DETAILED ACTION
This is the Office action based on the 18409085 application filed January 10, 2024, and in response to applicant’s argument/remark filed on March 9, 2026. Claims 1-20 are currently pending and have been considered below.
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.
Election/Restrictions
Applicant’s election, with traverse, of Group I, claims 1-16 and 19-20 in the reply filed on March 9, 2026 is acknowledged. Claims 17-18 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
The traversal is on the ground that Examiner fails to show serious burden to examine both inventions, this is not found persuasive because
(a) the fields of search are different for method claims compared to product claims,
(b) the product and the method are examined differently in that the method can be performed to make a different product, and the product can be made by using a different method,
(c) burden is shown by the different classification for the method and the product,
(d) the method and product are different inventions,
(e) restriction is necessary when more than one invention are present, and
(f) applicant fails to show any evidence that the classifications cited by examiner is erroneous.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretations
Claim 1 recites “A polymer nanoparticle, comprising:
a mixture of a hydrophobic polymer and a copolymer comprising both hydrophobic and hydrophilic groups, wherein the hydrophilic group of the copolymer is disposed on an outer surface of the polymer nanoparticle”. For the purpose of examining this will be interpreted as the copolymer comprises at least one hydrophobic group and at least one hydrophilic group, and at least one of the at least one hydrophilic groups is disposed on an outer surface of the polymer nanoparticle.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-11, 13-15 and 19-20 rejected under 35 U.S.C. 103 as obvious over Griffin et al. (U.S. PGPub. No. 20210269594), hereinafter “Griffin”, in view of Small et al. (U.S. PGPub. No. 20050014890), hereinafter “Small”.--Claims 1, 11, 15: Griffin teaches a method for making particles to be used in a slurry ([0005]), comprisingobtaining a polymeric particle formed from hydrophobic polymers, wherein the hydrophobic polymers may comprise an alternating, periodic, statistical, random or block copolymer, such as a copolymer comprising polymethylmethacrylate (PMMA) ([0009]);performing a surface treatment on the polymeric particle to render the surface of the polymeric particle hydrophilic, wherein the surface treatment may comprise gaseous chemistry, wet chemistry, irradiation, or chemical grafting ([0017]). Griffin further teaches that a group of particles may have a median size of less than 100 µm, such as a median size of 1 µm ([0008]). It is noted that this overlaps the range for a nanoparticle, as recited in Claim 15. Griffin further teaches that the surface-treated polymeric particle may be described as having a core of hydrophobic polymer and a hydrophilic outer surface, wherein the core constitutes at least 80-99% of the particle volume ([0007]). In an embodiment, Griffin further teaches that the surface treatment may comprise a plasma containing oxygen, such as ozone, peroxides, oxygen-fluorine (O2/F2) or air fluorine mixtures, and the like, to affix the chemical groups consisting of hydroxyl groups, carbonyl groups, carboxyl groups, and mixtures thereof, thereby modify the surface of the polymeric particle, thus rendering the substrate more polar and hydrophilic ([0018, 0021]). Griffin is silent about a second component of the copolymer comprising polymethylmethacrylate, and fails to teach that the claimed feature that a hydrophilic group of the copolymer is disposed on an outer surface of the polymer. Small, also directed to a slurry for polishing, teaches that the slurry comprises a polymeric particles comprising a hydrophobic copolymer composed of polymethylmethacrylate (PMMA) and polybutylmethacrylate (PBMA) ([0033]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use the hydrophobic copolymer composed of PMMA/PBMA to make the hydrophobic polymeric particle in the invention of Griffin because Griffin teaches that the hydrophobic copolymer comprises PMMA but is silent about the other component of the copolymer, and Small teaches that such copolymer may comprise PMMA/PBMA. It is noted that performing a surface treatment on the polymeric particle by using the oxygen plasma to affix hydroxyl group, carbonyl group and/or carboxyl group to the copolymer composing of PMMA/PBMA at the surface of the polymeric particle would modify at least one hydrogen bond of a copolymer composing of PMMA/PBMA at the surface of the polymeric particle to a hydroxyl group, a carbonyl and/or a carboxyl functional group(s), thus render the surface of the polymeric particle hydrophilic.