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 .
Election/Restrictions
2. Applicant’s election without traverse of Group I (claims 1-11, 15-20) in the reply filed on 01/27/2026 is acknowledged.
3. Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/27/2026.
Double Patenting
4. 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.
5. Claims 1-2, 4-5, 8-11, 15-16, 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 8-9, 12-15, of copending Application No. 18/370,486 (reference application, now US 2024/0101866 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the current application (18/684,991) claims 1-2, 4-5, 8-10, 15-16, 19-20 are broader than claims 1-2, 8-9, 12-15 of copending application
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
As to claim 1, copending application 18/370,486 claim 1 discloses a polishing composition comprising: abrasives having a zeta potential of -5 mV or less and a cationic surfactant (See claim 1 of 18/370,486).
As to claim 2, copending application 18/370,486 claim 12 discloses wherein a pH is 6 or less (read on applicant’s range of “7 or less”, See claim 12 of copending application 18/370,486).
As to claim 4, copending application 18/370,486 claim 8 discloses wherein the cationic surfactant contains amine oxide.
As to claim 5, copending application 18/370,486 claim 9 discloses the cationic surfactant contains dimethyl amine oxide.
As to claim 8, copending application 18/370,486 claim 13 discloses the abrasives contains anion-modified silica.
As to claim 9, copending application 18/370,486 claim 14 discloses the silica is silica having a surface on which an organic acid is immobilized.
As to claim 10, copending application 18/370486 claim 15 discloses the silica is colloidal silica.
As to claim 11, copending application 18/370,486 claim 2 discloses the composition is used in application of polishing an objected containing a silicon nitride layer.
As to claim 15, copending application 18/370,486 claim 8 discloses the cationic surfactant contains amine oxide.
As to claim 16, copending application 18/370,486 claim 9 discloses the cationic surfactant contains dimethyl amine oxide.
As to claim 19, copending application 18/370,486 claim 13 discloses the abrasives contains anion-modified silica.
As to claim 20, copending application 18/370,486 claim 2 discloses the composition is used in application of polishing an objected containing a silicon nitride layer.
6. Claims 3, 6-7, 17-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 8-9, 12-15 of copending Application No. 18/370,486 in view of Kamimura (WO 2019/181,399 A1) English translation is provided via Kamimura (US 2020/0354609 A1). Note: All paragraph numbers cited below are based on US 2020/0354609 A1.
This is a provisional nonstatutory double patenting rejection.
As to claim 3, copending Application No. 18/370,486 claims 1 and 12 fail to disclose a pH is 2 or more and 4 or less. However, copending Application No. 18/370,486 claim 12 clearly discloses the pH is 6 or less. Kamimura discloses a pH between 2-6, preferably 2 to 5, including example of pH = 3 or 4 (abstract, paragraph 0138, Table 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify copending Application No. 18/370,486 in view of Kamimura by having a pH between 2 to 4 because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
As to claims 6 and 17, copending Application No. 18/370,486 claim 1 fails to disclose the composition comprises a defect reducing agent. As to claims 6 and 17, Kamimura discloses the composition further comprises a defect reducing agent to inhibit generation of defect (paragraph 0041, 0055, 0059). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify copending Application No. 18/370,486 claim 1 in view of Kadohashi by using defect reducing agent because it will enhance the polishing process by inhibiting generation of defect (See paragraph 0041).
As to claims 7 and 18, copending Application No. 18/370,486 claim 1 fails to disclose the abrasive have a secondary particle diameter of 20 nm or more and 80 nm or less. However, copending application 18/370,486 claim 15 clearly disclose to use colloidal silica. As to claims 7 and 18, Kamimura discloses the average primary particle size is between 15 nm to 100 nm, preferably 20 nm or more (See paragraph 0045). Kamimura further discloses degree of association is between 1 to 3, more preferably 1.5 to 2.5 (paragraph 0052), wherein
degree of association = average secondary particle size/average primary particle size (See paragraph 0053).
Base on the formula disclosed by Kamimura, any person can calculate the average secondary particle size using the following formula as shown below which is derived from Kamimura’s formula:
Average secondary particle size = degree of association * average primary particle size.
