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 .
DETAILED ACTION
Response to Election/Restrictions
1. Applicant's election with traverse of Group I, claims 1-21, in the reply filed on 02/10/2026 is acknowledged. The traversal is on the ground(s) that “the Action has not shown that a serious burden would be imposed upon the Examiner if all of the claims were searched and examined together.” This is not found persuasive because of the following reasons.
First, this application is a 371 of PCT/US 2022/071708 (filed on 04/14/2022) and the restriction requirement made should had been based on the 371 guidelines. It is considered the technical feature of “a non-spherical primary silica nanoparticles” (of Group II) is not a special technical feature because it is known and taught by Higuchi et al. (US 8,529,787 B2) (See Abstract and col. 23, claim 1). Thus, the claims of Group II would not be rejoined with the elected Group I invention.iiguchi et a
Second, claims 24 & 26 (Group III) are drawn to a chemical mechanical planarization (CMP) composition, which comprises the non-spherical primary silica nanoparticles of Group II. Since the technical feature of Group II is not novel or inventive and taught by the prior art, the claims of Group III invention would not be rejoined with the elected claims.
Third, examination of all three (3) Groups would impose a serious burden on the Office due to three (3) different search areas being required.
For purposes of search and examination on the merits, the restriction is maintained. Applicants are invited to review Chapter 2100 for further information regarding rejoinder of nonelected claims.
The requirement is still deemed proper and is therefore made FINAL.
2. Claims 22-24 & 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/10/2026.
Status of Application
3. This application is a 371 of PCT/US2022/071708, which was filed on 04/14/2022, which has Provisional of 63264912, which was filed on 12/03/2021, which has Provisional of 631775539, which was filed on 04/21/2021.
Claims 1-24 & 26 were originally presented in this application for examination.
Claims 1-24 & 26 are currently pending in this application for examination.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 01/05/2024 has been made of record. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner. An initialed copy of the IDS accompanies this office action.
Specification
5. The examiner has not checked the specification to the extent necessary to determine the presence of all possible minor errors (grammatical, typographical, and idiomatic). Cooperation of the applicant(s) is requested in correcting any errors of which applicant(s) may become aware of in the specification, in the claims and in any further amendment(s) that applicant(s) may file.
Applicant(s) is also requested to complete the status of the copending applications referred to in the specification by their Attorney Docket Number or Application Serial Number, if any.
The status of the parent application(s) and/or any other application(s) cross-referenced to this application, if any, should be updated in a timely manner.
Claim Objections
6. Claims 1-21 are objected to because of the following informalities:
A. In claim 1, step a), “the invention” should change to --the group--.
B. In claim 1, step c), “great than 0, and below 3.0” should change to --greater than 0 and below 3.0--.
C. In claim 1, step f), “by water” should change to --with water--.
D. In claim 2, line 2, “the invention” should change to --the group--.
E. In claims 3-19, line 1, --,-- should be inserted before “wherein”.
F. In claim 3, line 1, “can be” should change to --is--.
G. In claim 6, line 2, “invention” should change to --group--.
H. In claim 7, line 3, “at” should be deleted.
I. In claim 7, line 3, --,-- should be inserted before “based on”.
J. In claim 8, line 2, “at” should be deleted.
K. In claim 8, line 3, --,-- should be inserted before “based on”.
L. In claim 10, line 2, “invention” should change to --group--.
M. In claim 11, line 2, “;” should be deleted.
N. In claim 18, line 3, “invention” should change to --group--.
O. In claim 19, line 2, “invention” should change to --group--.
P. In claim 20, line 2, “;” should be deleted.
R. In claim 20, last 2 lines, “which can be produced by total weight of the reaction mixture” should be deleted (because too wordy and unnecessary).
S. In claim 21, line 2, --,-- should be inserted before “based on”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)(Second Paragraph)
7. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A. Regarding claim 1, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
B. Regarding claim 1, the phrase "such as" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
C. Claims 1-2, 4, 8, 11-12, 14, & 20 are reciting multiple ranges for the water to OR ratios, nitrogen level, reaction temperature, the tetramethyoxysilane, the pH of the reaction mixture, and the weight % of the non-spherical primary silica nanoparticles, a broad range and narrower range within the same claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation “greater than 0, and below 3.0”, and the claim also recites “below 2.0” and “0.5 to 1.5”, which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
D. Regarding claim 1, step a), the claim limitation on “and at least two, preferably at least three of R1, R2, R3, and R4 are OR” is indefinite. See explanation in C above.
