DETAILED ACTION
Claims 1-19 are pending before the Office for review.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 9-11 and 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 May 19, 2026.
Applicant’s election without traverse of Group 1 (claims 1-8 and 12-16) in the reply filed on May 19, 2026 is acknowledged.
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.
Claims 1 and 4-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by YOSHIZAKI et al (U.S. Patent Application Publication 2021/0024780).
With regards to claim 1, Yoshizaki discloses a polishing composition comprising: colloidal silica in which an organic acid is fixed on a surface (Paragraphs [0021]-[0025]); and a pH adjusting agent (Paragraphs [0060]-[0069]), wherein an average aspect ratio of the colloidal silica is 1.38 or more (Paragraph [0030] discloses 1 to 2).
With regards to claim 4, Yoshizaki discloses wherein a pH is less than 7. (Paragraph [0063]).
With regards to claim 5, Yoshizaki discloses wherein a pH is less than 4. (Paragraph [0063]).
With regards to claim 6, Yoshizaki discloses wherein the pH adjusting agent is an acid. (Paragraph [0064])
With regards to claim 7, Yoshizaki discloses wherein the organic acid is a sulfonic acid. (Paragraph [0025])
With regards to claim 8, Yoshizaki discloses wherein, in a case of polishing objects to be polished, containing SiO2 and SiN, the SiN has a selectively higher polishing removal rate than the SiO2. (Paragraphs [0012]-[0019], [0082]-[0085]).
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 2-3 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over YOSHIZAKI et al (U.S. Patent Application Publication 2021/0024780) in view of HAINS et al (U.S. Patent Application Publication 2021/0301178).
With regards to claims 2 and 3, Yoshizaki discloses the limitations of claim 1 as previously discussed.
However Yoshizaki does not explicitly disclose wherein, in a particle size distribution of the colloidal silica calculated by SEM image analysis, a ratio (D90 - D10)/D50 of a difference between a particle diameter D90 when a cumulative number of particles from a fine particle side reaches 90% of a total number of particles and a particle diameter D10 when the cumulative number of particles from the fine particle side reaches 10% of the total number of particles to a particle diameter D50 when the cumulative number of particles from the fine particle side reaches 50% of the total number of particles is 70% or more and 105% or less and wherein the ratio (D90 - D10)/D50 is 90% or more and 105% or less.
Hains discloses a chemical mechanical polishing composition comprising colloidal silica particles wherein the colloidal silica particles aggregation is evaluated using high magnification scanning electron microscopy (SEM) wherein the particle distribution NSpan – D90/-D10/D50 wherein NSpan is greater than 0.42 (Paragraphs [0018]-[0024]) wherein the NSpan of the colloidal silica provides a composition wherein a high polishing rate and highly planar surface (Paragraph [0120]). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A) Therefore it would have been prima facie obvious to optimize the particle size distributions to amounts including a ratio (D90 - D10)/D50 of a difference between a particle diameter D90 when a cumulative number of particles from a fine particle side reaches 90% of a total number of particles and a particle diameter D10 when the cumulative number of particles from the fine particle side reaches 10% of the total number of particles to a particle diameter D50 when the cumulative number of particles from the fine particle side reaches 50% of the total number of particles is 70% or more and 105% or less and wherein the ratio (D90 - D10)/D50 is 90% or more and 105% or less in order to provide a distribution ratio of colloidal silica in a composition wherein the composition provides a high polishing rate and highly planar surface as taught by the modified teachings of Yoshizaki (Hains Paragraph [0120]).
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 Yoshizaki to include the particle size distribution as rendered obvious by Hains because 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 particle distribution as rendered obvious by Hains. MPEP 2143D
With regards to claim 12, the modified teachings of Yoshizaki renders obvious wherein a pH is less than 7. (Yoshizaki Paragraph [0063]).
With regards to claim 13, the modified teachings of Yoshizaki renders obvious wherein a pH is less than 4. (Yoshizaki Paragraph [0063]).
With regards to claim 14, the modified teachings of Yoshizaki renders obvious wherein the pH adjusting agent is an acid. (Yoshizaki Paragraph [0064])
With regards to claim 15, the modified teachings of Yoshizaki renders obvious wherein the organic acid is a sulfonic acid. (Yoshizaki Paragraph [0025])
With regards to claim 16, the modified teachings of Yoshizaki renders obvious wherein, in a case of polishing objects to be polished, containing SiO2 and SiN, the SiN has a selectively higher polishing removal rate than the SiO2. (Yoshizaki Paragraphs [0012]-[0019], [0082]-[0085]).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 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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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713
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