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 .
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.
Response to Amendments/Arguments
Amendments made to claims 1 and 3, and the withdrawal of claim 9, as filed on January 15, 2026, are acknowledged.
Applicant's arguments, see Remarks filed on January 15, 2026, with respect to amended claim 1 have been fully considered but they are not persuasive.
The Applicant argues that “the more preferable pH ranges for Iwano et al. (4.0 or more) are not preferable for the presently claimed invention”. However, Iwano does specifically disclose the pH of the composition being 3.0 (paragraph 0101), which falls within the range recited in the amended claim 1.
Claim Rejections - 35 USC § 102
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.
Claims 1- 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwano et al. (JP2016023209, a machine-translated English version is used).
Regarding claim 1, Iwano discloses a polishing liquid (claim 1) comprising: abrasive grains comprising a hydroxide of a tetravalent metal element (claim 1); a polymer comprising a structure unit represented by Formula (1) recited in the instant claim (a copolymer comprising a structure unit of vinylpyrrolidone, paragraph 0140 and claim 1); a liquid medium (paragraph 0065), and wherein the polishing liquid has a pH of 3.0 (paragraph 0101).
Regarding claim 2, Iwano discloses wherein the polymer further comprises a structure unit derived from a (meth)acrylic acid ester (paragraph 0140 and claim 1).
Regarding claim 3, Iwano discloses wherein the structure unit derived from a (meth)acrylic acid ester is a structure unit represented by Formula (2) recited in the instant claim (paragraph 0140 and claim 1).
Regarding claim 4, Iwano discloses wherein a weight average molecular weight of the polymer is 1000000 (paragraph 0085).
Regarding claim 5, Iwano discloses wherein the hydroxide of a tetravalent metal element is cerium hydroxide (paragraph 0029 and claim 1).
Regarding claim 6, Iwano discloses wherein a pH is 3.0 (paragraph 0101).
Regarding claim 7, it is noted that the instant claim is drawn to a composition claim, and a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.")
Regarding claim 8, Iwano discloses a polishing liquid set comprising: constituent components of the polishing liquid according to claim 1 separately stored as a first liquid and a second liquid, the first liquid containing the abrasive grains and a liquid medium, the second liquid containing the polymer and a liquid medium (paragraph 0016).
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (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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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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