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 .
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)(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.
Claim(s) 1, 4, 5, 7-9 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Masato (JP2001329250A).
With respect to claim 1, Masato describes a slurry comprising cerium oxide abrasive particles, DI water. The cerium oxide particles have a median primary particles diameter from 30 to 250nm, for example 100-250nm and the maximum of particle diameter is 100 nm, which would provide and contain particles with crystal diameter of 17nm or more (page 2, 5). The value of structural parameter Y, which represents isotropic micro-strain and isotropic fine distortion is 0.350, or 0.41 to provide crystal distortion (pages 3, 4, 5), which would also provide crystal strain or claimed lattice strain of the cerium oxide to be 0.10% or more.
With respect to claim 4, Masato shows an example where the median primary particle size is 290 nm (page 6).
With respect to claim 5, the slurry contain 3 wt% of cerium oxide abrasive particles (page 5).
With respect to claims 7 and 8, the slurry is used in a step of polishing SiO2 insulating film (page 6).
With respect to claim 9, the slurry contains only cerium oxide particles (page 5 and 6). Therefore, it is expected that a content of the cerium oxide is 95 mass% or more based on the total mass of the abrasive grains contained in the slurry.
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.
Claim(s) 2, 6, 10, 11-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masato as applied to claim 1 above.
With respect to claims 2, 10, 11-15, the cerium oxide particles have a value of structural parameter Y, which represents isotropic micro-strain and isotropic fine distortion is from 0.01 to 0.7 to provide crystal distortion or lattice distortion (page 3), which would overlap claimed lattice distortion of 0.10-0.75%, 0.10 to 0.30%, or 0.10 to 1.00%. and the cerium oxide particles have a median primary particles diameter from 30 to 250nm (page 3), which would overlap crystalline diameter of the cerium oxide particles of 17-40nm, 17-60nm or 17-50nm. Overlapping ranges are held obvious. See MPEP 2144.05. 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). Therefore, one skill in the art would find it obvious before the effective filing date of the invention to use ranges including claimed ranges to provide a CMP composition with expected results.
With respect to claim 6, the pH is from 7-10 (page 3), which overlaps claimed pH 1-7. Overlapping ranges are held obvious. See MPEP 2144.05. 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). Therefore, one skill in the art would find it obvious before the effective filing date of the invention to use pH range including claimed range to provide a CMP composition with expected results.
With respect to claim 16 and 17, the average particle size of the cerium oxide particles are 200nm to 400nm (page 3), which is closely overlapping claimed 100-600 nm or 200 to 300nm. Overlapping ranges are held obvious. See MPEP 2144.05. 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). Therefore, one skill in the art would find it obvious before the effective filing date of the invention to use the average particle size range including claimed range to provide a CMP composition with expected results.
Claim(s) 18, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masato as applied to claim 1 above, and further in view of Iwano (US 2021/0207002).
With respect to claims 18 and 19, Masato doesn’t teach that the slurry contains a water-soluble polymer including polyglycerin. Iwano teaches a slurry for the same material as that of Yoshida including silicon oxide (para 4, 20), wherein the slurry includes a water-soluble polymer of polyglycerin (para 121). It would have been obvious for one skilled in the art to add polyglycerin in light of Iwano because he teaches such water-soluble polymer has an effect of adjusting the polishing characteristics such as the dispersion stability of the abrasive grains, flattening properties, in-plane uniformity, polishing selectivity for silicon oxide (para 120).
Allowable Subject Matter
Claims 3 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
With respect to claims 3 and 20, the applied prior art Masato doesn’t teach the crystalline diameter of the cerium oxide is 17nm or more and less than 30nm and the pH is from 4.00 to 6.00. He teaches the medium primary particle size is from 30 to 250 nm and a pH is from 7 or more and 10 or less (page 3).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUY VU NGUYEN DEO whose telephone number is (571)272-1462. The examiner can normally be reached 9-5 M-F.
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/DUY VU N DEO/Primary Examiner, Art Unit 1713
7/8/2026
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