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 .
Claims 1-15 pending
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-15 of U.S. Patent No. 18/990,961. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1-9 are not patentably distinct from claims 1 and 4-9 of the reference application because the reference claims recite silica particles having the same or overlapping atomic-scale and nanoscale pore-volume properties and the same additional pore-volume, refractive-index, metal-impurity, and tetraalkoxysilane-condensate limitations. In particular, reference claim 4 recites an average pore volume of atomic-scale pores of 0.33 nm³ or more, reference claim 5 recites an average pore volume of atomic-scale pores of 0.80 nm³ or less, and reference claim 1 recites an average pore volume of nanoscale pores of 5.3 nm³ or less. The presently claimed ranges overlap with or encompass these claimed ranges. Reference claims 6-9 further recite the same additional particle properties recited in present claims 6-9.
Claim 10 is not patentably distinct from claim 10 of the reference application. Reference claim 10 recites producing the claimed silica particles by carrying out a hydrolysis reaction and a condensation reaction of an alkoxysilane at 40°C or higher. The presently claimed method instead recites carrying out the hydrolysis reaction and condensation reaction for 600 minutes or less. The disclosure supporting reference claim 10 includes carrying out the hydrolysis and condensation reaction at 50°C for 153 minutes, which is within the presently claimed reaction-time limitation. Thus, the recited reaction time represents an obvious variation of the production method claimed in the reference application.
Claims 11-15 are not patentably distinct from reference claims 11-15 because the reference claims respectively recite a silica sol comprising the claimed silica particles, a polishing composition comprising the silica sol, a polishing method using the polishing composition, a method for producing a semiconductor wafer using the polishing composition, and a method for producing a semiconductor device using the polishing composition. The differences between the underlying silica-particle limitations are not patentably distinct for the reasons discussed above.
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 1-5, 8-9 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kyotani et al. (WO 2020171140 A1) in view of Kajcsos et al., On the peculiarities of positron annihilation features in silicalite-1 and Y-zeolites, Radiation Physics and Chemistry, Vol. 58, pages 709-714 (2000).
Regarding claim 1, Kyotani teaches silica particles (teaching that colloidal silica is widely used as abrasive particles in polishing compositions and may be produced by hydrolysis and condensation of alkoxysilane; paragraph [0003]). Kyotani further teaches that the internal structure of the silica particles affects their mechanical strength and polishing characteristics (teaching that silica particles having a low degree of condensation have insufficient formation of membered rings formed by linking SiO4 tetrahedrons, a small membered-ring size, large strain, and inferior mechanical strength, resulting in adverse polishing effects; paragraph [0006]). Kyotani also teaches that increasing the d value promotes formation of larger membered rings, reduces strain, and improves mechanical strength and polishing characteristics, and that, for amorphous silica, the d value represents an interval between surfaces aligned through voids, which reads on pores; paragraphs [0013]-[0014]. Kyotani further teaches that the d value can be set to a desired range by adjusting conditions of the hydrolysis and condensation reactions and conditions of subsequent treatment; paragraph [0017].
Kyotani does not expressly teach wherein an average pore volume of atomic-scale pores as measured by positron annihilation spectroscopy is 0.35 nm³ or more.
Kajcsos teaches positron annihilation spectroscopy for characterizing microvoids within a silica framework (teaching silicalite-1 having an MFI structure with 96 SiO2 per unit cell and studying the samples as micro-crystalline powders; page 710, Section 2, Experimental; further teaching that the positron lifetime spectra include a 1-4 ns component attributed to o-Ps probably trapped in microvoids of the lattice; page 711, Section 3, Results and discussion, first paragraph). Kajcsos reports for defected silicalite-1 sample B a positron lifetime τ2 of 4.66 ns; page 711, Table 1, and explains that the corresponding lifetime represents a void having a radius of approximately 0.46 nm; page 711, Section 3, Results and discussion, right column, first paragraph.
