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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/04/2025 has been entered.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 12/04/2025, has been entered. Claim 1 is amended, no claims are newly canceled, and no claims are newly added. Accordingly, claims 1, 2, and 4-11 remain pending and considered in this Office Action.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1, 4, 7, 8, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishihara (U.S. 2005/0204639).
Regarding claim 1, Ishihara teaches a polishing composition (Title) comprising colloidal silica (Table 1), alkaline compound (meeting claimed pH adjusting agent; Table 1) and a chelating agent (Table 1).
Specifically, Table 1 shows example 1 having a Dsa (primary particle size DA1) of 5 nm and Dn4 (secondary particle size DA2) of 9 nm such that the P=DA2/DA1 is 9/5 = 1.8. Additionally, Table 1 shows example 7 having a Dsa (primary particle size Da1) of 16 and a Dn4 (secondary particle size DA2) of 19 nm such that the P=DA2/DA12 is 19/16 = 1.1875 rounding to 1.19.
Regarding claim 4, Ishihara teaches the polishing composition as applied to claim 1 above and Table 1 shows example 7 having a Dsa (primary particle size Da1) of 16 and a Dn4 (secondary particle size DA2) of 19 nm such that the P=DA2/DA12 is 19/16 = 1.1875 rounding to 1.19 which meets the claimed range of ‘not more than 1.3’.
Regarding claim 7, Ishihara teaches the polishing composition as applied to claim 1 above and Table 1, Example 1 shows that the colloidal silica is provided in an amount of 18% which meets the claimed range of ‘not less than 10 and not more than 40’.
Regarding claim 8, Ishihara teaches the polishing composition as applied to claim 1 above and Table 1, Example 1 shows that the alkaline compound (meeting claimed ‘pH adjusting agent’) is provided in an amount of 2.4% which meets the claimed range of ‘not less than 0.1 and not more than 10’.
Regarding claim 10, Ishihara teaches the polishing composition as applied to claim 1 above and Table 1, Example 1 shows that the chelating agent is provided in an amount of 0.25% which meets the claimed range of ‘not less than 0.1 and not more than 10’.
Regarding claim 11, Ishihara teaches the polishing composition as applied to claim 1 above and further teaches that the polishing composition is for polishing a glass substrate (Paragraph 0031).
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, 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 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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ishihara as applied to claim 1 above, and further in view of Weitz Lab “Dynamic Light Scattering” Slides (Of Record).
Regarding claim 2, Ishihara teaches the polishing composition as applied to claim 1 above but fails to teach that the polishing composition has a maximum of an auto-correlation function G2(f) of not less than 1.40.
Ishihara determines the particle sizes through the use of a FlowSorb II2300 and N4 Plus submicron particle sizer (Paragraph 0034). The person of ordinary skill in the art before the effective filing date of the claimed invention would readily understand that particle sizing could also be determined by techniques such as DLS (i.e. dynamic light scattering) and others.
Weitz Lab’s “Dynamic Light Scattering” slides are presented in the record that demonstrate that dynamic light scattering measurements and analysis conventionally utilize the intensity correlation function G2(tao) (see slide 8 reproduced below):
PNG
media_image1.png
700
920
media_image1.png
Greyscale
Please note that the correlation function shown above is equivalent to the numerator portion of Applicant’s second rearranged expression in claim 2 (see “1/T” in front of the integral which is the same as ‘dividing the integral by “T” in Applicant’s expression).
Applicant’s specification does not explain this function beyond the mere recitation of it (see Page 4 lines 13-23, again at Page 9 line 11 to Page 10 line 7) and does not identify what commercial instrumentation is used.
Thus, it appears that this function would be conventional and routine through the use of any commercial instrumentation that uses dynamic light scattering.
While Ishihara does not appear to use DLS instrumentation, the fact remains that Ishihara embodies the claimed structure (i.e. the particle sizes) which would not be expected to differ even if tested by different particle sizers.
USPTO does not possess the ability to manufacture or test compositions of the prior art and make physical comparisons therewith (In re Brown 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972)).
Further, "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
In the instant case, there is a reasonable basis to presume that a colloidal silica polishing composition having a maximum of not less than 1.40 would not be patentably distinguished from conventional polishing composition taught by Ishihara.
Additionally, Applicant has provided no evidence that the value is critical, unexpected, and/or transformative.
On balance, the correlation function claimed does not patentably distinguish the claimed invention from the prior art.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ishihara as applied to claim 1 above, and further in view of Yoshida et al. (U.S. 2005/0208883) (Of Record).
Regarding claim 5, Ishihara teaches the composition as applied to claim 1 above but does not teach that the colloidal silica particles existing in the polishing composition have a zeta potential of not less than -40 mV and not more than -5 mV.
