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 .
Response to Amendment
This Office Action is in response to amendment filed on 6/23/2026. After entry of this amendment, claims 1, 3-14and 18-21, and new claims 22-23 are currently pending in this Application with claims 13-14 being withdrawn from further examination.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 3-12 and 18-23 is/are rejected under 35 U.S.C. 103 as being
unpatentable over U.S. Patent Application Publication No. 20150210892 to Tsuchiya et
al. (hereinafter Tsuchiya).
With respect to claim 1, Tsuchiya teaches a polishing composition which is
mainly used in an application for polishing a substrate, preferably in an application for
performing final polishing on a substrate, wherein the polishing composition comprising
a water-soluble polymer, wherein more than one water-soluble polymer may be used,
wherein at least one water-soluble polymer contains at least a vinyl alcohol unit and a
vinyl acetate unit, and said units may be used in a homopolymer or a copolymer, and
wherein the water-soluble polymer is saponified at a saponification degree of 80 mol%
or greater or 100 mol% or less (abstract, [0023], [0037]).
According to the original disclosure of the present Application under examination,
the preferred water-soluble polymer would be the one which would be a saponified
product of a vinyl ester-based polymer comprising a fatty acid vinyl ester such as vinyl
acetate, which when the saponification value is, for example, 85-90 mol%, the viscosity
of a 4% aqueous solution of the vinyl alcohol-based resin at 20°C is 180 mPa.s or more
(see specification of the present Application under examination, pages 6-7 and 13). In
particular, the specification of the present Application under examination, in page 13,
lines 1-13, discloses "In particular, when the saponification value of the vinyl alcohol-
based resin (A) is 98.0 mol% or more (e.g., 98.0 to 99.9 mol%), the viscosity of a 4%
aqueous solution of the vinyl alcohol-based resin (A) at 20°C is, for example, 40 mPa.s
or more (e.g., 50 mPa.s or more), and preferably 60 mPa.s or more (e.g., 70 mPa.s or
more). When the saponification value of the vinyl alcohol-based resin (A) is about 88
mol% (e.g., 85 to 90 mol%), the viscosity of a 4% aqueous solution of the vinyl alcohol-
based resin (A) 10 at 20°C is, for example, 180 mPa.s or more (e.g., 190 mPa.s or
more), preferably 200 mPa.s or more (e.g., 210 mPa.s or more), and more preferably
220 mPa.s or more (e.g., 230 mPa.s or more)."
Therefore, because the vinyl alcohol-based resin of the reference is the preferred
type as disclosed by the original specification of the present Application under
examination and because the reference discloses substantially overlapping, if not an
anticipatory, range of saponification for the polymer whose structure is the same as the
preferred polymer of the present Application under examination, the disclosure of the
reference is seen to render the claimed viscosity under the claimed condition obvious.
This is, in particular, because according to the original specification of the present
Application under examination, when the saponification value of the vinyl alcohol-based
resin (A) is about 88 mol% (e.g., 85 to 90 mol%), the viscosity of a 4% aqueous solution
of the vinyl alcohol-based resin (A) 10 at 20°C is, for example, 180 mPa.s or more (e.g.,
190 mPa.s or more), preferably 200 mPa.s or more (e.g., 210 mPa.s or more), and
more preferably 220 mPa.s or more (e.g., 230 mPa.s or more).
With respect to claim 3, Tsuchiya teaches the presence/use of abrasive grains in
the polishing composition ([0051]-[0052]).
With respect to claim 4, Tsuchiya teaches abrasive grains can be of inorganic
material such as silica ([0052] and [0060]).
With respect to claim 5, Tsuchiya is silent as to the presence of any acid group in
the monomers of the water-soluble polymers ([0016]-[0050]); thus, the reference is
taken to render the claim obvious. This is because "less" than 0.1 mol% is a range
inclusive of zero.
With respect to claim 6, Tsuchiya is directed a specific pH range of 8.0 or greater
([0069]), and discloses the use of basic compound in their composition ([0062]-[0063]).
Thus, the use of a pH adjuster is inevitable in the composition of Tsuchiya.
