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 Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
Applicant argues on pg. 4-5 that the Examiner is improperly picking and choosing individual recitations of Ohmori in order to construct the rejection. For example, the Examiner contends that Ohmori teaches cerium ammonium nitrate as a metal sol precursor, but fails to note that Ohmori similarly teaches other metal salts. Ohmori does not exemplify a process employing a water-soluble ammonium cerium (III) salt. Applicant further argues that Ohmori discloses a cerium (IV) salt, not a cerium (III) salt.
However, Ohmori clearly discloses a method for producing metal oxide sols, including a process that heats a metal compound… in an aqueous medium containing a carbonate of quaternary ammonium (meeting limitation “A method for preparing an aqueous dispersion of nanosized cerium (III) carbonate particles comprising the step of admixing in water… b) a water-soluble carbonate”). Regarding the limitation “a water-soluble ammonium cerium (III) salt”, Ohmori discloses compounds based on a metal having a valence that is trivalent include… cerium compounds ([0027]). Cerium compounds include, for example, … cerium nitrate (Ce(NO3)3 )([0033]). Further, Ohmori discloses compounds based on a metal having a valence that is tetravalent ([0035]) including cerium ammonium nitrate ([0040]). While tetravalent cerium ammonium nitrate is a cerium (IV) salt, cerium (III) ammonium nitrate is a cerium compound that is trivalent and is met by Ohmori’s disclosure of a metal having a valence that is trivalent… cerium compounds ([0027]). Ohmori further discloses regardless of the valence of the metal in the metal compound that is dissolved in the alkaline aqueous medium, in the end it is possible to form an aqueous sol of oxide particles with a stable valence ([0050]). For example, a sol containing cerium oxide (CeO2) particles is produced regardless of whether a compound of trivalent cerium or a compound of tetravalent cerium is used ([0050]).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohmori et al (US 2008/0138272 A1).
Regarding claim 1, Ohmori discloses a method for producing metal oxide sols, including a process that heats a metal compound… in an aqueous medium i.e., aqueous dispersion, containing a carbonate of quaternary ammonium ([0023]) where compounds based on a metal having a valence that is trivalent include… cerium compounds ([0027] meeting limitation “a water-soluble ammonium cerium (III) salt”). The carbonate of quaternary ammonium is added to an aqueous medium to make the aqueous medium alkaline ([0042], meeting limitation “b) a water-soluble carbonate”). The alkaline metal oxide sols produced… can be used as coating agents i.e., capping ligand, or the like by mixing them with… an active energy ray cured polymer meta-acrylate ([0063]). Specific examples of the meta-acrylate include the following… acrylic acid dimer ([0071]). These meta-acrylates can be used singly or in combination i.e., polyacrylic acid, ([0071] meeting limitation “c) a capping ligand which is an amine carboxylic acid or a salt thereof, an amine phosphonic acid or a salt thereof, or a polymer functionalized with carboxylic acid groups or a salt thereof”). Ohmori further discloses the metal oxide particles that are produced by this process range in size from 2 nm to 500 nm as observed through a transmission electron microscope ([0045]). Ohmori discloses in examples 1-16 particle size as measured by the dynamic light scattering method ([0084]-[0099], [0108], [0110]-[0111] meeting limitation “z-average particle size”). The particle size disclosed by Ohmori (2 nm to 500 nm) is substantially identical to the claimed range (5 nm to 500 nm).
Regarding claim 2, Ohmori discloses all the limitations in the claims as set forth above including where compounds based on a metal having a valence that is trivalent include… cerium compounds ([0027]). Cerium compounds include, for example … cerium nitrate (Ce(NO3)3 )([0033]).
Regarding claims 3 and 4, Ohmori discloses all the limitations in the claims as set forth above and further discloses it is possible to use the carbonate of quaternary ammonium together with another alkali source or with another carbonate other than the carbonate of quaternary ammonium, such as ammonium carbonate or the like ([0042]).
Regarding claims 5 and 6, Ohmori discloses all the limitations in the claims as set forth above including specific examples of the meta-acrylate include the following… acrylic acid dimer ([0071]). These meta-acrylates can be used singly or in combination i.e., polyacrylic acid, ([0071]).
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.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ohmori et al (US 2008/0138272 A1) in view of Oh et al (US 2007/0107318, cited in IDS 10/14/2022).
Ohmori discloses all the limitations in the claims as set forth above but is silent to “wherein the mole: mole ratio of the ammonium cerium (III) nitrate to the water-soluble carbonate is in the range of from 2:1 to 1:20” and “wherein the mole: mole ratio of the ammonium cerium (III) nitrate to the ammonium carbonate is in the range of from 1:1 to 1:10; and the mole: mole ratio of the ammonium cerium nitrate to the capping ligand is in the range of from 50:1 to 1:1”.
Oh discloses a method of preparing cerium carbonate powder by mixing a cerium precursor aqueous solution with a carbonate precursor aqueous solution and subjecting the mixture solution to a precipitation reaction, wherein… the molar concentration ratio of the cerium precursor to the carbonate precursor ranges from 1:1 to 1:7, and the cerium precursor aqueous solution contains at least one additive selected from the group consisting of carbonate compounds, acrylic compounds, and sulfate ion-containing compounds ([0011]), where cerium precursor can be cerium nitrate ([0034]).
As set forth in MPEP 2144.05, in the case where the claimed range “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). In the instant case, the range taught by Oh (1:1 to 1:7) overlaps with the claim 7 range (2:1 to 1:20) and the claim 8 range (1:1 to 1:10). Therefore, the range in Oh renders obvious the claimed ranges.
Oh further discloses the CMP slurry of the present invention can contain the above-described cerium oxide powder as an abrasive, and other additives, such as a dispersant, known to those skilled in the art ([0042]), said dispersant i.e., capping ligand, may be polyacrylic acid ([0043]). The dispersant can be used in amounts of 0.001-10 parts by weight, based on 100 parts by weight of an abrasive containing cerium oxide powder([0044]). If the dispersant is used in an amount less than 0.001 parts by weight, rapid precipitation will occur due to low dispersibility, so that the abrasive cannot be supplied uniformly due to the precipitation occurring during transport of the abrasive slurry ([0044]). On the other hand, if the dispersant is used in an amount greater than 10 parts by weight, a dispersant polymer layer functioning as a cushioning layer may be formed thick around the abrasive particles, thereby making it difficult to allow the surface of the abrasive to be brought into contact with a polishing surface of silica, resulting in a drop in the polishing rate ([0044]). Although Oh discloses a weight ratio rather than a mole ratio as claimed (50:1 to 1:1), a skilled artisan could readily adjust the mole ratio in order to arrive at the desired effect of high dispersibility while not forming a thick layer around the abrasive particles.
Oh further discloses in the preparation step of cerium oxide powder by a precipitation reaction, … the concentration ratio of the cerium precursor to the carbonate precursor, the kind of additives, etc., can be controlled in order to control the particle size and shape of the resultant cerium carbonate powder as the precursor of cerium oxide powder.
Thus, prior to the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art for wherein the mole: mole ratio of the ammonium cerium (III) nitrate to the water-soluble carbonate is in the range of from 2:1 to 1:20 and for the mole: mole ratio of the ammonium cerium (III) nitrate to the ammonium carbonate to be in the range of from 1:1 to 1:10; and the mole: mole ratio of the ammonium cerium nitrate to the capping ligand to be in the range of from 50:1 to 1:1 in the method of Ohmori in order to control the particle size and shape of the resultant cerium carbonate powder as the precursor of cerium oxide powder as taught by Oh.
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.
/N.L.Q./Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738