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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/23/2025 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 07/23/2025.
Claims 1-3, 5-10 and 12-17 are presently pending; claims 4 and 11 are canceled; claim 9 is withdrawn; claims 1, 10 and 12 are amended; claims 14-17 are new; claims 1-3, 5-8, 10 and 12-17 are under examination.
The objection to claim 10 is withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejection of claims 4 and 11 are moot as these claims have been canceled; the 35 U.S.C. 103 rejections of claims 1-3, 5-8, 10 and 12 over GRUMBINE and of claim 13 over GRUMBINE in view of TSENG are maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/17/2025 and 10/06/2025 were filed after the mailing date of the final action on 03/25/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-8, 10, 12, 14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Grumbine, et al. (U.S. Pub. No. 2015/0376458-A1) (hereinafter, “GRUMBINE”).
Regarding claims 1 and 3, GRUMBINE teaches a method for producing a polishing composition (see GRUMBINE generally at paragraphs [0006], [0008] and [0144]) comprising:
mixing a dispersion containing silica (see GRUMBINE at paragraphs [0006], [0008] and [0144]; GRUMBINE teaches a method for producing a polishing composition comprising a colloidal silica dispersion)
and a solution containing a silane coupling agent having a cationic group (see GRUMBINE at paragraphs [0006], [0008], [0017] and [0136], teaching a method for producing a polishing composition comprising an aminosilane compound incorporated in the colloidal silica particles (i.e., bonded to the surface) such that the particles have a permanent positive (cationic) charge).
to obtain a dispersion containing cationically modified silica (see GRUMBINE at paragraphs [0008] and [0144]; GRUMBINE teaches mixing the APTMS solution with the colloidal silica dispersion to obtain a dispersion containing cationically modified silica),
wherein the mixing comprises adding the solution containing the silane coupling agent having a cationic group to the dispersion containing the silica (see GRUMBINE at paragraph [0144]; GRUMBINE teaches adding the solution containing the APTMS silane coupling agent to the colloidal silica dispersion),
wherein the solution containing the silane coupling agent contains a solvent that is water or contains a mixed solvent that is water mixed with at least one organic solvent selected from the group consisting of methanol, ethanol, isopropanol, n-butanol, t-butanol, pentanol, ethylene glycol, propylene glycol, 1,4-butanediol, acetone and methyl ethyl ketone (see GRUMBINE at paragraphs [0017], [0022] and [0024], teaching aminosilane dissolved in an aqueous liquid solution, i.e., in water, and that the chemical species (e.g., APTMS) may be included in the liquid solution (water) before being combined with the silica producing compound (e.g., TMOS) colloidal silica dispersion).
Regarding b. above, GRUMBINE fails to explicitly mention a concentration of 0.03% by mass or more and 0.8% by mass or less, as required by claim 1, and 0.05% by mass or more and 0.6% by mass or less, as required by claim 3.
However, the method taught by GRUMBINE comprises making a solution comprising an aminosilane compound (i.e., silane coupling agent), such as APTMS, which may be mixed with a silica producing compound, such as tetramethoxysilane (also called tetramethyl orthosilicate, or TMOS) (see GRUMBINE at paragraphs [0022] and [0144]). GRUMBINE gives an example wherein this solution has a molar ratio of APTMS to TMOS of 0.7%, containing 16.3 grams of APTMS mixed with 1,872.3 grams of TMOS (see GRUMBINE at paragraph [0144]); this solution has a mass ratio of APTMS to TMOS of approximately 0.87%. GRUMBINE further teaches that the molar ratio of the aminosilane compound to the silica producing compound in the solution (i.e., APTMS/TMOS) can be within a range of 0.1% to 10% (see GRUMBINE at paragraph [0018], teaching that this molar ratio can be within the same range as taught for the molar ratio of the aminosilane compound to silica, such as less than about 10% and greater than about 0.1%). The mass ratio range corresponding to this molar ratio range can be calculated (based on the data presented by GRUMBINE in paragraph [0144], wherein the APTMS/TMOS molar ratio of 0.7% corresponds to a mass ratio of 0.87%) as approximately 0.12% to 12% (APTMS/TMOS), which corresponds to a concentration of APTMS in the solution of approximately 0.12% to 10.7% by mass, which is reduced when mixed with the water.
Therefore, GRUMBINE teaches a method wherein the concentration of the silane coupling agent having a cationic group (i.e., the aminosilane compound) in the solution is less than 10.7% by mass, which overlaps with the claimed range of 0.03% to 0.8%, as recited by claim 1, and with the claimed range of 0.05% to 0.6% by mass, as recited by claim 3, therefore rendering the claimed ranges obvious. As set forth in MPEP § 2144.05, 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)).
