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 .
Response to Amendment
This office action is in response to the Amendment filed on 05/13/2026.
Claims 1-2 and 4-11 are presently pending; claim 1 is amended; claim 3 is canceled; claims 5-11 are new; claims 8-11 are withdrawn; claims 1-2 and 4-7 are under examination.
The 35 U.S.C. 102 rejection of claims 1 and 4 over SOUMIYA and the 35 U.S.C. 103 rejection of claim 2 over SOUMIYA are withdrawn in light of the amendments to the claims; the rejection of claim 3 is moot as this claim has been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Newly submitted claims 8-11 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Group I, claims 1-2 and 4-7, is directed to a polishing liquid; Group II, claims 8-11, is directed to a polishing method. The groups are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product of Group I could be used in a materially different process, e.g., a process of polishing a substrate that is not a compound semiconductor, such as a silicon substrate. The recitation of “for polishing a compound semiconductor substrate” in claim 1 is merely a recitation of an intended use of the composition rather than being a limitation directed toward the composition itself, and does not limit the product of Group I.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 8-11 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Interpretation
For purposes of claim interpretation, Examiner treated “Ra” as recited in claim 1 (see claim 1 at line 11) as meaning arithmetic mean roughness, as this would appear most in keeping with Applicant’s intent as discussed in paragraph [0038] of the present specification.
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 1-2 and 4-7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “wherein a concentration of the sodium permanganate or the potassium permanganate is not less than 2.5 wt%, and a concentration of the abrasive grains is not less than 4.5 wt%, such that Ra < 0.2 nm is realized while the compound semiconductor substrate is substantially scratch-free” (see claim 1 at lines 8-12); this renders the metes and bounds of the claim indefinite, as it is not clear what “such that Ra < 0.2 nm is realized” actually means in regard to the claimed composition. The claim is directed to a polishing liquid, not a polishing process or a semiconductor substrate; no polishing process is recited in claim 1, so “such that Ra < 0.2 nm is realized” does not make sense, as Ra is a property of a surface which is not part of the claimed invention and nothing is being polished so it is not clear how an Ra of anything is “being realized” in the claimed invention. The language “substantially scratch-free” renders the claim further indefinite, as the term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For purposes of examination, Examiner treated this limitation in claim 1 as though it only recites the concentration of permanganate and of the abrasive grains, as these are clear structural limitations of the claimed composition. Any composition as claimed by claim 1 would be expected to be able to perform the intended use of polishing a semiconductor substrate and would be expected to be able to achieve the same or similar results. Clarification is requested.
Claim 6 recites the limitation “The polishing liquid according to claim 1, wherein the abrasive grains are present at a fixed concentration and a concentration of the permanganate is varied” (see claim 6 at lines 1-3); this renders the scope of the claim indefinite as the meaning of the permanganate concentration being “varied” is unclear. The claimed invention is directed to a composition; it is not clear how the permanganate concentration would be changing. This limitation is described in the specification at paragraph [0011] as being an experiment wherein the concentration is varied stepwise. The claimed invention is not directed to a method or to an experiment, it is directed to a polishing liquid with set structural limitations and fixed component concentrations.
For purposes of examination, Examiner treated this limitation in claim 6 as just meaning that the abrasive grains are present at a fixed concentration; i.e., this limitation is already met by a composition according to claim 1. Clarification is requested.
Claim 7 recites the limitation “The polishing liquid according to claim 1, wherein a polishing rate reaches a ceiling when a concentration of the abrasive grains is not less than about 9.00 wt% at a fixed concentration of the permanganate” (see claim 7 at lines 1-3); this renders the scope of the claim indefinite, as the meaning of “a polishing rate reaches a ceiling” cannot be determined. This limitation is described in the specification at paragraphs [0038]-[0041] and [0043] as being an experiment where a polishing rate “ceiling” is reached by varying the concentration of the abrasive grains. The claimed invention is directed to a composition, not to a method or an experiment; it is not clear how a “ceiling” could be reached by the claimed composition, which has set structural limitations and fixed component concentrations.
For purposes of examination, Examiner treated claim 7 as though it just recites the polishing liquid having a concentration of abrasive grains of not less than about 9.00 wt%. Clarification is requested.
