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 .
Status of the Claims
This is a final office action in response to the applicant’s arguments and remarks filed on 02/09/2026. Claims 1-15 and 17-20 are pending in the current office action. Claims 1, 9 and 18 have been amended by the applicant and Claim 16 has been cancelled.
Status of the Rejection
The claim objections have been overcome by the applicant's amendments.
The rejection of claim 16 is obviated by the Applicant’s cancellation.
All 35 U.S.C. § 103 rejections from the previous office action are withdrawn in view of the Applicant’s amendment.
New grounds of rejection under 35 U.S.C. § 103 are necessitated by the amendments.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claims 1, 13, and 18 recite the limitation “the oxidizer is a temperature-sensitive oxidizer configured to control both a static etch rate and a removal rate of the metal film based on a polishing temperature during the chemical mechanical polishing being about 5 °C to about 100 °C”. This limitation could potentially be considered as invoking 112(f). However, this limitation does not use “means”, “step”, or another generic placeholder, therefore creating the presumption that the limitation should not by interpreted under 112(f). Further, the claims include structure regarding the relevant component. In particular, the oxidizer is required to be “temperature-sensitive” and comprise iodine. For this reason, this limitation will not be interpreted under 112(f).
Claims 9 and 18 recite the limitation “the adsorbent is configured to adsorb iodine generated from the oxidizer based on the chemical mechanical polishing”. This limitation could potentially be considered as invoking 112(f). However, this limitation does not use “means”, “step”, or another generic placeholder, therefore creating the presumption that the limitation should not by interpreted under 112(f). Further, the claims include structure regarding the relevant component. In particular, the term “adsorbent” would be understood by one of ordinary skill in the art as defining structure. For this reason, this limitation will not be interpreted under 112(f).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US-20100015807-A1) in view of Singh et al. (US20230002641-A1).
Regarding Claim 1, Kim teaches a slurry composition used for chemical mechanical polishing of a metal film (Paragraph [0001] a composition for chemical mechanical polishing is taught. The preamble "used for chemical mechanical polishing of a metal film" is a statement of intended use that does not further limit the claimed invention. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114. Since the structure of the prior art teaches all of the structural limitations of the claim, the structure is considered capable of meeting the intended use limitations. However, for purposes of compact prosecution, examiner notes that Kim expressly teaches that the composition can be used for the chemical mechanical polishing of a copper film), the slurry composition comprising:
abrasive particles (Paragraph [0038] composition can include abrasive particles); and
an oxidizer;
wherein the oxidizer comprises iodine, and the oxidizer is a temperature-sensitive oxidizer configured to control both a static etch rate and a removal rate of the metal film based on a polishing temperature during the chemical mechanical polishing being about 5 ℃ to about 100 ℃ (Paragraph [0028] composition includes an oxidizer, that can be a periodate, an iodate, or iodic acid. Examiner takes the position that these oxidizers can be considered temperature-sensitive and meet the claimed limitations).
Kim fails to teach that the composition further comprises deionized water.
Singh teaches compositions for chemical mechanical polishing (Paragraph [0001]). Singh teaches that the polishing composition can include deionized water (Paragraph [0035])
It would have been obvious to one of ordinary skill in the art to have modified the composition of Kim by including deionized water as taught by Singh.
This modification would have been obvious as it could be considered the combination of prior art elements according to known methods to yield predictable results. The combination would have produced the predictable result of providing a suitable medium (deionized water) in which the various components taught by Kim could be mix in order to create a slurry composition. See MPEP 2143(I)(A).
Regarding the limitation “wherein the slurry composition has a static etch rate of about 0 A/min to about 10 A/min at a temperature of about 25 °C to about 60 °C”, examiner takes the position that the “static etch rate” of a composition is an inherent feature of a composition. Any substantially identical composition would have the same static etch rate when tested under identical conditions. Therefore, it is the examiner's position that the composition taught by modified Kim as outlined above would inherently have the instantly claimed feature of “a static etch rate of about 0 A/min to about 10 A/min at a temperature of about 25 °C to about 60 °C”. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish a nonobviousness difference. See MPEP 2112.
