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
Claims 25-31 and 33-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/23/2026.
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, 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.
Claims 1-2, 4-7, 15-24, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Oota et al. (US20160137881) in view of Kato et al. (US20140154884).
Regarding claim 1, Oota discloses a polishing liquid for CMP (abstract), comprising:
abrasive grains (abstract); an additive (a component other than abrasive and water, abstract); and water (abstract), wherein
the abrasive grains include cerium-based particles (abstract), and
the additive includes (A) a 4-pyrone-based compound represented by General Formula (1) recited in the instant claim (abstract and paragraph 0012).
Oota is silent about the polishing liquid comprises (B1) a compound of which a 1 mM aqueous solution has a pH of 3.7 or more, and a molecular weight of the component (B1) is less than 1000.
However, Oota teaches that the polishing liquid is used for polishing silicon oxide during the formation of STI structure (paragraphs 0108 and 0116, Fig. 1). In addition, Kato teaches that a compound comprising two amino groups, such as N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine, added to a polishing liquid (slurry) has the benefit of improving polishing uniformity for polishing silicon oxide in the formation of STI structure (paragraph 0050, Figs. 1-3), and further lists triethanolamine as a suitable pH adjustor (paragraph 0049).
Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to incorporate N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine (i.e., ethylenedinitrilotetraethanol), which is a compound having two nitrogen atoms to which a hydroxyalkyl group is bonded, in the polishing composition of Oota, in order to improve polishing uniformity as motivated by Kato (paragraph 0050). Furthermore, the Courts have held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Regarding claim 2, Kato discloses wherein the component (B1) includes an ethylenedinitrilotetraethanol (N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine, paragraph 0051).
Regarding claim 4, Kato discloses wherein the component (B1) includes an ethylenedinitrilotetraethanol (N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine, paragraph 0051).
Regarding claim 5, Oota discloses wherein a pH is 8.0 or less (paragraph 0099).
Regarding claim 6, Kato teaches wherein the component (B1) includes triethanolamine (paragraph 0049).
Regarding claim 7, Kato discloses wherein a content of the component (B1) is less than 1% by mass (paragraph 0052), which overlaps with the range recited in the instant claim. Kato further teaches that the content is a result-effective variable impacting polishing rate, polishing uniformity, and erosion protective effect (paragraph 0052). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to optimize the content of the component (B1) to achieve superior polishing results as taught by Kato. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable range by routine experimentation and there is no evidence of the criticality of the claimed range. See MPEP 2144.05 II.
Regarding claim 15, Oota discloses a polishing liquid for CMP (abstract), comprising:
abrasive grains (abstract); an additive (a component other than abrasive and water, abstract); and water (abstract), wherein
the abrasive grains include cerium-based particles (abstract).
Oota is silent towards the polishing liquid comprising the additive includes a compound having two or more nitrogen atoms to which a hydroxyalkyl group is bonded.
However, Oota teaches that the polishing liquid is used for polishing silicon oxide during the formation of STI structure (paragraphs 0108 and 0116, Fig. 1). In addition, Kato teaches that a compound comprising two amino groups, such as N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine, added to a polishing liquid (slurry) has the benefit of improving polishing uniformity for polishing silicon oxide in the formation of STI structure (paragraph 0050, Figs. 1-3).
Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to incorporate N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine (i.e., ethylenedinitrilotetraethanol), which is a compound having two nitrogen atoms to which a hydroxyalkyl group is bonded, in the polishing composition of Oota, in order to improve polishing uniformity as motivated by Kato (paragraph 0050). Furthermore, the Courts have held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Regarding claim 16, Kato discloses the polishing liquid for CMP according to claim 15, wherein the compound having two or more nitrogen atoms to which a hydroxyalkyl group is bonded includes an ethylenedinitrilotetraethanol (paragraph 0050).
Regarding claim 17, Oota discloses the polishing liquid for CMP according to claim 15, wherein a pH of the polishing liquid for CMP is 8.0 or less (paragraph 0099).
Regarding claim 18, Oota discloses the polishing liquid for CMP according to claim 1, wherein the cerium-based particles contain cerium oxide (abstract, paragraph 0080).
Regarding claim 19, Oota discloses the polishing liquid for CMP according to claim 1, wherein a content of the abrasive grains is 0.01 to 10% by mass (paragraph 0131-133).
Regarding claim 20, Oota discloses the polishing liquid for CMP according to claim 1, wherein the component (A) includes at least one selected from the group consisting of 3-hydroxy-2-methyl- 4-pyrone, 5-hydroxy-2-(hydroxymethyl)-4-pyrone, and 2-ethyl-3-hydroxy-4-pyrone (paragraph 0031).
Regarding claim 21, Oota discloses the polishing liquid for CMP according to claim 1, wherein a content of the component (A) is 0.001 to 5% by mass (paragraph 0033).
Regarding claim 22, Oota discloses the polishing liquid for CMP according to claim 1, wherein the additive further includes a saturated monocarboxylic acid (paragraph 0073-76).
