The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This office action is response to applicant’s communication filed on 09/19/24. Claims 1-8 are pending in this application.
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, 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.
Claims 1, 2, 5, 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Penta (“Penta”) US 20190092973.
Penta discloses a polishing slurry (abstract) comprising: polishing particles including wt % within the recited range (silica, ¶¶[0007, 0015 and 0029]); a dispersing agent (cationic copolymer, ¶¶[0040-0041], see also para [0058] disclosing polyethylene, this office action notes that ) including wt % within the recited range; an oxide-polishing promoter including picolinic acid, (a pyridine compound, see para [0009] disclosing picolinic acid) including wt % within the recited range (¶[0010], disclosing amine carboxylic acids are pyridine acids from 0.0-1wt%); a nitride-polishing inhibitor (see para [0009] disclosing glutamic acid)including wt % within the recited range (¶[0009]) and water, wherein nitride-polishing inhibitor including glutamic acid or a combination thereof (¶[0009]). Penta contemplates the combination of acidic amino acids( i.e. aspartic acid and glutamic acid) with pyridine carboxylic acids (i.e. nicotinic acid and picolinic acid), by grouping the acidic amino acids together and the carboxylic acids together see para [0010]. Note, this office action interprets Penta’s recitation of “combination” of i.e. nicotinic acid, glutamic acid as having both substances as a permutation, one that is well-contemplated and available as an obvious variation available to one having ordinary skill in the art (as taught by Penta).
This office action notes that the claimed ranges with regard to the promotor and inhibitor in applicant’s claim 1 are obvious variations of the disclosure of at least paras [0009] and [0010] of Penta. The Federal Circuit informs us that a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.1 Therefore the fact that applicant' s claimed range lies within or overlaps the prior art range establishes a presumption of obviousness. This presumption may be rebutted when Applicants puts forward evidence demonstrating objective indicia of non-obviousness, e.g. that the prior art taught away from the claimed invention.2 However, applicant’s reply has failed to provide such evidence.
This office action notes that applicant’s recitations of “oxide-polishing promoter” and “nitride polishing inhibitor” is applicant’s lexicography. Such functional language is intended use. The manner of operating a substance does not differentiate a claimed material from a prior art disclosure3 especially when the prior art discloses the identical substances. Identical substances, in combination, are disclosed in Penta, at least at paras [0009] and [0010].
Re claim 2, Penta discloses (¶[0040]) wherein the polishing particles includes silica which is at least one selected from the group consisting of ceria, silica, alumina, zirconia, and titania particles.
Re claim 5, Penta discloses wherein the nitride polishing inhibitor further includes (see table 2 disclosing cysteine , glutamine, etc.) at least one selected from the group consisting of an anionic dispersing agent, a cationic dispersing agent, a non-ionic dispersing agent, and a hydroxyl acid compound.
Re claim 6, Penta discloses wherein the PH is about 3 to about 4. Penta teaches a PH of 2-5 (abstract) which is a range that lies within or overlaps the disclosed ranges.
Re claim 8, Penta discloses the polishing selectivity is about 69:1 (see para [0033] disclosing a range of selectivity capabilities. This office action notes that a selectivity of 150:1 is a capability that is greater that what is claimed, i.e. 69:1 and thus well within one having ordinary skill in the art, as taught by Penta).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Penta in view of Tsai et al. (“Tsai”) US PG-Pub 2020/0048551.
Regarding claim 3, Penta teaches the polishing slurry as recited in the claim. The difference between the combined references and the present claim is the recited diameter.
Tsai discloses polishing particles having an average diameter (¶¶[0024 and 0066]) which is a range that lies within or overlaps the disclosed ranges.
The Federal Circuit informs us that a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.4
Therefore, the fact that applicant' s claimed range lies within or overlaps the prior art range establishes a presumption of obviousness. This presumption may be rebutted when Applicants puts forward evidence demonstrating objective indicia of non-obviousness, e.g. that the prior art taught away from the claimed invention5
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Penta in view of Park et al. (“Park”) US PG-Pub 2020/0172763 and Stender et al. (“Stender”) US PG-Pub 2017/0088748.
Regarding claim 7, Penta teaches the polishing slurry as recited in the claim. The difference between the combined references and the present claim is the recited material.
While Stender teaches wherein the polishing particles include ceria particles (¶[0040]), the dispersing agent includes a non-ionic dispersing agent (¶[0040]), the oxide-polishing promoter includes a pyridine carboxylic acid (¶[0116]), Park discloses a nitride-polishing inhibitor includes an anionic amino acid (¶[0019]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have selected the materials of Stender/Park as a mere substitution of an art-recognized polishing materials suitable for the intended use. (MPEP §2144.07)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD CHIN whose telephone number is (571)270-1827. The examiner can normally be reached M-F 9AM-5PM.
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, Britt Hanley can be reached on (571) 270-3042. 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.
/EDWARD CHIN/Primary Examiner, Art Unit 2893
1 In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir 2003) citing In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1976); and In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). See MPEP § 2144.05.
2 In re Geisler, 43 USPQ2d 1362 (Fed. Cir. 1997); or that there are new and unexpected results relative to the prior art, In re Woodruff, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 716.02(d); Iron Grip at 1228.
3 “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
4 In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir 2003) citing In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1976); and In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). See MPEP § 2144.05.
5 In re Geisler, 43 USPQ2d 1362 (Fed. Cir. 1997); or that there are new and unexpected results relative to the prior art, In re Woodruff, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 716.02(d); Iron Grip at 1228.