In an alternative interpretation where the static etch rate is not considered an intrinsic property of a composition, examiner further notes that Kim teaches that a composition may have a static etch rate of about 0 A/min to about 10 A/min (Paragraph [0047] Table 1, experiments 1-1 and 1-2 have etch rates of 4.5 and 9.4 A/min, Paragraph [0049] Table 2 experiment 1-2 has an etch rate of 9.4 A/min, Paragraph [0053] Table 4 experiments 4-3 and 4-4 have etch rates of 6.9 and 1 A/min, Paragraph [0055] Table 5 experiments 5-2, 5-3, and 5-4 have etch rates 5, 1, and 1 A/min, Paragraph [0057] Table 6 experiments 6-1 through 6-5 have etch rates between 2.1 and 0 A/min, Paragraph [0059] Table 7 experiments 7-1 through 7-4 have etch rates between 1 and 9 A/min, and Paragraph [0067] Table 9 experiments 9-1 through 9-3 have etch rates between 4 and 8 A/min) at a temperature of about 25 °C to about 60 °C (Paragraph [0045] the etch rate is calculated at room temperature, which can be considered to be “about 25°C”). It would have been obvious to one of ordinary skill in the art to have selected a static etch rate for the composition of modified Kim to be within the range claimed as Kim teaches that such static etch rates are possible for slurry compositions. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claim 2, modified Kim teaches all the limitations of claim 1 as outlined above.
Kim fails to explicitly teach that the oxidizer includes at least one of potassium iodate, sodium periodate, or periodic acid. However, Kim does teach that the oxidizer may be a periodate, an iodate, or an iodic acid.
Singh teaches compositions for chemical mechanical polishing (Paragraph [0001]). Singh teaches that the polishing composition can include an oxidizing agent. Singh teaches that periodic acid and potassium iodate are suitable oxidizing agents (Paragraph [0030]).
It would have been obvious to one of ordinary skill in the art to have modified the composition of modified Kim by using periodic acid or potassium iodate as the oxidizing agent.
This modification would have been the simple substitution of one oxidizer in a chemical mechanical polishing composition for another. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP §2143(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.07.
Regarding Claim 3, modified Kim teaches all the limitations of claim 1 as outlined above.
Kim fails to explicitly teach wherein a concentration of the oxidizer is about 1 wt% to about 5 wt% of a total weight of the slurry composition.
However, Kim teaches that the oxidizer is included in the composition from 0.01 to 15% by weight (Paragraph [0028]).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated the oxidizer at a level within the disclosed range of 0.01-15% by weight, including at amounts that overlap with the claimed range of about 1 to about 5% by weight. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claim 4, modified Kim teaches all the limitations of claim 1 as outlined above. Kim further teaches the composition comprises a pH adjusting agent, wherein the pH adjusting agent includes at least one of lithium hydroxide, sodium hydroxide, potassium hydroxide, cesium hydroxide, sulfuric acid, nitric acid, hydrogen chloride, or phosphoric acid (Paragraph [0027] nitric acid, phosphoric acid, and potassium hydroxide can be included to control the pH).
Regarding Claim 5, modified Kim teaches all the limitations of claim 1 as outlined above.
Kim fails to explicitly teach wherein a pH of the slurry composition is about 1 to about 5.
However, Kim teaches that the composition may have a pH from 3-12 (Paragraph [0027]).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated a pH at a level within the disclosed range of 3-12, including at amounts that overlap with the claimed range of about 1 to about 5. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claim 6, modified Kim teaches all the limitations of claim 1 as outlined above. Kim further teaches wherein the abrasive particles include at least one of silica, alumina, ceria, titania, zirconia, magnesia, germania, or mangania (Paragraph [0038] silica, alumina, or ceria may be used as the abrasive particles).
Regarding Claim 7, modified Kim teaches all the limitations of claims 1 and 6 as outlined above. Kim further teaches wherein a concentration of the abrasive particles is less than about 10 wt% of a total weight of the slurry composition (Paragraph [0038] abrasive particles are included from 0.01 to 8% by weight).
Regarding Claim 8, modified Kim teaches all the limitations of claim 1 as outlined above. The limitation recited within claim 8 (“wherein the metal film comprises tungsten (W) or molybdenum (Mo)”) further limits the preamble statement “used for chemical mechanical polishing of a metal film”. This preamble is a statement of intended use that does not further limit the claimed invention. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114. Since the structure of the prior art teaches all of the structural limitations of the claims, the structure is considered capable of meeting the intended use limitations, including the limitation of the instant claim.
