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 2, 13 and 18, the withdrawal of claims 1-12, and the cancelation of claim 23, as filed on February 17, 2026, are acknowledged.
The amendments made to claims 2 and 18 are responsive. The previous objection to the claims, as set forth in the Office Action mailed on November 14, 2025, has been withdrawn.
Applicant's arguments, see Remarks filed on February 17, 2026, with respect to amended claim 13 have been fully considered but they are not persuasive.
The Applicant argues that “Kim makes no teaching of an abrasive having an isoelectric point above 8 wherein the pH of the composition is below about 6”. However, Kim does teach an abrasive having an isoelectric point of about 6 to about 10 (claim 6) wherein the pH of the composition is from about 4 to about 7 (claim 1). The range for pH of the composition is within the range recited in the amended claim 13, while the range for isoelectric point disclosed by Kim overlaps with the range recited in the amended claim 13. 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).
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 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (US20240400862) in view of Kim et al. (US20220112401).
Regarding claim 13, Mori discloses a method of chemically-mechanically polishing a substrate (claim 11) comprising: (i) providing a substrate, wherein the substrate comprises a silicon carbide layer on a surface of the substrate (paragraph 0110 and claim 10), (ii) providing a polishing pad (paragraph 0103), (iii) providing a chemical-mechanical polishing composition (claim 11) comprising: (a) an abrasive particle having a Mohs hardness of less than 8 (claim 1); (b) an ionic oxidizer (sodium permanganate, paragraph 0020); and (c) water (paragraph 0075), wherein the chemical-mechanical polishing composition has a pH of about 1 to about 6 (claim 8), and the ionic oxidizer has a negative charge at the pH of the chemical-mechanical polishing composition (sodium permanganate, paragraph 0020), (iv) contacting the substrate with the polishing pad and the chemical-mechanical polishing composition (paragraphs 0102-0108), and (v) moving the polishing pad and the chemical-mechanical polishing composition relative to the substrate to abrade at least a portion of the substrate to polish the substrate (paragraphs 0102-0109, claim 11). The range for the Mohs hardness disclosed by Mori 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).
Mori is silent about the abrasive particle has an isoelectric point that is higher than 8. However, Mori discloses that the abrasive particle used in the polishing process has a Mohs hardness of less than 8 and contains silica (claims 1 and 3). In addition, Kim teaches an abrasive particle used in a polishing process that has a Mohs hardness of less than 8 and contains silica (colloidal silica modified with an aminosilane, paragraphs 0041-0042 (which has a Mohs hardness of approximately 5.5 to 6, as evidenced by attached Google search result, NPL-Google-Search on Mohs Hardness) has an isoelectric point of about 6 to about 10 (paragraph 0042). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to use a known abrasive particle having an isoelectric point of about 6 to about 10 with a Mohs hardness of less than 8 and containing silica as taught by Kim in the method of Mori, with a reasonable expectation of success. It has been held that combining prior art elements according to known methods to yield predictable results is obvious. See MPEP 2143 I.(A). The range for the isoelectric point disclosed by Kim 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 claim 14, Mori discloses wherein the polishing composition has a pH of about 1 to about 6 (claim 8).
Regarding claims 15-16, Mori discloses wherein the polishing composition comprises about 0.1 wt.% to about 5 wt.% of the abrasive particle (paragraph 0044).
Regarding claim 17, Mori discloses wherein the abrasive particle has a Mohs hardness of less than 8 (claim 1), which encompasses the range recited in the instant claim.
Regarding claim 18, Kim discloses wherein the abrasive particle has an isoelectric point of about 6 to about 10 (claim 6), which encompasses the range recited in the instant claim.
Regarding claim 19, Mori in view of Kim discloses wherein the abrasive particle comprises silica (Mori, claim 3; Kim, paragraph 0041).
Regarding claim 20, Kim discloses wherein the abrasive particle comprises surface-modified colloidal silica (paragraph 0041).
Regarding claim 21, Mori discloses wherein the ionic oxidizer is a permanganate (sodium permanganate, paragraph 0020).
Regarding claim 22, Mori discloses wherein the polishing composition further comprises an inorganic salt, wherein the inorganic salt is an aluminum-based inorganic salt (aluminum nitrate, paragraph 0065).
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
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