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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 27, 2026 has been entered.
Response to Amendments/Arguments
The amendment made to claim 1, the cancelation of claim 9, and the withdrawal of claim 10, as filed on May 27, 2026, are acknowledged.
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 amendments made to the claims.
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.
Claim 1-8 are rejected under 35 U.S.C. 103 as being obvious over Yamaguchi et al. (US20220162477) in view of Inoue et al. (JP2007137972, a machine-translated English version is used) and Tuoriniemi et al. (“Intermethod comparison of the particle size distribution of colloidal silica nanoparticles”, Sci. Technol. Adv. Mater. Vol. 15, year 2014, paper# 035009).
Regarding claim 1, Yamaguchi discloses a chemical mechanical polishing composition (abstract) comprising water (abstract), an abrasive having colloidal silica particles including elongated colloidal silica particles (a peanut shaped colloidal silica reads on elongated colloidal silica particle, paragraphs 0025 and 0029), polyvinyl alcohol 80% or more hydrolyzed (degree of saponification reads on degree of hydrolyzation, paragraph 0036), an electrolyte (organic acid or salt reads on an electrolyte, paragraph 0088), and a pH greater than 7 (paragraph 0118), wherein the electrolyte is citric acid (paragraph 0090). Yamaguchi is silent about the colloidal silica being bimodal distributed, wherein the bimodal distributed colloidal silica particles have a first mode with an average particle size of 75-80 nm and a second mode with an average particle size of 110-140 nm. However, Inoue teaches that bimodal distributed silica sol (silica sol reads on colloidal silica) can exhibit excellent polishing effect (paragraph 0023). Inoue further discloses that bimodal distributed colloidal silica particles have a first mode with a first particle size maximum of 30-70 nm and a second mode with a second particle size maximum of 71-150 nm (paragraph 0023). The range of the first mode disclosed by Inoue is close to the corresponding range recited in the amended claim 1, while the range of the second mode disclosed by Inoue overlaps with the corresponding range recited in the instant claim. As taught by Tuoriniemi, there can be large variation in the measured diameter of nanoparticles depending on which method is used (abstract). In addition, Inoue teaches that the bimodal distribution is characterized by the absolute value of the difference in particle sizes corresponding to both peaks being in the range of 50 to 100nm, which also overlaps with the corresponding range recited in the amended claim 1. Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to experiment with the ranges of the two modes based on the measurement method as suggested by Tuoriiniemi, that satisfy the characteristics of the bimodal distribution as taught by Inoue, in order to obtain excellent polishing effect as motivated by Inoue. 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). 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 claims 2-3, Yamaguchi discloses wherein the polyvinyl alcohol is 80% or more hydrolyzed (degree of saponification reads on degree of hydrolyzation, paragraph 0036). The range of hydrolyzation disclosed by Yamaguchi overlaps with the ranges recited in the instant claims.
Regarding claim 4, Yamaguchi discloses wherein a weight average molecular weight of the polyvinyl alcohol 80% to less than or equal to 90% hydrolyzed is 9000 g/mole or greater (at least 1x104, paragraph 0054).
Regarding claim 5, Yamaguchi discloses wherein a weight average molecular weight of the polyvinyl alcohol 80% or more hydrolyzed is at least 2x x104 and not more than 15x104 (paragraph 0054).
Regarding claim 6, Yamaguchi discloses wherein the amount of polyvinyl alcohol 80% or more hydrolyzed is 0.01 wt % (paragraph 0064).
Regarding claim 7, it is noted that the claim is drawn to a composition claim and the limitation recited in the wherein clause is considered as a property of the 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").
Regarding claim 8, Yamaguchi discloses wherein the pH is 8-12 (paragraph 0118).
Conclusion
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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