Claims 9-15 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. (US-20090298289-A1) in view of Kim and Singh.
Regarding Claim 9, Jeong teaches a slurry composition used for chemical mechanical polishing of a metal film (Paragraph [0001] slurry composition for chemical mechanical polishing, useful for polishing a copper film. Note that: The preamble "used for chemical mechanical polishing of a metal film" is a statement of intended use that does not further limit the claimed invention. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114. Since the structure of the prior art teaches all of the structural limitations of the claim, the structure is considered capable of meeting the intended use limitations), the slurry composition comprising:
an oxidizer (Paragraph [0014] composition includes an oxidant); and
an adsorbent (Paragraph [0014] composition includes zeolite. Paragraph [0017] zeolite can absorb ions);
wherein the oxidizer comprises iodine (Paragraph [0023] oxidant can be a periodate, iodate, or iodic acid which comprises iodine), and the adsorbent is configured to adsorb iodine generated from the oxidizer based on the chemical mechanical polishing (Paragraph [0017] zeolite can absorb ions. Examiner takes the position that zeolite could adsorb iodine and meets the claimed limitations).
Jeong fails to explicitly teach that a pH of the slurry composition is greater than 1 and less than 3.
However, Jeong further teaches that the pH of the composition is 1 to 7 (Paragraph [0022]).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated a pH at a level within the disclosed range of 1 to 7, including at amounts that overlap with the claimed range of greater than 1 and less than 3. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Jeong fails to teach that the composition includes abrasive particles
Kim teaches a composition for chemical mechanical polishing (Paragraph [0001]) that includes an oxidizer (Paragraph [0028]), zeolite (Paragraph [0012]), and can further include abrasive particles (Paragraph [0038]).
It would have been obvious to one of ordinary skill in the art to have modified the composition of Jeong by further including abrasive particles as taught by Kim into the composition.
This modification would have been obvious as it would have been the combination of prior art elements according to known methods to yield predictable results. The abrasive particle of Kim would have had the same function of acting as an abrasive within the composition. The combination would have had the predictable result of supplying a composition that could suitably be used as a slurry for chemical mechanical polishing. See MPEP 2143(I)(A).
Modified Jeong fails to teach that the composition further includes deionized water.
Singh teaches compositions for chemical mechanical polishing (Paragraph [0001]). Singh teaches that the polishing composition can include deionized water (Paragraph [0035])
It would have been obvious to one of ordinary skill in the art to have modified the composition of modified Jeong by including deionized water as taught by Singh.
This modification would have been obvious as it could be considered the combination of prior art elements according to known methods to yield predictable results. The combination would have produced the predictable result of providing a suitable medium (deionized water) in which the various components taught by modified Jeong could be mix in order to create a slurry composition. See MPEP 2143(I)(A).
Regarding Claim 10, modified Jeong teaches all the limitations of claim 9 as outlined above.
Jeong fails to explicitly teach wherein a concentration of the adsorbent is less than or equal to about 1 wt% of a total weight of the slurry composition.
However, Jeong teaches that zeolite, equivalent to the claimed adsorbent, is included in the composition from 0.01 to 20% by weight (Paragraph [0021]).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated the adsorbent at a level within the disclosed range of 0.01-20% by weight, including at amounts that overlap with the claimed range of less than or equal to about 1% by weight. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Regarding Claim 11, modified Jeong teaches all the limitations of claim 9 as outlined above. Jeong further teaches wherein the adsorbent comprises porous material (Paragraph [0014] composition includes zeolite. Paragraph [0002] zeolite is porous).
Regarding Claim 12, modified Jeong teaches all the limitations of claim 9 as outlined above. Jeong further teaches wherein the adsorbent includes at least one of a metal organic framework (MOF), zeolite, or activated carbon (Paragraph [0014] composition includes zeolite).