Additionally, GRUMBINE teaches first forming an aqueous solution of the APTMS and water before combining with TMOS (see GRUMBINE at paragraphs [0017] and [0022]), and teaches that aminosilane compounds may be hydrolyzed or partially hydrolyzed in an aqueous medium and that the amount of aminosilane included affects the resulting polishing rates achieved by the polishing composition (see GRUMBINE at paragraphs [0150] and [0159]). GRUMBINE therefore explicitly teaches that the concentration of the silane coupling agent having a cationic group is a result-effective variable which can be optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art to vary, through routine experimentation and optimization, the concentration of the silane coupling agent in the solution, including concentrations of 0.03% by mass or more and 0.8% by mass or less as claimed, in order to achieve the desired content of hydrolyzed or partially hydrolyzed species and in order to achieve desired polishing rates of the resulting polishing composition, as taught by GRUMBINE (see GRUMBINE at paragraphs [0017], [0022], [0150] and [0159]).
Regarding claim 2, GRUMBINE teaches a method according to claim 1, wherein a mixed mass ratio of the silica to the silane coupling agent having a cationic group (silica/ silane coupling agent having a cationic group) is in a range overlapping with the claimed range of 100/0.05 to 100/0.8, i.e., a mixed mass ratio of silane coupling agent to silica (silane coupling agent having a cationic group/silica) of 0.05/100 to 0.8/100, or 0.0005 to 0.008.
GRUMBINE teaches a method wherein the molar ratio of the aminosilane compound (i.e., silane coupling agent) to silica in the colloidal silica abrasive particles is less than about 2%, or 0.02 (see GRUMBINE at paragraph [0018]), wherein the aminosilane compound can be APTMS (see GRUMBINE at paragraphs [0136] and [0144]). The molar mass of APTMS (C6H17NO3Si) is 179.29 g/mol, and the molar mass of silica (SiO2) is 60.08 g/mol, therefore the molar mass ratio of APTMS to silica is approximately 3. The mass ratio is equal to the molar ratio multiplied by the molar mass ratio, therefore GRUMBINE teaches a mass ratio of the aminosilane compound (APTMS) to silica of less than about 0.06, which overlaps with the claimed range of 0.0005 to 0.008, therefore rendering the claimed range obvious. As set forth in MPEP § 2144.05, 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)).
Regarding claim 5, GRUMBINE teaches a method according to claim 1, wherein the silica is colloidal silica (see GRUMBINE at paragraphs [0006], [0008] and [0144]).
Regarding claim 6, GRUMBINE teaches a method according to claim 1, wherein the silane coupling agent having a cationic group is 3-aminopropyltrimethoxysilane (see GRUMBINE at paragraphs [0136] and [0144]; GRUMBINE teaches 3-aminopropyltrimethoxysilane (APTMS)).
Regarding claim 7, GRUMBINE teaches a method according to claim 1, further comprising filtering the dispersion containing the cationically modified silica (see GRUMBINE at paragraphs [0043]-[0046] and [0135]-[0136]; GRUMBINE teaches filtering the dispersion containing the cationically modified colloidal silica).
Regarding claim 8, GRUMBINE teaches a method according to claim 1, further comprising mixing the dispersion containing the cationically modified silica and a pH adjusting agent (see GRUMBINE at paragraphs [0023], [0048] and [0145]; GRUMBINE teaches mixing the dispersion with a pH adjusting agent, e.g., an acid).
Regarding claim 10, GRUMBINE teaches a method according to claim 1, wherein the cationic group contained in the silane coupling agent is an amino group or a quaternary ammonium group (GRUMBINE at paragraphs [0008], [0014] and [0017], teaching positively charged aminosilane compounds, which have a cationic amino group).
Regarding claim 12, GRUMBINE teaches a method according to claim 1, wherein the solution consists of the solvent and the silane coupling agent having a cationic group (see GRUMBINE at paragraphs [0017], [0022] and [0024], teaching a solution consisting of aminosilane and water).
Regarding claim 14, GRUMBINE teaches a method according to claim 1, wherein a number of coarse particles having a particle size of more than 0.7 μm of the cationically modified silica contained in the polishing composition is 500,000 particles/mL or less, and wherein the particle size is measured by a measurement method as follows: the cationically modified silica is dispersed in water at a concentration of 0.27% by mass and a pH is adjusted to 4.0 to prepare a cationically modified silica aqueous dispersion, and then, the number per unit volume (1 mL) of coarse particles having a particle size of more than 0.7 μm which are present in the cationically modified silica aqueous dispersion is measured by using a liquid particle counter (see GRUMBINE at paragraphs [0031] and [0036]-[0037], teaching that the colloidal silica abrasive may include mostly primary particles, and that greater than 99% of the particles may have a primary particle size in the range from about 15 to about 35 nm (i.e., 0.016 to 0.035 μm); i.e., the number of coarse particles having a size of more than 0.7 μm may be 0 particles/mL).
