DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 2-10 are objected to because of the following informalities:
Claim 2 recites the limitation "The polishing solution" and “the polishing solution” in line The examiner suggests replacing “The polishing solution” and “the polishing solution” with --The chemical mechanical polishing solution-- and --the chemical mechanical polishing solution-- respectively in order to provide proper antecedent basis.
Claims 3-7, 10 recite the limitation "The polishing solution" in line 1. The examiner suggests replacing “The polishing solution” with --The chemical mechanical polishing solution-- in order to provide proper antecedent basis.
Claim 8 recites the limitation "The polishing solution" and “the polishing solution” in lines 1-2. The examiner suggests replacing “The polishing solution” and “the polishing solution” with --The chemical mechanical polishing solution-- and --the chemical mechanical polishing solution-- respectively in order to provide proper antecedent basis.
Claim 9 recites the limitation "The polishing solution" and “the polishing solution” in line 1. The examiner suggests replacing “The polishing solution” and “the polishing solution” with --The chemical mechanical polishing solution-- and --the chemical mechanical polishing solution-- respectively in order to provide proper antecedent basis.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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.
4. Claim 8 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 8, the phrase “The polishing solution of claim 1 a Fenton’s catalyst or reagent” (emphasis added) is indefinite. It is unclear whether the polishing solution includes or excludes a Fenton’s catalyst or reagent.
Double Patenting
5. 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 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); 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.
6. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/409,601 in view of Gagliardi et al. (US 2021/0189175 A1).
Claim 1 of the current application (18/409,628) differs from claim 1 of copending application 18/409,601 by further discloses an oligomer or polymer having at least 50 mol% R1-C(O)-N[-R2, -R3] units wherein R1, R2, -R3 are selected from at least one of H, saturated or unsaturated aromatic or aliphatic groups, aryl, cycloaliphatic hydrocarbon or a mixture thereof. However, copending application 18/409,601 clearly discloses a polishing composition comprises a solvent and functionalized carbon-based particles. Garliardi discloses a polishing composition comprises a solvent (paragraph 0031), a functionalized carbon-based particles (paragraph 0049) and a thickening agents comprises water-soluble polymers such as polyvinylpyrrolidone, or poly(meth)acrylamide (See paragraph 0036).
It is known in the art that polyvinylpyrrolidone has the formula structure as shown below (See evidence reference Wikipedia, “Polyvinylpyrrolidone” via https://en.wikipedia.org/wiki/Polyvinylpyrrolidone
PNG
media_image1.png
185
334
media_image1.png
Greyscale
Therefore, Gagliardi teaches a polyvinylpyrrolidone polymer having 100 mol% R1-C(O)-N[R2, R3] units, wherein R1 and R2 are selected from cycloaliphatic hydrocarbon, and R3 is saturated aliphatic groups.
It is known in the art that poly(meth)acrylamide has the following structure as shown below (See evidence reference: Chemical Book, “Polymethacrylamide; via https://www.chemicalbook.com/ChemicalProductProperty_EN_CB5398616.htm
PNG
media_image2.png
279
315
media_image2.png
Greyscale
Therefore, Gagliardi teaches a poly(meth)acrylamide polymer having 100 mol% R1-C(O)-N[R2, R3] units, wherein R1 is selected from unsaturated aliphatic, R2 is at least one of H, and R3 is saturated aliphatic.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify co-pending application 18/409,601 in view of Garliardi by including a polymer having at least 50% of R1-C(O)-N[R2, R3] units, wherein R1, R2, R3 are selected from at least one of H, saturated or unsaturated aliphatic group, cycloaliphatic hydrocarbon because these polymer acts as thickening agent to control the viscosity of the polishing solution.
As to claim 2, co-pending application 18/409,601 claim 2 teaches the polishing solution includes a corrosion inhibitor for the metal or the metal nitride.
As to claim 3, co-pending application 18/409,601 claim 3 teaches the surface of the functionalized carbon-based particles includes a graphene, graphite, amorphous carbon or a mixture thereof.
As to claim 4, co-pending application 18/409,601 claim 4 teaches wherein the oxygen-containing functional group is a COOH and its salts, COOOH and its salts, OH-, ketone, oxirane or a combination thereof.
As to claim 5, co-pending application 18/409,601 claim 5 teaches wherein the functionalized carbon-based particles also include an amine (NH2) group, sulfonate (SO3) group or hydrocarbon (C-H) groups.
As to claim 6, co-pending application 18/409,601 claim 6 teaches wherein the metal and metal nitride is selected from the group consisting of cobalt, copper, molybdenum, tungsten, titanium nitride and tantalum nitride.
As to claim 7, co-pending application 18/409,601 claim 7 teaches the polishing solution includes hydrogen peroxide as the peroxy moiety.
As to claim 8, co-pending application 18/409,601 claim 8 teaches the polishing solution includes a Fenton’s catalyst or reagent. Co-pending application 18/409,601 claim 8 fails to disclose the polishing solution contains at least 0.5 µM hydroxyl radical. Gagliardi teaches the polishing solution contains hydroxyl radicals as additive in the amount of at least 0.01 wt%, at least 1 wt% and less than 20 wt% (See paragraph 0038, 0042, 0045). Gagliardi does not explicitly disclose the solution contains at least 0.5 µM hydroxyl radical. However, it is possible to convert weight percent of hydroxyl radical to µM if the density of the polishing solution is known. The density of the solution can be measured. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify co-pending application 18/409,601 in view of Gagliardi by performing routine experiments to obtain optimal amount of hydroxyl radical including having at least 0.5 µM hydroxyl radical because it has been held that determination of workable range is not considered inventive (See MPEP 2144.05(II)(A)).
