DETAILED ACTION
This is the Office action based on the 16577580 application filed May 20, 2019, and in response to applicant’s argument/remark filed on December 12, 2025. Claims 1-2, 4, 6-16 and 25-26 are currently pending and have been considered below. Applicant’s cancellation of claims 3, 5, 17-24 and withdrawal of claims 9-16 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.
Claim Rejections - 35 USC § 102/35 USC § 103
The following is a quotation of 35 U.S.C. 102:
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention..
The following is a quotation of 35 U.S.C. 103:
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.
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 1-2, 4, 6-8 and 25-26 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Stender et al. (U.S. PGPub. No. 20180002571), hereinafter “Stender’571”:--Claims 1, 2, 4, 6, 7, 25, 26: Stender’571 teaches a polishing composition, consisting ofabrasive, such as silica having particle size preferably 30-200 nm at a concentration of preferably 3-15 wt.% ([0029, 0055]);an inorganic silicate, such as potassium silicate ([0035]);corrosion inhibitor, such as benzotriazole , at a concentration of less than 0.001-1 wt.%, ([0044]);chelating agents, such as malonic acid, at a concentration of 0.01-3 wt.% ([0058-0060]);water ([0027-0028]);a pH adjustor, such as malonic acid, tartaric acid, succinic acid, citric acid,…at a concentration of 0.0001-5 wt.%, to adjust the pH to 9-11.5 ([0054-0056]);
an oxidizer, such as hydrogen peroxide, at a preferably concentration of 0.1-3 wt.% ([0041-0043]); chelating agents, such as malonic acid, tartaric acid, citric acid, oxalic acid, phosphonic acid,… ([0058]);a surfactant, such as ethoxylated acetylenic diol surfactant, at a concentration of 0.0001-1 wt.% ([0047-0053]). Although Stender’571 further teaches that the polishing composition comprises a polymer such as carboxymethyl cellulose having a molecular weight 30,000,000 Daltons ([0019]), such large polymer may be considered an abrasive, as evidenced by Stender’571 disclosing that the abrasive may comprise nano-sized organic polymer-based soft abrasive, such as 20 nm ([0030-0033]). It is noted that the malonic acid and the ammonium silicate read on the first chemical additive and second chemical additive, respectively, that the above concentration ranges overlap the corresponding concentration ranges recited in claim 1, and that at least some of the malonic acid would exist as a salt in the composition. It is noted that the malonic acid salt equivalent to the salt of a polyprotic acid recited in claim 1. It is noted that the malonic acid has a pKa1 of 2.8. It is further noted that one of the melonic acid salt has a pKa1 between 1 and 3, and another malonic acid salt has a pKa1 between 0.5 and 10. It is also noted that the above components do not include transition metal. Alternately, although Stender’571 does not disclose the exact combination of components recited in claim 1, 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 a polishing slurry comprising the above components from the list of possible components taught by Stender’571 in the absence of an unexpected result. It is noted that Stender’571 teaches that the polishing composition may comprise a polymer/copolymer that is selected from the group consisting of poly(acrylic acid), poly(methacrylic acid), poly(2-acrylamido-2-methyl-1-propanesulfonic acid, carboxymethyl cellulose, methyl cellulose, hydroxypropyl methylcellulose, poly-(1-vinylpyrroliddone-co-2-dimethylaminoethylmethacrylate), poly(sodium 4-styrenesulfonate), poly(ethylene oxide), poly(4sytrenesulfonic acid), polyacrylamide, and
poly(acrylamide/acrylic acid) copolymers having a molecular weight 10,000-30,000 ([0037]), which is outside the range 30,000 to 30,000,000 Daltons recited in claim 1. It is also noted that Stender’571 does not teach that the polishing composition is required to contain any iron.--Claim 8: Stender’571 further teaches that the polishing composition may further comprise an inorganic silicate, such as potassium silicate at a concentration of 0.01-10 wt.% ([0035-0036]). 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 a combination of malonic acid and potassium silicate at a concentration of 0.025-4 wt.%.