The instant specification defines average pore volume V from average pore radius R according to V = 4/3πR³; paragraphs [0022]-[0023]. Applying this relationship to Kajcsos’ approximately 0.46 nm radius gives a calculated average pore volume of approximately 0.41 nm³, which is greater than the claimed 0.35 nm³.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the silica particles of Kyotani to evaluate and select their internal atomic-scale pore structure using the positron annihilation spectroscopy technique taught by Kajcsos because Kyotani expressly recognizes that the internal structure of silica particles, particularly the d value, affects the size of the membered rings formed by linked SiO4 tetrahedrons, the degree of strain, mechanical strength, and polishing characteristics (paragraphs [0006], [0013]-[0017]), and one of ordinary skill in the art would know to control the d value to be as much or as little as necessary to achieve the desired result and it is not inventive to discover the optimum or workable ranges by routine experimentation, see MPEP 2144.05. Further, Kyotani further teaches that the d value can be controlled by adjusting the conditions of the hydrolysis and condensation reactions and subsequent treatment (paragraph [0017]). Kajcsos teaches positron annihilation spectroscopy as a known technique for characterizing internal microvoids in siliceous materials (page 711, Section 3, Results and discussion, first paragraph). Accordingly, one of ordinary skill in the art seeking to improve the mechanical strength and polishing characteristics of Kyotani’s silica particles would have had reason to optimize the internal silica structure through Kyotani’s disclosed reaction and treatment conditions while using Kajcsos’ positron annihilation spectroscopy technique as an additional means of evaluating internal void dimensions. Such characterization would have provided a predictable means of comparing the internal void structures of silica particles obtained under different processing conditions. See MPEP § 2143(G) and § 2144.05(II).
Regarding claim 2, modified Kyotani teaches the limitations of claim 1 as discussed above.
Kajcsos further teaches a microvoid dimension corresponding to the claimed average pore volume of atomic-scale pores of 0.40 nm³ or more (reporting for defected silicalite-1 sample B a positron lifetime τ2 of 4.66 ns; page 711, Table 1, and explaining that the corresponding lifetime represents a void having a radius of approximately 0.46 nm; page 711, Section 3, Results and discussion, right column, first paragraph).
As discussed above, the instant specification defines average pore volume V from average pore radius R according to V = 4/3πR³; paragraphs [0022]-[0023]. Applying this relationship to Kajcsos’ approximately 0.46 nm radius gives a calculated average pore volume of approximately 0.41 nm³, which is greater than the claimed 0.40 nm³.
Regarding claim 3, modified Kyotani teaches the limitations of claim 1 as discussed above.
Kajcsos further teaches a microvoid dimension corresponding to the claimed average pore volume of atomic-scale pores of 1.0 nm³ or less (reporting for defected silicalite-1 sample B a positron lifetime τ2 of 4.66 ns and explaining that the corresponding lifetime represents a void having a radius of approximately 0.46 nm; page 711, Table 1; page 711, Section 3, Results and discussion, right column, first paragraph).
Applying the pore-volume relationship set forth in paragraphs [0022]-[0023] of the instant specification to Kajcsos’ approximately 0.46 nm radius gives a calculated average pore volume of approximately 0.41 nm³, which is less than the claimed 1.0 nm³.
Regarding claim 4, modified Kyotani teaches the limitations of claim 1 as discussed above.
Kajcsos further teaches a microvoid dimension corresponding to the claimed average pore volume of atomic-scale pores of 0.80 nm³ or less (reporting for defected silicalite-1 sample B a positron lifetime τ2 of 4.66 ns and explaining that the corresponding lifetime represents a void having a radius of approximately 0.46 nm; page 711, Table 1; page 711, Section 3, Results and discussion, right column, first paragraph).
Applying the pore-volume relationship set forth in paragraphs [0022]-[0023] of the instant specification to Kajcsos’ approximately 0.46 nm radius gives a calculated average pore volume of approximately 0.41 nm³, which is less than the claimed 0.80 nm³.
Regarding claim 5, modified Kyotani teaches the limitations of claim 1 as discussed above.
Kajcsos further teaches positron-lifetime behavior corresponding to the claimed average pore volume of nanoscale pores of 5.4 nm³ or less (teaching that the positron lifetime spectra include a 10-90 ns component attributed to o-Ps decaying in internal channels of the zeolites; page 711, Section 3, Results and discussion, first paragraph, and reporting for defected silicalite-1 sample B a corresponding lifetime τ3 of 20.8 ns; page 711, Table 1). Kajcsos separately attributes the approximately 100-135 ns lifetime component to o-Ps decaying outside the crystallites in the intergrain space, rather than to pores within the silicalite-1 particles; page 711, Section 3, Results and discussion, first paragraph.
The instant specification explains that nanoscale pore volume is determined from the positron lifetime and provides Equation 3 for determining average nanoscale-pore radius R and Equation 4 for determining average pore volume V; paragraphs [0026]-[0030]. Applying Kajcsos’ τ3 value of 20.8 ns to those equations gives a calculated average nanoscale-pore radius of approximately 0.954 nm and a calculated average nanoscale-pore volume of approximately 3.63 nm³, which is less than the claimed 5.4 nm³.