With respect to claim 7, Tsuchiya teaches abrasive grains of inorganic material
such as silica in their composition ([0052] and [0060]), and wherein basic compounds
are used ([0062]-[0063]). The reference, additionally, is directed to maintaining the pH in
a specific range of 8.0 or greater ([0069]). Thus, the reference is taken to render the
presence/use of a pH adjuster, of basic compound, obvious.
With respect to claim 8, Tsuchiya teaches the use of surfactants as well ([0072]-
[0076]).
With respect to claim 9, Tsuchiya teaches the use of surfactants such as
polyoxyethylene alkyl ether ([0074]-[0075]).
With respect to claim 10, Tsuchiya teaches the use of at least a surfactant
([0072]-[0076]). Moreover, the reference teaches the concentration of the water-soluble
polymer in the composition is 0.002% by mass or greater, and even 0.01% by mass or
greater ([0050]). Although the reference may not literally disclose a mass ratio of the
water-soluble polymer and the surfactant to be 1:0.01 to 1:200, considering the fact that
surfactant is used due to its beneficial impact on the polishing composition and polished
surface ([0072]), an optimum or workable range of the concentration of a surfactant can
be obtained through routine experimentation and is expected to have, at least, some
overlapping with the claimed range of 1:0.01 to 1:200, not only because of how wide the
claimed range is, but also because the concentration of a surfactant may depend on the
expected pH, which is adjusted using a basic compound, and wherein the use of basic
compound would require the use of surfactant. Thus, depending on the expected pH,
the concentration of the surfactant can be modified, and thus, is expected to have at
least some overlapping with the claimed range.
MPEP 2144.05 Il A states "Generally, differences in concentration or temperature
will not support the patentability of subject matter encompassed by the prior art unless
there is evidence indicating such concentration or temperature is critical. "[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, 105 USPQ 233, 235 (CCPA 1955).
With respect to claim 11, Tsuchiya teaches the use of water in their composition
([0015]). Moreover, the reference teaches the concentration of the water-soluble
polymer in the composition is 0.002% by mass or greater, and even 0.01% by mass or
greater ([0050]) which would render the claimed concentration of "1 ppm or more" for
the water-soluble polymer obvious due to overlapping ranges. MPEP 2144.05 states "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).
With respect to claim 12, Tsuchiya teaches the use of water in their composition
([0015]). Additionally, the reference teaches the use of 0.05% by mass or greater of
abrasive grains ([0059]); thus, although there is no literal disclosure of a "solid content"
for the disclosed composition, the fact that the concentration of abrasive grains is more
than 0.01 mass%, as claimed, renders the solid content of the claimed polishing
composition is obvious because at least the abrasive grains are part of the solid
concentration.
With respect to claim 18, Tsuchiya discloses a pH of 8.0 or greater for the
polishing composition ([0069]) which shares an end point with the claimed range of 6.0
to 8.0. MPEP 2144.05 states "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).
With respect to claim 19, considering the fact that the reference renders the
claimed polishing composition obvious, and the fact that the polishing composition of
Tsuchiya is, also, used on a semiconductor substrate, it is expected of the substrate
onto which the polishing composition has been used to comprise a size of less than
0.030 nm as evaluated by atomic force microscopy or AFM.
Nevertheless, and assuming the above is not found persuasive, it is noted that
said claim further limits a substrate, or workpiece, onto which the polishing composition
has been used/applied. Thus, claim 19 does not further limit the claimed polishing
composition under examination, and as such, it is considered rejected with claim 1.
With respect to claim 20, Tsuchiya teaches a polishing composition which is
mainly used in an application for polishing a substrate, preferably in an application for
performing final polishing on a substrate, wherein the polishing composition comprising
a water-soluble polymer, wherein more than one water-soluble polymer may be used,
wherein at least one water-soluble polymer contains at least a vinyl alcohol unit and a
vinyl acetate unit, and said units may be used in a homopolymer or a copolymer, and
wherein the water-soluble polymer is saponified at a saponification degree of 80 mol%
or greater or 100 mol% or less (abstract, [0023], [0037]).
