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 .
EXAMINER’S COMMNET
Two telephone calls were made to request a restriction between claims 1-9 and 10-20; a call was made to attorney Thomas Lee (Reg. no. 66,396) on 03/25/2026 and another was made to attorney Catherine Gates (Reg. no. 51,132) on 03/27/2026. In each call, a voice mail was left presenting the groups, but also requesting the assistance to identify the attorney or agent who would be working on this application, and who would be able to make an election. None of the voice mails was returned.
However, upon further consideration of the claims, it was concluded that the claimed composition and method could be examined together.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 6, and 7 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2022/0033683 to Jhang et al. (hereinafter Jhang) submitted in the IDS filed on 05/31/2024.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With respect to claim 1, Jhang teaches a chemical mechanical polishing slurry composition consisting of, consisting essentially of, or comprising a water based liquid carrier, such as water, titanium oxide particles including rutile and anatase types, pH adjusting agents such as sulfuric acid, phthalic acid, oxalic acid, and more, wherein the composition has a pH of 7-11 (abstract, [0010], [0013], [0021], [0025], [0027] and [0028]). Jhang, also, teaches that in some embodiments of the reference, there could be a pH buffer in the composition, wherein said pH buffer could be of materials such as triethanolamine, tris(hydroxymethyl)aminomethane, diethanolamine, 2-amino-2-methyl-1,3-propandediol or AMPD and a few more ([0028]). The reference, additionally, discloses that in certain embodiments, the titanium oxide particles may be substantially pure rutile ([0021]); nevertheless, the claim utilizes the open phrase “comprising” which would allow the presence/use of other types of titanium oxide particle without deviating from the scope of the claim. Therefore, even without relying on the disclosure of the specific embodiment of paragraph [0021], the reference teaches the use of rutile titanium oxide particles (abstract, [0010]-[0011]). Moreover, the reference discloses the use of compounds such as oxalic acid and phthalic acid, which would read on some of the preferred compounds as disclosed in the original specification of the present Application under examination (see specification, [0005], [0008], and [0022]-[0023]), and dependent claim 6, as “organic polishing promoter”; nevertheless, according to the language of claim 1, the “organic polishing promoter” can be a carboxylic acid. Both oxalic acid and phthalic acid are carboxylic acids. Thus, the reference is seen to teach “organic polishing promoter”. Also, the reference teaches the use of amines (see [0028]) which is another example for the claimed “organic polishing promoter”.
With respect to claim 3, Jhang discloses the use of about 0.05 wt% or more and about 5 wt% or less of titanium oxide particles in the composition ([0024]).
With respect to claim 6, Jhang teaches the use of pH adjusting agents such as oxalic acid and phthalic acid which are disclosed as “organic polishing promoter” as claimed in claim 6.
With respect to claim 7, Jhang discloses compounds such as tri(hydroxymethyl)aminomethane ([0028]) which is a compound comprising an amine and a hydroxyl.
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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 6,152,976 to Ishitobi et al. (hereinafter Ishitobi) submitted in the IDS filed on 05/31/2024.
With respect to claim 1, Ishitobi teaches an abrasive composition used in chemical abrading due to the use of abrasion promoter (abstract, col. 4, lines 23-38) on polishing a disc substrate, wherein the composition comprises finely divided titanium oxide particles having rutile and anatase types (col. 2, lines 54-67; col. 3, lines 10-15 and 27-31; col. 3, line 65 to col. 4, line 6). Also, Ishitobi teaches the presence of components such as gluconic acid and malic acid in the composition (col. 4, lines 30-32); such compounds are carboxylic acids. Moreover, Ishibtobi teaches the presence/use of water, as well as a pH of 2-5 (col. 3, lines 2 and 10; col., 4, lines 54-55). The reference discloses the abrasion promoter exhibits a chemical function that greatly enhances the combination of a physical abrading action of titanium oxide particles with the chemical function of the abrasion promoter (col., 4, lines 23-38); thus, the reference teaches an abrasive composition which reads on “chemical mechanical polishing composition”.
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.
Claim(s) 2, 8, 10-13, 16-18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jhang.
