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 .
Election/Restrictions
Claim 1 has no art rejection. The restriction requirement as set forth in the Office action mailed on 5/2/2025 has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of a claim without an art rejection. Claims 9-10 are no longer withdrawn from consideration because the claim(s) requires all the limitations of a claim without an art rejection.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is potentially allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Subject Matter without an Art Rejection
The following is a statement of reasons for no art rejection: Sarsenedas Millet, W.O. Int’l Pub. No. 2019/145588 A1 is the closest prior art of record. Sarsanedas Millet, U.S. Patent App. Pub. No. 2020/0270763 A1 [hereinafter Sarsanedas] is used as a translation.
Sarsanadas teaches a formulation of particles for electropolishing a metal (particles for electropolishing metals; Sarsanedas abstract, [0002], [0028]-[0032]) comprising: a plurality of active particles of resin of ionic exchange that retain an acid electrolyte liquid solution that generates a chemical activity and are electrically conductive (resin of particles based on ion transport and retaining sulfuric acid; Sarsanedas [0023]-[0027]).
However, Sarsanedas is silent on a plurality of moderating particles. Zhong, U.S. Patent App. Pub. No. 2016/0297998 A1, teaches moderating particles but not moderating particles that contain C-C.
Claim Objections
Claim 1 is objected to because of the following informalities. Appropriate correction is required.
1. The following is missing “of”: “conductivity of the plurality [sic: of] active particles.”
Claim Rejections - 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 7-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
7-9. The combination of moderating particles containing only C-C and abrasive moderating particles were not in the original disclosure. Thus these claims are new matter.
10. The original disclosure does not indicate that polymeric C-C chain particles may be made into a paste. Thus this claim is new matter.
Claim Rejections - 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 3, 6, 9-10, 12, and 17-18 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
3. It is unclear whether the limitation “said polymers” further limits claim 1’s phrase “one or more polymers” by excluding “one” or if it refers to the whole phrase. Thus this claim is indefinite.
6, 12, & 18. It is unclear whether “non-electrically conductive particles” refers back to the moderating particles in claim 1 or if these will be new particles entirely. Thus these claims are indefinite.
9. This dependent claim lacks a reference back to an independent claim.
17. The percentages here do not specify what type of percent is used – be it volume, mass, etc. Thus this claim is indefinite.
The Examiner could not find the specific type of percent used in the specification. The Applicant is reminded to not add new matter.
10. This claim is rejected for being dependent upon rejected claims.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hosung Chung whose telephone number is (571)270-7578. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794