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, 9 and 10, and the withdrawal of claims 15-20, as filed on September 24, 2025, are acknowledged.
The amendments made to claims 9 and 10 have overcome the previous rejections to the claims under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the Office Action mailed on August 6, 2025.
Applicant’s arguments with respect to amended claim 1 have been considered but are moot because the arguments do not apply to new ground(s) of rejection in this Office Action necessitated by the amendment made to the claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to include all the limitations of the claim upon which it depends.
Regarding claim 5, it depends on claim 1. Claim 1 has been amended to recite the limitation “wherein the shell consists essentially of silica”, indicating the shell comprises at least 99% wt% silica (see Applicant’s Remarks field on September 24, 2025, and paragraph 0026 of the Specification as originally filed). However, the content of the silica in the shell recited in the instant claim is outside the range recited in claim 1, upon which the instant claim depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-3, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishida et al. (US6827639).
Regarding claim 1, Nishida discloses a chemical mechanical planarization (CMP) slurry comprising: a plurality of particles distributed in a carrier (a dispersion medium reads on a carrier, lines 40-48, column 6), wherein at least a portion of the particles of the plurality of particles have a body including a core comprising zirconia and a shell overlying at least a portion of the core, wherein the shell consists essentially of silica (abstract and lines 41-44, column 2); an oxidizing agent (hydrogen peroxide reads on an oxidizing agent, lines 64-67, column 6); and a carrier (a dispersion medium reads on a carrier, lines 45-48, column 6). It is noted that claim 1 is drawn to a composition claim and the limitations recited in the wherein clause are considered as intended uses of the claimed composition/functions of the claimed composition. 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 2, the limitation recited in the wherein clause is considered as intended uses of the claimed composition/function of the claimed composition. A composition claim covers what the composition is not what the composition does.
Regarding claim 3, Nishida discloses wherein the core comprises at least 80 vol % zirconia for a total volume of the core (the core is preferably made of one oxide such as ZrO2, lines 41-44, column 2).
Regarding claims 11-12, Nishida discloses wherein the oxidizing agent includes hydrogen peroxide (lines 64-67, column 6).
Regarding claim 13, Nishida discloses wherein the carrier includes water (lines 45-46, column 6).
Claim Rejections - 35 USC § 103
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.
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.
Claims 4-10 and 14 are rejected under 35 U.S.C. 103 as being obvious over Nishida et al. (US6827639) as applied to claim 1 above.
Regarding claim 4, Nishida discloses wherein the shell comprises an average thickness of at least 1% and not greater than 50% based on an average (D50) size of the core (1/100 to 1/2, lines 22-25, column 3), which overlaps with the range recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claims 6-7, Nishida discloses wherein the shell comprises an average thickness of at least 5 nm and not greater than 26 nm (lines 4-7, column 3), which overlaps with the ranges recited in the instant claims.
Regarding claim 8, Nishida discloses wherein an average particles size of the plurality of particles is at least 5 nm and not greater than 300 nm (lines 54-56, column 2), which overlaps with the range recited in the instant claim.
Regarding claim 9, Nishida discloses wherein an amount of the plurality of particles is at least 5 wt % and not greater than 50 wt % of based on the total weight of the CMP slurry (lines 26-29, column 4), which overlaps with the range recited in the instant claim.
Regarding claim 10, Nishida does not expressly disclose the pH range as recited in the instant claim; however, Nishida teaches that the pH of the abrasive composition can be adjusted using an acid or a base to suppress oxidation (lines 6-8, column 7). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to optimize the pH range of the abrasive composition (a result-effective variable) to suppress oxidation as taught by Nishida. Additionally, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable range by routine experimentation and there is no evidence of the criticality of the claimed range. See MPEP 2144.05 II.
Regarding claim 14, Nishida discloses wherein an average particles size of the plurality of particles ranges from 5 nm to 300 nm (lines 54-56, column 2), which encompasses the range recited in the instant claim; and a thickness of the shell ranges from 5 nm to 26 nm (lines 4-7, column 3), which overlaps with the ranges recited in the instant claims.
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 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