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 1-2, 4, 6, 8 and 25-26 rejected under 35 U.S.C. 103 as obvious over Stender et al. (U.S. PGPub. No. 20160237315), hereinafter “Stender’315”:--Claims 1, 2, 4, 6, 8, 25: Stender’315 teaches a polishing composition ([0015]), consisting ofsilica abrasive having particle size preferably 30-300 nm at a concentration of preferably 0.05-10 wt.% ([0028, 0029, 0055]);an oxidizer , such as hydrogen peroxide, at a preferably concentration of 0.5-10 wt.% ([0086-0100]);a pH adjustor , such as nitric acid, at a concentration of 0.001-5 wt.%, to adjust the pH to preferably 3-9 ([0015,0167-0168]); an additive, such as an ethoxylated phenol surfactant (read on an alcohol ethoxylated surfactant) at a concentration of 0.001-0.2 wt.% ([0034-0035, 0079, 0189-0196]); an activator, such as an abrasive particle ([0032, 0110]), or a catalyst ([0051, 0102]), at a concentration of 0.0005 – 10 wt.% ([0033]), wherein the activator may be associated with a pad instead of in the composition ([0111]);a solvent, such as water ([0015]); andoptionallya corrosion inhibitor, such as benzotriazole, at a concentration of less than 1 wt.%, ([0200-0201]);one or more stabilizing agent ([0182]), such as malonic acid, phosphonic acid, phthalic acid, oxalic acid, gallic acid, citric acid, vitamin B, vitamin C, adipic acid, carbonate…(it is noted that all of these acids read on polyprotic acid) at a concentration of 0.001-2 wt.% ([00185, 187, 0188]);a chelator, at a concentration of less than 1 wt.%, ([0176-0180]); anda surfactant, such as stearylbenzyldimethylammonium chloride or nitrate ([0192]). It is noted that carbonate is a salt of carbonic acid, having pKa1 of 6.4, and melonic acid has a pKa1 of 2.8, and that they read on the first and second chemical additives recited in claim 1. It is noted that the above concentration ranges overlap the corresponding concentration ranges recited in claim 1. Stender’315 discloses that “(t)he activator includes, but is not limited to, (1) inorganic oxide particle with transition metal coated onto its surface, where the transition metal is selected from the group consisting of iron, copper, manganese, cobalt, cerium, and combinations thereof; (2) soluble catalyst includes, but is not limited to ammonium iron (III) oxalate trihydrate, iron(III) citrate tribasic monohydrate, iron(III) acetylacetonate and ethylenediamine tetraacetic acid, iron (III) sodium salt hydrate, a metal compound having multiple oxidation states selected from the group consisting of Ag, Co, Cr, Cu, Fe, Mo, Mn, Nb, Ni, Os, Pd, Ru, Sn, Ti, V; and combinations thereof.
The amount of activator in a slurry ranges from about 0.0005 wt. % to about 10 wt. %; preferably 0.001 wt. % to 2 wt. %, more preferably between 0.01 wt. % to 1 wt. %; most preferably between 0.05 wt. % to 0.5 wt. %” ([0032-0033]), and that the activator can be- an inorganic oxide particle ([0032, 0110]), - a soluble catalyst, such as an ethylenediamine tetraacetic acid ([0032, 0161]), ammonium iron ([0164])- a metal acetate or metal nitrate ([0116-0117]). It is noted that the particles may be considered an abrasive, the ethylenediamine tetraacetic acid may be consider an acetate salt in the polishing composition, which is listed as possible compounds as recited in claim 1--Claim 26: It is noted that stearylbenzyldimethylammonium chloride or nitrate reads on the second rate booster recited in claim 26.
Claims 7 and 8 rejected under 35 U.S.C. 103 as obvious over Stender’315 as applied to claim 1 above, and further in view of Yoshizaki et al. (U.S. PGPub. No. 20180257194), hereinafter “Yoshizaki”:--Claims 7, 8: Stender’315 teaches the invention as above, wherein Stender’315 further teaches that “it is believed that carbonate and phosphate will bind onto the activator and hinder access of the fluid. Carbonate is particularly useful as it can be used to stabilize a slurry, but a small amount of acid can quickly remove the stabilizing ions. Stabilization agents useful for absorbed activator can be film forming agents forming films on the silica particle ([0186]). Stender’315 fails to teach that the carbonate is potassium carbonate. Yoshizaki, also directed to a polishing composition comprising silica particles, teaches that potassium carbonate is added as a polishing accelerator ([0119]). 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 potassium carbonate as the carbonate in the polishing slurry of Stender’315 because Stender’315 teaches to include carbonate but is silent about an exact chemical formula, and Yoshizaki teaches that potassium carbonate may be added to such polishing composition to accelerate polishing rate..
Response to Arguments
Applicant's arguments filed December 12, 2025 have been fully considered as follows:--Regarding Applicant’s argument that the stearylbenzyldimethylammonium nitrate compound is not a salt, this argument is not persuasive. Stearylbenzyldimethylammonium nitrate is clearly a salt of nitrate bonded with stearylbenzyldimethylammonium. Regarding Applicant’s argument that stearylbenzyldimethylammonium nitrate is a surfactant rather than a salt, this argument is not persuasive. It is noted that surfactant and a salt are not mutually exclusive. A compound can be both a surfactant and a salt.--Regarding Applicant’s argument that the Stender’571 does not teach all claimed features because the claimed feature exclude compounds that are not listed in claim 1, and Stender’571 teaches a polishing composition that includes a polymer, which is not listed in the claim, this argument is not persuasive. Stender’571 teaches that the polymer may be a high molecular weight polymer having a molecular weight 30,000,000 Daltons ([0019, 0025, 0036-0037]). It is noted that such large polymer may be considered an abrasive, as evidenced by Stender’571 disclosing that the abrasive may comprise nano-sized organic polymer-based soft abrasive, such as 20 nm ([0030-0033]). It is noted that abrasive is a claimed feature in Claim 1.--Regarding Applicant’s argument that the Stender’315 does not teach all claimed features because the claimed feature exclude compounds that are not listed in claim 1, and Stender’315 teaches a polishing composition that includes an activator, which is not listed in the claim, this argument is not persuasive. Stander’315 clearly teaches that the activator may be - an inorganic oxide particle ([0032, 0110]), - a soluble catalyst, such as an ethylenediamine tetraacetic acid ([0032, 0161]), ammonium iron ([0164])- a metal acetate or metal nitrate ([0116-0117]). It is noted that the particles may be considered an abrasive, the ethylenediamine tetraacetic acid may be consider an acetate salt in the polishing composition, which is listed as possible compounds as recited in claim 1.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP §706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571)270-7670. The examiner can normally be reached on MTWThF10to7 EST.
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