DETAILED ACTION
1. This is the Office action based on the 17911087 application filed September 12, 2022, and in response to applicant’s argument/remark filed on December 2, 2025. Claims 1-13 are currently pending and have been considered below. Claim 10 withdrawn from consideration.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
3. 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 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.
Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
6. Claims 1, 7 and 9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 17911064. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of copending Application No. 17911064 recites every features of each of claims 1, 7 and 9.
7. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Interpretations
8. Applicant has elected Group I, which is drawn to a chemical composition, in response to the Election/Restriction requirement. Note that the claims are directed towards a chemical composition and as such will be examined under such conditions.
Claim 9, which recites “The polishing composition according to claim 1, in use for final polishing of a silicon wafer”, recite a process of using the composition or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details).
Claim Rejections - 35 USC § 102/35 USC § 103
9. The following is a quotation of 35 U.S.C. 102:
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..
10. The following is a quotation of 35 U.S.C. 103:
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 of this title, 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.
11. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
12. 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.
13. Claims 1-9 and 11-13 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Masuda et al. (WO/2020/013332 Published January 16, 2020, refer here as U.S. PGPub. No. 20210284868), hereinafter “Masuda”.--Claims 1, 2, 3, 5, 7, 8, 9, 11: Masuda teaches a polishing composition for a silicon substrate ([0057]), comprisingsilica abrasive grains, having size of especially preferably 10 to 100 nm ([0050, 0057-0058]), at a concentration 0.01-20 wt.% ([0059]);a basic component, such as ammonia, at a concentration 0.001-2 wt.% ([0051, 0060-0061]);a polyoxyalkylene alkyl ether, such as polyoxyethylene alkyl ether ([0078]), having an average molecular weight of 100-2000, at a concentration 0.00001-0.5 wt.% ([0052, 0071-0072]);a wetting agent, such as a cellulose derivative, having an average molecular weight of 50,000-2,000,000, at a concentration 0.001-2 wt.% ([0079-2280); andwater ([0073]). Alternately, although Masuda does not disclose the exact combination of components recited in claim 1, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polishing slurry comprising the above components from the list of possible components taught by Masuda in the absence of an unexpected result. It is noted that the polyethylene alkyl ether reads on the surfactant recited in claims 1-3 and 5.--Claim 4: Masuda further teaches that the polishing composition has a pH of more preferably 8.5-12 ([0074]).--Claim 6: It is noted that the concentration ranges of the cellulose derivative, i.e. 0.001-2 wt.%, and of the silica abrasive grains, i.e. 0.01-20 wt.%, overlaps the ratio recited in claim 6.--Claims 12, 13: It is noted that polyoxyethylene alkyl ether reads on the surfactant cited in claim 12 and 13.
Claim Rejections - 35 USC § 103
14. 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 of this title, 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.
15. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
16. Claims 1-9 rejected under 35 U.S.C. 103 as being obvious over 35 U.S.C. 103 as obvious over Takahashi et al. (JP2014-036206, supplied as IDS by Applicant on September 12, 2022), hereinafter “Takahashi”, in view of Teramoto et al. (U.S. PGPub. No. 20170174939), hereinafter “Teramoto”:--Claims 1, 2, 3, 4, 5, 6, 7, 8, 9: Takahashi teaches a polishing composition for a silicon substrate (Claim 5), comprisingsilica abrasive grains, having size of especially preferably 5 to 100 nm ([0030-0034]), at a concentration 0.1-10 wt.% ([0038]);a basic component, such as ammonia, at a concentration 0.001-1 wt.% ([0039-0042]), to maintain the pH of the polishing composition to 8-12.5 ([0043])two or more water-soluble polymers, such as one having polyoxyalkylene structure or a cellulose derivative, the water-soluble polymers have average molecular weight 1,000-2,000,000 ([0013-0015]), at a concentration 0.002-0.5 wt.% ([0016]); andwater ([0011]). Takahashi further teaches that increasing the molecular weight of the water-soluble polymers would advantageously increase the wettability of the polished surface of the silicon substrate, while decreasing the molecular weight of the water-soluble polymers would advantageously preserve the stability of the polishing composition ([0015]). Therefore, to take advantage of both benefits, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to add a first water-soluble polymer having a molecular weight at the low end of the range, i.e. 1,000, and a second water-soluble polymer having a molecular weight at the high end of the range, i.e. 2,000,000. Takahashi further teaches that the water-soluble polymers, such as one having polyoxyalkylene structure may be polyoxyethylene , polyoxyethylene glycol, polyoxypropylene,…([0048]) and the cellulose derivative may be hydroxyethylcellulose ([0014]), but is silent about a molecular weight of the hydroxyethylcellulose. Teramoto, also directed to polishing a silicon substrate ([0076]) by using a polishing composition comprising silica abrasives ([0024-0035]) and hydroxyethyl cellulose ([0034-0035]), further teaches that the hydroxyethyl cellulose may have a molecular weight of 500,000 - 1,500,000 or less ([0062-0063]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use hydroxyethyl cellulose having a molecular weight of more than 800,000 in the invention of Kozasa because Takahashi is silent about a molecular weight of the cellulose derivative, and Teramoto teaches that such molecular weight would be effective.
17. Claims 11-13 rejected under 35 U.S.C. 103 as being obvious over 35 U.S.C. 103 as obvious over Takahashi in view of Teramoto as applied to claim 1 above, and further in view of Masuda:--Claims 11, 12, 13: Takahashi modified by Teramoto teaches the invention as above, wherein Takahashi further teaches that the water-soluble polymers, such as one having polyoxyalkylene structure may be polyoxyethylene , polyoxyethylene glycol, polyoxypropylene,…([0048]). Teramoto fails to disclose the claimed polyoxyethylene alkyl ether. Masuda, also directed to a polishing composition for a silicon substrate, teaches that adding polyoxyalkylene alkyl ether would advantageously reduce haze ([0067-0068, 0075-0077]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use polyoxyalkylene alkyl ether as the water-soluble polymer having polyoxyalkylene structure in the invention of Takahashi modified by Teramoto because Masuda teaches that adding polyoxyalkylene alkyl ether would advantageously reduce haze.
Response to Arguments
18. Applicant's arguments filed December 2, 2025 have been fully considered as follows:Regarding Applicant’s argument that the cited prior arts do not teach the amended feature “the cellulose derivative has a weight average molecular weight of more than 200 × 104”, as recited in claim 1 this argument is not persuasive. --Masuda clearly teaches that the polishing composition comprises a wetting agent, such as a cellulose derivative, having an average molecular weight of 50,000-2,000,000. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polishing slurry containing a cellulose derivative having an average molecular weight that is close to 2,000,000, such as 2,000,001 due to known routine fluctuation in manufacturing processes or routine measurement/calibration error of measurement instruments, in the invention of Masuda.-- Takahashi clearly teaches that the polishing composition comprises two or more water-soluble polymers, such as one having polyoxyalkylene structure or a cellulose derivative, the water-soluble polymers have average molecular weight 1,000-2,000,000. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polishing slurry containing a cellulose derivative having an average molecular weight that is close to 2,000,000, such as 2,000,001 due to known routine fluctuation in manufacturing processes or routine measurement/calibration error of measurement instruments, in the invention of Takahashi. Therefore, all rejections in the previous Office action mailed 7/2/2025 are maintained.
Conclusion
19. 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 extension fee 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 THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (571) 270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS T PHAM/Primary Examiner, Art Unit 1713