According to the original disclosure of the present Application under examination,
the preferred water-soluble polymer would be the one which would be a saponified
product of a vinyl ester-based polymer comprising a fatty acid vinyl ester such as vinyl
acetate, which when the saponification value is, for example, 85-90 mol%, the viscosity
of a 4% aqueous solution of the vinyl alcohol-based resin at 20°C is 180 mPa.s or more
(see specification of the present Application under examination, pages 6-7 and 13). In
particular, the specification of the present Application under examination, in page 13,
lines 1-13, discloses "In particular, when the saponification value of the vinyl alcohol-
based resin (A) is 98.0 mol% or more (e.g., 98.0 to 99.9 mol%), the viscosity of a 4%
aqueous solution of the vinyl alcohol-based resin (A) at 20°C is, for example, 40 mPa.s
or more (e.g., 50 mPa.s or more), and preferably 60 mPa.s or more (e.g., 70 mPa.s or
more). When the saponification value of the vinyl alcohol-based resin (A) is about 88
mol% (e.g., 85 to 90 mol%), the viscosity of a 4% aqueous solution of the vinyl alcohol-
based resin (A) 10 at 20°C is, for example, 180 mPa.s or more (e.g., 190 mPa.s or
more), preferably 200 mPa.s or more (e.g., 210 mPa.s or more), and more preferably
220 mPa.s or more (e.g., 230 mPa.s or more)."
Therefore, because the vinyl alcohol-based resin of the reference is the preferred
type of polymer as disclosed by the original specification of the present Application
under examination and because the reference discloses substantially overlapping, if not
an anticipatory, range of saponification for the polymer whose structure is the same as
the preferred polymer of the present Application under examination, the disclosure of
the reference is seen to render the claimed viscosity under the claimed condition
obvious. This is, in particular, because according to the original specification of the
present Application under examination, when the saponification value of the vinyl
alcohol-based resin (A) is about 88 mol% (e.g., 85 to 90 mol%), the viscosity of a 4%
aqueous solution of the vinyl alcohol-based resin (A) 10 at 20°C is, for example, 180
mPa.s or more (e.g., 190 mPa.s or more), preferably 200 mPa.s or more (e.g., 210
mPa.s or more), and more preferably 220 mPa.s or more (e.g., 230 mPa.s or more).
With respect to claim 21, Tsuchiya teaches a polishing composition which is
mainly used in an application for polishing a substrate, preferably in an application for
performing final polishing on a substrate, wherein the polishing composition comprising
surfactants ([0072]-[0076]) and a water-soluble polymer, wherein more than one water-
soluble polymer may be used, wherein at least one water-soluble polymer contains at
least a vinyl alcohol unit and a vinyl acetate unit, and said units may be used in a
homopolymer or a copolymer, and wherein the water-soluble polymer is saponified at a
saponification degree of 80 mol% or greater or 100 mol% or less (abstract, [0023],
[0037]).
According to the original disclosure of the present Application under examination,
the preferred water-soluble polymer would be the one which would be a saponified
product of a vinyl ester-based polymer comprising a fatty acid vinyl ester such as vinyl
acetate, which when the saponification value is, for example, 85-90 mol%, the viscosity
of a 4% aqueous solution of the vinyl alcohol-based resin at 20°C is 180 mPa.s or more
(see specification of the present Application under examination, pages 6-7 and 13). In
particular, the specification of the present Application under examination, in page 13,
lines 1-13, discloses "In particular, when the saponification value of the vinyl alcohol-
based resin (A) is 98.0 mol% or more (e.g., 98.0 to 99.9 mol%), the viscosity of a 4%
aqueous solution of the vinyl alcohol-based resin (A) at 20°C is, for example, 40 mPa.s
or more (e.g., 50 mPa.s or more), and preferably 60 mPa.s or more (e.g., 70 mPa.s or
more). When the saponification value of the vinyl alcohol-based resin (A) is about 88
mol% (e.g., 85 to 90 mol%), the viscosity of a 4% aqueous solution of the vinyl alcohol-
based resin (A) 10 at 20°C is, for example, 180 mPa.s or more (e.g., 190 mPa.s or
more), preferably 200 mPa.s or more (e.g., 210 mPa.s or more), and more preferably
220 mPa.s or more (e.g., 230 mPa.s or more)."
