DETAILED ACTION
This is the Office action based on the 18423589 application filed January 26, 2024, and in response to applicant’s argument/remark filed on January 12, 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, without traverse, of the invention of Group I, claims 1-10 and 13-20 in the reply filed on January 12, 2026 is acknowledged. Claims 11 and 12 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claim Interpretations
Applicant has elected Group I, which is drawn to a chemical composition, in response to the Election/Restriction requirement. The claims are 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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 3 and 13 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. --Claim 3 recites “The polishing composition according to claim 1, wherein in the abrasive grains, Vs/Vt is 3.5 or less, where Vs is a volume-based frequency at a particle size (Ds) on the small particle size side and Vt is a volume-based frequency at a particle size (Dt) on the large particle size side for the particle size with the largest volume-based frequency and the particle size with the second largest volume-based frequency in the two or more local maximum points at different particle sizes”. Since the claim fails to define the metes and bounds of the terms “small particle size side” and “large particle size side”, and the terms "small" and “large” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, one of skill in the art would not be clear how to select the Vs and Vt. For the purpose of examining it will be assumed that any particle size may be considered small or large.--Claim 13 recites “The polishing composition according to claim 2, wherein in the abrasive grains, Vs/Vt is 3.5 or less, where Vs is a volume-based frequency at a particle size (Ds) on the small particle size side and Vt is a volume-based frequency at a particle size (Dt) on the large particle size side for the particle size with the largest volume-based frequency and the particle size with the second largest volume-based frequency in the two or more local maximum points at different particle sizes”. Since the claim fails to define the metes and bounds of the terms “small particle size side” and “large particle size side”, and the terms "small" and “large” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, one of skill in the art would not be clear how to select the Vs and Vt. For the purpose of examining it will be assumed that any particle size may be considered small or large.
Claim Rejections - 35 USC § 102/35 USC § 103
The following is a quotation of 35 U.S.C. 102:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention..
The following is a quotation of 35 U.S.C. 103:
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.
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 1-6 and 13-16 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Knight et al. (U.S. PGPub. No. 20200251342), hereinafter “Knight”.
--Claims 1, 5: Knight teaches a multi-modal slurry for polishing hard surface (abstract). Knight further teaches that the multi-modal slurry may comprise a first diamond abrasive and a second diamond abrasive. The first diamond abrasive may have a first particle size, and the second diamond abrasive may have a second particle size. The first particle size of the first diamond abrasive may be smaller than the second particle size of the second diamond abrasive, or vice versa ([0007-0020]), wherein the first particle size may be 0.5 um and the second particle size may be 1-3 um ([0013]); In another embodiment Knight discloses that the first particle size may be 0.5 um and the second particle size may be 1 um or 3 um ([0016]). It is noted that diamond has a hardness of 10 on the Mohs scale. Alternately, although Knight does not disclose the slurry having two or more local maximum points at different particle sizes in a volume-based particle size distribution measured by a porous electrical resistance method, since Knight teaches that the slurry is a multi-modal composition containing the first particle size of 0.5 um and the second particle size of 1 um or 3 um it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, that the slurry has a first local maximum point at 0.5 um and a second local maximum point at 1 um in a volume-based particle size distribution measured by a porous electrical resistance method. It is noted that Applicant has elected Group I, which is drawn to a chemical composition, in response to the Election/Restriction requirement. The claims are 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).--Claims 2, 3, 4, 13, 14, 15: Knight further teaches that the concentration of the diamond abrasives in the slurry may be 80 ct/gallon, wherein the first particle size of 0.5 microns is 17 ct/gallon, and the second particle size of 3 microns is 63 ct/gallon ([0014]). It is noted that this overlaps the claimed ranges in claims 2-4 and 13-14.--Claims 6, 16: Knight further teaches that the diamond abrasive may be made of polycrystalline diamond ([0039]).
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 1-10 and 13-20 rejected under 35 U.S.C. 103 as obvious over Phua et al. (CN103013345), hereinafter “Phua”, in view of Knight: --Claims 1, 5, 7, 8, 9: Phua teaches a chemical mechanical polishing composition for polishing a SiC substrate (abstract), comprisingdiamond abrasive ([0002])oil as a solvent ([0005, 0011]);surfactant ([0007]), such as polyoxyethylene sorbitan fatty acid ester ([0012]);wetting agent ([0005, 0010];
dispersing agent ([0005, 0008]);pH regulating agent ([0005, 0009]). Phua further teaches that the diamond abrasive is a diamond micro powder having polycrystal structure and diameter 1-9 um ([0014]), but is silent about a size distribution. Knight, also directed to polishing a SiC substrate by using a polishing composition comprising diamond abrasives (abstract), teaches that the composition may comprise a first diamond abrasive and a second diamond abrasive. The first diamond abrasive may have a first particle size, and the second diamond abrasive may have a second particle size. The first particle size of the first diamond abrasive may be smaller than the second particle size of the second diamond abrasive, or vice versa ([0007-0020]), wherein the first particle size may be 0.5 um and the second particle size may be 1-3 um ([0013]); In another embodiment Knight discloses that the first particle size may be 0.5 um and the second particle size may be 1 um or 3 um ([0016]). Knight further teaches that the multi-modal composition advantageously provides a high material removal rate ([0003-0004, 0008, 0012]). 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 multi-modal diamond abrasives taught by Knight instead of the diamond micro powder in the invention of Phua because Knight teaches that this would improve the polishing rate. It is noted that diamond has a hardness of 10 on the Mohs scale. Although Knight does not disclose the slurry having two or more local maximum points at different particle sizes in a volume-based particle size distribution measured by a porous electrical resistance method, since Knight teaches that the slurry is a multi-modal composition containing the first particle size of 0.5 um and the second particle size of 1 um or 3 um it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, that the slurry has a first local maximum point at 0.5 um and a second local maximum point at 1 um in a volume-based particle size distribution measured by a porous electrical resistance method. It is noted that Applicant has elected Group I, which is drawn to a chemical composition, in response to the Election/Restriction requirement. The claims are 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).--Claims 2, 3, 4, 13, 14, 15, 17, 18, 19, 20: Knight further teaches that the concentration of the diamond abrasives in the slurry may be 80 ct/gallon, wherein the first particle size of 0.5 microns is 17 ct/gallon, and the second particle size of 3 microns is 63 ct/gallon ([0014]). It is noted that this overlaps the claimed ranges in claims 2-4 and 13-14.--Claims 6, 16: Knight further teaches that the diamond abrasive may be made of polycrystalline diamond ([0039]). --Claim 10: It is noted that polyoxyethylene sorbitan fatty acid ester is a polyoxyethylene fatty acid ester.
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