Regarding claim 8, modified Kyotani teaches the limitations of claim 1 as discussed above.
Kyotani further teaches wherein a content of metal impurities is 5 ppm or less (teaching that the content of metal impurity of the silica particles is preferably 5 ppm or less and more preferably 2 ppm or less; paragraph [0037]; further teaching that a metal impurity content of 5 ppm or less may be obtained by performing the hydrolysis reaction and condensation reaction using alkoxysilane as a main raw material; paragraph [0040]).
Regarding claim 9, modified Kyotani teaches the limitations of claim 1 as discussed above.
Kyotani further teaches wherein a tetraalkoxysilane condensate is a main component (teaching that the silica particles preferably contain an alkoxysilane condensate as a main component and more preferably contain a tetraalkoxysilane condensate as a main component, wherein “main component” is defined as 50 mass % or more of the total components of the silica particles; paragraph [0043]). Kyotani further teaches examples of the tetraalkoxysilane condensate including tetramethoxysilane, tetraethoxysilane, tetrapropoxysilane, and tetraisopropoxysilane condensates; paragraph [0044].
Regarding claim 11, modified Kyotani teaches the limitations of claim 1 as discussed above.
Kyotani further teaches a silica sol comprising the silica particles (teaching a silica sol including the disclosed silica particles; paragraph [0010]; further teaching that the silica sol according to the embodiment contains the silica particles according to the disclosed silica-particle embodiment and a solvent or dispersion medium; paragraph [0058]).
Regarding claim 12, modified Kyotani teaches the limitations of claim 11 as discussed above.
Kyotani further teaches a polishing composition comprising the silica sol (teaching a polishing composition including the disclosed silica sol; paragraph [0010]; further teaching that the polishing composition according to the embodiment contains the silica sol according to the disclosed embodiment and preferably further contains a water-soluble polymer; paragraph [0069]).
Regarding claim 13, modified Kyotani teaches the limitations of claim 12 as discussed above.
Kyotani further teaches a polishing method comprising polishing an object to be polished using the polishing composition (teaching a polishing method wherein the disclosed polishing composition is used for polishing; paragraph [0010]). Kyotani also teaches that the polishing method includes pressing a surface of a silicon wafer against a polishing pad, supplying the polishing composition to the polishing pad, and polishing the surface of the silicon wafer; paragraph [0083].
Regarding claims 14 and 15, modified Kyotani teaches the limitations of claim 12 as discussed above.
Regarding claim 14, Kyotani further teaches a method for producing a semiconductor wafer comprising polishing a semiconductor wafer using the polishing composition (teaching a method for producing a semiconductor wafer including a step of polishing using the disclosed polishing composition; paragraph [0010]; further teaching that the semiconductor-wafer production method includes a polishing step using the polishing composition and that the semiconductor wafer may be a silicon wafer or a compound semiconductor wafer; paragraph [0084]).
Regarding claim 15, Kyotani further teaches a method for producing a semiconductor device comprising polishing a semiconductor wafer using the polishing composition (teaching a method for producing a semiconductor device including a step of polishing using the disclosed polishing composition; paragraph [0010]; further teaching that the semiconductor-device production method includes a polishing step using the polishing composition, with the specific polishing method described above including polishing a silicon wafer surface using the polishing composition; paragraphs [0083], [0085]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kyotani et al. in view of Kajcsos et al., as applied to claim 1 above, and further in view of Motl et al. (WO 2022/171507 A1).
Regarding claim 6, modified Kyotani teaches the limitations of claim 1 as discussed above.
Modified Kyotani does not expressly teach wherein a volume of pores having a diameter of 2 nm or less as measured by a nitrogen adsorption method is 0.0070 cm3/g or less.
Motl teaches silica particles having a nitrogen-adsorption pore volume within the claimed range (teaching amorphous non-porous silica particles, wherein non-spherical silica particles have a nitrogen-adsorption pore volume of less than 0.005 cm3/g and spherical silica particles have a nitrogen-adsorption pore volume of less than 0.002 cm3/g; paragraph [0025]).