Therefore, because the vinyl alcohol-based resin of the reference is the preferred
type of polymer as disclosed by the original specification of the present Application
under examination and because the reference discloses substantially overlapping, if not
an anticipatory, range of saponification for the polymer whose structure is the same as
the preferred polymer of the present Application under examination, the disclosure of
the reference is seen to render the claimed viscosity under the claimed condition
obvious. This is, in particular, because according to the original specification of the
present Application under examination, when the saponification value of the vinyl
alcohol-based resin (A) is about 88 mol% (e.g., 85 to 90 mol%), the viscosity of a 4%
aqueous solution of the vinyl alcohol-based resin (A) 10 at 20°C is, for example, 40
mPa.s or more (e.g., 50 mPa.s or more), and preferably 60 mPa.s or more (e.g., 70
mPa.s or more).
With respect to claims 22 and 23, Tsuchiya teaches a polishing composition which is mainly used in an application for polishing a substrate, preferably in an application for
performing final polishing on a substrate ([0072]-[0076]) and a water-soluble polymer, wherein more than one water-soluble polymer may be used, wherein at least one water-soluble polymer contains at least a vinyl alcohol unit and a vinyl acetate unit, and said units may be used in a homopolymer or a copolymer, and wherein the water-soluble polymer is saponified at a saponification degree of 80 mol% or greater or 100 mol% or less (abstract, [0023], [0037]).
According to the original disclosure of the present Application under examination,
the preferred water-soluble polymer would be the one which would be a saponified
product of a vinyl ester-based polymer comprising a fatty acid vinyl ester such as vinyl
acetate, which when the saponification value is, for example, 85-90 mol%, the viscosity
of a 4% aqueous solution of the vinyl alcohol-based resin at 20°C is 180 mPa.s or more
(see specification of the present Application under examination, pages 6-7 and 13). In
particular, the specification of the present Application under examination, in page 13,
lines 1-13, discloses "In particular, when the saponification value of the vinyl alcohol-
based resin (A) is 98.0 mol% or more (e.g., 98.0 to 99.9 mol%), the viscosity of a 4%
aqueous solution of the vinyl alcohol-based resin (A) at 20°C is, for example, 40 mPa.s
or more (e.g., 50 mPa.s or more), and preferably 60 mPa.s or more (e.g., 70 mPa.s or
more). When the saponification value of the vinyl alcohol-based resin (A) is about 88
mol% (e.g., 85 to 90 mol%), the viscosity of a 4% aqueous solution of the vinyl alcohol-
based resin (A) 10 at 20°C is, for example, 180 mPa.s or more (e.g., 190 mPa.s or
more), preferably 200 mPa.s or more (e.g., 210 mPa.s or more), and more preferably
220 mPa.s or more (e.g., 230 mPa.s or more)."
Therefore, because the vinyl alcohol-based resin of the reference is the preferred
type of polymer as disclosed by the original specification of the present Application
under examination and because the reference discloses substantially overlapping, if not
an anticipatory, range of saponification for the polymer whose structure is the same as
the preferred polymer of the present Application under examination, the disclosure of
the reference is seen to render the claimed viscosities of 15.3 mPa.s or more and 28.9 mPa.s or more under the claimed condition obvious. This is, in particular, because according to the original specification of the present Application under examination, when the saponification value of the vinyl alcohol-based resin (A) is about 88 mol% (e.g., 85 to 90 mol%), the viscosity of a 4% aqueous solution of the vinyl alcohol-based resin (A) 10 at 20°C is, for example, 40 mPa.s or more (e.g., 50 mPa.s or more), and preferably 60 maps or more (e.g., 70 mPa.s or more). It is noted that the claimed viscosities of 15.3 mPa.s or more, and 28.9 mPa.s or more have no upper end limit; thus, those claimed ranges include any and all viscosity values above 15.3 and 28.9, respectively. Thus, the reference is seen to render those viscosities obvious based on the fact that the reference teaches a saponification of 80% or more and 100% or less for water-soluble polymers comprising vinyl acetate unit or monomer, which according to the original disclosure of the present Application under examination in page 13, has a viscosity of 40 mPa.s or more. Thus, the polymer of the reference is expected to have a viscosity of at least 40 mPa.s or more, which overlaps with the claimed ranges of 15.3 mPa.s or more and 28.9 mPa.s or more.
Response to Arguments
Applicant's arguments filed 06/23/2026 have been fully considered but they are not persuasive.