--Claims 2, 3, 4, 5, 6, 7, 8, 9, 10: It is noted that the copolymer composing of PMMA/PBMA overlaps the polymer and copolymer recited in claim 2, 3, 4, 5, 6, 7, 8, 9, 10. Specifically, the butyl methacrylate monomer matches Chemical Formula 1 where R1=C1 alkyl group, R2 = -(C=O)O-R’ where R’=C4 alkyl group, and the methyl methacrylate monomer matches Chemical Formula 2 where L1 = carbonyl group, R3=alkoxy group, R4= C1 alkyl group, L2=single bond, and R5-R6 = hydrogen.--Claim 13: Griffin further teaches that the surface-treated polymeric particle may be described as having a core of hydrophobic polymer and a hydrophilic outer surface, wherein the core constitutes at least 80-99% of the particle volume ([0007]). It is noted that all of the polymer in the particle are copolymer. Since the particle consists of a hydrophobic core, considered to be made of homophobic polymer, constitutes 80% of the volume of the particle, the shell of the particle, constituting 20% of the volume of the particle, may be considered made of co-polymer. This overlaps the range recited in claim 13.--Claim 14: Although Griffin is silent about an amount of the hydrophilic chemical groups consisting of hydroxyl groups, carbonyl groups, carboxyl groups, and mixtures thereof, that are affixed to the copolymer that modify the surface of the polymeric particle, thus rendering the substrate more polar and hydrophilic, since the amount of the hydrophilic chemical groups is a result-effective variable, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to perform the surface treatment to optimize the amount of the hydrophilic chemical groups that are affixed to the copolymer, such as within the claimed range, because it’s been well established that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. MPEP 2144.05(II)(A).--Claims 19, 20: Griffin further teaches that the polymeric particles may be dispersed in an aqueous solution comprising methanol and acetone to form a slurry ([0025-0026]). It is noted that the aqueous solution may be considered a dispersant.
Claim 16 rejected under 35 U.S.C. 103 as obvious over Griffin in view of Small as applied to claim 1 above, and further in view of Zhou et al. (U.S. PGPub. No. 20140315386), hereinafter “Zhou”.--Claim 16: Griffin modified by Small teaches the invention as above. Griffin and Small are silent about a molecular weight of the copolymer. Zhou, also directed to a method of polishing by using a slurry (abstract, [0014]), teaches that the slurry may comprise polymeric particles made of carboxylic polymers derived from monomers such as acrylic acid, methacrylic acid,…, wherein the carboxylic polymer has a molecular weight of 20,000-10,000,000 ([0040]) Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polymeric particles made of copolymer comprising a methacrylic acid monomer having a molecular weight of 20,000-10,000,000 in the invention of Griffin modified by Small because Griffin and Small are silent about a molecular weight of the copolymer and Zhou teaches that polymer having such molecular weight would be effective.
Claims 1-16 and 19-20 rejected under 35 U.S.C. 103 as obvious over Griffin et al. (U.S. PGPub. No. 20210269594), hereinafter “Griffin”, in view of Jeong et al. (U.S. PGPub. No. 20170335139), hereinafter “Jeong”.--Claims 1, 11, 12, 15: Griffin teaches a method for making particles to be used in a slurry ([0005]), comprisingobtaining a polymeric particle formed from hydrophobic polymers, wherein the hydrophobic polymers may comprise an alternating, periodic, statistical, random or block copolymer, such as a copolymer comprising polymethylmethacrylate (PMMA) ([0009]);performing a surface treatment on the polymeric particle to render the surface of the polymeric particle hydrophilic, wherein the surface treatment may comprise gaseous chemistry, wet chemistry, irradiation, or chemical grafting ([0017]). Griffin further teaches that a group of particles may have a median size of less than 100 um, such as a median size of 1 um ([0008]). It is noted that this overlaps the range for a nanoparticle, as recited in Claim 15. Griffin further teaches that the surface-treated polymeric particle may be described as having a core of hydrophobic polymer and a hydrophilic outer surface, wherein the core constitutes at least 80-99% of the particle volume ([0007]). In an embodiment, Griffin further teaches