the at least two chelators are different and are independently selected from glycine and alanine (Takahashi, claim 1); a corrosion inhibitor including imidazole (Takahashi, paragraph 0053); the at least one Cu static etching rate reducing agent is dodecyl sulfonate (Takahashi, paragraph 0100; Minamihata, paragraphs 0031); a choline bicarbonate salt (Shi; paragraph 0124); hydrogen peroxide (Takahashi, paragraph 0042); and the pH of the chemical mechanical polishing composition is from 5-8 (Takahashi, paragraph 0124).
Regarding claim 23, Takahasshi in view of Minamihata and Shi discloses wherein the chemical mechanical polishing composition consisting of colloidal silica (Takahashi, paragraph 0077); the at least two chelators are different and are independently selected from glycine and alanine (Takahashi, claim 1); a corrosion inhibitor including imidazole (Takahashi, paragraph 0053); the at least one Cu static etching rate reducing agent is sodium dodecyl sulfonate (Takahashi, paragraph 0100; Minamihata, paragraphs 0031); a choline bicarbonate salt (Takahashi, paragraph 010; Shi, paragraph 0124); hydrogen peroxide (Takahashi, paragraph 0042); and the pH of the chemical mechanical polishing composition is from 6-8 (Takahashi, paragraph 0124).
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
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