Applicant has asserted Tsuchiya’s “water-soluble polymers” are grouped together under the feature of “having a weight average molecular weight of 1,000,000 or less and a molecular weight distribution represented by weight average molecular weight (Mw)/number average weight (Mn) that is less than 5.0” in paragraphs [0014] and [0016] as asserted by Applicant. Applicant has, then, argued this feature of water-soluble polymers include an extremely wide range of polymers (Remarks, page 5).
In response, first, it is submitted, that none of the rejections presented on this Application referred to or utilized the molecular weight of the polymers of Tsuchiya as a basis for the rejection; however, Applicant has consistently presented arguments over molecular weight of the polymers of Tsuchiya starting from the response filed on 08/21/2025, and continuing in the responses filed on 12/08/2025, 02/09/2026, and the latest one filed on 06/23/2026. Even though none of the rejections relied upon the molecular weight, the examiner has responded to these arguments in the previous responses, and as shown in previous Office Actions, the Examiner didn’t find any of those arguments persuasive.
In response to applicant's latest argument filed on 06/23/2026 that the references fail to show certain features of the invention, and because Applicant has consistently presented arguments over a feature, i.e. molecular weight of the polymer, which has never been claimed nor relied on in any of the rejections, it is noted that the features upon which applicant relies (i.e., molecular weight of the water-soluble polymer) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant has asserted in the reference, “water-soluble polymers” are classified into four categories of water-soluble polymers A, B, C, and D in paragraphs [0024]-[0027], and argued this shows that water-soluble polymers A, B, C, and D are not grouped together by a single feature, but that they should be considered individually (Remarks, pages 5 and 6). Applicant has asserted that water-soluble polymers A to D differ as follows:
A. The Mw of water-soluble polymer A (cellulose derivatives, starch derivatives, in paragraph [0024]) is preferably 750,000 or less, even further preferably 500,000 or less, and most preferably 300,000 or less as shown in paragraph [0029].
B. The Mw of the water-soluble polymer B (a polymer having a polyoxyalkylene structure, in [0025]) is preferably 500,000 or less, further preferably 300,000 or less, and even further preferably 250,000 or less.
C. The Mw of water-soluble polymer C (polyvinyl alcohol and a polymer having a polyvinyl alcohol structure, in paragraph [0026]) is preferably 300,000 or less, further preferably 250,000 or less, even further preferably 200,000 or less as disclosed in paragraph [0031]).
D. The Mw of water-soluble polymer D (polymer having a nitrogen atom in the main chain or side chain functional group thereof, paragraph [0027]) is preferably 300,000 or less, further preferably 250,000 or less, and even further preferably 200,000 or less, for example 100,000 or less, further 70,000 or less, in paragraph [0032].
Additionally, Applicant has referred to examples of Tsuchiya and argued that the Mw is quite different between HEC and PVA in the reference’s examples (Remarks, page 6). Applicant has, further, asserted with respect to PVA, because Tsuchiya’s Examples only describe PVA having a Mw of 60,000, a person having ordinary skill in the art would not have had any reason to expect similar effects are obtaineable with a PVA having Mw of 300,000 or 1,000,000 which is considerably higher than the 60,000 Mw PVA in Tsuchiya’s Examples (Remarks, page 6).
Applicant has, then, asserted and stated as explained in the previous Office Action responses the higher the Mw of the PVA, the higher the viscosity of a 4% aqueous solution tends to be (Remarks, page 6). Applicant has then asserted there is no direct correlation between Mw and viscosity of a 4% aqueous solution, and further asserted the viscosity of a 4% aqueous solution is also related to other properties, such as saponification value (Remarks, page 6).
Applicant has, then, argued a person having ordinary skill in the art would not have had any reason to arrive at a viscosity of a 4% aqueous solution of, for example 15 mPa.s or more, based on the teachings of Tsuchiya when the reference does not provide any viscosities of a 4% aqueous solution (Remarks, pages 6 and 7).