As to claim 9, co-pending application 18/409,601 claim 9 teaches the polishing solution is iron free and contains less than contained less than 0.01 µM hydroxyl radical.
As to claim 10, co-pending application 18/409,601 claim 10 teaches the functionalized carbon-based particles contain at least 30 weight percent sp3-containing structure.
This is a provisional nonstatutory double patenting rejection.
7. Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/409,615 in view of Gagliardi et al. (US 2021/0189175 A1).
Claim 1 of the current application (18/409,628) differs from claim 1 of copending application 18/409,615 by further discloses an oligomer or polymer having at least 50 mol% R1-C(O)-N[-R2, -R3] units wherein R1, R2, -R3 are selected from at least one of H, saturated or unsaturated aromatic or aliphatic groups, aryl, cycloaliphatic hydrocarbon or a mixture thereof. However, copending application clearly discloses a polishing composition comprises a solvent and functionalized carbon-based particles. Garliardi discloses a polishing composition comprises a solvent (paragraph 0031), a functionalized carbon-based particles (paragraph 0049) and a thickening agents comprises water-soluble polymers such as polyvinylpyrrolidone, or poly(meth)acrylamide (See paragraph 0036).
It is known in the art that polyvinylpyrrolidone has the formula structure as shown below (See evidence reference: Wikipedia, “Polyvinylpyrrolidone” via https://en.wikipedia.org/wiki/Polyvinylpyrrolidone
PNG
media_image1.png
185
334
media_image1.png
Greyscale
Therefore, Gagliardi teaches a polyvinylpyrrolidone polymer having 100 mol% R1-C(O)-N[R2, R3] units, wherein R1 and R2 are selected from cycloaliphatic hydrocarbon, and R3 is saturated aliphatic groups.
It is known in the art that poly(meth)acrylamide has the following structure as shown below (See evidence reference: Chemical Book, “Polymethacrylamide; via https://www.chemicalbook.com/ChemicalProductProperty_EN_CB5398616.htm ;
PNG
media_image2.png
279
315
media_image2.png
Greyscale
Therefore, Gagliardi teaches a poly(meth)acrylamide polymer having 100 mol% R1-C(O)-N[R2, R3] units, wherein R1 is selected from unsaturated aliphatic, R2 is at least one of H, and R3 is saturated aliphatic
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify co-pending application 18/409,615 in view of Garliardi by including a polymer having at least 50% of R1-C(O)-N[R2, R3] units, wherein R1, R2, R3 are selected from at least one of H, saturated or unsaturated aliphatic group, cycloaliphatic hydrocarbon because these polymer acts as thickening agent to control the viscosity of the polishing solution.
As to claim 2, co-pending application 18/409,615 claim 2 teaches the polishing solution includes a corrosion inhibitor for the metal or the metal nitride.
As to claim 3, co-pending application 18/409,615 claim 3 teaches the surface of the functionalized carbon-based particles includes a graphene, graphite, amorphous carbon or a mixture thereof.
As to claim 4, co-pending application 18/409,615 claim 4 teaches wherein the oxygen-containing functional group is a COOH and its salts, COOOH and its salts, OH-, ketone, oxirane or a combination thereof.
As to claim 5, co-pending application 18/409,615 claim 5 teaches wherein the functionalized carbon-based particles also include an amine (NH2) group, sulfonate (SO3) group or hydrocarbon (C-H) groups.
As to claim 6, co-pending application 18/409,615 claim 6 teaches wherein the metal and metal nitride is selected from the group consisting of cobalt, copper, molybdenum, tungsten, titanium nitride and tantalum nitride.
As to claim 7, co-pending application 18/409,615 claim 7 teaches the polishing solution includes hydrogen peroxide as the peroxy moiety.
As to claim 8, co-pending application 18/409,615 claim 8 teaches the polishing solution includes a Fenton’s catalyst or reagent. Co-pending application 18/409,615 claim 8 fails to disclose the polishing solution contains at least 0.5 µM hydroxyl radical. Gagliardi teaches the polishing solution contains hydroxyl radicals as additive in the amount of at least 0.01 wt%, at least 1 wt% and less than 20 wt% (See paragraph 0038, 0042, 0045). Gagliardi does not explicitly disclose the solution contains at least 0.5 µM hydroxyl radical. However, it is possible to convert weight percent of hydroxyl radical to µM if the density of the polishing solution is known. The density of the solution can be measured. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify co-pending application 18/409,615 in view of Gagliardi by performing routine experiments to obtain optimal amount of hydroxyl radical including having at least 0.5 µM hydroxyl radical because it has been held that determination of workable range is not considered inventive (See MPEP 2144.05(II)(A)).
As to claim 9, co-pending application 18/409,615 claim 9 teaches the polishing solution is iron free and contains less than contained less than 0.01 µM hydroxyl radical.
As to claim 10, co-pending application 18/409,615 claim 10 teaches the functionalized carbon-based particles contain at least 30 weight percent sp3-containing structure.
This is a provisional nonstatutory double patenting rejection.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH X TRAN whose telephone number is (571)272-1469. The examiner can normally be reached Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 571-270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/Primary Examiner, Art Unit 1713