Regarding Claim 13, modified Jeong teaches all the limitations of claim 9 as outlined above. Jeong further teaches wherein the oxidizer is a temperature-sensitive oxidizer configured to control both a static etch rate and a removal rate of the metal film based on a polishing temperature during the chemical mechanical polishing being about 5 ℃ to about 100 ℃. (Paragraph [0028] composition includes an oxidizer, that can be a periodate, an iodate, or iodic acid. Examiner takes the position that these oxidizers can be considered temperature-sensitive and meet the claimed limitations).
Regarding Claim 14, modified Jeong teaches all the limitations of claim 9 as outlined above.
Jeong fails to teach wherein a concentration of the oxidizer is about 1 wt % to about 5 wt % of a total weight of the oxidizer.
However, Jeong does teach that the oxidizer is included in the composition at 0.01-15 wt% (Paragraph [0024]).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated the oxidizer at a level within the disclosed range of 0.01-15 wt%, including at amounts that overlap with the claimed range of about 1 wt % to about 5 wt %. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Jeong teaches that the oxidant can be a periodate, iodate, or iodic acid (Paragraph [0023]) but fails to teach that the oxidizer includes at least one of potassium iodate, sodium periodate, or periodic acid.
Singh teaches compositions for chemical mechanical polishing (Paragraph [0001]). Singh teaches that the polishing composition can include an oxidizing agent. Singh teaches that periodic acid and potassium iodate are suitable oxidizing agents (Paragraph [0030]).
It would have been obvious to one of ordinary skill in the art to have modified the composition of modified Jeong by using periodic acid or potassium iodate as the oxidizing agent.
This modification would have been the simple substitution of one oxidizer in a chemical mechanical polishing composition for another. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP §2143(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.07.
Regarding Claim 15, modified Jeong teaches all the limitations of claim 9 as outlined above. Jeong further teaches wherein the slurry composition further comprises a pH adjusting agent, and wherein the pH adjusting agent includes at least one of lithium hydroxide, sodium hydroxide, potassium hydroxide, cesium hydroxide, sulfuric acid, nitric acid, hydrogen chloride, or phosphoric acid (Paragraph [0027] sulfuric acid, nitric acid, hydrochloric acid, or phosphoric acid can be added to control the pH).
Regarding Claim 17, modified Jeong teaches all the limitations of claim 9 as outlined above. The limitation recited within claim 8 (“wherein the metal film comprises tungsten (W) or molybdenum (Mo)”) further limits the preamble statement “used for chemical mechanical polishing of a metal film”. This preamble is a statement of intended use that does not further limit the claimed invention. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114. Since the structure of the prior art teaches all of the structural limitations of the claims, the structure is considered capable of meeting the intended use limitations, including the limitation of the instant claim.
Regarding Claim 18, Jeong teaches a slurry composition used for chemical mechanical polishing of a metal film (Paragraph [0001] slurry composition for chemical mechanical polishing, useful for polishing a copper film. Note that: The preamble "used for chemical mechanical polishing of a metal film" is a statement of intended use that does not further limit the claimed invention. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114. Since the structure of the prior art teaches all of the structural limitations of the claim, the structure is considered capable of meeting the intended use limitations), the slurry composition comprising:
an oxidizer (Paragraph [0014] composition includes an oxidant); and
an adsorbent comprising porous material (Paragraph [0014] composition includes zeolite. Paragraph [0002] zeolite is porous);
wherein the oxidizer comprises iodine (Paragraph [0023] oxidant can be a periodate, iodate, or iodic acid which comprises iodine), the oxidizer is a temperature-sensitive oxidizer configured to control both a static etch rate and a removal rate of the metal film based on a polishing temperature during the chemical mechanical polishing being about 50C to about 100C (Examiner takes the position that these oxidizers can be considered temperature-sensitive and meet the claimed limitations), and the adsorbent is configured to adsorb iodine generated from the oxidizer based on the chemical mechanical polishing (Paragraph [0017] zeolite can absorb ions. Examiner takes the position that zeolite could adsorb iodine and meets the claimed limitations).
Jeong fails to explicitly teach that a pH of the slurry composition is greater than 1 and less than 3.
However, Jeong further teaches that the pH of the composition is 1 to 7 (Paragraph [0022]).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated a pH at a level within the disclosed range of 1 to 7, including at amounts that overlap with the claimed range of greater than 1 and less than 3. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Jeong fails to teach that the composition includes abrasive particles
Kim teaches a composition for chemical mechanical polishing (Paragraph [0001]) that includes an oxidizer (Paragraph [0028]), zeolite (Paragraph [0012]), and can further include abrasive particles (Paragraph [0038]).