Moreover, Applicant has asserted as explained in the Applicant’s last Amendment filed on February 9, 2026, Tsuchiya only discloses PVA1 and PVA2 in its Examples, and the viscosity of a 4% aqueous solution of a PVA1 is estimated to be much lower than 200 mPa.s (PVA1 is about 10-13 mPa.s). Applicant has, then, concluded a person having ordinary skill in the art could not have arrived at a PVA having a viscosity of a 4% aqueous solution of “200 mPa.s or more” as recited in claims 1 and 20 would not have been obvious over Tsuchiya (Remarks, page 7).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., molecular weight of the water-soluble polymer) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further, it is submitted, even if the molecular weight would be added to the limitation of the claims, the rejection over Tsuchiya was not over the Examples, and a reference is not limited to its Examples.
Furthermore, Applicant is advised to present arguments based on the rejections, not based on features which has never been part of the limitation of the claims, nor used in the rejection.
Additionally, contrary to Applicant’s multiple assertions throughout the current and past several responses, the original disclosure of the present Application under examination, correlates the viscosity to, only, the saponification value of the vinyl alcohol-based resin, as pointed out consistently throughout the past Office Actions. Tsuchiya discloses water-soluble polymer having the same preferred monomers, wherein such polymer has a substantially overlapping saponification value compared to what is claimed. Tsuchiya discloses a saponification value of 80mol% or more and 100mol% or less for their water-soluble polymer having at least a vinyl alcohol unit, a vinyl acetate unit. Applicant’s original disclosure discloses vinyl acetate unit as the preferred unit (pages 6 and 7). Thus, the water-soluble polymer of Tsuchiya comprises of the same unit, in fact, the same preferred unit as that taught in the original disclosure of the present Application under examination, wherein such a polymer as taught by Tsuchiya has a substantially overlapping saponification degree, which in fact, shares an end point with the claimed saponification degree range. Thus, as clearly presented in the previous Office Actions and hereby above, it is reasonable to conclude that the claimed viscosity under the claimed condition is expected to follow from the the water-soluble polymer of Tsuchiya because substantially similar materials cannot have mutually exclusive characteristics.
In addition, it is hereby noted that the viscosity of a 4% aqueous solution as disclosed in the original disclosure of the present application under examination, has an extremely wide range of viscosity with no end point; the original disclosure discloses a viscosity which can be 15 mPa.s or more, all the way to 300 mPa.s or more for a 4% aqueous solution of a vinyl alcohol-based resin with a saponification value of 80-90%. However, again, it is emphasized that the rejection has been based on the disclosure of a reference of a water-soluble polymer having the preferred monomer(s) of the claimed water-soluble polymer with same or substantially similar saponification value/degree. Thus, achieving the claimed viscosity is expected to follow from the disclosed water-soluble polymer.
Even if the molecular weight is added to the limitation of the claims, it is noted that water-soluble polymer C of Tsuchiya, which is the water-soluble polymer containing the vinyl acetate unit, i.e. the preferred monomer as that disclosed in the original disclosure of the present Application under examination, is also disclosed to have the saponification degree of 50 mol% or greater, preferably 80 mol% or greater, and 100% or less (see Tsuchiya, [0037]) and disclosed to have a molecular weight of 300,000 or less, preferably 250,000 or less, or even 100,000 or less, and preferably 1000 or greater, even 2000 or greater, further preferably 5000 or greater (Tsuchiya, [0031]). According to the original disclosure of the present Application under examination, “The average polymerization degree of the vinyl alcohol-based resin (A) is not particularly limited and is, for example, 1,700 or 12,000, preferaebly 2,000 to 11,000, more preferably 3,000 to 10,000, and particularly preferably 4,000 to 9,000” (see specification, pages 14 and 15, [0043]).
Thus, none of Applicant’s argument is found persuasive.
Finally, it is noted that the rejection over Tsuchiya never relied on any Examples, i.e. specific embodiments, of the reference; a reference is not limited to only what is disclosed in its most specific embodiments/examples, but that a reference should be viewed/considered as a whole for all it teaches.
