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.
Election/Restrictions
Applicant’s election without traverse of Group I drawn a composition, claims 1-15 and 20, in the reply filed on December 18, 2025 is acknowledged. Claims 16-19 and 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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). 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, 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). 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, 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).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-8 and 15 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 4-5, 7 and 20-22 of copending Application No. 18294839 (hereinafter, ‘839).
Regarding claim 1, ‘839 claims a polishing liquid for CMP (claim 1), comprising: abrasive grains (claim 1); an additive (claim 1); and water (claim 1), wherein the abrasive grains include cerium-based particles (claim 1), and the additive includes (A1) a 4-pyrone-based compound represented by General Formula (1) as recited in the instant claim (claim 1) and (B) a compound having two or more nitrogen atoms to which a hydroxyalkyl group is bonded (ethylenedinitrilotetraethanol, claim 4).
Regarding claim 2, ‘839 claims 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 (claim 20).
Regarding claim 3, ‘839 claims wherein a content of the component (A1) is 0.01 to 5% by mass (claim 21).
Regarding claim 4, ‘839 claims wherein the component (B) includes an ethylenedinitrilotetraethanol (claim 4).
Regarding claim 5, ‘839 does not claim wherein the component (B) includes an ethylenedinitrilotetrapropanol. However, ‘839 claims wherein the component (B) includes an ethylenedinitrilotetraethanol (claim 4). Because ethylenedinitrilotetrapropanol is similar in chemical structure as ethylenedinitrilotetraethanol, it would be a prima facie case of obviousness to substitute ethylenedinitrilotetraethanol in the polishing liquid of ‘839 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, ‘839 claims wherein a content of the component (B) is 0.001 to 5% by mass (claim 7).
Regarding claim 7, ‘839 claims wherein the additive further includes a saturated monocarboxylic acid (claim 22).
Regarding claim 8, ‘839 claims wherein a pH is 8.0 or less (claim 5).
Regarding claim 15, ‘839 claims a polishing liquid set for CMP (claim 24), 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 (claim 24).
Claims 1-5, 7-12 and 14-15 and 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 6-8, 11-13, 16-20 and 25 of copending Application No. 18294859 (hereinafter, ‘859).
Regarding claim 1, ‘859 claims a polishing liquid for CMP (claim 1), comprising: abrasive grains (claim 1); an additive (claim 1); and water (claim 1), wherein the abrasive grains include cerium-based particles (claim 1), and the additive includes (A1) a 4-pyrone-based compound represented by General Formula (1) as recited in the instant claim (claim 1) and (B) a compound having two or more nitrogen atoms to which a hydroxyalkyl group is bonded (claim 6).
Regarding claim 2, ‘859 claims 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 (claim 2).
Regarding claim 3, ‘859 claims wherein a content of the component (A1) is 0.01 to 5% by mass (claim 3).
Regarding claim 4, ‘859 claims wherein the component (B) includes an ethylenedinitrilotetraethanol (claim 7).
Regarding claim 5, ‘859 claims wherein the component (B) includes an ethylenedinitrilotetrapropanol (claim 8).
Regarding claim 7, ‘859 claims wherein the additive further includes a saturated monocarboxylic acid (claim 7).
Regarding claim 8, ‘859 claims wherein a pH is 8.0 or less (claim 11).
Regarding claim 9, ‘859 claims a polishing liquid for CMP (claim 12), comprising: abrasive grains (claim 12); an additive (claim 12); and water (claim 12), wherein the abrasive grains include cerium-based particles (claim 12), and the additive includes (A2) picolinic acid (claim 12) and (B) a compound having two or more nitrogen atoms to which a hydroxyalkyl group is bonded (claim 16).
Regarding claim 10, ‘859 claims wherein a content of the component (A2) is 0.001 to 5% by mass (claim 13).
Regarding claim 11, ‘859 claims wherein the component (B) includes an ethylenedinitrilotetraethanol (claim 17).
Regarding claim 12, ‘859 claims wherein the component (B) includes an ethylenedinitrilotetrapropanol (claim 18).
Regarding claim 14, ‘859 claims wherein a pH is 8.0 or less (claim 19).
Regarding claim 15, ‘859 claims a polishing liquid set for CMP (claim 20), 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 (claim 20).
Regarding claim 20, ‘859 claims a polishing liquid set for CMP (claim 25), 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 (claim 25).
Claims 1-5, 8 and 15 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4, 8, 12, 16 and 18 of copending Application No. 18857680 (hereinafter, ‘680).
Regarding claim 1, ‘680 claims a polishing liquid for CMP (claim 1), comprising: abrasive grains (claim 1); an additive (claim 1); and water (claim 1), wherein the abrasive grains include cerium-based particles (claim 16), and the additive includes (A1) a 4-pyrone-based compound represented by General Formula (1) as recited in the instant claim (claim 1) and (B) a compound having two or more nitrogen atoms to which a hydroxyalkyl group is bonded (ethylenedinitrilotetraethanol, claim 2).
Regarding claim 2, ‘680 claims 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 (claim 8).
Regarding claim 3, ‘680 claims wherein a content of the component (A1) is 0.01 to 5% by mass (claim 4).
Regarding claim 4, ‘680 claims wherein the component (B) includes an ethylenedinitrilotetraethanol (claim 2).
Regarding claim 5, ‘680 claims wherein the component (B) includes an ethylenedinitrilotetraepropanol (claim 3).
Regarding claim 8, ‘680 claims wherein a pH is 8.0 or less (claim 18).
Regarding claim 15, ‘680 claims a polishing liquid set for CMP (claim 12), 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 (claim 12).
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
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