DETAILED ACTION
Claims 1-3, 5-8, 11, 17-18, 21, 27, 29, 32, 38 and 40-45 are pending before the Office for review.
In the response files April 13, 2026:
Claim 8 and 11 were amended.
Claim 4 was canceled.
No new matter is present.
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 .
Election/Restrictions
Claims 1-3, 5-7, 18, 21, 27, 29, 32, 38 and 42-45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 13, 2026.
Applicant's election with traverse of Group II (claims 8, 11, 17 and 40-41) in the reply filed on April 13, 2026 is acknowledged. The traversal is on the ground(s) that Carter (US 2006/009814) as cited by the examiner is not directed towards a polishing composition and such reference is an independent and distinct invention. As such the groups has a special technical feature. In addition, search the groups would not present an undue burden on the Examiner. This is not found persuasive because while the groups share a technical feature it is not a special technical feature in view of Carter (US 2006/0099814, citation has been corrected and is drawn towards a polishing composition) and in view of the rejection of claim 8 under Stender in view of Carter and Akhavan-Tafti. In addition Groups I, II, III and IV cross different technology areas which would require a different scope of search thereby creating an undue burden for the Examiner.
The requirement is still deemed proper and is therefore made FINAL.
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 8, 11, 17, 40 and 41 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 8 recites the limitation "the cationic polymer" in line 7. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “… abrasive ranges from 0.05 wt% to 20 wt%... the additive… ranges from 0.0001 wt% to 0.025 wt%... the oxidizing agent ranges from 0.1 wt% to 20 wt%... the activator ranges from 0.0001 wt% to 2.0 wt%... the dishing reducing agent ranges from 0.001 wt% to 2.0 wt%... the stabilizer ranges from 0.0001 to 5 wt%...” , and the claim also recites “… abrasive ranges from 0.01 wt% to 10 wt%... the additive… ranges from 0.0002 wt% to 0.02 wt%... the oxidizing agent ranges from 0.5 wt% to 10 wt%... the activator ranges from 0.0005 wt% to 1.0 wt%... the dishing reducing agent ranges from 0.01 wt% to 1.0 wt%... the stabilizer ranges from 0.0005 to 1 wt%...” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation “… the pH of the composition is between 1 and 7…, and the claim also recites “… the pH of the composition is between… or 1.5 and 4” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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 8, 11, 17, 40 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over STENDER et al (U.S. Patent Application Publication 2020/0040256) in view of CARTER et al (U.S. Patent Application Publication 2006/0099814) and AKHAVAN-TAFTI (U.S. Patent 5,43,617 hereinafter Tafti).
With regards to claim 8, Stender discloses a chemical mechanical planarization composition comprising: an abrasive selected from the group consisting of inorganic oxide particles, metal oxide- coated inorganic oxide particles, organic polymer particles, metal oxide-coated organic polymer particles, and combinations thereof (Paragraphs [0074]-[0084]); an activator (Paragraph [0109]-[0117]); an oxidizing agent (Paragraphs [0086]-[0096]); an additive comprising a phosphonium compound (Paragraph [0124]); water (Paragraph [0108]); and optionally a corrosion inhibitor (Paragraph [0054]); a dishing reducing agent (Paragraphs [0122]-[0124]); a stabilizer (Paragraphs [0125]-[0131]); a pH adjusting agent ([0134]-[0136]).
Stender does not explicitly disclose wherein the composition comprises an additive comprising a cationic polymer or copolymer wherein the cationic monomer comprises a structure selected from the group consisting of claims structure 1, 2 and combinations of 1 and 2.
Carter discloses a polishing composition comprising a cationic polymer wherein the cationic polymer may be any suitable cation homopolymer consisting essential of monomers comprising phosphonium groups including those disclosed in US Patent No 5,439,617 (Paragraphs [0021]-[0027]). Tafti discloses a polymeric phosphonium salt including polyvinyl phosphonium salt enhancers (Col. 8 line 30-Col13 line 64). As such Stender as modified by Carter and Tafti renders obvious an additive comprising a cationic polymer or copolymer wherein the cationic monomer comprises a structure selected from the group consisting of claims structure 1, 2 and combinations of 1 and 2.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Stender to include the cationic polymer as rendered obvious by Carter and Tafti because the reference of Cater teaches that such polymer can adjust the polishing rate of the substrate (Paragraph [0028]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing composition using the cationic polymer as rendered obvious by Cater and Tafti. MPEP 2143D