It would have been obvious to one of ordinary skill in the art to have modified the composition of Jeong by further including abrasive particles as taught by Kim into the composition.
This modification would have been obvious as it would have been the combination of prior art elements according to known methods to yield predictable results. The abrasive particle of Kim would have had the same function of acting as an abrasive within the composition. The combination would have had the predictable result of supplying a composition that could suitably be used as a slurry for chemical mechanical polishing. See MPEP 2143(I)(A).
Modified Jeong fails to teach that the composition further includes deionized water.
Singh teaches compositions for chemical mechanical polishing (Paragraph [0001]). Singh teaches that the polishing composition can include deionized water (Paragraph [0035])
It would have been obvious to one of ordinary skill in the art to have modified the composition of modified Jeong by including deionized water as taught by Singh.
This modification would have been obvious as it could be considered the combination of prior art elements according to known methods to yield predictable results. The combination would have produced the predictable result of providing a suitable medium (deionized water) in which the various components taught by modified Jeong could be mix in order to create a slurry composition. See MPEP 2143(I)(A).
Regarding Claim 19, modified Jeong teaches all the limitations of claim 18 as outlined above.
Jeong teaches that the oxidant can be a periodate, iodate, or iodic acid (Paragraph [0023]) but fails to teach that the oxidizer includes at least one of potassium iodate, sodium periodate, or periodic acid.
Singh teaches compositions for chemical mechanical polishing (Paragraph [0001]). Singh teaches that the polishing composition can include an oxidizing agent. Singh teaches that periodic acid and potassium iodate are suitable oxidizing agents (Paragraph [0030]).
It would have been obvious to one of ordinary skill in the art to have modified the composition of modified Jeong by using periodic acid or potassium iodate as the oxidizing agent.
This modification would have been the simple substitution of one oxidizer in a chemical mechanical polishing composition for another. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP §2143(B). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.07.
Regarding Claim 20, modified Jeong teaches all the limitations of claim 18 as outlined above. Jeong further teaches wherein the adsorbent includes at least one of a metal organic framework (MOF), zeolite, or activated carbon (Paragraph [0014] composition includes zeolite).
Jeong fails to explicitly teach wherein a concentration of the adsorbent is less than or equal to about 1 wt% of a total weight of the slurry composition.
However, Jeong teaches that zeolite, equivalent to the claimed adsorbent, is included in the composition from 0.01 to 20% by weight (Paragraph [0021]).
It would have been obvious to one of ordinary skill in the art to have selected and incorporated the adsorbent at a level within the disclosed range of 0.01-20% by weight, including at amounts that overlap with the claimed range of less than or equal to about 1% by weight. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I).
Response to Arguments
Applicant’s arguments, see Remarks Pg. 1-3, filed 02/09/2026, with respect to the 35 U.S.C. § 103 rejection have been fully considered and are not persuasive.
Applicant argues that Kim fails to teach that the slurry composition has a static etch rate of about 0 A/min to about 10 A/min at a temperature of about 25 °C to about 60 °C.
Examiner respectfully disagrees. As outlined in the rejection of claim 1 above, examiner takes the position that the static etch rate of a composition is an intrinsic property of a composition and that the prior art teaches the composition as claimed. Further, Kim provides experimental embodiments of the taught composition that are shown to have a static etch rate of about 0 A/min to about 10 A/min, when measured at room temperature (which can be considered to be “about 25°C”).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. that “the claimed slurry composition maintains a static etch rate within 10 A/min even when the temperature changes from about 25 °C to about 60 °C”) are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The relevant limitation within claim 1 only requires that the composition have “a static etch rate” within the claimed range when measured within the claimed temperature range.
Applicant’s arguments with respect to claims 9 and 18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW KEELAN LAOBAK whose telephone number is (703)756-5447. The examiner can normally be reached Monday - Friday 8:00am - 5:30pm.
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/A.K.L./ Examiner, Art Unit 1713 /DUY VU N DEO/Primary Examiner, Art Unit 1713