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 Arguments
Applicant's arguments, see Remarks filed on September 3, 2026 with respect to claims 1-2 have been fully considered but they are not persuasive.
The Applicant argues that Akutsu discloses a pH range without sufficient specificity to constitute anticipation. However, Akutsu discloses that the pH of the polishing agent is preferably 3 .0 or more and 12.0 or less (paragraph 0148), which clearly specifies 3.0 as a selectable pH value for the polishing composition. The pH value of 3.0 specified by Akutsu is within the range recited in claim 1 of the current application. "If the prior art discloses a point within the claimed range, the prior art anticipates the claim." UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023).
The Applicant further argues that “without the teachings of the instant application as filed, it would not be obvious to include a polymer that comprises a structure unit derived from a (meth)acrylic acid ester, as recited in claim 2”. 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).
Applicant's arguments, see Remarks filed on September 3, 2026 with respect to claim 4 have been fully considered and are persuasive. Therefore, the previous rejections to the claim, as set forth in Office Action mailed on June 3, 2026, have been withdrawn.
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)
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 4, the cited prior art of record, taken either alone or in combination, fails to disclose or render obvious a polishing liquid wherein a weight average molecular weight of the polymer is 50000 or more, in the context of the instant claim.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hanaso et al. (US20220162476) discloses a polishing liquid comprising: abrasive grains comprising a hydroxide of a tetravalent metal element (paragraphs 0039-0040) and polyvinylpyrrolidone with a molecular weight of 10000 or less (paragraphs 0096 and 0103), wherein the polishing liquid has a pH of 3.0 or more (paragraph 0114).
Xu et al. (US20050028450) discloses a polishing composition comprising polyvinylpyrrolidone with a molecular weight of less than 20000 (paragraphs 0009 and 0034).
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.
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.
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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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