DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. This office action is responsive to 10/02/2025. Claims 1-8 are pending. Claim 1 has been amended. Claims 9-11 have been cancelled.
Response to Arguments
3. Regarding to previous ground of rejection under 325 U.S.C 102(a)(1) and/or 102(a)(2), the applicants stated:
“Without acquiescing to the merits of the rejection, and solely to expedite allowance, Applicant amended claim 1 to specify "0.01 to 6 parts by weight of a surfactant per 100 parts by weight of the abrasive." Tsuchiya does not teach or suggest this feature of amended claim 1. Although Tsuchiya generally mentions that a surfactant may be present in its compositions (see ¶¶[0053]-[0054]), Tsuchiya does not teach or suggest that its surfactant may be present at a particular concentration, relative to the abrasive, let alone within the specific range of 0.01 to 6 parts by weight of a surfactant per 100 parts by weight of the abrasive, as recited in amended claim 1. Accordingly, Tsuchiya does not anticipate the subject matter of amended claim 1 or any of its dependent claims.
Applicant respectfully requests reconsideration and withdrawal of the rejection.”
The examiner disagrees. Regarding to claim 1, Tsuchiya (‘161) does not explicitly disclose 0.01 to 6 parts by weight of surfactant per 100 parts by weight of abrasive. However, Tsuchiya (‘161) clearly discloses to use 0.0001 weight% or more, preferably 0.001 weight % or more of surfactant (See paragraph 0061) and 0.01 wt% or more, preferably 0.03 wt% or more, preferably 0.05 wt% or more of abrasive (paragraph 0029). Any person having ordinary skills would be able to calculate the specific weight range by part of surfactant per 100 parts by weight of abrasive (i.e. percentage surfactant with respect to abrasive) as shown below:
When 0.0001 weight % of surfactant and 0.01 wt% of abrasive is used:
(0.0001/0.01)* 100% = 1 % (or 1 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.0001 weight % of surfactant and 0.03 wt% of abrasive is used:
(0.0001/0.03)* 100% = 0.33 % (or 0.33 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.0001 weight % of surfactant and 0.05 wt% of abrasive is used:
(0.0001/0.05)* 100% = 0.2 % (or 0.2 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.001 weight % of surfactant and 0.01 wt% of abrasive is used:
(0.001/0.01)* 100% = 10 % (or 10 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.001 weight % of surfactant and 0.03 wt% of abrasive is used:
(0.001/0.03)* 100% = 3.33 % (or 3.33 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.001 weight % of surfactant and 0.05 wt% of abrasive is used:
(0.001/0.05)* 100% = 2 % (or 2 part of surfactant by weight per 100 part by weight of the abrasive.
Therefore, Tsuchiya (‘161) teaches to use 0.2, or 0.33, or 1, or 2 or 3.33 parts by weight of surfactant per 100 parts by weight of the abrasive (within applicant’s range of 0.01 to 6 parts by weight of a surfactant per 100 parts by weight of the abrasive). Thus, the examiner still maintained the previous ground of rejection under 35 U.S.C 102(a)(1) and 102(a)(2).
The examiner acknowledged the Declaration under 37 C.F.R 1.132 filed b the inventor on 10/02/2025. However, the Declaration under 37 C.F.R 1.132 is not applicable for the 35 U.S.C 102(a)(1) and 102(a)(2).
Regarding to previous ground of rejection under 35 U.S.C 103 with respect to claim 8, the applicants stated:
“The object of Tsuchiya is different from that discussed in the present application.
Tsuchiya's purpose is to reduce light point defects (LPD) and suppress surface contamination by metals such as nickel and copper in a final polishing step. See Tsuchiya, [0003]-[0005], [0009], [0030]. Tsuchiya is not focused on haze reduction, nor does it teach or suggest the claimed compositions, which unexpectedly and significantly reduce haze in polished objects.
In further support of this position, Applicant submits herewith the Rule 132 Declaration of Yuki Tanaka, which describes experiments showing that when the polishing compositions comprise a surfactant, at 0.01 to 6 parts by weight of a surfactant per 100 parts by weight of the abrasive, the haze is significantly reduced. See Declaration, Table A (compare Reference Examples 2 and 3 to References Examples 1 and 4). As shown in the Declaration, when the surfactant is present within the claimed range (e.g., 0.12 and 5.8 parts per 100 parts of abrasive), the haze ratios (93% and 95%) are significantly less than the haze ratios (99%) achieved when the surfactant concentration is outside the claimed range. See Declaration, at 2-3. This haze improvement was in no way predicted by the prior art, including Tsuchiya and Mueller.