With respect to claim 2, Jhang teaches a pH of 7-11 ([0021]) which overlaps with the claimed range. MPEP 2144.05 states “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).
With respect to claim 8, Jhang teaches compounds such as diethanolamine and triethanolamine ([0027]-[0028]) in their chemical mechanical polishing composition, which are considered ethanolamine.
With respect to claim 10, Jhang teaches a chemical mechanical polishing composition to polish substantially “any substrate including a metal” layer and a dielectric layer such as “silicon oxide” (abstract, [0037]). The disclosure of “a metal” is taken to include any and all metals, such as nickel. The reference teaches a polishing method which involves an apparatus including a platen, which when in use, is in motion and has a velocity that results from orbital, linear or circular motion, and a polishing pad in contact with the platen and moving with the platen, and a carrier that holds a substrate to be polished by contacting and moving relative to the surface of the polishing pad ([0038]). The reference, then, continues to disclose the polishing of the substrate takes place by the substrate being placed in contact with the polishing pad and the polishing composition of the invention, and then the polishing pad moving relative to the substrate, so as to abrade at least a portion of the substrate ([0038]).
Jhang teaches a chemical mechanical polishing slurry composition consisting of, consisting essentially of, or comprising a water based liquid carrier, such as water, titanium oxide particles including rutile and anatase types, pH adjusting agents such as sulfuric acid, phthalic acid, oxalic acid, and more, wherein the composition has a pH of 7-11 (abstract, [0010], [0013], [0021], [0025], [0027] and [0028]). Jhang, also, teaches that in some embodiments of the reference, there could be a pH buffer in the composition, wherein said pH buffer could be of materials such as triethanolamine, tris(hydroxymethyl)aminomethane, diethanolamine, 2-amino-2-methyl-1,3-propandediol or AMPD and a few more ([0028]). The reference, additionally, discloses that in certain embodiments, the titanium oxide particles may be substantially pure rutile ([0021]); nevertheless, the claim utilizes the open phrase “comprising” which would allow the presence/use of other types of titanium oxide particle without deviating from the scope of the claim. Therefore, even without relying on the disclosure of the specific embodiment of paragraph [0021], the reference teaches the use of rutile titanium oxide particles (abstract, [0010]-[0011]). Moreover, the reference discloses the use of compounds such as oxalic acid and phthalic acid, which would read on some of the preferred compounds as disclosed in the original specification of the present Application under examination (see specification, [0005], [0008], and [0022]-[0023]), as “organic polishing promoter”; nevertheless, according to the specification of the present Application under examination, the “organic polishing promoter” can be a carboxylic acid. Both oxalic acid and phthalic acid are carboxylic acids. Also, the reference teaches the use of amines (see [0028]) which is another example for the claimed “organic polishing promoter”.
Therefore, it would have been obvious to a person of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have been able to abrade at least a portion of the metal on the surface of the substrate of Jhang motivated by the fact that Jhang teaches a substantially similar, if not the same in many aspects, polishing composition with what is disclosed in the specification of the present Application under examination. Thus, inevitably, it is expected of the disclosed chemical mechanical polishing composition of Jhang to be capable of removing at least a portion of the metal, which can be nickel, of the substrate.
With respect to claim 11, as detailed out above, Jhang teaches the use of compounds such as oxalic acid and phthalic acid, as well as amine compounds such as tri(hydroxymethyl)aminomethane ([0025] and [0028]) in the chemical mechanical polishing composition. Jhang, also, teaches a pH of 7-11 for their polishing composition as well as the use of water ([0013], [0021], and [0025]).
With respect to claim 12, Jhang teaches a pH of 7-11 ([0021]) which overlaps with the claimed range. MPEP 2144.05 states “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).
With respect to claim 13, Jhang discloses the use of about 0.05 wt% or more and about 5 wt% or less of titanium oxide particles in the composition ([0024]).
With respect to claim 16, Jhang teaches the use of pH adjusting agents such as oxalic acid and phthalic acid which are disclosed as “organic polishing promoter” as claimed in claim 16.
With respect to claim 17, Jhang discloses compounds such as tri(hydroxymethyl)aminomethane ([0028]) which is a compound comprising an amine and a hydroxyl.
