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 claims 1-9 in the reply filed on November 14, 2025 is acknowledged. Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 1-2, they recite MPS, D10, D50 and D90 for “primary particles”. However, the specification of the current application discloses that these values are measured by dynamic light scattering (DLS, paragraphs 0034 and 0043). DLS measures particle diameter of secondary particles, as evidenced by Tsuchiya et al. (paragraph 0023, JP2014151424, a machine-translated English version is used). For the purpose of this examination, the examiner interprets the limitation “primary particles” as “particles”.
Regarding claims 2-9, they are indefinite due to their dependency on claim 1.
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 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hains et al. (US20210301178).
Regarding claim 1, Hains discloses a polishing composition for a semiconductor process (abstract and paragraph 0004), the polishing composition comprising: polishing particles (colloidal silica read on polishing particles, abstract), wherein the polishing particles have a Ds value of 752 nm2 according to Equation 1 as recited in the instant claim (colloidal silica 1D in Table 1C, wherein D50=46.7nm and D10=37.8nm; D50 is an approximate estimation of mean particle size, as evidenced by Figs. 1-4 in Horiba Technical Note as cited by IDS filed on August 27, 2024).
Regarding claim 3, Hains discloses wherein the MPS value is from 25 nm to 55 nm (D50=46.7nm, colloidal silica 1D, Table 1C).
Regarding claims 4-5, it is noted that the claims are drawn to a product (polishing composition). As shown above in the rejection of claim 1, Hains discloses a product which reasonably appears to be identical with a product claimed in a product-by-process claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113 I.
Regarding claim 6, Hains discloses wherein a zeta potential of the polishing composition is 28.5 mV (colloidal silica 1D, Table 1B).
Regarding claim 7, Hains discloses wherein the polishing composition comprises from 0.5 wt % to 10 wt % of the polishing particles (paragraphs 0034 and 0111; colloidal silica 1D is prepared as described in Example 13 of US9422456, which has 1.0, 2.0, and 3.0 weight percent of the colloidal silica abrasive particles, lines 20-25, column 30).
Regarding claim 8, Hains discloses wherein the polishing particles comprise colloidal silica (colloidal silica 1D, Table 1C).
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 9 is rejected under 35 U.S.C. 103 as being obvious over Hains et al. (US20210301178) as applied to claim 1 above.
Regarding claim 9, Hains discloses wherein a pH of the polishing composition is from 1 to 5 (claim 13), 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).
Claims 1-3 and 7-8 are rejected under 35 U.S.C. 103 as being obvious over Hamaguchi (US20130309946).
Regarding claim 1, Hamaguchi discloses a polishing composition (polishing liquid, abstract), the polishing composition comprising: polishing particles (colloidal silica read on polishing particles, abstract and Table 2), wherein the polishing particles have a Ds value of 51 nm2 to 1547 nm2 according to Equation 1 as recited in the instant claim (abrasive grains a-f, Table 2; D50 is an approximate estimation of mean particle size, as evidenced by Figs. 1-4 in Horiba Technical Note as cited by IDS filed on August 27, 2024). The range disclosed by Hamaguchi 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). It is noted that claim 1 is drawn to a composition claim and the recitation of "for a semiconductor process " in the preamble is considered as intended use of the claimed composition. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claim 2, Hamaguchi discloses wherein the polishing particles have a Db value of 96 nm2 to 1573 nm2 according to Equation 2 as recited in the instant claim (abrasive grains a-f, Table 2; D50 is an approximate estimation of mean particle size, as evidenced by Figs. 1-4 in Horiba Technical Note as cited by IDS filed on August 27, 2024). The range disclosed by Hamaguchi encompasses the range recited in the instant claim.
Regarding claim 3, Hamaguchi discloses wherein the MPS value is from 10 nm to 66 nm (abrasive grains a-f, Table 2; D50 is an approximate estimation of mean particle size, as evidenced by Figs. 1-4 in Horiba Technical Note as cited by IDS filed on August 27, 2024). The range disclosed by Hamaguchi encompasses the range recited in the instant claim.
Regarding claim 7, Hamaguchi discloses wherein the polishing composition comprises 3% of the polishing particles (paragraph 0219).
Regarding claim 8, Hamaguchi discloses wherein the polishing particles comprise colloidal silica (Table 2).
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