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 .
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 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.
Response to Amendments/Arguments
Amendments made to claims 1-3 and 7-13, and the withdrawal of claim 14, as filed on August 3, 2026, are acknowledged.
The amendment made to claim 1 has overcome the previous rejections to the claim and its dependent claims under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the Office Action mailed on May 8, 2026.
The amendment made to claim 3 is responsive. The previous objection to the claim, as set forth in the Office Action mailed on May 8, 2026, has been withdrawn.
Applicant’s arguments with respect to amended claim 1 have been considered but are moot because the arguments do not apply to new ground(s) of rejection in this Office Action necessitated by the amendments made to the claims.
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 of this title, 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.
Claims 1-3 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Brosnan et al. (US20210115299) in view of Lauter et al. (US20170166778).
Regarding claim 1, Brosnan discloses an insulating film polishing solution (abstract) consisting of: cerium oxide (ceria, abstract), a cationic polymer (abstract), an insulation film inhibitor (polyquaternium-2, paragraph 0038), and water (paragraph 0033); wherein the cationic polymer is a polyquaternium polymer compound (paragraph 0038): wherein the insulation film inhibitor is a polyquaternium polymer (polyquaternium-2, paragraph 0038). Brosnan is silent about the composition including an anionic polymer. However, Brosnan discloses that the polishing composition may further include a silicon nitride removal rate inhibitor (paragraph 0066). In addition, Lauter teaches that an anionic polymer, such as polyaspartic acid or its salt, is a known nitride removal rate inhibitor for improving selectivity of polishing silicon oxide over silicon nitride (paragraphs 0009 and 0047, and Table 1). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known silicon nitride removal rate inhibitor as taught by Lauter, in the composition of Brosnan, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A).
It is noted that claim 1 is drawn to a composition claim and the recitation of "wherein a pattern polishing rate of a polishing rate of the insulating film polishing solution is more than 5 times that of non-pattern polishing rate" is considered as intended use of the claimed composition/function of the claimed composition. 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."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claim 2, Lauter discloses the anionic polymer is selected from compounds containing carboxyl groups (polyaspartic acid, Table 1).
Regarding claim 3, Lauter discloses the polymer compounds containing carboxyl groups are polyamino acids (polyaspartic acid, Table 1).
Regarding claims 7-8, Lauter discloses a mass percentage ratio of the anionic polymer to the cerium oxide is about 0.1% (about 0.002 wt. % polyaminoacid, paragraph 0049; about 2 wt. % ceria abrasive, paragraphs 0031 and 0042).
Regarding claims 9-10, Brosnan discloses a mass percentage ratio of the cationic polymer to the cerium oxide is about 2% (about 50ppm cationic polymer, paragraph 0058; about 0.01 weight % ceria abrasive, paragraph 0032).
Regarding claims 11-12, Brosnan discloses a mass percentage ratio of the insulation film inhibitor to the cerium oxide is about 2% (about 50ppm polyquaternium-2, paragraphs 0038 and 0058; about 0.01 weight % ceria abrasive, paragraphs 0032).
Regarding claim 13, Brosnan discloses a pH value of the insulating film polishing solution ranges from 3.5 to 5 (paragraph 0034).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (571)270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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