Accordingly, the cited references do not render obvious any of the pending claims, and Applicant respectfully requests reconsideration and withdrawal of the rejections.”
The examiner disagrees. First, the declaration is not commensurate with the scope of the claims. Specifically, the Declaration filed on 10/02/2025 shows the composition comprises triammonium citrate (i.e. organic acid or salt thereof), ammonia (basic compound), polyoxyethylene decyl ether (surfactant) which is much narrower than the limitation “a trivalent or higher polyvalent organic acid or salt thereof”, “a basic compound” and surfactant as claimed by applicants. Further, in order to show unexpected result, applicants must show data in the claimed range including the data at the end point of the range vs. data outside of the claimed range. It is noted that applicants fail to show any data for the contain of surfactant at 0.01 or 6 parts by weight per 100 part by weight of abrasive. Thus, the examiner still maintained the previous ground of rejection under 35 U.S.C 103.
Claim Rejections - 35 USC § 102
4. 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.
5. 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.
(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.
6. Claims 1-3, 6-7 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Tsuchiya et al. (US 2018/0066161 A1), herein after refer as Tsuchiya (‘161).
As to claim 1, Tsuchiya (‘161) discloses a polishing composition comprises:
An abrasive, wherein the abrasive is colloidal silica (paragraph 0020);
A polyvinyl alcohol as water soluble polymer in a range of 0.001% or more and 0.5 wt% or less, including example of 0.1 wt%, or 0.05 wt% (paragraph 0031-0037);
A basic compound (paragraph 0038-0040);
0.0001 mass% or more, preferably 0.001 mass% or more of surfactant (See paragraph 0061);
Water (paragraph 0050);
A trivalent or higher polyvalent organic acid including ethylene diamine tetraacetic acid (EDTA) or nitrilotriacetic acid or salt thereof (i.e. ammonium nitrilotriacetic acid) in a range of 0.001 % and 1wt % or less, including example of 0.5 wt%, 0.1 wt% (paragraph 0048).
Tsuchiya (’161) does not explicitly disclose a ratio AOA/AHM of a content, by weight percent, of the polyvalent organic acid or salt thereof (AOA) to a content, by weight percent, of the polyvinyl alcohol (AHM) is at least 0.01 and not more than 10. However, Tsuchiya (‘161) clearly teaches to use 0.001 wt% to 1 wt% of polyvalent organic acid including example of 0.5 wt% or 0.1 wt% and polyvinyl alcohol in a range of 0.001 to 0.5 % by weight, including example of 0.1 wt% or 0.05 wt% (paragraph 0044).
Any person having ordinary skills in the arts would be able to calculate the ratio AOA/AHM of a content, by weight percent, of the polyvalent organic acid or salt thereof (AOA) to a content, by weight percent, of the polyvinyl alcohol (AHM) at shown below:
When 0.001 wt% of polyvalent organic acid and 0.001 wt% of polyvinyl alcohol are used;
AOA/AHM = 0.001/0.001 = 1 (within applicant’s range of “at least 0.01 and not more than 10”).
When 0.001 wt% of polyvalent organic acid and 0.1 wt% of polyvinyl alcohol are used;
AOA/AHM = 0.001/0.1 = 0.01 (within applicant’s range of “at least 0.01 and not more than 10”).
When 0.001 wt% of polyvalent organic acid and 0.05 wt% of polyvinyl alcohol are used;
AOA/AHM = 0.001/0.05 = 0.02 (within applicant’s range of “at least 0.01 and not more than 10”).
When 0.5 wt% of polyvalent organic acid and 0.1 wt% of polyvinyl alcohol are used
AOA/AHM = 0.5/0.1 = 5 (within applicant’s range of “at least 0.01 and not more than 10”).
When 0.1 wt% of polyvalent organic acid and 0.05 wt% of polyvinyl alcohol are used
AOA/AHM = 0.1/0.05 = 2 (within applicant’s range of “at least 0.01 and not more than 10”).
Therefore, Tsuchiya (‘161) implicitly discloses a ratio AOA/AHM of a content, by weight percent, of the polyvalent organic acid or salt thereof (AOA) to a content, by weight percent, of the polyvinyl alcohol (AHM) is at 0.01 to 5 (See calculation as shown above).