Claims 2 and 4-5 are included herein as each depends from a claim which is indefinite for the reasons set forth above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 depends from claim 1, which recites “abrasive grains which are dispersed in the aqueous solution and an electrokinetic potential (zeta potential) of which is plus, wherein aggregation and sedimentation of the abrasive grains do not occur in the aqueous solution and the abrasive grains repel one another on an electric charge basis” (see claim 1 at lines 5-8); claim 5 recites the further limitation “wherein the abrasive grains are prevented from aggregating due to electrostatic repulsion arising from the positive electrokinetic potential” (see claim 5 at lines 1-3). This limitation is already included in claim 1; claim 1 states that the abrasive grains have positive electrokinetic potential and repel each other on an electric charge basis and aggregation does not occur; this means that the particles electrostatically repulse each other because of the positive electrokinetic potential, which prevents aggregation. Claim 5 is therefore of improper dependent form as it fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Soumiya (U.S. Pub. No. 2021/0301176-A1) (hereinafter, “SOUMIYA”) in view of Hattori, et al. (U.S. Pat. No. 6,527,818-B2) (hereinafter, “HATTORI”).
Regarding claims 1 and 5-6, SOUMIYA teaches polishing liquid for polishing a compound semiconductor substrate (see SOUMIYA at paragraphs [0010] and [0127]; it is noted that “for polishing a compound semiconductor substrate” is merely a recitation of an intended use of the composition rather than a limitation directed toward the claimed polishing liquid, and is therefore not considered to limit the present product claim; any composition as claimed by claim 1 would be expected to be able to perform the intended use of being used to polish a compound semiconductor substrate; regardless, SOUMIYA teaches polishing a semiconductor substrate), the polishing liquid comprising:
an aqueous solution in which a permanganate is dissolved (see SOUMIYA at paragraphs [0010], [0099] and [0121], teaching an aqueous solution comprising, as the oxidizing agent, a salt of permanganic acid, i.e., permanganate);
and abrasive grains which are dispersed in the aqueous solution and an electrokinetic potential (zeta potential) of which is plus (see SOUMIYA at paragraphs [0010], [0068] and [0121], teaching an aqueous solution comprising dispersed cation-modified silica particles having positive zeta potential as the abrasive grains),
wherein aggregation and sedimentation of the abrasive grains do not occur in the aqueous solution and the abrasive grains repel one another on an electric charge basis (see SOUMIYA at paragraph [0068] and Table 4, teaching cationically modified silica particles with positive zeta potential (positive electric charges repel each other) and teaching that there is no agglomeration of the abrasive grains),
and wherein a concentration of the permanganate overlaps with the claimed range of not less than 2.5 wt%, (see SOUMIYA at paragraph [0100], teaching a concentration of the oxidizing agent of 0.1% by mass or more), and a concentration of the abrasive grains overlaps with the claimed range of not less than 4.5 wt% (see SOUMIYA at paragraph [0071], teaching a concentration of the cation-modified silica particles of 0.1% by mass or more), thereby rendering the claimed ranges obvious. As set forth in MPEP § 2144.05, 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)).
SOUMIYA does not explicitly mention that the permanganate is sodium or potassium permanganate.
However, these are known permanganate salts in the art. For example, HATTORI teaches a polishing liquid wherein potassium permanganate is used as an oxidizing agent in an amount of 2 wt% or more to exhibit sufficient effect (see HATTORI at Abstract and col. 8, lines 8-33).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the polishing liquid of SOUMIYA by simply selecting potassium permanganate as the permanganate salt oxidizing agent, used in an amount of 2 wt% or more, as taught by HATTORI (see HATTORI at col. 8, lines 8-33). One of ordinary skill in the art could have used potassium permanganate with a reasonable expectation of success, yielding the predictable result of providing an oxidizing agent having sufficient effect. Additionally, potassium permanganate is a known oxidizing agent in the art, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding claim 2, as applied to claim 1 above, SOUMIYA in view of HATTORI teaches a polishing liquid according to claim 1, wherein the polishing liquid has a pH overlapping with and thereby rendering obvious the claimed range of 3 to 7 (see SOUMIYA at paragraph [0111], teaching a pH of 2 or more and less than 7). As set forth in MPEP § 2144.05, 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)).
Regarding claim 4, as applied to claim 1 above, SOUMIYA in view of HATTORI teaches a polishing liquid according to claim 1, wherein the abrasive grains include silica grains having an average primary grain diameter of 12 nm to 60 nm (see SOUMIYA at paragraph [0055], teaching an average primary particle diameter of 25 nm or more and 50 nm or less).
