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 claims 4-5 and 8-9, and the addition of claims 18-19, as filed on June 16, 2026, are acknowledged.
Applicant's arguments, see Remarks filed on June 16, 2026 with respect to amended claim 1 have been fully considered but they are not persuasive.
The Applicant argues that “Chang does not teach or suggest coating abrasive particles with aluminium clusters, as specified in Applicant's claim 1”. However, the only reference to aluminuim cluster in the amended claim 1 is “wherein the abrasive particles have aluminium clusters coated on the surface thereof”. There is no special definition of the aluminium cluster in the claim or in the specification. Actually, the specification clearly states that “[t]he aluminium clusters are not limited in type, and may include a cationic complex containing aluminium. The aluminium clusters may especially include one or more cation complex structures among [Al(OH)]2+, …” (paragraph 0037). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP 2111.01 I. As defined in Cambridge Dictionary, a cluster means “a group of similar things that are close together, sometimes surrounding something”. Based on the plain meaning of the term “cluster”, the coating on silica shown in Fig. 1 of Chang reference is a coating of alumnium clusters. During patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim (see MPEP 2111).
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 1-3, 6-7, 10-12 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (JP2010080842, a machine-translated English version is used) in view of Chang et al. (US20220055180).
Regarding claim 1, Yamada discloses an organic film polishing composition (a polyimide film reads on an organic film, abstract) comprising: abrasive particles (paragraph 0016); potassium octyl phosphate (paragraph 0055); and a solvent (water reads on a solvent, paragraph 0016), wherein octyl phosphate comprises a hydrophilic group and a hydrophobic group having 8 carbon atoms (octyl group reads on a hydrophobic group, phosphate group reads on hydrophilic group, paragraph 0055), wherein surface charge of the abrasive particles is opposite to charge of the hydrophilic group of octyl phosphate (hydrophilic group of phosphate has negative charge, paragraph 0055; surface charge of the abrasive particles is positive, paragraph 0063), wherein a surface of the abrasive particles is positively charged (paragraph 0063), and the hydrophilic group of octyl phosphate is negatively charged (hydrophilic group of phosphate has negative charge, paragraph 0055), wherein the surface of the abrasive particles has aluminium contained therein (alumina, paragraph 0010), and wherein the hydrophilic group of octyl phosphate comprises phosphate (paragraph 0055). Yamada is silent about potassium octyl phosphate being a polishing accelerator; however, it is noted that claim 1 is drawn to a composition claim and a composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable."). Yamada is silent about wherein the abrasive particles have aluminium clusters coated on the surface thereof. However, Yamada discloses that the abrasive particles are at least one selected from alumina and silica (paragraph 0010), including colloidal silica with surface modification (paragraph 0020). Yamada further teaches that the abrasive particles have a positive zeta potential (paragraph 0063). In addition, Chang teaches that silica abrasive particles can be surface modified to have a positive zeta potential (paragraph 0027), by applying a coating of aluminium clusters on the surface of the silica particles (paragraph 0029 and Fig. 1). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to apply a coating of aluminium clusters on the surface of the silica particles as taught by Chang, in order to obtain abrasive particles with a positive zeta potential as needed in the method of Yamada, 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.
Regarding claim 2, Yamada discloses wherein the abrasive particles contain silica (paragraph 0010).
Regarding claim 3, Yamada discloses wherein the abrasive particles contain abrasive particles, a surface of which is modified (paragraph 0020).
Regarding claim 6, Yamada discloses wherein the abrasive particles are included in the organic film polishing composition by 0.2 to 60% by weight (paragraph 0021), which encompasses 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 7, Yamada discloses wherein the hydrophobic group of the polishing accelerator includes a carbon backbone having 8 carbon atoms (octyl, paragraph 0055).
Regarding claim 10, Yamada discloses wherein the content of the polishing accelerator is 5 to 30000 ppm (0.0005 to 3 % by weight, paragraph 0066), which encompasses the range recited in the instant claim.
Regarding claim 11, Yamada discloses wherein a pH of the composition is 1 or above (paragraph 0046), which encompasses the range recited in the instant claim.
Regarding claim 12, Chang discloses wherein the abrasive particles have a zeta potential of 20-80 mV (paragraph 0028).
Regarding claim 14, Yamada discloses wherein the organic film polishing composition is configured for polishing a polymer layer (a polyimide film reads on a polymer layer, abstract).
Regarding claim 15, it is noted that the instant claim is drawn to a composition claim and the limitation in the wherein clause is considered as intended use of the claimed composition/function of the claimed composition. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (intended use of an old composition does not render composition claim patentable); and In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.").
Regarding claim 16, Yamada discloses a polishing method using the organic film polishing composition of claim 1 (paragraph 0069).
Regarding claim 17, Yamada discloses wherein the polishing accelerator is dipotassium octyl phosphate (paragraph 0055).
Regarding claim 18, Chang discloses wherein the aluminium clusters include a cation complex structure comprising [Al(OH)]2+ (paragraph 0034).
Regarding claim 19, Yamada in view of Chang is silent about wherein the aluminium clusters include two or more types of the cation complex structures. However, Chang discloses that the coating is obtained by mixing an aluminium salt, such as aluminium chloride, with colloidal silica dissolved in water (paragraphs 0029 and 0032). Inherently, hydrolysis of an aluminium salt, such as aluminium chloride, results in multiple aluminium clusters including two or more types of the cation complex structures, as evidenced by Zhao et al. (abstract and Tables 2-3, in “Effect of pH on the aluminum salts hydrolysis during coagulation process: Formation and decomposition of polymeric aluminum species”, J. Colloidal and Interfacial Science, vol. 330, year 2009, pages 105-112), and Moon et al. (paragraphs 0027 and 0039, US20210340405).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. (JP2010080842, a machine-translated English version is used) in view of Chang et al. (US20220055180) as applied to claim 1 above in view of Cadien et al. (Handbook of Thin Film Deposition, Elsevier, year 2012, pages 179-219).
Regarding claim 13, Yamada in view of Chang is silent about the composition further comprising biocide. However, Yamada discloses that the composition comprises an organic acid (paragraph 0048). In addition, Cadien teaches that a biocide is added to a polishing composition to prevent the growth of microbes that can thrive in an environment comprising organic acid (the last paragraph in section 7.4.4). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to add a biocide to the polishing composition of Yamada in order to prevent the growth of microbes that can thrive in an environment comprising organic acid as taught by Cadien.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Aveston (“Hydrolysis of the Aluminium Ion: Ultracentrifugation and Acidity Measurements”, J. Chem. Soc., vol. 168, year 1965, pages 4438-4443) teaches that there is little agreement in the literature on the formulae of the species formed by aluminium ion hydrolysis (1st paragraphs on page 4438).
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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