Further, GRUMBINE teaches a method as claimed by the present claim, therefore the polishing composition made by the method of GRUMBINE would be expected to have the same or overlapping properties as the composition formed by the claimed method, including concentrations of particles of a given size when measured via the recited method. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot 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.
Regarding claim 17, GRUMBINE teaches a method according to claim 7, further comprising preparing the solution by mixing the solvent and the silane coupling agent (see GRUMBINE at paragraphs [0017], [0022] and [0024]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over GRUMBINE in view of Tseng (U.S. Pub. No. 2021/0047541-A1) (hereinafter, “TSENG”).
Regarding claim 13, as applied to claim 11 above, GRUMBINE teaches a method according to claim 11. GRUMBINE teaches that the aminosilane compound may be 3-aminopropyltriakoxysilane (see GRUMBINE at paragraph [0017]), which is a broader term which includes 3-aminopropyltriethoxysilane, and gives an example of 3-aminopropyltrimethoxysilane (APTMS) (see GRUMBINE at paragraph [0144]).
However, GRUMBINE fails to explicitly mention 3-aminopropyltriethoxysilane.
TSENG teaches a method for producing a polishing composition (see TSENG at Abstract and paragraph [0060]) comprising cation-modified silica particles (see TSENG at paragraphs [0029] and [0031]) wherein the silane coupling agent is 3-aminopropyltriethoxysilane (APTES) (see TSENG at paragraphs [0032] and [0060]), and further teaches that either APTES or APTMS may be used interchangeably as the silane coupling agent in the polishing composition (see TSENG at paragraph [0032]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to simply substitute the 3-aminopropyltriakoxysilane compound (e.g., APTMS) of GRUMBINE with the APTES compound of TSENG (see TSENG at paragraphs [0032] and [0060]). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing a polishing composition comprising cationically modified silica.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over GRUMBINE in view of Hamaguchi, et al. (JP-2008179763-A) (hereinafter, “HAMAGUCHI”; citations herein refer to the attached machine translation).
Regarding claims 15-16, as applied to claim 7 above, GRUMBINE teaches a method according to claim 7.
GRUMBINE teaches multi-stage filtration as part of a test to observe any change in zeta potential (see GRUMBINE at paragraphs [0043]-[0046] and [0135]-[0136]); however, GRUMBINE does not explicitly disclose filtering comprising a first stage of filtration and a second stage of filtration, wherein a pore size of a filter used in the second stage of filtration is smaller than that of a filter used in the first stage of filtration, as required by claim 15, and wherein a pore size of a filter used in the second stage of filtration is 0.05 μm or more and 0.4 μm or less, as required by claim 16.
HAMAGUCHI teaches a method for producing a polishing composition (see HAMAGUCHI at Abstract) wherein the coarse particles to be removed can be controlled by using multi-stage filtration wherein the pore size of the filter used in the second stage is finer than the pore size used in the first stage (see HAMAGUCHI at paragraphs 56 and 61). HAMAGUCHI teaches that coarse particles cause polishing scratches when the object to be polished is polished, that microfiltration using a filter makes it possible to remove coarse particles efficiently and economically, and that using a filter having a larger pore size for the first filtration stage and a filter having a smaller pore size for the second filtration stage allows the life of the filter to be extended (see HAMAGUCHI at paragraphs 4, 56 and 61). HAMAGUCHI therefore explicitly teaches that the size of the filters is a result-effective variable which can be optimized by one of ordinary skill in the art.
Therefore, 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 method of GRUMBINE to include a step of two-stage filtration wherein the pore size of the second filter is smaller than the pore size of the first filter as taught by HAMAGUCHI (see HAMAGUCHI at paragraphs 56 and 61). One of ordinary skill in the art would have been motivated to make this modification for the benefit of being able to reduce the number of coarse particles in the composition via filtration efficiently and economically while extending the life of the filter as taught by HAMAGUCHI (see HAMAGUCHI at paragraphs 4, 56 and 61). Further, it would have been obvious to one of ordinary skill in the art to vary, through routine experimentation and optimization, the pore size of the second filter, including pore sizes of 0.05 μm or more and 0.4 μm or less as claimed, in order to reduce coarse particles and achieve the desired particle size of the composition and reduce polishing scratches caused when the object to be polished is polished, as taught by HAMAGUCHI (see HAMAGUCHI at paragraphs 4, 56 and 61). MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Response to Arguments
Applicant's arguments filed 07/23/2025 have been fully considered but they are not persuasive.