Regarding claim 23, Oota discloses the polishing liquid for CMP according to claim 22, wherein a content of the saturated monocarboxylic acid is 0.0001 to 5% by mass (paragraph 0076).
Regarding claim 24, Oota discloses a polishing liquid set for CMP (paragraph 0102), comprising: constituent components of the polishing liquid for CMP according to claim 1, separately stored as a first liquid and a second liquid, wherein the first liquid contains the abrasive grains and water, and the second liquid contains at least one of the additives and water (paragraph 0102).
Regarding claim 32, Oota discloses a polishing liquid set for CMP, comprising:
constituent components of the polishing liquid for CMP according to claim 15, separately stored as a first liquid and a second liquid, wherein the first liquid contains the abrasive grains and water, and the second liquid contains at least one of the additives and water (paragraph 0102).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Oota et al. (US20160137881) in view of Kato et al. (US20140154884), as applied to claims 1-2, 4-5, 7 and 24 above, and further in view of Grumbine et al. (US20150376461).
With respect to claim 3, Oota doesn’t teach the composition further includes hydroxypyridine.
However, Grumbine teaches a polishing composition for a silicon oxide material, wherein the composition further includes hydroxypyridine (para 9, 48, 49).
It would have been obvious for one skilled in the art before the effective filing date of the invention to add hydroxypyridine, in light of Tetsuya, because he teaches that it serves as a pH adjuster and/or a buffer and improves the within wafer uniformity of the polishing rate (para 48, 49).
Claims 8-11, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Oota et al. (US20160137881) in view of Chang et al. (US20210115301).
Regarding claim 8, Oota discloses a polishing liquid for CMP (abstract), comprising:
abrasive grains (abstract); an additive (a component other than abrasive and water, abstract); and water (abstract), wherein
the abrasive grains include cerium-based particles (abstract), and
the additive includes (A) a 4-pyrone-based compound represented by General Formula (1) recited in the instant claim (abstract and paragraph 0012), [in the formula, X11, X12, and X13 are each independently a hydrogen atom or a monovalent substituent].
Oota is silent to: (B2) a cyclic compound having at least one functional group selected from the group consisting of a carboxy group, a carboxylate group, an amino group, and a hydroxy group: [Chemical Formula 2].
However, Chang teaches additives for ceria abrasive-based polishing compositions for polishing dielectric layers (abstract) comprising:
By way of example, when a polishing composition comprises picolinic acid in lower concentrations, the picolinic acid may function as a rate enhancer. However, when the polishing composition comprises picolinic acid in higher concentrations, the picolinic acid may function as a self-stopping agent. For example, picolinic acid may function as a rate enhancer at point of use concentrations less than about 1000 ppm by weight. (paragraph 0043); and
Suitable rate enhancers include, for example, picolinic acid, nicotinic acid, quinaldic acid, iso-nicotinic acid, acetic acid, and 4-hydroxybenzoic acid. As noted above, picolinic acid may function as either a rate enhancer or inhibitor depending on the concentration and may be advantageous in certain embodiments (e.g., as disclosed in the Examples that follow). (paragraph 0075); and
The polishing composition may yet further include one or both of a pH-adjusting agent and/or a pH buffering agent. The pH-adjusting agent may be substantially any suitable pH-adjusting agent, such as an alkyl amine, an alcohol amine, quaternary amine hydroxide, ammonia, or a combination thereof. In certain embodiments, a suitable pH adjusting agent may include triethanolamine (TEA), tetramethylammonium hydroxide (TMAH or TMA-OH), or tetraethylammonium hydroxide (TEAH or TEA-OH). (paragraph 0079).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ceria abrasive-based dielectric polishing composition, of Oota, to include picolinic acid as a rate enhancing agent or stopping agent, and quinaldic acid as a rate enhancing agent, and triethanolamine as a pH adjusting agent, of the dielectric polishing composition of Chang, in order to achieve the desired effect of each of the additives and thereby form a dielectric polishing agent with improved removal rates and self-stopping ability, as taught by Chang (abstract).
Regarding claim 9, Oota discloses the polishing liquid for CMP according to claim 8, wherein an average particle diameter of the abrasive grains is more than 100 nm (paragraph 0083).
Regarding claim 10, Chang discloses the polishing liquid for CMP according to claim 8, wherein the component (B2) includes at least one selected from the group consisting of an aromatic aminocarboxylic acid, a quinolinecarboxylic acid, a pyridinecarboxylic acid (picolinic acid, para. 0043), and salts thereof.
Regarding claim 11, Chang discloses the polishing liquid for CMP according to claim 8, wherein the component (B2) includes at least one selected from the group consisting of quinaldic acid (quinaldic acid, paragraph 0075) and a salt thereof.
Regarding claim 13, Chang discloses the polishing liquid for CMP according to claim 8, wherein the component (B2) includes at least one selected from the group consisting of picolinic acid (picolinic acid, para. 0043), and a salt thereof.
