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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-7, in the reply filed on 10/14/2025 is acknowledged. The traversal is on the ground(s) that Lee (KR 2018-0064018) does not disclose the composition comprises cerium salts as a polishing accelerator and also does not disclose the weight ratio of accelerator and the stabilizer, in view of the current amendments to the claim 1. This is found not persuasive because such newly amended claims 1 is obvious over KR-2020-0057566 A (KR-566, herein after; newly cited prior art, provided with the IDS). KR-566 discloses a CMP composition comprises abrasive particles, 0.01 to 10 wt % of cerium salts (reads on the claimed accelerator) [0023] in view of KR 2018-0064018 (provided with the IDS
dated 10/26/2023), wherein the KR-018 discloses a slurry composition for ACL comprises amino acid (abstract), wherein the claimed weight content would have been obvious to optimize or falls with the claimed range, without showing any criticality.
Therefore, the special technical feature disclosed in the claim 1, does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “anionic small molecules” in claim 4 is a relative term which renders the claim indefinite. The term “anionic small molecules” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear from the claim what specific size of "anionic molecule" that applicants consider as "anionic small molecule". For purpose of examination, the examiner will interpret that any anionic molecule will read on applicants "anionic small molecule".
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
Claim(s) 1 and 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR-2020-0057566 A (KR-566, herein after; newly cited prior art, provided with the IDS dated 10/26/2023) in view of KR 2018-0064018 (provided with the IDS dated 10/26/2023; herein after KR-018).
Regarding claim 1, KR-566 discloses a polishing composition for (amorphous carbon layer (ACL), wherein the composition comprises an abrasive particle, cerium salts (see abstract); and the cerium salt is used an amount of 0.01 to 10 wt %; a pH adjustor and balance of solvent [0023]); aforesaid “cerium salts” reads on the claimed accelerator.
Unlike the instant invention, KR-566 fails to teach the composition further comprises an amino acid as a stabilizer.
However, in the same field of endeavor, KR-018 discloses a polishing composition comprises a stabilizer as an additive; and specifically, the stabilizer may be an amino acid compound which may include phosphoric acid, phthalic acid, citric acid, adipic acid, oxalic acid, malonic acid, benzonitrile and a mixture thereof; and the stabilizer is capable of reducing the degradation rate of an oxidizer during polishing ACL (abstract; [0001];[0069].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ KR-018's teaching of introducing the stabilizer into the teaching of KR-566 because the stabilizer is capable of reducing the degradation rate of an oxidizer during polishing ACL as suggested by KR-018 [0069].
The modified teaching above may not explicitly disclose the claimed weight ratio of the accelerator and the stabilizer. However, without showing any criticality of such would have been obvious to optimize for predictable result.
Regarding claim 3, it is noted that the polishing performance reduction rate (PPR) is purely an intended use of the polishing composition or in other words, it is purely an inherent property of the claimed composition and the modified teaching above appears to have the similar composition as the instant invention and expected to have the similar property, namely, the PPR. Additionally, according to the MPEP 2112.01(II) "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 4, KR-018 discloses The polishing accelerator may be at least one selected from the group consisting of nitrilotri (methylphosphonic acid), (aminomethyl) phosphonic acid, (1-aminopropyl) phosphonic acid, iminodi (methylphosphonic acid), diethylenetriaminepentaquis methylphosphonic acid , Amino (phenyl) methylphosphonic acid, ethylenediaminetetra (methylenephosphonic acid), and combinations thereof.
The polishing accelerator may be 0.01 to 0.5% by weight based on 100% by weight of the total composition (paragraphs [0015]-0016].
Regarding claim 5, KR-018 discloses a polishing composition comprises a stabilizer as an additive; and specifically, the stabilizer may be an amino acid compound which may include phosphoric acid, phthalic acid, citric acid, adipic acid, oxalic acid, malonic acid, benzonitrile and a mixture thereof; and the stabilizer is capable of reducing the degradation rate of an oxidizer during polishing ACL (abstract; [0001];[0069].
Regarding claim 6, KR-018 discloses the abrasive may be a conventional metal oxide particle. Preferably, ceria (CeO2), silica (SiO2), alumina (Al2O3), zirconia (ZrO2), titania (TiO2), germania (GeO2) or mixtures thereof ([0063]).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR-2020-0057566 A (KR-566, herein after; newly cited prior art, provided with the IDS dated 10/26/2023) in view of KR 2018-0064018 (provided with the IDS dated 10/26/2023; herein after KR-018) as applied to claim 1 above, and further in view of Reiss et al (US 2022/0089908).
Regarding claim 7, modified KR-566 disclose above for claim 1 and KR—566 also disclose the composition also included a pH adjustor [0023]; but fail to teach the composition further comprises a surfactant.
However, Reiss et al disclose a polishing composition for carbon-based film (abstract) comprises surfactant [0012].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Reiss et al's teaching of introducing surfactant in the polishing composition into the teaching of modified KR-566 for providing desired wettability for the polishing composition as suggested by Reiss et al [0029].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,4 and 6 of co-pending Application No. 18/255,958 (application ‘958) in view of Minamihaba et al (US 2006/0243702).
Regarding claims 1 and 3-6, the difference between the inventions is the application ‘958 requires stabilizer being represented by Formula 3 and the weight ratio of the accelerator and the stabilizer.
However, Minamihaba et al disclose a polishing composition comprising abrasive particles of colloidal silica, oxidizing agent, first and second complexing agent (abstract, [0008]).
Minamihaba et al disclose that the first complexing agent comprises picolinic acid [0024]; and aforesaid picolinic acid reads on the claimed stabilizer compound represented by Formula 3 because the chemical structure of picolinic acid is below:
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Minamihaba et al disclose that the second complexing agent and examples of the second complexing agent include amino acid such as glycine, alanine and tryptophan. Further, an organic acid which capable of exhibiting the same effect as the polishing-accelerating agent can be also employed. Examples of such an organic acid include formic acid, lactic acid, acetic acid, tartaric acid, fumaric acid, glycol acid, phthalic acid, maleic acid, oxalic acid, citric acid, malic acid, malonic acid, glutamic acid [0027]; and aforesaid “amino acid” or “organic acid”, such as lactic acid (hydroxyl acid) as Hydroxy acids are a class of organic acids characterized by the presence of both a hydroxyl group (-OH) and a carboxyl group (-COOH) in their structure). Examples include glycolic acid, lactic acid) corresponds or reads on the claimed “accelerator”.
Minamihaba et al further disclose that the first and the second complexing agents may be employed singly or in combination of two or more kinds thereof [0029].
Minamihaba et al disclose that the oxidizing agent may comprises diammonium cerium nitrate (reads on the claimed cerium salt in the instant claim 1).
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention that the polishing composition include both the picolinic acid (as the first complexing agent) and amino acid or organic acid (as the second complexing agent) as suggested by Minamihaba et al into the instant invention.
The modified teaching above may not explicitly disclose the claimed weight ratio of the accelerator and the stabilizer. However, without showing any criticality of such would have been obvious to optimize for predictable result.
Regarding claim 7, claim 1 in the application’958 includes surfactant; and claim 6 includes pH adjusting agent in application ‘958.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713