Regarding to claim 1, Tsuchiya (‘161) does not explicitly disclose 0.01 to 6 parts by weight of surfactant per 100 parts by weight of abrasive. However, Tsuchiya (‘161) clearly discloses to use 0.0001 weight% or more, preferably 0.001 weight % or more of surfactant (See paragraph 0061) and 0.01 wt% or more, preferably 0.03 wt% or more, preferably 0.05 wt% or more of abrasive (paragraph 0029). Any person having ordinary skills would be able to calculate the specific weight range by part of surfactant per 100 parts by weight of abrasive (i.e. percentage surfactant with respect to abrasive) as shown below:
When 0.0001 weight % of surfactant and 0.01 wt% of abrasive is used:
(0.0001/0.01)* 100% = 1 % (or 1 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.0001 weight % of surfactant and 0.03 wt% of abrasive is used:
(0.0001/0.03)* 100% = 0.33 % (or 0.33 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.0001 weight % of surfactant and 0.05 wt% of abrasive is used:
(0.0001/0.05)* 100% = 0.2 % (or 0.2 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.001 weight % of surfactant and 0.01 wt% of abrasive is used:
(0.001/0.01)* 100% = 10 % (or 10 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.001 weight % of surfactant and 0.03 wt% of abrasive is used:
(0.001/0.03)* 100% = 3.33 % (or 3.33 part of surfactant by weight per 100 part by weight of the abrasive.
When 0.001 weight % of surfactant and 0.05 wt% of abrasive is used:
(0.001/0.05)* 100% = 2 % (or 2 part of surfactant by weight per 100 part by weight of the abrasive.
Therefore, Tsuchiya (‘161) teaches to use 0.2, or 0.33, or 1, or 2 or 3.33 parts by weight of surfactant per 100 parts by weight of the abrasive (within applicant’s range of 0.01 to 6 parts by weight of a surfactant per 100 parts by weight of the abrasive.
As to claim 2, Tsuchiya (‘161) discloses the polyvalent organic acid or salt thereof comprises a trivalent polyvalent carboxylic acid (i.e. tricarboxylic acid such as citric acid or nitrilotriacetic acid See paragraph 0046, 0063) or higher polyvalent carboxylic acid (i.e. ethylene diamine tetraacetic acid; See paragraph 0046).
As to claim 3, Tsuchiya (‘161) discloses the polyvalent organic acid or salt thereof comprises ammonium salt of a trivalent polyvalent organic acid (i.e. ammonium nitrilotriacetic acid; See paragraph 0046).
As to claim 6, Tsuchiya (‘161) does not explicitly disclose wherein a ratio of increase in electrical conductivity due to inclusion of the polyvalent organic acid (salt) is not more than 3. However, the limitation “wherein a ratio of increase in electrical conductivity due to inclusion of the polyvalent organic acid (salt) is not more than 3” is a property of the material. It is noted that Tsuchiya (‘161) discloses the same composition having the same ingredients (i.e. abrasive comprises colloidal silica, polyvinyl alcohol, a basic compound, water and trivalent or higher polyvalent organic acid and having the same ratio of AOA/AHM) with applicant’s composition. According to the MPEP 2112.01(II), “Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present”. Therefore, the examiner interprets that Tsuchiya (‘161) composition inherently has a property of a ratio of increase in electrical conductivity due to inclusion of the polyvalent organic acid (salt) is not more than 3 because Tsuchiya’s composition is identical with applicant’s composition.
As to claim 7, Tsuchiya (‘161) discloses the composition having a pH of 8.5 to 11, including example of 10.5 or 10.8 (See paragraph 0051; within applicant’s range of 8 to 12).
Claim Rejections - 35 USC § 103
7. 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.
8. 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.
9. Claim 8 is rejected under35 U.S.C. 103 as being unpatentable over Tsuchiya (US 2018/006161 A1), herein after refer as Tsuchiya (‘161) as applied to claims 1-3, 6-7 above, and further in view of Tsuchiya et al. (US 2016/0272846 A1), herein after refer as Tsuchiya (‘846).
