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.
Terminal Disclaimer
The terminal disclaimer filed on May 4, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the full statutory term of prior US Patent Nos. 18294839, 18294859 and 18857680 has been reviewed and is accepted. The terminal disclaimer has been recorded. The previous double patenting rejections, as set forth in the Office Action mailed on February 3, 2026, have been withdrawn.
Response to Amendments/Arguments
The withdrawal of claims 16-22 as filed on May 4, 2026 is acknowledged.
Applicant's arguments, see Remarks/Arguments, filed on May 4, 2026 with respect under 35 U.S.C. § 103 as set forth in the Office Action mailed on February 3, 2026 have been fully considered but they are not persuasive.
The Applicant argues that one of ordinary skill in the art would not have any reason to combine the Oota reference with the Kato reference. 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), while Kato teaches that a compound having two nitrogen atoms to which a hydroxyalkyl group is bonded, 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 0050-0052, 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, 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.
The Applicant argues that “while Kato discloses that examples of abrasive grains include ceria, Kato teaches that silica is preferable since it is superior in polishing rate and dispersion stability of abrasive grains and particularly exhibits the erosion protective effect of Kato's invention”. However, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 II). In addition, Kato is relied on teaching the effect of a diamine compound, not a preferred abrasive.
The Applicant argues that Kato explicitly teaches away from a pH of less than 9.0. However, Kato specifically teaches that the pH of the slurry for chemical mechanical polishing of the present invention is preferably 9-13 (paragraph 0049), while Oota specifically discloses that the pH of the slurry for chemical mechanical polishing (polishing liquid) is preferably 9 or less (paragraph 0099), which overlaps with the range disclosed by Kato.
The Applicant further argues that one of ordinary skill in the art would not have any reason to combine the Minami reference with the Kato reference. However, Minami teaches that the polishing liquid is used for polishing silicon oxide during formation of STI structure (paragraphs 0002 and 0160, Fig. 2), while Kato teaches that a compound having two nitrogen atoms to which a hydroxyalkyl group is bonded, 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 0050-0052, 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, which is a compound having two nitrogen atoms to which a hydroxyalkyl group is bonded, in the polishing composition of Minami, in order to improve polishing uniformity as motivated by Kato.
The Applicant argues that “Minami teaches abrasive grains including a hydroxide of a tetravalent metal element (paragraph [0056]). In contrast and as noted above, while Kato discloses that examples of abrasive grains include ceria, Kato teaches that silica is preferable since it is superior in polishing rate and dispersion stability of abrasive grains and particularly exhibits the erosion protective effect of Kato's invention (paragraph [0044]). Hydroxides of a tetravalent metal element and silica are fundamentally different and provide completely different polishing mechanisms. A person skilled in the art would not use a component of a slurry containing silica abrasive grains for a polishing liquid containing abrasive grains including a hydroxide of a tetravalent metal element”. However, Minami clearly names silica as an example abrasive in the polishing liquid (paragraph 0058).
The Applicant argues that Kato explicitly teaches away from a pH of less than 9.0. However, Kato specifically teaches that the pH of the slurry for chemical mechanical polishing of the present invention is preferably 9-13 (paragraph 0049), while Minami specifically discloses that the pH of the slurry for chemical mechanical polishing (polishing liquid) is preferably 9 or less (paragraph 0139), which overlaps with the range disclosed by Kato.
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.
Claims 1-8 and 15 are rejected under 35 U.S.C. 103 as being unpatentbale 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 (A1) 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 (B) 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), while Kato teaches that a compound having two nitrogen atoms to which a hydroxyalkyl group is bonded, 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 0050-0052, 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, 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. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Regarding claim 2, Oota discloses wherein the component (A1) 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 3, Oota discloses wherein a content of the component (A1) is 0.01 to 5% by mass (paragraph 0033).
Regarding claim 4, Kato discloses wherein the component (B) includes an ethylenedinitrilotetraethanol (N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine, paragraph 0051).
Regarding claim 5, Kato discloses ethylenedinitrilotetraethanol (N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine, paragraph 0051). Because ethylenedinitrilotetrapropanol is similar in chemical structure as ethylenedinitrilotetraethanol (N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine), it would be a prima facie case of obviousness to substitute ethylenedinitrilotetraethanol in the polishing liquid of Ooota in view of Kato with ethylenedinitrilotetrapropanol, with a reasonable expectation of success. Rejections based on close structural similarity is found on the expectation that compounds similar in structure will have similar properties. See MPEP 2144.09 I.
Regarding claim 6, Kato discloses wherein a content of the component (B) 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 (B) 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 7, Oota discloses wherein the additive further includes a saturated monocarboxylic acid (claim 4).
Regarding claim 8, Oota discloses wherein a pH is 8.0 or less (paragraph 0099).
Regarding claim 15, Oota discloses 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).
Claims 9-14 and 20 are rejected under 35 U.S.C. 103 as being unpatentbale over Minami et al. (US20160222252) in view of Kato et al. (US20140154884).
Regarding claim 9, Minami discloses a polishing liquid for CMP (abstract), comprising: abrasive grains (abstract); an additive (abstract); and water (abstract), wherein the abrasive grains include cerium-based particles (abstract and paragraph 0023), and the additive includes (A2) picolinic acid (abstract and paragraph 0126). Minami is silent about the polishing liquid comprises (B) a compound having two or more nitrogen atoms to which a hydroxyalkyl group is bonded. However, Minami teaches that the polishing liquid is used for polishing silicon oxide during formation of STI structure (paragraphs 0002 and 0160, Fig. 2), while Kato teaches that a compound having two nitrogen atoms to which a hydroxyalkyl group is bonded, 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 0050-0052, 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, which is a compound having two nitrogen atoms to which a hydroxyalkyl group is bonded, in the polishing composition of Minami, in order to improve polishing uniformity as motivated by Kato. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
Regarding claim 10, Minami discloses wherein a content of the component (A2) is 0.002 to 0.02% by mass (0.2 mmol/L to 2mmol/L, paragraph 0128; the conversion of mmol/L to mass% is based on molecular mass of picolinic acid = 123, and assuming 1L of the polishing liquid has a mass of around 1000g).
Regarding claim 11, Kato discloses wherein the component (B) includes an ethylenedinitrilotetraethanol (N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine, paragraph 0051).
Regarding claim 12, Kato discloses ethylenedinitrilotetraethanol (N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine, paragraph 0051). Because ethylenedinitrilotetrapropanol is similar in chemical structure as ethylenedinitrilotetraethanol (N,N,N',N'-tetrakis(2-hydroxyethyl)ethylenediamine), it would be a prima facie case of obviousness to substitute ethylenedinitrilotetraethanol in the polishing liquid of Ooota in view of Kato with ethylenedinitrilotetrapropanol, with a reasonable expectation of success. Rejections based on close structural similarity is found on the expectation that compounds similar in structure will have similar properties. See MPEP 2144.09 I.
Regarding claim 13, Kato discloses wherein a content of the component (B) 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 (B) 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 14, Minami discloses wherein a pH is 8.0 or less (paragraph 0139).
Regarding claim 20, Minami discloses polishing liquid set for CMP (paragraph 0152), comprising: constituent components of the polishing liquid for CMP according to claim 9, 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 0153).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Park et al. (US20200071566) teaches that a compound having two nitrogen atoms to which a hydroxyalkyl group is bonded, such as N,N,N',N'-tetrakis(2-hydroxypropyl)ethylenediamine, added to a polishing liquid (slurry) has the benefit of inhibiting dishing from occurring on a surface of silicon oxide in the formation of STI structure (paragraphs 0036, 0038 and 0090).
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. 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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