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 8/18/2025 have been fully considered but they are not persuasive. Applicants argue that Ito 1 (‘313) does not teach the instant invention because Ito 1 provides a list of over 40 exemplary metal salts that can be used in the composition single or in combination of two or more [0021] but provides no further guidance to which metal salts would be preferred or suitable for a skilled artisan to combine it’s oxidant in the disclosed polishing composition.
In response, examiner states that the argument is not persuasive because all the disclosed metal salts and the oxidants are intended to use for the same purpose and one of ordinary skilled artisan would use any of the combination in order to achieve the desired function, unless applicants show or provide evidence on the contrary.
Applicants appears to show unexpected result of such metal salts of aluminum nitrate and calcium nitrate (Table 1 and Table 2 in the instant specification).
Examiner states that such showing is an expected result not an unexpected result of the inventive composition.
Examiners states that a proper showing of unexpected results includes:
Evidence of unexpected results must be in the form of a direct comparison of the claimed invention with the closest prior art which is commensurate in scope with the
claims. In other words, the showing of unexpected results must reviewed to see if the
results occur over the entire claimed range. See MPEP 716.02(d).
Further, once such evidence is presented it would not automatically overcome an
obviousness rejection, as after making a conclusion of a proper showing of unexpected
results, the Examiner then has to determine: 1) if any differences between the claimed
invention and the prior art may be expected to result in some differences in properties, in other words whether the properties differ to such an extent that the difference is really
unexpected (see: MPEP §716.02); and 2) the evidence of unexpected results supports
non-obviousness as weighed against the evidence of obviousness.
With regards to the Ito2, applicants pointed out that the disclosure of Ito2 is similar in nature to the disclosure of Ito1 and examiner misinterpret the abrasive content in the composition.
In response, examiner states that Ito2 discloses abrasive content in [0038] and concentration ratio of oxidant and metal salt [0033] and one of skilled artisan would optimize such for predictable results, in this case polishing rate or selectivity.
Further, 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, the previous office action is repeated herein as follows:
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.
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.
Claim(s) 1-6,8-10,14-15 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 2020/0109313).
Regarding claims 1, 17 and 18, Ito et al disclose a polishing composition comprises water, an oxidant, and a polishing removal accelerator (abstract); the composition comprises a metal salts and specific examples of the metal slat includes calcium nitrate [0021],[0022], which reads on the claimed “first metal salt” as to claims 1,3,17 and 18.
Ito et al disclose that the oxidant comprises aluminum nitrate (resemble as the claimed second metal salt), sodium permanganate and potassium permanganate, etc. and Ito et al also disclose that these may be used singly or in combination of two or more types appropriately [0027].
Ito et al may not explicitly disclose that both the aluminum nitrate and permanganate being used in combination as the oxidant.
However, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to select any combination of the oxidizing agent, including permanganate and calcium nitrate, because it has been held that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980), see MPEP 2144.06.
Regarding claim 2, Ito et al disclose that the oxidant comprises sodium permanganate and potassium permanganate, etc. [0027].
Regarding claim 4, Ito et al disclose that the oxidant comprises aluminum nitrate (resemble as the claimed second metal salt) [0027].
Regarding claim 5, Ito et al disclose above that both the first and second metal slat comprises “nitrate”, like calcium nitrate and aluminum nitrate [0021],[0027]. So, both the salts have the same anionic species.
Regarding claims 6 and 14-15, Ito et al disclose that a concentration (content) C1 of the metal salt A in the polishing composition is not particularly limited, and is generally appropriately 10 mol/L or lower [0024]; and the concentration (content) C2 of the oxidant in the polishing composition is generally appropriately 0.001 mol/L or higher [0030]; and a ratio (C1/C2) is preferably 70 or less, more preferably 30 or less, further preferably 10 or less, and particularly preferably 1 or less [0031]; and aforesaid teaching appears to be overlapping the claimed range and overlapping ranges are prima facie obvious. MPEP 2144.05.
Further, 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.
Regarding claims 8-9, Ito et al disclose that the polishing object comprises a material having a Vickers hardness of 500 Hv or higher. A Vickers hardness of a polishing target material is preferably 700 Hv or higher (for example 1,000 Hv or higher, typically 1,500 Hv or higher); and the material may comprise silicon carbide [0016].
Regarding claim 10, Ito et al disclose above all the components of the polishing composition as of claim 1 and used to polish an object [0016].
Claim(s) 1-4,7,11-13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 2020/0399505).
Regarding claims 1,3 and 7, Ito et al disclose a polishing composition comprises water, abrasive grains, an oxidant, and a polishing accelerator. The polishing accelerator comprises at least one metal salt selected from the group consisting of alkali metal salts and alkaline-earth metal salts (abstract); wherein the metal salt comprises nitrates such as lithium nitrate, sodium nitrate, potassium nitrate, magnesium nitrate, calcium nitrate, strontium nitrate, and barium nitrate [0023]; aforesaid calcium nitrate corresponds the claimed “first metal salt” and also reads on the claimed limitation of the first metal salt is nitrate as required in claim 3.
Ito et al disclose that the oxidant comprises aluminum nitrate (resemble as the claimed second metal salt), sodium permanganate and potassium permanganate, etc. and Ito et al also disclose that these may be used singly or in combination of two or more types appropriately [0028].
Ito et al may not explicitly disclose that both the aluminum nitrate and permanganate being used in combination as the oxidant.
However, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to select any combination of the oxidizing agent, including permanganate and calcium nitrate, because it has been held that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980), see MPEP 2144.06.
As to claim 2, Ito et al disclose that the oxidant comprises sodium permanganate and potassium permanganate, etc. [0027].
Regarding claim 4, Ito et al disclose that the oxidant comprises aluminum nitrate (resemble as the claimed second metal salt) [0027].
Regarding claim 11, Ito et al disclose the abrasive grains include alumina particles [0010].
Regarding claim 12, Ito et al disclose the abrasive can be any of inorganic particles, organic particles, and organic-inorganic composite particles. Examples thereof include abrasives substantially composed of any one of oxide particles such as silica particles, alumina particles [0035].
Regarding claims 13 and 16, Ito et al disclose that the content of the abrasive is 90% or more [0036]; and the oxidant (corresponds the second metal salt, such as aluminum nitrate) is in the polishing composition is preferably 0.001 or more, more preferably 0.005 or more, still more preferably 0.01 or more [0033], which overlaps the claimed range, MPEP 2144.05.
Further, 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.
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 SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 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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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/Primary Examiner, Art Unit 1713