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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 3-10, specifically, the applied prior art fails to teach the accelerator is the claimed cerium salt and the composition further comprises a surfactant as the current amendments, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 4,6 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR-2020-0057566 A (KR-566, herein after; provided with the IDS dated 10/23/2023) in view of Minamihaba et al (US 2006/0243702) and Komatsu et al (US 2019/0367777).
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), wherein the cerium salt may comprise trivalent and/or tetravalent cerium ions (e.g., tetravalent cerium ions).Examples of such cerium salts include cerium nitrate, cerium ammonium nitrate, cerium sulfate, cerium chloride, cerium carbonate, cerium acetate, cerium phosphate, hydrates thereof, or combinations thereof [0038] in the translated version); and aforesaid “cerium salt” reads on the claimed “accelerator”.
and 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 a stabilizer, which is represented by Formula 3.
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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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 Minamihaba et al's teaching of introducing picolinic acid as a first complexing agent into the teaching of KR-566 for effectively forming a protective coating during polishing process as suggested by Minamihaba et al ([0008],[0023]).
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].
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.
Minamihaba et al disclose that the CMP slurry for metallic film according to one embodiment of the present invention may include, as required, a surfactant [0035] but fail to disclose specific the surfactant comprises a nonionic fluorine- based polymer compound.
However, Komatsu et al disclose a polishing composition comprises a nonionic surfactant of fluorine- based compound [00254] to improve the dispersibility and stability of the polishing composition [0251].
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 Komatsu et al's teaching of introducing nonionic surfactant into the teaching of modified KR-566 for improving the dispersibility and stability of the polishing composition as suggested by Komatsu et al.
The modified teaching above still fails to disclose the polishing composition has a value of less than 38% as calculated by Equation 1 as the context of claim 1.
However, examiner noted that the polishing performance or removal rate of a particular material 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 value fo less than 38% as calculated by equation 1. 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, 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 [0027].
Minamihaba et al also disclose above that the second complexing agent may comprises lactic acid (resemble as the claimed hydroxyl acid) [0027].
Regarding claim 6, Minamihaba et al disclose that the pH of the slurry according to one embodiment of the present invention, there is not any particular limitation so that it can be adjusted depending on specific application. For example, a pH adjusting agent being used [0037].
Regarding claims 8-9, Minamihaba et al disclose the slurry used in the polishing of the Cu film was prepared as follows. First of all, each of components was mixed with deionized water according to the following recipe to obtain a stock liquid of slurry. Incidentally, the content of each component indicates a ratio based on a total quantity of slurry [0112]; and the pH of the slurry is about 5 [0116].
Regarding claim 10, Minamihaba et al disclose a polishing method according to another aspect of the present invention comprises contacting a semiconductor substrate having a metallic film with a polishing pad attached to a turntable; and supplying a metallic film-CMP slurry onto the polishing pad to polish the metallic film [0009]; and the polishing slurry composition having all the components including abrasive, stabilizer and accelerator (see the rejection for claim 1 above).
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.
Claim 1,4,6 and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-11 of copending Application No. 18/255,600 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention in the co-pending application ‘600 broadly encompasses the instant invention because the surfactant (claim 7 in application’ 600) broadly reads on the specific surfactant in the instant application; and the weight ratio of the stabilizer and accelerator in application’600 would have been obvious as both the amino acid and the stabilizer of Formula 3 exist in both the claimed inventions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
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).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 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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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/Primary Examiner, Art Unit 1713