With respect to claim 21 and new claims 22-23, Applicant has asserted the claimed polishing compositions, wherein a 4% aqueous solution of the vinyl alcohol-based resin has a viscosity of “15 mPa.s or more”, “15.3 mPa.s or more”, and “28.9 mPa.s or more” respectively, at 20˚C, can be used for polishing to achieve a reduced AFM roughness on the polished surface and to achieve a reduced haze on the polished surface (Remarks, page 7). Applicant has, additionally, asserted Tsuchiya fails to teach or suggest a PVA that can reduce haze on a polished surface, and that PVA1 and PVA2 in the Examples of the reference, provides no description at all relating to the reduction of AFM roughness on a polished surface (Remarks, page 7). Moreover, Applicant has asserted that the viscosity of a 4% aqueous solution of PVA1 is estimated to about 10-13 mPa.s (Remarks, page 7). Applicant has then referred to the Declaration filed under 37 C.F.R. 1.132. Applicant has pointed out to comparative Example A, in the Declaration, comprising PVA having a 4% aqueous solution showing a viscosity of 10.4 mPa.s at 20˚C and a saponification value of 98.5 mol%, resulting in AFM and haze evaluation of “C” as defined in the specification of the present Application under examination. Applicant, then, pointed out to inventive Example 8, in the Declaration, comprising a 4% aqueous solution of a viscosity of 15.3 mPa.s, and a saponification value of 98.8 mol% having an AFM roughness and a haze evaluation of “B” as shown in Table 1 of the specification (Remarks, page 7). Applicant has, then, concluded the AFM roughness and haze of Example 8 are completely unexpected from the teachings of Tsuchiya (Remarks, page 8). Furthermore, Applicant has cited MPEP 716.02(e).I. stating “Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner”; and argued the comparative Example A demonstrated in the Declaration is close to the inventive Example 8 as compared to any example taught by Tsuchiya (Remarks, page 8). Applicant has, then, concluded the showing of unexpected results of Example 8 compared to Example A must be considered (Remarks, page 8).
It is noted claims 22 and 23 are new claims.
The Examiner, respectfully, submits Tsuchiya renders the claimed polishing composition comprising an aqueous solution comprising a vinyl alcohol-based resin having a saponification degree of 80-100%, and according to the original disclosure of the present Application under examination, as shown in the previous Office Actions and hereby above, such an aqueous solution of vinyl alcohol-based resin is expected to have a viscosity of 40 mPa.s or more at 20˚C (see specification, page 13, lines 1-13). Tsuchiya teaches a saponification degree of 50% or more, preferably 80% or more and 100% or less (Tsuchiya, [0037]) for a polymer having vinyl acetate unit, which is disclosed in the original disclosure of the present Application under examination, as the preferred unit/monomer. Therefore, the reference renders the claimed viscosity of 15 mPa.s or more for a 4% aqueous solution of a vinyl alcohol-based resin at 20˚C obvious because the reference, also, teaches a saponification degree which substantially overlap, if not cover an end point, with the saponification disclosed in the original specification of the present Application under examination. It is noted that the claimed viscosity of 15 mPa.s or more does not have an upper end point.
Additionally, the Declaration is not seen to provide “unexpected” results with respect to AFM roughness or haze or both. This is because when the reference renders the claimed viscosity for a water-soluble polymer comprising vinyl acetate obvious, as shown above, any characteristics such as AFM roughness or haze are expected to follow because substantially similar materials/compositions cannot have mutually exclusive characteristics. Nevertheless, it is important to note, much like the argument presented for Mw, there is no recitation as to any haze or roughness ranges/values in claims 21-23. However, even if such a limitation is incorporated into the language of any of said independent claims, as noted herein above, they are expected to follow from the teaching of the reference.
Moreover, to establish “unexpected” results over a claimed range, Applicants should compare a sufficient number of tests both inside and outside (i.e. as well as the upper and lower limits) the claimed range to show the criticality of the claimed range (see MPEP 716.02(d).II.). Not only this has not been demonstrated in the Declaration, the independent claims 21-23 do not even claim any AFM roughness range or value or any haze values/ranges.
Finally, it is not clear as to how Applicant has concluded that what they presented as comparative Example A is closer to the claimed language than the reference utilized in the rejection; this is because Tsuchiya teaches a water-soluble polymer comprising vinyl acetate unit/monomer having a saponification degree of 50% or more, even 80% or more, and 100% or less, which is used in a polishing composition. Thus, the composition of Tsuchiya is quite close to the claimed polishing composition. However, it is emphasized that the rejection has not been based off of any of the examples of the reference.
Conclusion
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.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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