DETAILED ACTION
Claims 1-10 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.
Claim Interpretation
Claims 1-10 are directed towards a polishing composition wherein the polishing composition is defined by a method of calculating an etching rate. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113(I) Therefore while claim 1 defines a method of calculating the etching rate; such limitations while considered when assessing patentability does not limit the composition of the prior art if the composition of the prior art was made by a different method.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over TSUCHIYA et al (U.S. Patent Application Publication 2016/0272846) in view of MURAKAMI et al (U.S. Patent 12, 305,081).
With regards to claims 1 and 10, Tsuchiya discloses a concentrate liquid of a polishing composition (Paragraphs [0154]-[0159]) the polishing composition comprising silica particles (A) as an abrasive (Paragraphs [0102]-[0103]), a basic compound (B) (Paragraphs [0114]-[0116]), a first water-soluble polymer (C1) (Paragraphs [0077]-[0091]), a second water-soluble polymer (C2) (Paragraphs [0122]-[0128]), and water (D) (Paragraphs [0099]),wherein the first water-soluble polymer (Cl) is a polyvinyl alcohol-based polymer (Paragraphs [0087]-[0091]).
Tsuchiya does not explicitly disclose wherein a product (ER x ζ) of an etching rate ER [nm/h] of the polishing composition and zeta potential ζ [mV] of the polishing composition is -900 pmV/h or more and -90 pmV/h or less; and wherein the etching rate ER [nm/h] is calculated based on etching rate measurement as follows:(1) prepare the polishing composition as a liquid agent for etching rate measurement LE;(2) prepare a silicon single crystal substrate (having a rectangular shape with 6 cm in length, 3 cm in width, and 775 pm in thickness) by immersion in a cleaning liquid of NH40H (29%) : H202 (31%) : deionized water (DIW) = 2:5.3:48 (volume ratio) at 25°C for 1 minute and then in an aqueous hydrogen fluoride (HF) solution (5%) at 25°C for 30 seconds, and measure weight WO of the silicon single crystal substrate;(3) immerse the silicon single crystal substrate in the liquid agent LE at 25°C for 48 hours;(4) remove the silicon single crystal substrate from the liquid agent LE, and clean the silicon single crystal substrate with a cleaning liquid of NH40H(29%) : H202(31%): deionized water (DIW) = 1:1:8 (volume ratio) at 25°C for 10 seconds;(5) after cleaning, measure weight WI of the silicon single crystal substrate; and(6) calculate the etching rate [nm/h] from a difference between the W0 and the W1 and the specific gravity of the silicon single crystal substrate.
Murakami discloses a polishing composition comprising a water soluble polymer, basic compound, abrasive wherein the zeta potential of the composition is 0 or less to -100 mV or more (See Col. 4 lines 60-64, Col. 8 line 59-Col. 9 lines 43; Col. 13 lines 28-30, Col. 15 lines 32-63, Col. 17 lines 38-39, Col.22 lines 21-31). Tsuchiya discloses wherein the etching rate is amounts such as 48 nm/hr (See Page 37 Table 4 discloses 0.8 nm/min). As such Tsuchiya as modified by Murakami renders obvious a product (ER X ζ) of amounts including o or more and -4800 pmV/h or less which renders obvious Applicant’s claimed amount of -900 pmV/h or more and -90 pmV/h or less. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) MPEP 2144.05(I) While Tsuchiya as modified by Murakami does not explicitly disclose Applicant’s claimed method of calculating the etching rate, such method steps does not make the claim product patentably distinct from the composition as rendered obvious by Tsuchiya and Murakami. MPEP 2113 (I)
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 method of Tsuchiya to include the zeta potential as rendered obvious by Murakami because the reference of Murakami teaches that such zeta potential prevents abrasive grains from agglomerating (Col. 22 lines 21-30) and 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 zeta potential as rendered obvious by Murakami. MPEP 2143D
With regards to claim 2, the modified teachings of Tsuchiya renders obvious wherein the first water-soluble polymer (C1) is one or two or more kinds selected from the group consisting of unmodified polyvinyl alcohols with a saponification degree of 70% or more; acetalized polyvinyl alcohol-based polymers; and polyvinyl alcohol-based polymers containing repeating units derived from alkylvinyl ether. (Tsuchiya Paragraphs [0081]-[0092], Murakami Col. 7 lines 45-Col.8 lines 67)
With regards to claim 3, the modified teachings of Tsuchiya discloses wherein the water-soluble polymer is added in amounts of 0.02% by mass or more and 20 % by mass or less (Paragraph [0169]) wherein the content can be adjusted to adjust local aggregation of the abrasives (Paragraph [0169]). 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) It would have been prima facie obvious to one of ordinary skill in the art to optimize the concentration of the water soluble polymer to amounts including Applicant’s claimed amount of wherein the content of the first water-soluble polymer (C1) relative to 100 parts by weight of the abrasive is 0.5 parts by weight or more and 10 parts by weight or less in order to adjust local aggregation of the abrasives as taught by the modified teachings of Tsuchiya (Paragraph [0169], MPEP 2144.05(II)(A)).
With regards to claim 4, the modified teachings of Tsuchiya renders obvious wherein the second water-soluble polymer (C2) is one or two or more kinds selected from the group consisting of polyvinyl alcohol-based polymers having a chemical structure different from that of the first water-soluble polymer (C1); nitrogen atom-containing polymers; and (meth)acrylic acid unit-containing polymers. (Tsuchiya Paragraphs [0122]-[0129])
With regards to claim 5, the modified teachings of Tsuchiya renders obvious wherein the nitrogen atom-containing polymers are polymers containing, as a monomer unit, linear amide having an N-(meth)acryloyl group. (Tsuchiya Paragraph [0126])
With regards to claim 6, the modified teachings of Tsuchiya discloses wherein the water-soluble polymer is added in amounts of 0.02% by mass or more and 20 % by mass or less (Paragraph [0169]) wherein the content can be adjusted to adjust local aggregation of the abrasives (Paragraph [0169]). 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) It would have been prima facie obvious to one of ordinary skill in the art to optimize the concentration of the water soluble polymer to amounts including Applicant’s claimed amount of wherein the content of the second water-soluble polymer (C2) relative to 100 parts by weight of the abrasive is 0.5 parts by weight or more and 10 parts by weight or less in order to adjust local aggregation of the abrasives as taught by the modified teachings of Tsuchiya (Paragraph [0169], MPEP 2144.05(II)(A)).
With regards to claim 7, the modified teachings of Tsuchiya renders obvious further comprising a surfactant (E). (Tsuchiya Paragraphs [0117]-[0121])
With regards to claim 8, the modified teachings of Tsuchiya renders obvious wherein the surfactant (E) is a nonionic surfactant. (Tsuchiya Paragraph [0119])
With regards to claim 9, the modified teachings of Tsuchiya renders obvious wherein the composition is use in polishing a surface made of a silicon material (Tsuchiya Paragraph [0022]).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713
Prosecution Insights