Regarding claim 14, Chang discloses the polishing liquid for CMP according to claim 8, wherein a content of the component (B2) is 0.001 to 5% by mass (paragraph 0043).
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 by, 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 1-2, 4, 15-17 and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8 of copending Application No. 18/294889 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims 1 and 2 are anticipated by claim 4, and by claim 5, (as each depends from claim 1) of ‘736.
Instant claim 4 is anticipated by claim 4 (as it depends from claim 1) of ‘889.
Instant claim 15 is anticipated by claim 1 of ‘889.
Instant claim 16 is anticipated by claim 4 of ‘889.
Instant claim 17 is anticipated by claim 8 of ‘889.
Instant claim 18 is anticipated by claim 1 of ‘889.
Instant claim 20 is anticipated by claim 2 of ‘889.
Instant claim 21 is anticipated by claim 3 of ‘889.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 5, 7, 22 and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 7-8 and 15 of copending Application No. 18/294889.
Instant claim 5 is rendered obvious by claim 4 (or claim 5) in view of claim 8 of ‘889.
Instant claim 7 is rendered obvious by claim 4 (or claim 5) in view of claim 6 of ‘889.
Instant claim 22 is rendered obvious by claim 4 (or claim 5) in view of claim 7 of ‘889.
Instant claim 24 is rendered obvious by claim 4 (or claim 5) in view of claim 15 of ‘889.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4, 15-17 and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-6 of copending Application No. 18/857736 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims 1 and 2 are anticipated by claim 5, (as each depends from claim 1) of ‘736.
Instant claim 4 is anticipated by claim 5 (as it depends from claim 1) of ‘736
Instant claim 15 is anticipated by claim 5 of ‘736.
Instant claim 16 is anticipated by claim 5 of ‘736.
Instant claim 17 is anticipated by claim 6 of ‘736.
Instant claim 20 is anticipated by claim 2 of 736.
Instant claim 21 is anticipated by claim 3 of ‘736.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 5 and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-6 and 15 of copending Application No. 18/857736.
Instant claim 5 is rendered obvious by claim 5 in view of claim 6 of ‘736.
Instant claim 24 is rendered obvious by claim 5 in view of claim 15 of ‘736.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 15-16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-8 of copending Application No. 18/294859 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claims 1 and 2 are anticipated by claim 7, and by claim 8, (as each depends from claims 1 and 6) of ‘859.
Instant claim 4 is anticipated by claim 7 of ‘859.
Instant claim 15 is anticipated by claim 7 and by claim 8 of ‘859.
Instant claim 16 is anticipated by claim 7 of ‘859.
Instant claim 18 is anticipated by claim 7 of ‘859.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 5, 7, 17, 20-21, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 7, 11, and 20 of copending Application No. 18/294859.
Instant claim 5 is rendered obvious by claim 7 (as it depends from claim 1) in view of claim 11 of ‘859.
Instant claim 7 is rendered obvious by claim 7 in view of claim 5 of ‘859.
Instant claim 17 is rendered obvious by claim 7 in view of claim 11 of ‘859.
Instant claim 20 is rendered obvious by claim 7 in view of claim 2 of ‘859.
Instant claim 21 is rendered obvious by claim 7 in view of claim 3 of ‘859.
Instant claim 24 is rendered obvious by claim 5 in view of claim 20 of ‘859.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 4-5, 7, 15-18, 20-21 and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5, 7-8, 11, and 19 of copending Application No. 18/857680.
Instant claim 1 is rendered obvious by claim 2 in view of claim 7 of ‘680.
Instant claim 2 is rendered obvious by claim 2 in view of claims 7 and 8 of ‘680.
Instant claim 4 is rendered obvious by claim 2 in view of claims 7 and 2 of ‘680.
Instant claim 5 is rendered obvious by claim 2 in view of claim 7 and 11 of ‘680.
Instant claim 7 is rendered obvious by claim 2 in view of claim 7 and 4 of ‘680.
Instant claims 15 and 16 are rendered obvious by claim 2 in view of claim 7 of ‘680.
Instant claim 17 is rendered obvious by claim 2 in view of claim 7 and 11 of ‘680.
Instant claim 18 is rendered obvious by claim 2 in view of claim 7 of ‘680.
Instant claim 20 is rendered obvious by claim 2 in view of claim 8 of ‘680.
Instant claim 21 is rendered obvious by claim 2 in view of claim 5 of ‘680.
Instant claim 24 is rendered obvious by claim 2 in view of claim 19 of ‘680.
Allowable Subject Matter
Claim 12 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: The prior art of record fails to teach or suggest, alone or in combination, the feature of claim 12 of “wherein the component (B2) includes at least one selected from the group consisting of anthranilic acid and a salt thereof.”, in conjunction with the limitations of claim 8, from which it depends.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: The additionally cited reference are cited to show polishing compositions comprising 4-pyrole compounds [Abstracts].
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/CHRISTOPHER REMAVEGE/Examiner, Art Unit 1713
Prosecution Insights