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 Amendments
The amendments filed November 19, 2025 have been entered. Accordingly, claims 1-14 are currently pending and have been examined. The Examiner acknowledges the amendments of claim 1. Claims 10-14 are newly presented. The previous 102 and 103 rejections has been updated due to applicant’s amendments. For the reason(s) set forth below, applicant’s arguments have not been found persuasive. The action is Final.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-5 and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Uno (US Pub. No. 2005/0139803) in view of Horiba (NPL Article, found at https://web.archive.org/web/20171102005617/https://www.horiba.com/fileadmin/uploads/Scientific/Documents/PSA/TN158.pdf).
Regarding claim 1, Uno discloses: a polishing composition (see Abstract and paragraph 0008) comprising alumina particles (see paragraph 0008 where the prior art discloses that the polishing composition includes “alumina other than fumed alumina”), colloidal silica particles (see paragraph 0008 where the prior art discloses that the polishing composition includes “colloidal silica”), and a dispersing medium (Per applications disclosure paragraph 0035, dispersing medium is interpreted to be “the dispersing medium preferably contains water”, similarly in paragraph 0008 the prior art discloses that the polishing composition includes “water”) for use in polishing an object to be polished containing a resin and a filler (The examiner indicates that the object and any associated structure (resin and filler) has not been positively recited as part of the claimed invention. Therefore, giving that the prior art discloses the polishing composition including the alumina particles, the colloidal silica particles, the dispersing medium, and giving that there is no additional structure or structural difference, thus the prior art would be capable of polishing the object to be polished containing the resin and the filler, as recited.), wherein
the alumina particles have an average particle size of less than 2.8 µm (see paragraph 0013 where the prior art discloses that the mean particle size of alumina other than fumed alumina is “preferably 1.2 µm or less, more preferably 1.0 µm or less, and most preferably 0.8 µm or less”, thus the alumina particles have an average particle size of less than 2.8 µm (1.2 µm or 1.0 µm or 0.8 µm), and
the colloidal silica particles have an average particle size less than the average particle size of the alumina particles (see paragraph 0016 where the prior art discloses that the mean particle size of colloidal silica is “preferably 200 nm or less, and more preferably 100 nm or less”, thus with a conversation factor of 1 nm to 0.001 µm, the colloidal silica particles have an average particle size (200 nm being 0.2 µm and 100 nm being 0.1 µm) is less than the average particle size of the alumina particles (see paragraph 0013 where the average particle size of the alumina particles being 1.2 µm or 1.0 µm or 0.8 µm)).
However, Uno appears to be silent wherein the colloidal silica particles have a span value [(D90-D10)/D50] of 0.50 or more and 0.95 or less.
Horiba is also concern in providing a composition comprising colloidal silica that is used in a variety of industrial application (see page 002 paragraph under “Ludox Silica”), and wherein the colloidal silica particles have a span value [(D90-D1o)/D50] of 0.50 or more and 0.95 or less (see annotated figure below where the prior art discloses a span value of 0.5).
PNG
media_image1.png
106
410
media_image1.png
Greyscale
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Uno to incorporate the teachings of Moriyama to provide wherein the colloidal silica particles have a span value [(D90-D10)/D50] of 0.50 or more and 0.95 or less. One of ordinary skill in the art would recognize that having the colloidal silica with a desired span value include the claimed span value would necessarily provide a colloidal silica with several unique properties of this material including availability, low cost, and extremely long shelf life as disclosed by Horiba (see page 002 paragraph under “Ludox Silica”).
Regarding claim 2, Uno modified discloses: the polishing composition according to claim 1, wherein the colloidal silica particles have an average particle size of 0.02 µm or more and less than 0.20 µm (It is noted that the prior art disclose in paragraph 0016 that the mean particle size of colloidal silica is “preferably 200 nm or less, and more preferably 100 nm or less”, with a conversation factor of 1 nm to 0.001 µm. For illustrative purposes the examiner takes the value of 100 nm (i.e. 0.1 µm), thus satisfying the claimed ratio (0.02 µm or more and less than 0.20 µm) and meeting the claimed limitation.).
