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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 18, 2026 has been entered.
Response to Amendments/Arguments
The amendment made to claim 1 and the withdrawal of claim 9 as filed on May 18, 2026, are acknowledged.
Applicant’s arguments with respect to amended claim 1 have been considered but are moot because the arguments do not apply to new ground(s) of rejection in this Office Action necessitated by the amendment made to the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office Action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akutsu et al. (US20150232704).
Regarding claim 1, Akutsu discloses a polishing liquid (a polishing agent, abstract) comprising: abrasive grains comprising a hydroxide of a tetravalent metal element (abstract); a polymer comprising a structure unit represented by Formula (1) recited in the instant claim (polyvinylpyrrolidone, paragraph 0143); polyglycerol (paragraph 0143), a polyoxyethylene distyrenated phenyl ether (Emulgen A-500 produced by Kao Corporation, paragraph 0109) and a liquid medium (paragraph 0146), and wherein the polishing liquid has a pH of 3.0 (paragraph 0148).
Regarding claim 5, Akutsu discloses wherein the hydroxide of a tetravalent metal element is cerium hydroxide (paragraph 0046).
Regarding claim 6, Akutsu discloses wherein a pH is 3.0 (paragraph 0148).
Regarding claim 7, Akutsu discloses wherein the polishing liquid is used for selectively polishing silicon oxide with respect to silicon nitride (paragraph 0161).
Regarding claim 8, Akutsu discloses a polishing liquid set comprising: constituent components of the polishing liquid according to claim 1 separately stored as a first liquid and a second liquid, the first liquid containing the abrasive grains and a liquid medium, the second liquid containing the polymer and a liquid medium (claim 6).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Akutsu et al. (US20150232704) as applied to claim 1 above, in view of Iwano et al. (US20200032106).
Regarding claim 2, Akutsu is silent about wherein the polymer further comprises a structure unit derived from a (meth)acrylic acid ester. However, Akutsu discloses that the polishing liquid comprises water-soluble polymer having the effect of adjusting polishing characteristics such as flatness, in-plane uniformity, the polishing selectivity of silicon oxide to silicon nitride, and the polishing selectivity of silicon oxide to polysilicon (paragraph 0142). In addition, Iwano teaches that water-soluble polymer, having the effect of adjusting polishing properties such as flatness, in-plane uniformity, the polishing selectivity of silicon oxide with respect to silicon nitride, and the polishing selectivity of silicon oxide with respect to polysilicon, is not particularly limited and examples include polyacrylate, a polyacrylic acid copolymer salt and polyvinylpyrrolidone (paragraphs 0140-0141). 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 copolymer comprising structural units derived from an acrylic acid and vinylpyrrolidone as taught by Iwano, as the water-soluble polymer in the polishing liquid of Akutsu, 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).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Akutsu et al. (US20150232704) in view of Iwano et al. (US20200032106) as applied to claim 2 above, in view of Kim et al. (US20190316003).
Regarding claim 3, Akutsu in view of Iwano is silent about wherein the structure unit derived from a (meth)acrylic acid ester is a structure unit represented by Formula (2) as recited in the instant claim. However, Iwano teaches that the water-soluble polymer is not particularly limited and examples include a polyacrylic acid copolymer salt (paragraph 0141). In addition, Kim teaches that a copolymer of vinylpyrrolidone and quaternized dimethylaminoethyl methacrylate can be used for a polishing liquid (paragraphs 0005 and 0010). 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 copolymer of vinylpyrrolidone and quaternized dimethylaminoethyl methacrylate as taught by Kim, as the water-soluble polymer in the polishing liquid of Akutsu in view of Iwano, 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)
Claim 4 is rejected under 35 U.S.C. 103 as being obvious over Akutsu et al. (US20150232704) as applied to claim 1 above.
Regarding claim 4, Akutsu discloses wherein a weight average molecular weight of the polymer is 1000 or more (abstract), which encompasses 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).
Conclusion
And 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.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/JIONG-PING LU/
Primary Examiner, Art Unit 1713
Prosecution Insights