DETAILED ACTION
This the Office action based on the 16/577358 application filed September 20, 2019, and in response to applicant’s Request for Continued Examination (RCE) filed on August 28, 2025. According to the RCE, argument/remark filed on February 13, 2025 are considered in this Office action. Claims 21-29 are currently pending and have been considered below. Applicant’s cancelation of claims 1-20 acknowledged.
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 28, 2025 has been entered.
Claim Interpretations
Applicant has elected Group I, which is drawn to a chemical composition, in response to the Election/Restriction requirement. Note that the claims are directed towards a chemical composition and as such will be examined under such conditions. The process of using the composition or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details). Furthermore, the process of making the composition or the process of making the material that the composition acts upon is viewed as directed to a product-by-process claim and is given little patentable weight. “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)”.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 22 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. --The term "high purity colloidal silica" is a relative term which renders the claim indefinite. The term "high purity" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. One of ordinary skill in the art would not be clear which purity range is considered to be “high purity”. For the purpose of examining it will be assumed that any commercially available CMP silica abrasive meets this requirement.
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 21 and 24-29 rejected under U.S.C. 103 as being obvious over Zhou et al. (U.S. PGPub. No. 20170283673), hereinafter “Zhou”:--Claims 21, 24, 25, 26, 27: Zhou teaches a CMP composition ([0014]) for polishing a silicon oxide layer (abstract, [0102]), comprisingcomposite particles comprising silica particle coated with ceria ([0015, 0062]), presents at a concentration preferably 0.05 wt.% - 5 wt.% ([0109]);
and optionallya chelating agent, such as gluconic acid ([0125]), present at a concentration about 0.01 wt.% -3 wt.% ([0125]);a pH adjusting agent to adjust the pH of the composition to more preferably 4-7 ([0112-0114]), such as potassium hydroxide ([0051]); andwater ([0016]). It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to use a CMP composition comprising the above components from the list of possible components disclosed by Zhou during routine experimentations.--Claims 28, 29: It would also 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 CMP composition consisting of composite particles comprising silica particle coated with ceria ([0015, 0062]), presents at a concentration preferably 0.05 wt.% - 5 wt.% ([0109]); a chelating agent, such as gluconic acid ([0125]), present at a concentration about 0.01 wt.% -3 wt.% ([0125]);a pH adjusting agent to adjust the pH of the composition to more preferably 4-7 ([0112-0114]), such as potassium hydroxide ([0051]); andwater ([0016]) in the invention of Zhou.
Claim 22 rejected under U.S.C. 103 as being obvious over Zhou as applied to claim 21 above, and further in view of Shi et al. (U.S. PGPub. No. 20160358790), hereinafter “Shi”:--Claim 22: Zhou teaches the invention as above. Zhou further teaches that the silica particle may be amorphous ([0055]), but fails to teach that the silica particle is a colloidal silica particle.Shi, also directed to a CMP composition for polishing a silicon oxide film (abstract), teaches that the CMP composition comprises ceria coated colloidal silica particles ([0067, 0172]). 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 ceria coated colloidal silica particles as the ceria coated silica particles in the invention of Zhou because Zhou is silent about a method of forming the silica particle and Shi teaches that such ceria coated colloidal silica particles would be effective.
Claim 23 rejected under U.S.C. 103 as being obvious over Zhou as applied to claim 21 above, and further in view of Takemiya et al. (U.S. PGPub. No. 20080171441), hereinafter “Takemiya”:--Claim 23: Zhou teaches the invention as above. Zhou fails to teach using DI water as the water in the CMP composition.Takemiya, also directed to a CMP composition, teaches that the CMP composition comprises water to disperse the abrasive particles stably, and that it is preferred to use pure water or deionized water ([0086]). 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 deionized water as the water in the invention of Zhou because Takemiya teaches that it is preferable.
Response to Arguments
Applicant's arguments filed February 13, 2025 have been fully considered as follows: --Regarding Applicant’s argument that the previously cited prior arts do not teach the amended feature in claim 28, this arguments is persuasive. New grounds of rejection based on newly found prior arts that teaches all features of all claims are shown above.--Regarding Applicant’s argument that the previously cited prior arts do not teach the amended feature in claim 21, this arguments is not persuasive. Li and Li’285 modified by Ahn clearly teaches all features of claim 21. However, for compact prosecution this ground of rejection is withdrawn in this Office action.--Regarding Applicant’s argument that the present disclosure has demonstrated the unexpected technical benefit, this argument is not persuasive because Applicant has failed to provide sufficient evidences or data to show unexpected result. It is well settled that Applicant has the burden of showing unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Applicant to proffer factual evidence that actually shows unexpected results relative to the closest prior art (see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)), and that is reasonably commensurate in scope with the protection sought (In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972)). The extent of the showing relied upon by Applicant must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). Please also see MPEP 716.02(a).
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