Regarding claim 3, Uno modified discloses: the polishing composition according to claim 1, wherein the alumina particles have an average particle size of more than 0.2 µm and less than 1.2 µm (It is noted that the prior art disclose in paragraph 0013 where the prior art discloses that the mean particle size of alumina other than fumed alumina is “preferably 1.2 µm or less, more preferably 1.0 µm or less, and most preferably 0.8 µm or less”. For illustrative purposes the examiner takes the value of 0.8 µm, thus satisfying the claimed ratio (more than 0.2 µm and less than 1.2 µm) and meeting the claimed limitation.).
Regarding claim 4, Uno modified discloses: the polishing composition according to claim 1, wherein a ratio of the average particle size of alumina particles to the average particle size of colloidal silica particles is more than 1.5 and less than 20.0 (see paragraph 0013 where the prior art discloses that the mean particle size of alumina other than fumed alumina is “0.8 µm or less”, see paragraph 0016 where the prior art discloses that the mean particle size of colloidal silica is “preferably 200 nm or less” (with a conversation factor of 1 nm to 0.001 µm), thus for illustrative purposes the examiner takes the value of 0.8 µm of the alumni and 200 nm (i.e. 0.2 µm) of the colloidal silica and would therefore have a ratio of 4 which is within the claimed ratio range of 1.5 or more and less than 20.0 and meeting the claimed limitation.).
Regarding claim 5, Uno modified discloses: the polishing composition according to claim 1, wherein a mixing mass ratio of the alumina particles to the colloidal silica particles is 0.3 or more and less than 5.0 (Per applications disclosure paragraph 0025, mixing mass is interpreted to be “mixing mass ratio of alumina particles to colloidal silica particles (concentration (content) of alumina particles/concentration (content) of colloidal silica particles)”, similarly in paragraph 0014 the prior art discloses the content of the alumina other than fumed alumina in the polishing composition is preferably “0.2% by weight”, see also paragraph 0017 the prior art discloses the content of the colloidal silica in the polishing composition is preferably “0.2% by weight”, thus having a ratio of 1 which is within the claimed ratio range of 0.3 or more and less than 5.0 of the mixing mass ratio and meeting the claimed limitation.).
Regarding claim 9, Uno modified discloses: the polishing composition according to claim 1, wherein the colloidal silica particles are colloidal silica particles made by a sodium silicate method (The applicant is claiming a product-by-process limitation (sodium silicate method), MPEP 2113 clearly states "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different processes." In this instance, the product taught by Uno modified is the same as or makes the product claimed obvious, meeting the limitation of the claim).
Regarding claim 10, Uno modified discloses: the polishing composition according to claim 1, wherein the alumina particles contain only one type of alumina particle (see rejection of claim 1 above (see page 3) where only one type pf alumina particle (“alumina other than fumed alumina”) is selected) and wherein a ratio of the average particle size of alumina particles to the average particle size of colloidal silica particles is 6 or less (see paragraph 0016 where the prior art discloses that the mean particle size of colloidal silica is “preferably 200 nm or less, and more preferably 100 nm or less”, thus with a conversation factor of 1 nm to 0.001 µm, see also paragraph 0013 where the prior art discloses that the mean particle size of alumina other than fumed alumina being 1.2 µm or 1.0 µm or 0.8 µm, thus for illustrative purposes the examiner takes the value of 1.0 µm of alumina particle size divided by the value of 200 nm (i.e. 0.2 µm) of the colloidal silica size and would therefore have a ratio of 5 which is within the claimed ratio range of 6 or less and meeting the claim limitation) .
Regarding claim 11, Uno modified discloses: the polishing composition according to claim 10, wherein the ratio of the average particle size of alumina particles to the average particle size of colloidal silica particles is more than 1 (see rejection of claim 10 above where the prior art shows a ratio of 5 which is more than 1).
Regarding claim 12, Uno modified discloses: the polishing composition according to claim 10, wherein the ratio of the average particle size of alumina particles to the average particle size of colloidal silica particles is more than 1.5 (see rejection of claim 10 above where the prior art shows a ratio of 5 which is more than 1.5).
Claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Uno (US Pub. No. 2005/0139803) in view of Horiba (NPL Article, found at https://web.archive.org/web/20171102005617/https://www.horiba.com/fileadmin/uploads/Scientific/Documents/PSA/TN158.pdf) as applied to claim 1 above, and further in view of Moriyama (JP 2018199751).
Regarding claim 6, Uno modified discloses: a polishing method (see paragraph 0003) comprising polishing an object to be polished (see paragraph 0029 where the prior art disclose utilizing the polishing composition for polishing the surface of a substrate (object) by using the polishing composition according to claim 1 (see paragraph 0029 and see also rejection of claim 1 above (pages 2-4).
However, Uno appears to be silent wherein the object to be polished contains a resin and a filler.
Moriyama is also concern in providing a polishing method (see paragraph 0010) comprising a polishing composition (see paragraph 0010 where the prior art discloses utilizing “a slurry” (polishing composition)) in order to polish an object (see paragraph 0010) and wherein the object to be polished contains a resin and a filler (see paragraph 0010 where the prior art discloses that the object to be polished has a surface layer and, see paragraph 0011 where the prior art discloses examples of material forming the surface layer which include a mixture of “an epoxy resin and a silica filler”, thus the object contains a resin and a filler.).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Uno to incorporate the teachings of Moriyama to provide wherein the object to be polished contains a resin and a filler. One of ordinary skill in the art would recognize that having a desired object which includes a resin and filler would provide the predicable result of the object being polished to a desired finished during operations.
Regarding claim 8, Uno modified discloses all the limitations as stated in the rejection of claims 1 and 6, but appears to be silent wherein the filler is in a spherical form.
However, it would have been it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Uno wherein provide wherein the filler is in a spherical form, since a change in shape of an element involves only routine skill in the art. One of ordinary skill in the art would recognize that having the object containing the filler with a desired shape including the spherical form would necessarily provide the predicable result of the object being polished to a desired finished during operations (See MPEP 2144.04 (IV)(B)) . Furthermore, the applicant has failed to place any criticality on the specific shape of the filler being in a spherical form provides any unexpected result, indicating other acceptable shapes such as powder form, fiber form, and needle form (see paragraph 0050).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Uno (US Pub. No. 2005/0139803) in view of Horiba (NPL Article, found at https://web.archive.org/web/20171102005617/https://www.horiba.com/fileadmin/uploads/Scientific/Documents/PSA/TN158.pdf) and Moriyama (JP 2018199751) as applied to claims 1 and 6above, and further in view Bae (US Pub. No. 2020/0381664).
Regarding claim 7, Uno modified discloses all the limitations as stated in the rejection of claims 1 and 6, but appears to be silent wherein the resin has a cyclic molecular structure.
Bae is also concern in providing an object (element 10 and see also paragraph 0009) that contains a resin (see paragraph 0009 where the prior art discloses element 10 (object) comprises a layer (element 13) that comprises a resin component and see also paragraph 0016 where the prior art discloses utilizing “epoxy resins”) and wherein the resin has a cyclic molecular structure (see paragraph 0020).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Uno to incorporate the teachings of Bae to provide wherein the resin has a cyclic molecular structure. One of ordinary skill in the art would recognize that having the resin has the claimed cyclic molecular structure would necessarily provide the object with excellent thermal and chemical stability as disclosed by Bae (see paragraph 0020).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Uno (US Pub. No. 2005/0139803) in view of Horiba (NPL Article, found at https://web.archive.org/web/20171102005617/https://www.horiba.com/fileadmin/uploads/Scientific/Documents/PSA/TN158.pdf) as applied to claim 1 above, and further in view of Chen (US Pub. No. 2019/0301028).
Regarding claim 13, Uno modified discloses all the limitations as stated in the rejection of claim 1, but appears to be silent further comprising a pH adjusting agent, wherein the pH adjusting agent is one type of pH adjusting agent selected from the group consisting of an inorganic acid, an organic acid and an alkali, wherein the organic acid is selected from the group consisting of formic acid, acetic acid, propionic acid, butyric acid, valeric acid, 2- methylbutyric acid, n-hexanoic acid, 3,3-dimethylbutyric acid, 2-ethylbutyric acid, 4- Page 4 of 11 methylpentanoic acid, n-heptanoic acid, 2-methylhexanoic acid, n-octanoic acid, 2-ethylhexanoic acid, benzoic acid, glycolic acid, salicylic acid, glyceric acid, oxalic acid, malonic acid, glutaric acid, adipic acid, pimelic acid, maleic acid, phthalic acid, malic acid, tartaric acid, lactic acid, and methane sulfonic acid, ethane sulfonic acid and isethionic acid.