As to claim 8, Tsuchiya (‘161) fails to disclose a weight-average molecular weight of the polyvinyl alcohol polymer is not more than 10 x 104. However, Tsuchiya (‘161) clearly teaches to use polyvinyl alcohol having a weight-average molecular weight of less than 300,000 (See paragraph 0031, 0036). Tsuchiya (‘846) disclose the weight average molecular weight of the polyvinyl alcohol polymer is 10x104 or smaller including example of 0.1x 104 or 0.2x104 or 5x104 (See paragraph 0200, 0222, 0254-0255, 0285). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Tsuchiya (‘161) in view of Tsuchiya (‘846) by having the weight average molecular weight of the polyvinyl alcohol polymer is 10x104 or smaller including example of 0.1x 104 or 0.2x104 or 5x104 because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(1)).
10. Claims 4-5 are rejected under35 U.S.C. 103 as being unpatentable over Tsuchiya (2018/0066161) as applied to claims 1-3, 6-7 above, and further in view of Mueller et al. (US 2002/0197935 A1).
As to claim 4, Tsuchiya (’161) fails to disclose wherein dispersibility as represented by formula below is less than 10.8 nm:
Dispersibility [nm]= (d84-d16)/2
wherein d84 is a particle diameter [nm] at a point at which the cumulative curve of a particle size distribution reaches 84%, and d16 is a particle diameter [nm] at a point at which the cumulative curve of a particle size distribution reaches 16%.
As to claim 5, Tsuchiya (‘161) discloses the polishing composition further comprises a water-soluble polymer other than the polyvinyl alcohol (paragraph 0031). As to claim 5, Tsuchiya (‘161) fails to disclose or suggest wherein dispersibility as represented by formula below is less than 14.2 nm:
Dispersibility [nm] = (d84 — d16)/2
wherein d84 is a particle diameter [nm] at a point at which the cumulative curve of a particle size distribution reaches 84%, and d16 is a particle diameter [nm] at a point at which the cumulative curve of a particle size distribution reaches 16%.
However, Tsuchiya (‘161) clearly teaches the particles have average primary particles diameter in the range of 10 nm or more and 200 nm or less (See paragraph 0024). Tsuchiya (‘161) further discloses that the particles have a coarse particle frequency parameter A less than 1.7 wherein the value of coarse particle frequency parameter A indicate the dispersion stability of the abrasive in the polishing composition, wherein the parameter A is defined as shown below
A = (D90-D50)/(D50-D10) (See paragraph 0022-0023, abstract)
Mueller discloses a polishing composition comprises abrasive, wherein at least 95% or 98% of all of the abrasive have a particle size less than 30 nm, such as 25 nm, 20 nm or 15 nm (See paragraph 0023). Mueller further discloses the geometric standard deviation of the particles distribution by defining σg = d84/d16 (See paragraph 0026). Mueller further discloses the abrasive particles desirable have a σg value of at least 1.1, preferable at least 1.3, or 1.8 (See paragraph 0026). If 95% or 98% of all of the abrasive have a particle size less than 30 nm, such as 25 nm, 20 nm or 15 nm, then d16 must be less than or equal to 25 nm, or less than or equal to 20 nm, or less than or equal to 15 nm.
Any person having ordinary skill in the art would be able to calculate Dispersity in Mueller reference as shown below
When σg = d84/d16 = 1.3, then d84 =1.3d16.
Dispersibility = (d84-d16)/2= (1.3d16 — d16)/2 = 0.3 d16/2
If the particles size d16 = 25 nm (See paragraph 0023 and discussion above), then
Dispersibility = 0.3 d16/2 = 0.3 (25)/2 = 3.75 nm (within applicant’s range of less than 10.8 nm or 14.2 nm).
When σg = d84/d16 = 1.8 , then d84 = 1.8d16.
Dispersibility = (d84-d16)/2= (1.8d16 — d16)/2 = 0.8 d16/2
If the particles size d16 = 25 nm (See paragraph 0023 and discussion above), then
Dispersibility = 0.8 d16/2 = 0.8 (25)/2 = 10 nm (within applicant’s range of less than 10.8 nm or 14.2 nm).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Tsuchiya (‘161) in view of Mueller by having dispersity of 3.75 nm or 10 nm because in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05(I)).
Conclusion
10. THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BINH X TRAN whose telephone number is (571)272-1469. The examiner can normally be reached Monday-Friday.
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 Allen can be reached at 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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BINH X. TRAN
Examiner
Art Unit 1713
/BINH X TRAN/Primary Examiner, Art Unit 1713