DETAILED ACTION
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.
Response to Amendments/Arguments
The withdrawal of claims 10-12, and the addition of claims 13-14, as filed on October 1, 2025, are acknowledged.
Applicant's arguments, see Remarks filed on October 1, 2025, with respect to claim 1 have been fully considered but they are not persuasive.
The Applicant argues that “the adsorption amount changes based on multiple different factors, including the type of water-soluble polymer, its molecular weight, its concentration, and the composition pH”, and “the adsorption amount of the water-soluble polymer results from the physical and chemical properties of the composition and is not merely an "intended use" or "function." This is a critical physical property that defines "what the composition is," and Yoshihiro does not teach or suggest this feature.” However, as acknowledged by the Applicant, “the adsorption amount results from the physical and chemical properties of the composition”, and is impacted by multiple factors including “the type of water-soluble polymer, its molecular weight, its concentration, and the composition pH”. The composition should be defined by what the composition is, including “the type of water-soluble polymer, its molecular weight, its concentration, and the composition pH”, not by its properties. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition.").
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yoshino et al. (US20210071111).
Regarding claim 1, Yoshihiro discloses a composition (rinse solution, paragraph 0010), comprising: a solvent (paragraph 0025) and a water-soluble polymer (homopolymer of vinyl acetamide reads on a water-soluble polymer, paragraph 0028). Yoshihiro is silent about the composition being “for surface treatment for use in reducing a residue on a surface of a polished object” as recited in the preamble, and wherein an adsorption amount of the water-soluble polymer adsorbed to a quartz crystal microbalance electrode is 100 ng/cm2 or more and 600 ng/ cm2 or less per unit area of the quartz crystal microbalance electrode. However, it is noted that the instant claim is drawn to a composition claim and the recitation of “for surface treatment for use in reducing a residue on a surface of a polished object” in the preamble and the limitation recited in the wherein clause are considered as intended use of the claimed composition/property of the claimed composition. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claim 2, Yoshihiro discloses wherein the water-soluble polymer is a nonionic water-soluble polymer (homopolymer of vinyl acetamide, paragraph 0028).
Regarding claim 3, the water-soluble polymers disclosed by Yoshihiro have the same monomer structures with the weight average molecular weight range falls within the range disclosed by current application (comparison of paragraphs 0032-0033 of Yoshino with paragraphs 0033-0034 of the current application); therefore, the water-soluble polymer disclosed by Yoshihiro is expected to have similar solubility as recited in the instant claim.
Regarding claim 4, Yoshihiro discloses wherein the water-soluble polymer is poly-N-vinylacetamide (homopolymer of vinyl acetamide, paragraph 0028).
Regarding claim 5, Yoshino discloses wherein the composition for surface treatment has a pH of 1 or more and less than 3 (paragraph 0054), which overlaps with the range recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 6, Yoshino discloses the composition comprising substantially no abrasive grains (claim 1).
Regarding claims 7-9, it is noted that the claims are drawn to composition claims and limitations in the wherein clauses are considered as intended use of the claimed composition/function of the claimed composition. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Claim Rejections - 35 USC § 102
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.
Claim 1 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshihiro et al. (US20190093056).
Regarding claim 1, Yoshihiro discloses a composition (paragraph 0198), comprising: a solvent (paragraph 0198) and a water-soluble polymer (polyvinyl alcohol reads on a water-soluble polymer, paragraph 0198). Yoshihiro is silent about the composition being “for surface treatment for use in reducing a residue on a surface of a polished object” as recited in the preamble, and wherein an adsorption amount of the water-soluble polymer adsorbed to a quartz crystal microbalance electrode is 100 ng/cm2 or more and 600 ng/ cm2 or less per unit area of the quartz crystal microbalance electrode. However, it is noted that the instant claim is drawn to a composition claim and the recitation of “for surface treatment for use in reducing a residue on a surface of a polished object” in the preamble and the limitation recited in the wherein clause are considered as intended use of the claimed composition/property of the claimed composition. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claim 14, Yoshihiro discloses wherein the composition for surface treatment has a pH of less than 7 (pH=2, paragraph 0198).
Regarding claim 15, Yoshihiro discloses wherein the water-soluble polymer is polyvinyl alcohol (paragraph 0198).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (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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/JIONG-PING LU/
Primary Examiner, Art Unit 1713