Chen is also concern in providing a composition for surface treatment (see paragraph 0013) comprising a pH adjusting agent (see paragraph 0055), wherein the pH adjusting agent is one type of pH adjusting agent selected from the group consisting of an inorganic acid (see paragraph 0057), an organic acid and an alkali, wherein the organic acid is selected from the group consisting of formic acid, acetic acid, propionic acid, butyric acid, valeric acid, 2- methylbutyric acid, n-hexanoic acid, 3,3-dimethylbutyric acid, 2-ethylbutyric acid, 4- Page 4 of 11 methylpentanoic acid, n-heptanoic acid, 2-methylhexanoic acid, n-octanoic acid, 2-ethylhexanoic acid, benzoic acid, glycolic acid, salicylic acid, glyceric acid, oxalic acid, malonic acid, glutaric acid, adipic acid, pimelic acid, maleic acid, phthalic acid, malic acid, tartaric acid, lactic acid, and methane sulfonic acid, ethane sulfonic acid and isethionic acid.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Uno to incorporate the teachings of Chen to provide a pH adjusting agent, wherein the pH adjusting agent is one type of pH adjusting agent selected from the group consisting of an inorganic acid, an organic acid and an alkali, wherein the organic acid is selected from the group consisting of formic acid, acetic acid, propionic acid, butyric acid, valeric acid, 2- methylbutyric acid, n-hexanoic acid, 3,3-dimethylbutyric acid, 2-ethylbutyric acid, 4- Page 4 of 11 methylpentanoic acid, n-heptanoic acid, 2-methylhexanoic acid, n-octanoic acid, 2-ethylhexanoic acid, benzoic acid, glycolic acid, salicylic acid, glyceric acid, oxalic acid, malonic acid, glutaric acid, adipic acid, pimelic acid, maleic acid, phthalic acid, malic acid, tartaric acid, lactic acid, and methane sulfonic acid, ethane sulfonic acid and isethionic acid. One of ordinary skill in the art would recognize that having the polishing composition contain a pH adjusting agent would necessarily contributes to the removal of impurities by the composition for surface treatment as disclosed by Chen (see paragraph 0056).
Regarding claim 14, Uno modified discloses all the limitations as stated in the rejection of claims 1 and 13, but appears to be silent wherein the polishing composition has a pH of 1 or more and 6 or less; or a pH of 8 or more and 12 or less.
Chen is also concern in providing a composition for surface treatment (see paragraph 0013) comprising a pH adjusting agent (see paragraph 0055), and wherein the polishing composition has a pH of 1 or more and 6 or less (see paragraph 0061 where the prior art discloses a pH value of the composition and wherein the pH value is “7 or less, more preferably 4 or less, and furthermore preferably 3 or less. Further, the pH value is preferably 1 or more”, thus for illustrative purposes the examiner takes the pH value of 1 and would therefore have a pH of 1 or more and 6 or less); or a pH of 8 or more and 12 or less.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Uno to incorporate the teachings of Chen to provide wherein the polishing composition has a pH of 1 or more and 6 or less; or a pH of 8 or more and 12 or less. One of ordinary skill in the art would recognize that having a desired pH value including the value of 1 or more would necessarily allow when the pH value is 1 or more, the damage to a device, which is caused due to a low pH, can be reduced as disclosed by Chen (see paragraph 0061).
Response to Arguments
Applicant's arguments filed 11/19/2025 have been fully considered but they are not persuasive.
Applicant arguments on pages 6-10 have been fully considered but are moot because the arguments do not apply to the current rejection being used.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALBERTO SAENZ whose telephone number is (313)446-6610. The examiner can normally be reached Monday-Friday 7:30-4:30PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at (571) 272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.S./Examiner, Art Unit 3723
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736