When the degree of association = 1 and average primary particle size = 20 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 1 * 20 = 20 nm
When the degree of association = 1.5 and average primary particle size = 20 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 1.5 * 20 = 30 nm
When the degree of association = 2.5 and average primary particle size = 20 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 2.5 * 20 = 50 nm
When the degree of association = 3 and average primary particle size = 20 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 3 * 20 = 60 nm
When the degree of association = 2.5 and average primary particle size = 15 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 2.5 * 15 = 37.5 nm
When the degree of association = 3 and average primary particle size = 15 nm, then
Average secondary particle size = degree of association *average primary particle size.
= 3 * 15 = 45 nm
Therefore, Kamimura implicitly discloses the abrasives have the secondary particles size/diameter of 20 nm, 30 nm, 37.5 nm, 45 nm, 50 nm, or 60 nm (within applicant’s range of 20 nm to 80 nm). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify copending application 18/370,486 in view of Kamimura by having a secondary particle diameter of 20 nm or more and 80 nm or less because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
Claim Rejections - 35 USC § 102
7. 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.
8. 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
9. Claims 1-3, 6-7, 11, 17-18, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamimura (WO 2019/181399 A1), English translation is provided via Kamimura (US 2020/0354609 A1). Note: All paragraph numbers cited below are based on English translation document US 2020/0354609 A1).
As to claim 1, Kamimura discloses a polishing composition comprising:
abrasives having a zeta potential of -20 mV or less (Note: -20 mV or less is within applicant’s range of “-5 mV or less”; See abstract, paragraph 0009, 0012, 0033, 0118; ) and
a cationic surfactant (paragraph 0020, 0092; 0095-0097).
As to claim 2, Kamimura discloses the pH is between 2 to 6 (abstract, paragraph 0014, 0138).
As to claim 3, Kamimura discloses the pH is between 2 to 6, preferable 2 to 5, more preferable 2 to 3, including example of pH = 2 or 3 or 4 (paragraph 0014, 0138, Table 1; within applicant’s range of 2 to 4)
As to claim 6, Kamimura discloses the composition further comprises a defect reducing agent (paragraph 0041, 0055, 0059).
As to claims 7 and 18, Kamimura discloses the average primary particle size is between 15 nm to 100 nm, preferably 20 nm or more (See paragraph 0045). Kamimura further discloses degree of association is between 1 to 3, more preferably 1.5 to 2.5 (paragraph 0052), wherein
degree of association = average secondary particle size/average primary particle size (See paragraph 0053).
Base on the formula disclosed by Kamimura, any person can calculate the average secondary particle size using the following formula as shown below which is derived from Kamimura’s formula:
Average secondary particle size = degree of association * average primary particle size.
When the degree of association = 1 and average primary particle size = 20 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 1 * 20 = 20 nm
When the degree of association = 1.5 and average primary particle size = 20 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 1.5 * 20 = 30 nm
When the degree of association = 2.5 and average primary particle size = 20 nm, then
Average secondary particle size = degree of association * primary particle size.
= 2.5 * 20 = 50 nm
When the degree of association = 3 and average primary particle size = 20 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 3 * 20 = 60 nm
When the degree of association = 2.5 and average primary particle size = 15 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 2.5 * 15 = 37.5 nm
When the degree of association = 3 and average primary particle size = 15 nm, then
Average secondary particle size = degree of association * average primary particle size.
= 3 * 15 = 45 nm
Therefore, Kamimura implicitly discloses the abrasives have the secondary particles size/diameter of 20 nm, 30 nm, 37.5 nm, 45 nm, 50 nm, or 60 nm (within applicant’s range of 20 nm to 80 nm).
As to claim 11, Kamimura discloses the polishing composition is used in application of polishing an object to be polished containing a silicon nitride film (paragraph 0009, 0036, Table 1).
As to claim 17, Kamimura discloses the composition further comprises a defect reducing agent (paragraph 0041, 0055, 0059).
As to claim 20, Kamimura discloses the polishing composition is used in application of polishing an object to be polished containing a silicon nitride film (paragraph 0009, 0036, Table 1).
10. Claims 1-3, 6-10, 17-20 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Mae et al. (US 2021/0079264 A1), herein after refer as Mae (‘264).
The applied reference has a common assignee 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.
As to claim 1, Mae (‘264) discloses a polishing composition comprising:
Abrasives having a zeta potential of -60 mV to -35 mV (Note: -60 mV to -35 mV is within applicant’s range of “-5 mV or less”; See abstract, paragraph 0009, 0018-0022; ) and
A cationic surfactant (paragraph 0043; 0070, 0073).