that the surface treatment may comprise a plasma containing oxygen, such as ozone, peroxides, oxygen-fluorine (O2/F2) or air fluorine mixtures, and the like, to affix the chemical groups consisting of hydroxyl groups, carbonyl groups, carboxyl groups, and mixtures thereof, thereby modify the surface of the polymeric particle, thus rendering the substrate more polar and hydrophilic ([0018, 0021]). Griffin is silent about a method of forming the polymeric particle comprising a copolymer comprising polymethylmethacrylate (PMMA), and fails to teach that the claimed feature that a hydrophilic group of the copolymer is disposed on an outer surface of the polymer. Jeong, also directed to a slurry for polishing, teaches that the slurry comprises a polymeric particles comprising a copolymer comprising polymethylmethacrylate (PMMA), wherein the polymeric particles are made by polymerizing acrylic monomer, wherein the resulting polymeric particles may comprise a copolymer of poly(meth)acrylate (PMA) or poly(methyl (meth)acrylate) (PMMA) ([0029, 0031]) Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polymeric particles comprising a copolymer comprising PMA and PMMA in the invention of Griffin because Griffin is silent about a method of forming the polymeric particle comprising a copolymer comprising PMMA and Jeong teaches that a method of forming a polymeric particle comprising a copolymer comprising PMMA may form a polymeric particle comprising a copolymer comprising PMMA and PMA. It is noted that performing a surface treatment on the polymeric particle by using the oxygen plasma to affix hydroxyl group, carbonyl group and/or carboxyl group to the copolymer composing of PMMA and PMA at the surface of the polymeric particle would modify at least one hydrogen bond of a copolymer composing of PMMA and PMA at the surface of the polymeric particle to a hydroxyl group, a carbonyl and/or a carboxyl functional group(s), thus render the surface of the polymeric particle hydrophilic. It is noted that the copolymer composing of PMMA and PMA overlaps the copolymer represented by Chemical Formula 2-3.--Claims 2, 3, 4, 5, 6, 7, 8, 9, 10: It is noted that the copolymer composing of PMMA and PMA overlaps the polymer and copolymer recited in claim 2, 3, 4, 5, 6, 7, 8, 9, 10. Specifically, the methyl methacrylate monomer matches Chemical Formula 1 where R1=C1 alkyl group, R2 = -(C=O)O-R’ where R’=C1 alkyl group, and the methacrylate monomer matches Chemical Formula 2 where R4=C1 alkyl group, L1= carbonyl group, R3=hydroxyl group, L2=single bond, and R5 and R6=hydrogen. --Claim 13: Griffin further teaches that the surface-treated polymeric particle may be described as having a core of hydrophobic polymer and a hydrophilic outer surface, wherein the core constitutes at least 80-99% of the particle volume ([0007]). It is noted that all of the polymer in the particle are copolymer. Since the particle consists of a hydrophobic core constitutes 80% of the volume of the particle, the shell of the particle, constituting 20% of the volume of the particle, may be considered made of co-polymer. This overlaps the range recited in claim 13.--Claim 14: Although Griffin is silent about an amount of the hydrophilic chemical groups consisting of hydroxyl groups, carbonyl groups, carboxyl groups, and mixtures thereof, that are affixed to the copolymer that modify the surface of the polymeric particle, thus rendering the substrate more polar and hydrophilic, since the amount of the hydrophilic chemical groups is a result-effective variable, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to perform the surface treatment to optimize the amount of the hydrophilic chemical groups that are affixed to the copolymer, such as within the claimed range, because it’s been well established that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”. MPEP 2144.05(II)(A).--Claim 16: Griffin is silent about a molecular weight of the hydrophobic or of the copolymer. Jeong teaches that the polymer may have a weight average molecular weight about 100,000-400,000 g/mole. Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a co-polymer having such molecular weight in the invention of Griffin.--Claims 19, 20: Griffin further teaches that the polymeric particles may be dispersed in an aqueous solution comprising methanol and acetone to form a slurry ([0025-0026]). It is noted that the aqueous solution may be considered a dispersant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (571) 270-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THOMAS T PHAM/Primary Examiner, Art Unit 1713
Prosecution Insights