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.
Election/Restrictions
Applicant’s election without traverse of claims 1-12 in the reply filed on November 6, 2025 is acknowledged. Claims 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
An attempt by the Office to electronically retrieve, under the priority document exchange program, the foreign application 2023-199620 filed in Japan to which priority is claimed has FAILED on 06/27/2024. 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 1-8 and 10-12 are rejected under 35 U.S.C. 103 as being obvious over Kamimura (US20100167547).
Regarding claim 1, Kamimura discloses a polishing composition (a polishing liquid reads on a polishing composition, paragraph 0018) comprising: colloidal silica (paragraph 0071), inorganic salt containing no halogen (ammonium nitrate, paragraph 0078; sodium carbonate, paragraph 0114), and water-soluble polymer (paragraph 0117), 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 0.2 to 2000 (the valence of carbonate anion is 2, the concentration of the anion is from 0.0001 mol to 1.0 mol with respect to 1 liter of the polishing liquid, paragraph 0115), which 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 2, Kamimura discloses wherein the colloidal silica is anion-modified colloidal silica (a negative z Potential of colloidal silica achieved by adjusting ion strength using carboxylic acid, paragraph 0078).
Regarding claim 3, Kamimura discloses wherein a pH is 5.0 or more and less than 8.0 (paragraph 0110), which overlaps with the range recited in the instant claim.
Regarding claim 4, Kamimura 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 from 0.2 to 2000 (the valence of carbonate anion is 2, the concentration of the anion is from 0.0001 mol to 1.0 mol with respect to 1 liter of the polishing liquid, paragraph 0115), which overlaps with the range recited in the instant claim.
Regarding claim 5, Kamimura discloses wherein a cation of the inorganic salt is a potassium ion or an ammonium ion, and the anion of the inorganic salt is an oxoacid ion (sulfate reads on an oxoaxid ion, paragraph 0078).
Regarding claim 6, Kamimura discloses wherein the inorganic salt includes ammonium sulfate (paragraph 0078).
Regarding claim 7, Kamimura 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 0117-0118 and 0124).
Regarding claim 8, Kamimura 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 0117-0118 and 0124).
Regarding claim 10, Kamimura discloses wherein a concentration of the second water-soluble polymer in the polishing composition is 0.1% by mass or more and less than 5% by mass with respect to a total mass of the polishing composition (0.01g to 5g with respect to a liter of the polishing liquid, paragraph 0125).
Regarding claim 11, Kamimura discloses a dispersing medium (water reads on a dispersing medium, paragraph 0057).
Regarding claim 12, Kamimura discloses wherein the polishing composition is used for polishing of an object to be polished containing silicon oxide (paragraph 0135).
Claims 1, 4-5, 7, 9 and 11 are rejected under 35 U.S.C. 103 as being obvious over Yamasaki et al. (EP4083152).
Regarding claim 1, Yamasaki discloses a polishing composition (abstract) comprising: colloidal silica (paragraph 0016), inorganic salt containing no halogen (potassium carbonate, paragraph 0025), and water-soluble polymer (paragraph 0018), 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 0.007 to 290 (the valence of carbonate anion is 2, the concentration of the anion is from 0.001 to 0.10 of the abrasive, which accounts for 0.1 to 20% by mass of the entire polishing composition, paragraphs 0017 and 0027), which 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 4, Yamasaki 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 from 0.007 to 290 (the valence of carbonate anion is 2, the concentration of the anion is from 0.001 to 0.10 of the abrasive, which accounts for 0.1 to 20% by mass of the entire polishing composition, paragraphs 0017 and 0027).
Regarding claim 5, Yamasaki discloses wherein a cation of the inorganic salt is a potassium ion or an ammonium ion, and the anion of the inorganic salt is an oxoacid ion (carbonate reads on an oxoaxid ion, paragraph 0025).
Regarding claim 7, Yamasaki 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 (a mixture of two water-soluble polymer selected from a list comprising polyvinyl alcohol (PVA), modified PVA, and polyoxyethylenemethylglucoside, paragraphs 0018 and 0021).
Regarding claim 9, Yamasaki discloses wherein the first water-soluble polymer is butenediol-vinyl alcohol copolymer (butenediol-vinyl alcohol copolymer is an example of modified PVA, paragraphs 0018 and 0046).
Regarding claim 11, Yamasaki discloses a dispersing medium (water reads on a dispersing medium, paragraph 0015).
Conclusion
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