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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on 3/16/2026 is acknowledged.
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 8-14 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.
The term “substantially free” in claim 8 is a relative term which renders the claim indefinite. The term “substantially free” 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. In the specification [0033], the substantially free of inorganic abrasive particles as used herein can comprise less than 0.3 weight %, 0.25 weight %, 0.2 weight %, 0.15 weight %, 0.10 weight %, 0.05 weight %, 0.04 weight %, 0.03 weight %, 0.02 weight %, or 0.01 weight % of the total weight of the CMP slurry composition.
Therefore, it is not clear that at which content (wt%) of the abrasive particles is considered to be the claimed composition is “substantially free of the inorganic abrasive particles”.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kim et al (US 2023/0104919) .
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claims 1 and 8, Kim et al disclose a CMP composition comprises an organic polishing booster including an amino acid; and a carrier (DIW) [0041]; a pH control agent , wherein inorganic polishing particles are not included in the slurry composition or included in an amount of less than 0.01% by weight; (abstract, [0006]).
Regarding claims 2 and 9, Kim et al disclose that pH of the composition is 4 to about 11 [0006].
Regarding claims 3 and 10, Kim et al disclose that the second organic booster (amino acid) is about 10 ppm to about 100,000 ppm [0034]-[0036].
Regarding claims 4 and 11, Kim et al disclose that the second organic polishing booster may include, e.g., arginine, histidine, lysine, aspartic acid, glutamic acid, serine, threonine, asparagine, glutamine, cysteine, selenocysteine, glycine, proline, alanine, valine, leucine, isoleucine, methionine, phenylalanine, tyrosine, or tryptophan [0035].
Regarding claims 5-7 and 12-14, regarding the protrusion of a copper film, the protrusion height and the static etch rate could have been achieved by the CMP composition taught by Kim et al because it has all the components as the claimed composition and which is capable of performing such etching as an intended use of such composition. The recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997).
Additionally, 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, cannot impart patentability to claims to the known composition."); and "the discovery of a previously unappreciated property of a prior composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
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.
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(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shi et al (US 2020/0277514) in view of Li et al (US 2022/0332978).
Regarding claim 1, Shi et al disclose a chemical mechanical polishing (CMP) composition comprise solvent, abrasive, oxidizer, at least two chelators selected from the group consisting of amino acids, amino acid derivatives, organic amine, and combinations therefore; wherein at least one chelator is an amino acid or an amino acid derivative. Organic quaternary ammonium salt, corrosion inhibitor, pH adjustor and biocide can be used in the compositions (abstract; [0027]-[0036]); and aforesaid “amino acid” reads on the claimed “organic booster”.
Shi et al disclose that the composition contains 0.0025 wt. % to 25 wt. % abrasives [0133]; and aforesaid range overlaps the claimed range of less than 0.1 weight % of the inorganic abrasive particles; and overlapping ranges are prima facie obvious, MPEP 2144.05.
Shi et al disclose that the composition comprises water [0017].
Shi et al remain silent that the water is deionized water (DIW).
However, in the same field of endeavor, Li et al disclose a CMP composition comprises a liquid carrier, amino acid, abrasive particles in a range of 0.0001 to 2.5 wt. % [0027],[0038] and the liquid carrier comprises DI water, and advantageously the water is deionized (DI) water [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 employ Li et al's teaching of using DIW into the teaching of Shi et al because such would have been a simple substitution of known materials as Li et al suggested that DIW would be advantageous in the polishing process.
Regarding claim 8, the modified teaching discloses above for the claim 1 and the limitations in claim 1 are similar in nature, except the composition in claim 8 requires the CMP composition is substantially free of inorganic abrasive particles.
Examiner pointed out that in the above disclosure, both the Shi et al and Li et al disclose that the inorganic abrasive particles contain negligible amount, such as 0.0025 wt. % to 25 wt. % of abrasives ( see,[0133] in Shi et al); and 0.0001 to 2.5 wt. % (see, [0038] in Li et al); and aforesaid ranges falls with the applicant’s defined range of the content of abrasives to be substantially free of abrasives (see [0033] in the instant specification).
Regarding claims 2 and 9, Shi et al disclose that the pH of the composition is from 3.0 to 12.0 [0021],[0148].
Regarding claims 3 and 10, Shi et al disclose that the CMP composition contains 0.1 wt. % to 18 wt. % (equates 1000 ppm to 180,000 ppm) of at least two chelators (reads on the organic booster) [0149], which overlaps the claimed range of 10 ppm to 20,000 ppm; and overlapping ranges are prima facie obvious, see MPEP 2144.05.
Regarding claims 4 and 11, Shi et al disclose that the amino acid (organic booster) comprises tyrosine, glutamine, asparanine, glutamic acid, aspartic acid, tryptophan, histidine, arginine, lysine, methionine, cysteine, iminodiacetic acid, etc. [0153].
Regarding claims 5 and 12, Shi et al disclose that the CMP composition is configured to polish/etch copper (cu) film [0022].
Regarding claims 6-7 and 13-14, regarding the protrusion of a copper film, the protrusion height and the static etch rate could have been achieved by the CMP composition taught by Shi et al in view of Li et al because it has all the components as the claimed composition and which is capable of performing such etching as an intended use of such composition. The recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997).
Additionally, 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, cannot impart patentability to claims to the known composition."); and "the discovery of a previously unappreciated property of a prior composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Conclusion
The prior art made of record, listed in the PTO-892 and not relied upon is considered pertinent to applicant's disclosure. Penta et al (US 2012/0190200) disclose an abrasive-free CMP composition (abstract); Liang et al (US 2021/0087431) disclose a CMP composition comprises organic acid such as tyrosine, phenylalanine, etc., pH adjusting agent having a pH value about 7-12 [0020],[0022] and substantially free of certain ingredients including certain abrasive particles [0041].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713
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