With respect to claim 18, Jhang teaches compounds such as diethanolamine and triethanolamine ([0027]-[0028]) in their chemical mechanical polishing composition, which are considered ethanolamine.
With respect to claim 20, as noted above, under the rejection of claim 10, Jhang teaches the existence of a dielectric layer such as “silicon oxide” in the substrate to be polished (abstract, [0037]). Therefore, it would have been obvious to a person of ordinary skill in the art, prior to the effective filing date of the claimed invention to have realized that part of said silicon oxide in the substrate is abraded during the method of polishing motivated by the fact that the chemical mechanical polishing composition taught by Jhang is substantially similar, if not the same in at least some aspects, to what is disclosed in the original disclosure of the present Application under examination and claimed in some dependent claims such as claims 11-13 and 16-17.
Claim(s) 3, 9-11, 13, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishitobi.
With respect to claim 3, Ishitobi teaches a content of about 2-20 wt% of finely divided titanium oxide particles (col. 5, lines 1-3). MPEP 2144.05 states “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).
With respect to claim 9, Ishitobi discloses a content of about 1-20 wt% of abrasion promoter (col. 5, lines 10-14) which includes compounds such as malic acid and gluconic acid which are carboxylic acids. An amount of 1 wt% is equivalent to 10,000ppm.
With respect to claim 10, Ishitobi discloses polishing a disc substrate with a pad while an aqueous slurry of the disclosed abrasive composition, which comprises an abrasion promoter such as gluconic acid and malic acid in an amount of 1-20 wt% (i.e. 10,000ppm to 200,000ppm), water, about 2-20 wt% of titanium dioxide particles in the form of rutile and anatase, and wherein the abrasive composition has a pH of 2-5 (abstract, col. 3, lines 2, 10, and col. 3, line 65 to col. 4, line 10; col. 4, lines 23-38 and 54-56). The reference discloses the substrate to be polished to be a magnetic recording disc (abstract; col. 2, lines 60-66; col. 3, lines 1-11; col. 5, lines 34-55) wherein the substrate is plated with materials such as nickel-phosphorus, nickel-copper, or a few other options (col. 5, lines 40-43). Having a contact made between the substrate with the polishing pad and the abrasive composition is inevitable to have the abrading performed; thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have the claimed contacting step as a part of the process of polishing of the reference. Although claim 10 does not claim all the limitations pertaining to the claimed composition, as claimed in the dependent claims and as disclosed in the original disclosure of the present Application under examination (see specification, [0005], [0008], [0014], [0022]-[0024], [0038]-[0039]), as detailed out above, the reference teaches a substantially similar composition compared to what is intended and disclosed in the present Application under examination. Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have achieved the goal of abrading and removing, at least a portion of the nickel on the surface of the substrate motivated by the fact that the reference teaches a substantially similar composition compared to what is disclosed in the original disclosure of the present Application under examination. Thus, the removal of at least a portion of the nickel on the surface of the substrate is inevitable.
With respect to claim 11, as detailed out above, in the rejection of claim 10, Ishitobi teaches Ishitobi discloses polishing a disc substrate with a pad while an aqueous slurry of the disclosed abrasive composition, which comprises an abrasion promoter such as gluconic acid and malic acid, water, titanium dioxide particles in the form of rutile and anatase, and wherein the abrasive composition has a pH of 2-5 (abstract, col. 3, lines 2, 10, and col. 3, line 65 to col. 4, line 10; col. 4, lines 23-38 and 54-56).
With respect to claim 13, Ishitobi discloses the use of about 2-20 wt% of titanium dioxide particles in the form of rutile and anatase (col. 5, lines 1-4).
With respect to claim 19, Ishitobi discloses a content of about 1-20 wt% of abrasion promoter (col. 5, lines 10-14) which includes compounds such as malic acid and gluconic acid which are carboxylic acids, and thus read on the claimed “organic polishing promoter”. An amount of 1 wt% is equivalent to 10,000ppm.
Allowable Subject Matter
Claims 4-5 and 14-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art do not disclose or suggest the cumulative limitations of claims 1 and 4; additionally, the prior art do not disclose or suggest the cumulative limitations of claims 10 and 14.
Conclusion
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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