Yoshida teaches a polishing composition including silica particles having a zeta potential of from -15 to 40 mV (Abstract; overlapping claimed range of “not less than -40 mV and not more than -5 mV”) where the composition is useful for polishing substrates such as glass, optical lenses, optical mirrors, optical prisms, semiconductors, etc (Abstract). Specifically, Yoshida teaches that the silica particles are colloidal silica particles (Paragraph 0031). Additionally, Yoshida teaches the inclusion of additional components such as inorganic or organic acids (Paragraph 0041 and 0042; meeting claimed chelating agents in view of Applicant’s specification at Page 8) that are beneficial for reducing scratches. Additionally, Yoshida teaches the inclusion of additional components such as oxidizing agents like hydrogen peroxide, radical scavengers, anticorrosive agents, defoaming agents, antibacterial agents, and the like (Paragraph 0053; any of which meeting ‘pH adjuster’ because those components would necessarily have a pH and the addition of those agents into the composition would result in the pH being ‘adjusted’).
POSITA would recognize and appreciate that Ishihara and Yoshida are analogous art because the references all concern polishing compositions containing silica, i.e., they are from the same field of endeavor as the claimed invention.
POSITA would further appreciate Yoshida’s disclosure at Paragraphs 0028-0030 which describes that the polishing rate can be increased by adjusting the zeta potential of the silica particles within the disclosed range so as to reduce scratches and nano-scratches.
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983).
Thus, it would be obvious to ensure that the colloidal silica particles of Ishiara achieve the zeta potential as taught by Yoshida so as to realize the disclosed benefit of Yoshida, i.e. increased polishing rate and reduction of scratches.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ishihara as applied to claim 1 above, and further in view of Kim et al. (U.S. 2022/0325076; available as prior art under 102(a)(2)).
Regarding claim 6, Ishihara teaches the composition as applied to claim 1 above but fails to teach that the colloidal silica particles existing in the polishing composition have a polydispersity index of not more than 0.3.
Kim teaches a polishing composition comprising colloidal silica (Paragraph 0074), a chelating agent (Paragraph 0082), and a pH adjuster (Paragraph 0110) which is from the same field of endeavor as Applicant’s claimed invention. Kim further teaches that the silica has a polydispersity index of from about 0 to about 0.20 (Paragraph 0082) which lies within the claimed range of “not more than 0.3”.
Kim teaches that the type of abrasive grain has a significant effect on the CMP process, including overall polishing rate and planarization efficiency (Paragraph 0004).
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art”.
In the instant case, it would be obvious to modify the composition of Ishihara in view of the teaching of Kim which has a colloidal silica having a polydispersity index of from about 0 to about 0.20 because the PDI is another measurement of the particle size and particle size distribution of the silica abrasive grains (Paragraph 0082) that would be appreciated amongst artisans because of the impact to overall polishing rate and planarization efficiency as taught by Kim at Paragraph 0004).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ishihara as applied to claim 1 above.
Regarding claim 9, Ishihara teaches the composition as applied to claim 1 above but is silent to the pH of the composition such that the pH is not less than 8 and not more than 10.5 as claimed.
However, Ishihara prominently teaches the inclusion of an “alkaline compound” (Table 1) and describes at Paragraphs 0021-0023 that the alkaline compound “acts as a polishing accelerator for assisting and accelerating mechanical polishing”.
The person having ordinary skill in the art before the effective filing date of the claimed invention would reasonably expect that the Ishihara composition is basic/alkaline and thus having a pH greater than 7 such that the alkaline compound is able to serve its purpose as a polishing accelerator. It would be unlikely that the Ishihara composition was acidic followed by introduction of an alkaline compound to accelerate polishing.
USPTO does not possess the ability to manufacture or test compositions of the prior art and make physical comparisons therewith (In re Brown 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972)).
Further, "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
In the instant case, there is a reasonable basis to presume that Ishihara’s polishing composition is basic such that it possesses a pH greater than 7 which would overlap the claimed range of “not less than 8 and not more than 10.5” absent evidence to the contrary.
Lastly, there is no evidence provided that demonstrates the pH of “not less than 8 and not more than 10.5” produces unexpected results.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on Remsen or Jacobsen as applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Solely noted in the interest of the clarity of the record, Applicant’s response filed 12/04/2025 did not expressly provide arguments with respect to the secondary references from Weitz Lab, Yoshida, and/or Kim but it was understood by the Examiner that the arguments filed 12/4/2025 predominantly focused upon the primary references to Remsen and Jacobsen. Examiner understood that no agreement regarding the Weitz Lab, Yoshida, and/or Kim references was implied by Applicant’s response.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738