As to claim 2, Mae (‘264) discloses the pH is less than 4, preferably less than 3.9, or more 1.0 or greater (abstract, paragraph 0009, 0020-0021, 0057, within applicant’s range of “7 or less”).
As to claim 3, Mae (‘264) discloses the pH is less than 4, preferably less than 3.9, preferably 1.5 or greater (abstract, paragraph 0009, 0020-0021, 0057, within applicant’s range of “2 or more and 4 or less”).
As to claim 6, Mae (‘264) discloses the composition further comprises a defect reducing agent (i.e. suppress defect; See paragraph 0035-0036).
As to claim 7, Mae (‘264) discloses the abrasives have a secondary particle diameter of 70 nm or 24 nm (paragraph 0119, 0021, within applicant’s range of “20 nm or more and 80 nm or less”)
As to claim 8, Mae (‘264) discloses the abrasive contain anion-modified silica (paragraph 017, 0030-0034, 0052, 0104-0108).
As to claim 9, Mae (‘264) discloses the silica is a silica having surface on which organic acid (i.e. carboxylic acid, sulfonic acid) is immobilized via covalent bond (See paragraph 0032-0034).
As to claim 10, Mae (‘264) discloses the silica is colloidal silica (abstract, paragraph 0007, 0009, 0026-0033).
As to claim 17, Mae (‘264) discloses the composition further comprises a defect reducing agent (i.e. suppress defect; See paragraph 0035-0036).
As to claim 18, Mae (‘264) discloses the abrasives have a secondary particle diameter of 70 nm or 24 nm (paragraph 0119, 0021, within applicant’s range of “20 nm or more and 80 nm or less”).
As to claim 19, Mae (‘264) discloses the abrasive contain anion-modified silica (paragraph 017, 0030-0034, 0052, 0104-0108).
As to claim 20, Mae (‘264) discloses the polishing composition is used in application of polishing an object to be polished containing a silicon nitride film (paragraph 0024).
Claim Rejections - 35 USC § 103
11. 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.
12. Claim(s) 4-5, 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kamimura (WO 2019/181399 A1), English translation is provided via Kamimura (US 2020/0354609 A1) as applied to claims 1-3, 6-7, 11, 17-18, 20 and further in view of Shindo (US 2008/0248727 A1)
As to claims 4 and 15, Kamimura fails to disclose the cationic surfactant contains amine oxide. However, Kamimura clearly teaches to use cationic surfactant includes aliphatic amine salts (paragraph 0095). Shindo teaches to use cationic surfactant include amine oxide such as lauryl dimethyl amine oxide (paragraph 0051). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kamimura in view of Shindo by using cationic surfactant contains amine oxide because equivalent and substitution of one for the other would produce an expected result (See MPEP 2143(I)(B)).
As to claims 5 and 16, Kamimura fails to disclose the cationic surfactant contains dimethyl amine oxide. However, Kamimura clearly teaches to use cationic surfactant includes aliphatic amine salts (paragraph 0095). Shindo teaches to use cationic surfactant contains dimethyl amine oxide such as lauryl dimethyl amine oxide (paragraph 0051). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kamimura in view of Shindo by using cationic surfactant contains dimethyl amine oxide because equivalent and substitution of one for the other would produce an expected result (See MPEP 2143(I)(B)).
13. Claims 8-10, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kamimura (WO 2019/181399 A1), English translation is provided via Kamimura (US 2020/0354609 A1) as applied to claims 1-3, 6, 11, 17, 20 and further in view of Kadohashi (US 2020/0095466 A1)
As to claims 8 and 19, Kamimura discloses the abrasive contains colloidal silica having surface-modifying group (paragraph 0055-0058). However, Kamimura fails to disclose the modified silica is anion-modified silica. Kadohashi teaches to use anion-modified silica (See paragraph 0020-0023). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Kamimura in view of Kadohashi by using anion-modified silica because equivalent and substitution of one for the other would produce an expected result (See MPEP 2143(I)(B)).
As to claim 9, Kamimura discloses the silica is a silica having surface on which organic acid (i.e. carboxylic acid, sulfonic acid) is immobilized via covalent bond (See paragraph 0055).
As to claim 10, Kamimura discloses the silica is colloidal silica (abstract, paragraph 0044).
Conclusion
14. 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.
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BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/ Primary Examiner, Art Unit 1713