DETAILED ACTION
This is the Office action based on the 18766908 application filed July 09, 2024, and in response to applicant’s argument/remark filed on May 28, 2026. Claims 1-20 are currently pending and have been considered below.
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.
Election/Restrictions
Applicant’s election, without traverse, of the invention of Group I, claims 1-17, in the reply filed on May 28, 2026 is acknowledged. Claims 18-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Double Patenting
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, 3, 4, 6, 12 rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 11 of U.S. Patent No. 10676646. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 10676646 recites all limitations of claim 1. It is noted that tetrapropylammonium hydroxide reads on the formula (I) in Claim 1, and the concentration recited in claim 4 of U.S. Patent No. 10676646 overlaps the concentration recited in claim 4. According to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art 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). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”. In the instant case, since the tetrapropylammonium hydroxide disclosed in U.S. Patent No. 10676646 is the same as a polymer removal enhancer recited in claim 11, it must possess a property of polymer removal enhancing, as taught by Applicant. Similarly,- Claim 12 rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 11 of U.S. Patent No. 10676646. It is noted that water is considered a solvent. It is obvious to one of ordinary skill in the art at the effective filing date of the invention to add water to the balance of the composition.- Claims 16 and 17 rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 11 of U.S. Patent No. 10676646.
Claim 1 rejected on the ground of provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 18616347, as shown in the amendment filed May 5, 2026. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 20 and 21 of U.S. Patent No. 18616347 recite all limitations of claim 1. It is noted that quaternary ammonium hydroxide reads on the formula (I) in Claim 1. According to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art 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). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)”. In the instant case, since the quaternary ammonium hydroxide disclosed in copending Application No. 18616347 is the same as the pH adjuster recited in claim 1, it must possess a property of adjusting a pH, as taught by Applicant. Similarly,- Claims 2 and 3 rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 20 and 21 of copending Application No. 18616347.
Claim Objections
Claim 3 objected to because of the following informalities: the term “the polymer removal enhancer” is not clear. For the purpose of examining it will be assumed that this term is “the at least one polymer removal enhancer”. Appropriate correction is required.
Claim Rejections - 35 USC § 102/35 USC § 103
The following is a quotation of 35 U.S.C. 102:
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..
The following is a quotation of 35 U.S.C. 103:
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-13 and 16-17 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhao et al. (U.S. PGPub. No. 20060175298), hereinafter “Zhao”:--Claims 1, 2, 3, 4, 5, 6, 13: Zhao teaches a CMP composition, comprisingsilica abrasives, present at a concentration 0.001-5 wt.% ([0131-0132]);an etching inhibitor, including an alkyl ammonium ion, such as tetrabutylammonium hydroxide ([0162-0164]), present at a concentration 0.001-2.0 wt.% ([0167]); Zhao further teaches that the composition comprises a solvent, and has a pH of 3-11 (abstract) or 5-10 ([0174]). It is noted that tetrabutylammonium hydroxide is included as a polymer removal enhancer recited in claim 3, and has a structure as formula (II) in claim 2, where x=3. Alternately, although Zhao does not disclose the exact combination of components recited in claim 1, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polishing composition comprising the above components from the list of possible components taught by Zhao in the absence of an unexpected result.
--Claim 7: Zhao further teaches that the silica abrasives having size 1-1000 nm ([0132]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use silica abrasives having a mean particle size of at least 100 nm in the invention of Zhao.--Claim 8, 9, 10, 11: Zhao further teaches that the composition comprises an amino alkyl, such as dodecylamine ([0162-0164]), present at a concentration 0.001-2.0 wt.% ([0167]). It is noted that dodecylamine is a primary fatty amine.--Claim 12: Zhao further teaches that the remainder of the polishing composition is a solvent ([0173]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to add the solvent to a concentration of about 20-99.9 wt.% in the invention of Zhao.--Claims 16, 17: Zhao further teaches that the composition comprises an azole-containing inhibitor at a concentration 0.001-5 wt.% ([0189]). It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polishing composition comprising the above components from the list of possible components taught by Zhao in the absence of an unexpected result.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 14-15 rejected under 35 U.S.C. 103 as being obvious over Zhao as applied to claim 1 above, and further in view of Liu et al. (U.S. PGPub. No. 20060169597), hereinafter “Liu”.--Claims 14, 15: Zhao teaches the invention as above. Zhao further teaches that the composition comprises one or more surfactants ([0193]), and is used for polishing a barrier layer, such as Ti or TiN (abstract, [0199]) during fabricating an IC device ([0005]). Zhao is silent about a chemical structure of the surfactants. Liu, also directed to chemical mechanical polishing a barrier layer, such as Ti or Tin ([0066, 0070]), teaches that the polishing may be performed by using a polishing composition comprising silica abrasive particles ([0159]) and a surfactant, wherein the surfactant may be an nonionic surfactant presented at a concentration 0.05-2 wt.% ([0165-0166]) Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use nonionic surfactant as the surfactant in the invention of Zhao because Zhao teaches that the composition comprises one or more surfactants but is silent about a chemical structure of the surfactants, and Liu teaches that such nonionic surfactant would be effective.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (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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/THOMAS T PHAM/Primary Examiner, Art Unit 1713
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