With regards to claim 11, the modified teachings of Stender renders obvious wherein the abrasive ranges from 0.01 to 30 wt% (Stender Paragraph [0085]) which renders obvious 0.05 wt.% to 20 wt.% or 0.01 wt.% to 10 wt.%;the additive comprising the cationic polymer or copolymer ranges from 0.1ppm to about 50 ppm (Carter (Paragraph [0028]) which renders obvious 0.0001 wt.% to 0.025 wt.% or 0.0002wt.% to 0.02 wt.%;the oxidizing agent is selected from the group consisting of peroxy compound selected from the group consisting of hydrogen peroxide, urea peroxide, peroxyformic acid, peracetic acid,propaneperoxoic acid, substituted or unsubstituted butaneperoxoic acid, hydroperoxy- acetaldehyde, potassium periodate, ammonium peroxymonosulfate; and non-per-oxy compound selected from the group consisting of ferric nitrite, KCIO4, KBrO4, KMnO4; and combinations thereof (Stender Paragraph [0090]-[0094]) and the oxidizing agent ranges from 0.01 to 30 wt% (Stender Paragraph [0095]) which renders obvious 0.1 wt.% to 20 wt.%, or 0.5 wt.% to 10 wt.%;the activator is selected from the group consisting of (1) inorganic oxide particle with transition metal coated onto its surface; and the transition metal is selected from the group consisting of Fe, Cu, Mn, Co, Ce, and combinations thereof; (2)soluble catalyst selected from the group consisting of iron (III) nitrate, ammonium iron (III) oxalate trihydrate, iron(III) citrate tribasic monohydrate, iron(III) acetylacetonate and ethylenediamine tetraacetic acid,iron (III) sodium salt hydrate;(3) a metal compound having multiple oxidation states selected from the group consisting of Ag, Co, Cr, Cu, Fe, Mo, Mn, Nb, Ni, Os, Pd, Ru, Sn, Ti, V; and combinations thereof (Stender Paragraphs [0110]-[0116]) and the activator ranges from 0.0005 to about 10 wt% (Stender Paragraph [0117]) which renders obvious 0.0001 wt.% to 2.0 wt.% or 0.0005 wt.% to 1.0 wt.%:and optionally at least one of the pH adjusting agent is selected from the group consisting of (a)nitric acid, sulfuric acid, tartaric acid, succinic acid, citric acid, malic acid, malonic acid, various fatty acids, various polycarboxylic acids, and mixtures thereof to lower the pH and (b) potassium hydroxide, sodium hydroxide, ammonia, tetraethylammonium hydroxide, ethylenediamine, piperazine, polyethyleneimine, modified polyethyleneimine, and mixtures thereof to raise the pH (Stender Paragraph [0135]-[0136]);the dishing reducing agent is selected from the group consisting of sarcosinate and related carboxylic compounds; hydrocarbon substituted sarcosinate; amino acids; organic polymers and copolymers having molecules containing ethylene oxide repeating units; ethoxylated surfactants; nitrogen containing heterocycles without nitrogen-hydrogen bonds; sulfide;oxazolidine or mixture of functional groups in one compound; nitrogen containing compounds having three or more carbon atoms that form alkylammonium ions; amino alkyls having three or more carbon atoms; polymeric corrosion inhibitor comprising a repeating group of at least one nitrogen-containing heterocyclic ring or a tertiary or quaternary nitrogen atom; polycationic amine compound; cyclodextrin compound; polyethyleneimine compound; glycolic acid; chitosan; sugar alcohols; polysaccharides; alginate compound; and sulfonic acid polymer; and combinations thereof (Stender Paragraphs [0122]-[0124]); and the dishing reducing agent ranges from 1pmm to 10,000pmm (Stender Paragraph [0124]) which renders obvious 0.001 wt.% to 2.0 wt. % or 0.01 wt.% to 1.0 wt. %; and the stabilizer is selected from the group consisting of adipic acid, phthalic acid, citric acid, malonic acid, orthophthalic acid; phosphoric acid; substituted or unsubstituted phosphonic acids; nitriles; and combinations thereof (Stender Paragraph [0131]) and the stabilizer ranges from 0.991 to about 2 wt% (Stender Paragraph [0132]) which renders obvious 0.0001 to 5 wt.% or 0.0005 to 1 wt.%. 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). MPEP 2144.05(I)
With regards to claim 17, the modified teachings of Stender renders obvious wherein the chemical mechanical planarization composition comprises silica particles (Stender Paragraph [0080]); iron (III) nitrate (Stender Paragraph [0114]), malonic acid (Stender Paragraph [0131]), hydrogen peroxide (Stender Paragraph [0091]), a cationic polymer or copolymer selected from the group consisting of poly tributyl(4-vinylbenzyl)phosphonium chloride (Akhavan-Tafti Col. 13-16, Claims 9-18); and water (Stender Paragraph [0108]); the pH of the composition is between 1 and 7 (Stender Paragraph [0135]) which renders obvious 1 and 7 or 1.5 and 4. 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). MPEP 2144.05(I)
With regards to claim 40, the modified teachings of Stender renders obvious wherein the additive comprising cationic polymer or copolymer is formed with at least one non-ionic monomer in addition to the at least one cationic monomer, and the at least one non-ionic monomer is selected from the group consisting of acrylate or methacrylate type monomer, acrylamide or methacrylamide type monomer, maleimide type monomer, vinyl benzene type monomer, vinyl-type monomer, ethylene glycol type monomer, siloxane type monomer, norbornene type monomer, and combinations thereof. (Carter Paragraphs [0021]-[0026]).
With regards to claim 41, the modified teachings of Stender renders obvious wherein the additive comprising cationic polymer or copolymer has functional anions selected from bromide, chloride, nitrate, sulfate, phosphate as counter ions. (Akhavan-Tafti Col. 13 lines 11-15).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE P. DUCLAIR whose telephone number is (571)270-5502. The examiner can normally be reached 9-6:30 M-F.
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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713
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