Motl further teaches determining the nitrogen-adsorption pore volume using a BET nitrogen adsorption method; paragraph [0025]. Because Motl’s disclosed total nitrogen-adsorption pore volume is less than 0.005 cm3/g or less than 0.002 cm3/g, the portion of that total attributable to pores having a diameter of 2 nm or less necessarily is no greater than the total pore volume and therefore is less than the claimed 0.0070 cm3/g.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the silica particles of modified Kyotani to have the low nitrogen-adsorption pore volume taught by Motl because Kyotani teaches that its silica particles preferably have no pores to provide excellent mechanical strength and storage stability and confirms the presence or absence of pores using nitrogen adsorption; paragraph [0042]. Motl provides a quantitative teaching of non-porous silica particles having nitrogen-adsorption pore volumes below the claimed upper limit. One of ordinary skill in the art would have reasonably expected success in selecting such a low nitrogen-adsorption pore volume because Kyotani itself contemplates controlling the internal void-related structure of its silica particles while also expressly preferring silica particles having no pores as determined by nitrogen adsorption. Accordingly, selecting the low nitrogen-adsorption pore volume taught by Motl would have implemented the low-porosity silica structure expressly preferred by Kyotani. See MPEP § 2143(G).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kyotani et al. in view of Kajcsos et al., as applied to claim 1 above, and further in view of Yoshitake et al. (US 2017/0001870 A1).
Regarding claim 7, modified Kyotani teaches the limitations of claim 1 as discussed above.
Modified Kyotani does not expressly teach wherein a refractive index of the silica particles is 1.390 or more.
Yoshitake teaches wherein a refractive index of the silica particles is 1.390 or more (teaching silica particles formed from an alkoxysilane and having a refractive index, as determined by a liquid immersion method, of 1.450 to 1.460; claim 1; further teaching that the higher the refractive index, the denser the silica particles, and that silica particles having a refractive index within the disclosed range have high density and excellent moisture absorption resistance; paragraphs [0034]-[0036]). Yoshitake further teaches determining the refractive index by immersing dry silica powder in organic solvents and measuring the refractive index of the liquid using an Abbe refractometer; paragraph [0037].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the silica particles of modified Kyotani to have the refractive index taught by Yoshitake because Kyotani seeks silica particles having a controlled internal structure and preferably no pores to provide mechanical strength and storage stability, while Yoshitake teaches refractive index as an indicator of silica-particle density and teaches alkoxysilane-derived silica particles having refractive indices of 1.450 to 1.460, corresponding to high-density particles. Accordingly, Yoshitake would have provided one of ordinary skill in the art with a reason to select a known dense silica-particle structure having a refractive index of 1.390 or more when implementing Kyotani’s silica particles, with a reasonable expectation of obtaining silica particles having the known density characteristics taught by Yoshitake. See MPEP § 2143(G).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kyotani et al. in view of Kajcsos et al., as applied to claim 1 above, and further in view of Sumiya et al. (JP-2021116225-A).
Regarding claim 10, modified Kyotani teaches the limitations of claim 1 as discussed above.
Modified Kyotani further teaches a method for producing the silica particles comprising carrying out a hydrolysis reaction and a condensation reaction of an alkoxysilane (teaching that preferred methods of producing silica particles include hydrolysis and condensation reactions of alkoxysilane, more preferably tetraalkoxysilane; paragraph [0046]); further teaching that alkoxysilane is hydrolyzed in the presence of a catalyst and the resulting Silano groups are dehydrated and condensed to form siloxane bonds and grow silica particles; paragraph [0022]).
Modified Kyotani does not expressly teach carrying out the hydrolysis reaction and condensation reaction in 600 minutes or less.
Sumiya teaches carrying out the hydrolysis reaction and condensation reaction of an alkoxysilane in 600 minutes or less (teaching in Example 3 that a solution containing tetramethoxysilane and methanol and a solution containing water and ammonia were added to the reaction solution at a constant rate over 93 minutes while the reaction solution was maintained at 50°C, followed by stirring for an additional 30 minutes at 50°C, thereby producing a silica-particle dispersion; paragraph [0098]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method of modified Kyotani to carry out the hydrolysis and condensation reaction in 600 minutes or less because Sumiya teaches a known method for producing silica particles by hydrolysis and condensation of tetramethoxysilane using a reaction period well within the claimed range. Kyotani likewise produces silica particles through hydrolysis and condensation of an alkoxysilane. Accordingly, applying Sumiya’s known reaction timing to Kyotani’s corresponding alkoxysilane hydrolysis-and-condensation process would have been a use of a known technique in a similar process to obtain the predictable result of producing silica particles within the claimed reaction time. See MPEP § 2141, rationale III(C).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN CARTER whose telephone number is (571)272-8176. The examiner can normally be reached Monday - Friday 5:00 AM - 2:00 PM.
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 L Allen can be reached at (571) 272-3176. 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.
/JONATHAN L CARTER/ Examiner, Art Unit 1713
/ERIN F BERGNER/Primary Examiner, Art Unit 1713
Prosecution Insights