Regarding claim 7, as applied to claim 1 above, SOUMIYA in view of HATTORI teaches a polishing liquid according to claim 1, wherein a concentration of the abrasive grains overlaps with the claimed range of not less than 9.00 wt% (see SOUMIYA at paragraph [0071], teaching a concentration of the cation-modified silica particles of 0.1% by mass or more), thereby rendering the claimed ranges obvious. As set forth in MPEP § 2144.05, 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)).
Response to Arguments
Applicant's arguments filed 05/13/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(b) for claims 1-2 and 4-7, under 35 U.S.C. 112(d) for claim 5, and under 35 U.S.C. 103 for claims 1-2 and 4-7 over SOUMIYA in view of HATTORI as set forth above.
Applicant argues:
“Applicant’s Specification… notes the criticality of the relative concentration of the permanganate and the abrasive grains” (see Remarks at pg. 6).
“the Soumiya reference does not disclose or suggest the specific concentration conditions recited in Claim 1, nor the relationship between those concentrations and the polishing outcome… the Soumiya reference does not disclose that when a balance between the concentration of the oxidant and the concentration of the abrasive grains is lost, the polishing rate is lowered” (see Remarks at pg. 7).
“the Soumiya reference does not disclose or suggest that the claimed concentration conditions result in Ra < 0.2 nm while the substrate is substantially scratch-free” (see Remarks at pg. 7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because the relative concentration of the permanganate and abrasive grains is critical and SOUMIYA does not disclose the relationship between the concentrations and the polishing results, the Examiner respectfully disagrees. As set forth in the rejection above, SOUMIYA (and HATTORI) disclose ranges of the permanganate and abrasive grains which render obvious the claimed ranges (see SOUMIYA at paragraphs [0071] and [0099]-[0100], teaching 0.1 to 30% by mass of abrasive grains and 0.1 to 10% by mass of permanganate; see HATTORI at col. 5, lines 31-37, col. 6, lines 60-67, and col. 8, lines 8-33, teaching up to 20 wt%, e.g., 0.1-10 wt%, of abrasive grains and 2 wt% or more of permanganate). Both references also explicitly teach that these concentrations are result-effective variables which affect polishing performance, dispersion stability, corrosivity, effectiveness of oxidizing agent, may be optimized by one of ordinary skill in the art (see SOUMIYA at [0071] and [0100]; see HATTORI at col. 5, lines 31-37, col. 6, lines 60-67, and col. 8, lines 8-33). MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). The prior art explicitly teaches that the concentration of the abrasive grains and the permanganate affect the polishing rate and polishing outcome.
Additionally, criticality of the claimed concentrations also does not appear to be displayed by Applicant’s specification. Figs. 2-3 show results for compositions having a permanganate concentration of 0.5 wt% to 20 wt% and an abrasive grain concentration of 2.25 wt% to 13.50 wt%, not results for the entire, much broader claimed ranges of not less than 2.5 wt% permanganate and not less than 4.5 wt% abrasive grains (any amount over 2.5% or 4.5%). Further, as discussed in the rejections above, the references teach or render obvious all structural limitations of the claimed composition; the claim is not directed to a polishing process or a substrate. The recitation of that the claimed concentration conditions result in Ra < 0.2 nm while the substrate is substantially scratch-free is indefinite and does not limit the claimed composition, and is also an inherent result per Applicant’s own description which states that the claimed concentrations result in the Ra value and substantially scratch-free substrate. The prior art references do not need to describe the exact results with which Applicant is concerned of some unclaimed polishing process in order to anticipate or render obvious a product claim; they merely need to disclose or render obvious the limitations of the claimed composition.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“While the Soumiya reference discloses that silica particles may have a positive zeta potential… the Soumiya reference does not disclose or describe a polishing liquid in which aggregation and sedimentation of the abrasive grains do not occur or the specific electrostatic repulsion behavior between grains recited in Claim 1” (see Remarks at pg. 6-7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because Soumiya does not disclose a polishing liquid in which aggregation and sedimentation of the abrasive grains do not occur or the electrostatic repulsion behavior between grains, the Examiner respectfully disagrees. SOUMIYA in view of HATTORI teaches a polishing liquid according to claim 1, therefore the polishing liquid would be expected to have the same or very similar properties as the claimed polishing liquid (see MPEP § 2112.01); also, this limitation is disclosed in SOUMIYA. As discussed in the rejection above, SOUMIYA explicitly teaches cationic colloidal silica particles having positive zeta potential; positive charges electrostatically repulse positive charges. SOUMIYA also explicitly discloses that there is no agglomeration between the abrasive grains.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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