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
The amendment made to claim 1, the cancelation of claim 3, the withdrawal of claims 13-14, and the addition of claim 15, as filed on April 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.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on November 27, 2023. It is noted, however, that applicant has not filed a certified copy of the JP2023-199620 application as required by 37 CFR 1.55. The applicant may supply a certified copy of the priority document or file a Request to Retrieve Electronic Priority Application(s) using Form PTO/SB/38. Applicants continue to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. Accordingly, applicants are encouraged to check as necessary to confirm receipt by the Office of appropriate documents. See MPEP 215.02(a).
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 1-2, 4-8, 10-12 and 15 are rejected under 35 U.S.C. 103 as being obvious over Kachi et al. (US20150232705).
Regarding claim 1, Kachi discloses a polishing composition (abstract) comprising: colloidal silica (paragraph 0038), inorganic salt containing no halogen (potassium nitrate, paragraph 0047), and water-soluble polymer (polypropylene glycol, paragraph 0028), wherein a product of a valence number (unit: valency) of anion of the inorganic salt and a concentration (unit: mM) of the anion in the polishing composition is from 10 to 100 (the valence of nitrate anion is 1, the concentration of the anion is from 1g/L to 10g/L, paragraph 0052), and wherein the polishing composition has a pH of 3 to 10. The range for the product and the pH overlap with the corresponding ranges 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 2, Kachi discloses wherein the colloidal silica is anion-modified colloidal silica (colloidal silica with immobilization of sulfonic acid, paragraph 0040).
Regarding claim 4, Kachi discloses wherein a product of a valence number (unit: valency) of anion of the inorganic salt and a concentration (unit: mM) of the anion in the polishing composition is 100 or less (the valence of nitrate anion is 1, the concentration of the anion is 10g/L or less, paragraph 0052).
Regarding claim 5, Kachi discloses wherein a cation of the inorganic salt is a potassium ion, and the anion of the inorganic salt is an oxoacid ion (nitrate ion reads on an oxoaxid ion, paragraph 0047).
Regarding claim 6, Kachi discloses wherein the inorganic salt includes potassium nitrate (paragraph 0047).
Regarding claim 7, Kachi discloses wherein the water-soluble polymer includes a first water-soluble polymer and a second water-soluble polymer, the first water-soluble polymer is a water-soluble polymer having an alcoholic hydroxyl group in a side chain, and the second water-soluble polymer is a water-soluble polymer having a polyoxyalkylene chain (two kinds of water-soluble polymer selected from a list comprising polyvinyl alcohol and polypropylene glycol, paragraphs 0028).
Regarding claim 8, Kachi discloses wherein the first water-soluble polymer is polyvinyl alcohol, and the second water-soluble polymer is polypropylene glycol (two kinds of water-soluble polymer selected from a list comprising polyvinyl alcohol and polypropylene glycol, paragraphs 0028).
Regarding claim 10, Kachi discloses wherein a concentration of the second water-soluble polymer in the polishing composition is 0.01% by mass or more and less than 1% by mass with respect to a total mass of the polishing composition (0.1gL to 10g/L, paragraphs 0032-0033).
Regarding claim 11, Kachi discloses a dispersing medium (water reads on a dispersing medium, paragraph 0034).
Regarding claim 12, Kachi discloses wherein the polishing composition is used for polishing of an object to be polished containing silicon oxide (paragraph 0018).
Regarding claim 15, Kachi discloses wherein the colloidal silica is
anion-modified colloidal silica having sulfonic acid groups covalently immobilized on its surface (paragraph 0040).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kachi et al. (US20150232705) as applied to claim 7 above, in view of Yamasaki et al. (EP4083152).
Regarding claim 9, Kachi is silent about wherein the first water-soluble polymer is butenediol-vinyl alcohol copolymer. However, Kachi discloses wherein the first water-soluble polymer is polyvinyl alcohol (paragraphs 0028). In addition, Yamasaki teaches that polyvinyl alcohol (PVA) and modified PVA such as butenediol vinyl alcohol can be used in a polishing composition (paragraphs 0018 and 0046). 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 modified PVA such as butenediol vinyl alcohol as taught by Yamasaki for the PVA in the polishing composition of Kachi, with a reasonable expectation of success. It has been held that substituting equivalents known for the same purpose is obvious. See MPEP 2144.06 II.
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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