Applicant argues:
“while the silane coupling agent APTMS in B’ is in a solution with TMOS, the silane coupling agent recited in claim 1 is in a solution of water or a mixture of water and one or more organic solvents… Grumbine fails to teach or suggest… ‘wherein the solution containing the silane coupling agent contains a solvent that is water or contains a mixed solvent that is water mixed with at least one organic solvent selected from the group consisting of…’ and a skilled artisan would not arrive at the recited method as claimed based on the teachings of Grumbine” (see Remarks at pg. 3-4).
“a skilled artisan would not be motivated to modify the teachings of Grumbine in this manner, i.e., replacing TMOS with water or a mixture of water with one or more organic solvents, and would therefore not arrive at the recited method of amended claim 1” (see Remarks at pg. 6).
“Grumbine actually discourages any prolonged exposure of APTMS… Grumbine basically teaches that prolonged exposure of water to aminosilane compounds results in them being hydrolyzed. A skilled artisan would interpret the above teachings that once the APTMS/TMOS solution… has been added to the mother liquid… small amounts can be hydrolyzed and incorporated into the growing colloidal silica crystal. However, by no means would a skilled artisan take away that adding water or a mixture of water and one or more organic solvents to the APTMS/TMOS solution would be a beneficial thing to do in this preparation, based on the teachings in paragraph [0017] of Grumbine. To the contrary, a skilled artisan would take away from these teachings to minimize the exposure of APTMS with water to avoid its hydrolysis and subsequent undesired incorporation into the growing colloidal silica crystal. A skilled artisan would know that incorporation of such an unwanted hydrolyzed APTMS species into the growing colloidal silica crystal would render an undesired modified colloidal silica particle in Grumbine’s polishing composition, i.e., an unwanted impurity, whose production should be minimized as much as possible, particularly in the absence of any teachings that such impurities provide any beneficial properties” (see Remarks at pg. 6-7).
“when in paragraph [0024] Grumbine mentions that “the chemical species dissolved in the aqueous liquid solution may include any one or more of the species described above, but most preferably includes an aminosilane compound”, the take away for a skilled artisan would be that Grumbine is referring to the liquid solution (a.k.a mother liquid in Example 13 corresponding to “A” in the above illustration) after the aminosilane compound (a.k.a chemical species; a.k.a. APTMS in Example 13; and B’ in the illustration above) has been added. Nowhere in the entire disclosure of Grumbine is there a teaching or suggestion of adding water to the chemical species (a.k.a. aminosilane (APTMS))” (see Remarks at pg. 8).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that GRUMBINE does not teach the claimed invention because in the invention of GRUMBINE, the aminosilane compound is mixed with TMOS before being mixed with the water, the Examiner respectfully disagrees. As set forth in the rejection of amended claim 1 above and as discussed in Applicant’s remarks, GRUMBINE clearly teaches mixing the APTMS or the APTMS/TMOS mixture with water. MPEP § 2144.04(IV)(C) states that selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). The invention as claimed also uses the language “wherein the solution containing the silane coupling agent contains a solvent that is water or contains a mixed solvent…”, which is open language which does not exclude the inclusion of other components in the solution, e.g., TMOS. GRUMBINE teaches a method wherein a solution containing the silane coupling agent having a cationic group is added to a dispersion containing the silica and a solvent that is water, which renders obvious the claimed method regardless of whether the silane coupling agent is mixed with the water and silica simultaneously or mixed with the water first and then the silica. Further, paragraph [0017] of GRUMBINE quoted by Applicant (see Remarks at pg. 6) explicitly states that by reciting an aminosilane compound, it will be understood that the aminosilane and/or a hydrolized species thereof may be incorporated in the colloidal silica abrasive particles. GRUMBINE clearly discloses that the aminosilane of the invention is combined with water, and that the species incorporated in the colloidal silica includes hydrolyzed or partially hydrolyzed species, which is the opposite of teaching that mixing with water is detrimental or that hydrolyzed APTMS is unwanted as asserted by Applicant. Further, GRUMBINE explicitly teaches that the chemical species (APTMS) may be included in the liquid solution, which is water, before being combined with the silica producing compound (TMOS) (see GRUMBINE at paragraph [0022]); i.e., GRUMBINE directly teaches that a solution consisting of APTMS and water may be made first before mixing with other components.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731