DETAILED ACTION
This is the Office action based on the 18409615 application filed January 10, 2024. Claims 1-10 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.
Claim Interpretations
Claim 1 recites “A chemical mechanical polishing solution for metal and metal nitride substrates comprising: a solvent; functionalized carbon-based particles having oxygen-containing functional groups, the functionalized carbon-based particles having oxygen-containing functional groups react with a peroxy moiety to increase oxygen to carbon atomic ratio on the functionalized carbon-based particles, the functionalized carbon-based particles containing at least 10 weight percent of an sp3-containing structure, wherein the functionalized carbon-based particles include at least 0.01 atomic percent oxygen and wherein a surface of the functionalized carbon-based particles has an atomic oxygen to carbon ratio of at least 0.01; a silica abrasive; a Fenton's catalyst or reagent; and a corrosion inhibitor.” (emphasis added)- According to Encyclopedia Britannica, the definition of the term “solution” is “solution, in chemistry, a homogenous mixture of two or more substances in relative amounts that can be varied continuously up to what is called the limit of solubility. The term solution is commonly applied to the liquid state of matter, but solutions of gases and solids are possible. Air, for example, is a solution consisting chiefly of oxygen and nitrogen with trace amounts of several other gases, and brass is a solution composed of copper and zinc.”. Thus, for the purpose of examining the term “solution” recited in claim 1 will be interpreted accordingly. It is noted that this requires the solvent, the functionalized carbon-based particles, the silica abrasive, the Fenton's catalyst or reagent and the corrosion inhibitor forming a homogenous mixture.- The claim is drawn to a chemical composition, and as such will be examined under such conditions. The process of forming the composition and using the composition, or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight. (Please see MPEP 2114 R1-2115 R2 for further details). It has been held that claim language that simply specifies an intended use or field of use for the invention generally will not limit the scope of a claim (See MPEP 2106; Walter, 618 F.2d at 769, 205 USPQ at 409). Particularly, the process of making the composition is viewed as directed to a product-by-process claim and is given little patentable weight. “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Please see MPEP 2113 for further details.
Claim Objections
Claim 1 recites “A chemical mechanical polishing solution for metal and metal nitride substrates comprising: a solvent; functionalized carbon-based particles having oxygen-containing functional groups, the functionalized carbon-based particles having oxygen-containing functional groups react with a peroxy moiety to increase oxygen to carbon atomic ratio on the functionalized carbon-based particles, the functionalized carbon-based particles containing at least 10 weight percent of an sp3-containing structure, wherein the functionalized carbon-based particles include at least 0.01 atomic percent oxygen and wherein a surface of the functionalized carbon-based particles has an atomic oxygen to carbon ratio of at least 0.01; a silica abrasive; a Fenton's catalyst or reagent; and a corrosion inhibitor.” (emphasis added) The terms “the functionalized carbon-based particles” in lines 5 and 6 appear to refer to the functionalized carbon-based particles having oxygen-containing functional groups in Line 3. Examiner suggests to change them to “the functionalized carbon-based particles having oxygen-containing functional groups”. This also applies to the term “the functionalized carbon-based particles” recited in claims 3, 5, 9 and 10.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628, published as U.S. PGPub. No. 20250223468. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of copending Application No. 18409628 teaches the same polishing composition as in claim 1, except for the silica abrasive and the Fenton’s catalyst or reagent. However, copending Application No. 18409628 discloses silica abrasive in paragraph [0022] and a Fenton’s catalyst in paragraph [0016]. Similarly, Claim 2 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628 because copending Application No. 18409628 discloses an azole corrosion inhibitor in paragraph [0020]. Similarly, Claim 3 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628 because copending Application No. 18409628 discloses the surface of the functionalized carbon-based particles includes a graphene in paragraph [0017]. Similarly, Claim 4 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628 because copending Application No. 18409628 discloses the oxygen-containing functional group is a COOH in paragraph [0051]. Similarly, Claim 5 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628 because copending Application No. 18409628 discloses the functionalized carbon-based particles also include an amine (NH2) group in paragraph [0014]. Similarly, Claim 6 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628 because copending Application No. 18409628 discloses the metal and metal nitride is selected from the group consisting of cobalt, copper, molybdenum, tungsten, titanium nitride and tantalum nitride in paragraph [0005]. Similarly, Claim 7 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628 because copending Application No. 18409628 discloses the polishing solution includes hydrogen peroxide as the peroxy moiety and wherein the solution contains at least 0.5 µM hydroxyl radical in paragraph [0019 and 0023]. Similarly, Claim 8 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628 because copending Application No. 18409628 discloses he Fenton's catalyst or reagent is iron in paragraph [0016 and 0057]. Similarly, Claim 9 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628 because copending Application No. 18409628 discloses the functionalized carbon-based particles contain at least 30 weight percent sp3-containing structure in Claim 10 and in paragraph [0015]. Similarly, Claim 10 provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of copending Application No. 18409628 because copending Application No. 18409628 discloses the functionalized carbon-based particles contain at least 50 or 60 weight percent sp3-containing structure paragraph [0015]. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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/THOMAS T PHAM/Primary Examiner, Art Unit 1713