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 11/05/2025, as to the point that Umeda fail to disclose the silica is cationically modified with amino group or a quaternary ammonium group because Umeda point out that the disclosed polishing composition differs from the polishing composition disclosed on JP 2017-61612 and JP 2005-162533 (see [0020]), have been fully considered but they are not persuasive.
Examiner states that Umeda clearly discloses that the disclosed polishing composition comprises a a cationically modified colloidal silica in which a cationic group is introduced on a surface of the colloidal silica by using a silane coupling agent. Here, as a method of producing colloidal silica having such a cationic group, as disclosed in JP 2005-162533 A, a method for immobilizing a silane coupling agent having an amino group such as aminoethyl trimethoxysilane, aminopropyl trimethoxysilane, aminoethyl triethoxysilane, aminopropyl triethoxysilane, aminopropyl dimethyl ethoxysilane, aminopropyl methyl diethoxysilane, and aminobutyl triethoxysilane, or a silane coupling agent having a quaternary ammonium group such as N-trimethoxysilyl propyl-N,N,N-trimethyl ammonium on the surface of the abrasive grain has been known [0020]; and in the last sentence of [0020], Umeda appears to disclose in one embodiment , the abrasive grains are different form the above (see the last sentence of [0020]). Therefore, such disclosure is not teaching away from the disclosure of cationically modified silica with amino group or a quaternary ammonium group.
Additionally, it has been held that all disclosures of non-preferred embodiments must be considered. See In re Nehsenberg 126 PQ 383, In re Boe 148 PQ 507, In re Mill & Palmer 176 PQ 196 (CCPA 1972), In re Simon 174 PQ 114 and In re Lamberti et al. 192 PQ 278 (CCPA 1976). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
However, a modified rejections applies due to the recent amendments, along with the newly submitted claims below:
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umeda (US 2021/0301175) in view of Hanano et al (US 2020/0299544).
Regarding claims 1 and 7, Umeda discloses a polishing composition comprises abrasive grains, quaternary amine having at least one alkyl group having 2 or more carbon atoms or a salt thereof, and a liquid carrier, in which a pH of the polishing composition is from 2 to 5 [0012]; and the abrasive grains may be a cationically modified colloidal silica, in which a cationic group is introduced on a surface of the colloidal silica by using a silane coupling agent. Here, as a method of producing colloidal silica having such a cationic group, as disclosed in JP 2005-162533 A, a method for immobilizing a silane coupling agent having an amino group such as aminoethyl trimethoxysilane, aminopropyl trimethoxysilane, aminoethyl triethoxysilane, aminopropyl triethoxysilane, aminopropyl dimethyl ethoxysilane, aminopropyl methyl diethoxysilane, and aminobutyl triethoxysilane, or a silane coupling agent having a quaternary ammonium group such as N-trimethoxysilyl propyl-N,N,N-trimethyl ammonium on the surface of the abrasive grain has been known [0020]; the polishing composition may contain an oxidizing agent [0059]; the oxidizing agent is preferably peroxide. Specific examples of such peroxide are not limited to the following, and examples thereof include hydrogen peroxide [0060].
Unlike the instant invention, Umeda fails to disclose the composition also include a trialkylamine oxide with the content of claimed ppm range.
However, in the same field of endeavor, Hanano et al disclose a polishing composition comprising a dispersant including a water-soluble amphoteric compound; the content of the dispersant is preferably 0.001 to 4% by mass based on the total mass of the abrasive grains and [0089] and examples of the water-soluble amphoteric compound include lauryl betaine, stearyl betaine, lauryldimethylamine oxide [0093]; and aforesaid “lauryldimethylamine oxide” reads on the claimed trialkylamine oxide; and aforesaid content of the dispersant may not explicitly teach the content could be 3 mass ppm or 40 mass ppm. However, it has been held that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art in the absence of evidence indicating that said concentration is critical. See MPEP 2144.05.II.A.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Hanano et al's teaching of introducing the dispersant of lauryldimethylamine oxide into the teaching of Umeda for improving the dispersibility of the abrasive grains in the composition as suggested by Hanano et al.
Regarding claim 2, Umeda discloses that a pH of the polishing composition is from 2 to 5 [0012].
Regarding claims 3-5, Hanano et al disclose above that the water-soluble amphoteric compound include lauryl betaine, stearyl betaine, lauryldimethylamine oxide [0093]; and the chemical formula for lauryldimethylamine oxide is C14H31NO aforesaid “lauryldimethylamine oxide” reads on the claimed trialkylamine oxide as required in the claims 3-5.
Regarding claim 6, Umeda discloses that the upper limit of the oxidizing agent content (active component concentration) (total content in a case of two or more types) in the polishing composition is 10% by mass or less, 5% by mass or less, 3% by mass or less, 1% by mass or less, or 0.5% by mass or less [0061].
Regarding claim 8, Umeda discloses that the composition further comprises antifungal agent [0088].
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umeda (US 2021/0301175) in view of Hanano et al (US 2020/0299544) as applied to claim 1 and 4-5 above, and further in view of Killeen et al (US 2018/0244532).
Modified Umeda discloses above for the claims 1 and 4-5 but fails to teach the specified trialkylamine oxide listed in the claims 11-12.
However, in the same field of endeavor, Killeen et al disclose a polishing composition comprises a surfactant include dimethyl amine oxides, such as lauryl dimethyl amine oxide, myristyl dimethyl amine oxide, cetyl dimethyl amine oxide, combinations thereof, and the like. Useful water soluble amine oxide surfactants are selected from the octyl, decyl, dodecyl, isododecyl, coconut, or tallow alkyl di-(lower alkyl) amine oxides, specific examples of which are octyldimethylamine oxide, nonyldimethylamine oxide, decyldimethylamine oxide [0152].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Killeen et al's teaching of using surfactant into the teaching of modified Umeda because lauryl dimethyl amine oxide, myristyl dimethyl amine oxide and decyldimethylamine oxide are functional equivalent as taught by Killeen et al.
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 SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713