E. Regarding claim 1, step a), the claim limitation on “at least one of the at least two organoalkoxysilanes has at least three of, preferably all, R1, R2, R3, and R4 as OR” is indefinite. See explanation in C above.
F. Regarding claim 1, step c), the claim limitation on “greater than 0, and below 3.0, or below 2.0; such as from 0.5 to .5” is indefinite. See explanation in C above.
G. Regarding claim 4, the claim limitation on “a temperature from 30oC to 70oC or from 48oC to 52oC” is indefinite. See explanation in C above.
H. Regarding 8, the claim limitation on “from about 2 to about 25 mol% or 7.5 to 12.5 mole%” is indefinite. See explanation in C above.
I. Regarding claim 11, the claim limitation on “pH of the reaction mixture if from 7 to 14 or 10 to 14” is indefinite. See explanation in C above.
J. Regarding claim 12, the claim limitation on “pH of greater than 8 or greater than 9” is indefinite. See explanation in C above.
K. Regarding claim 14, the claim limitation on “greater than or equal to 1.0 or greater than or equal 2.0” is indefinite. See explanation in C above.
L. Regarding claim 20, the claim limitation on “the non-spherical primary silica nanoparticles is produced at a weight% yield of 3.0 wt.% - 8.0 wt.% or 4.5 wt.% - 6.5 wt.%” is indefinite. See explanation in C above.
Claims 3, 5-7, 9-10, 13, & 15-19 are rejected because they depend on the rejected claims and they do not cure the indefiniteness.
Claim Rejections - 35 USC § 103
8. 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, 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.
Claim(s) 1-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 01-145317 A (Nippon Shokubai Kagaku Kogyo Co., LTD.), “JP ‘317” taken together with Higuchi et al. (US 8,529,787 B2), hereinafter “Higuchi et al. ‘787”.
JP ‘317 discloses a method of preparing spherical fine particles of silica by blending two silane compounds, the method comprising the following steps: tetramethoxysilane (a silane compound (A)) and methytrimethoxysilane (a silane compound (B)) diluted with methanol were added dropwise to a mixture (methanol and ammonia aqueous solution); and hydrolysis was performed to prepare a suspension of silica fine particles (a) organomethanolic solution, wherein the mole concentration of each material is 0.40 mol of tetramethoxysilane, 0.20 mol of phenyltrimethoxysilane, 3.0 mol of water, and 2.0 mol of ammonia (see Example 1 on page 3 of Translation).
Tetramethoxysilane (a silane compound (A)) of JP ‘317 corresponds to one organoalkoxysilane of formula I when R1-R4 = OR (R=unsubstituted linear C1 alkyl group(methyl).
Phenyltrimethoxysilane (a silane compound (B)) of JP ‘371 corresponds to the other organoalkoxysilane of formula I when R1-R3 = OR (R=unsubstituted linear C1 alkyl group(methyl)); R4 = aryl group(phenyl).
The instant claim 1 differs from JP ‘317 in that the silica nanoparticles are being “a non-spherical” shape.
Higuchi et al. ‘787, discloses colloidal silica containing silica secondary particles having a branched and/or bent structure (the branched structure of Higuchi et al. ‘787 corresponds to the non- spherical shape of the claimed invention), wherein the particles of Higuchi et al. ‘787 are prepared by adding a hydrolysis liquid obtained by hydrolysis of an alkyl silicate (e.g. tetramethyl orthosilicate) to the mother liquid (containing an alkali catalyst and water) (see Abstract; claim 5).
Considering that both JP ‘317 and Higuchi et al. ‘787 relate to a method for producing silica particles by hydrolyzing a silane compound, a person skilled in the art would easily derive from Higuchi et al. ‘787 producing silica nanoparticles having a non-spherical shape by changing the reaction conditions.
Regarding the claim feature on “the at least two organoalkoxysilanes having different reaction speeds with water under alkaline conditions”, this appears to be an inherent characteristic in view of the same organoalkoxysilane compounds disclosed in JP ‘371 and claimed (see Example 1 on page 3 of Translation).
Regarding claim 2, Higuchi et al. ‘787 discloses colloidal silica containing silica secondary particles having a branched structure (see abstract; claim 1). Although a nitrogen level of claim 2 is not disclosed in JP ‘317 or Higuchi et al. ‘787, a person skilled in the art can easily arrive at the claimed feature by measuring the nitrogen level considering ammonia used as catalyst in JP ‘317 and Higuchi et al. ‘787 (JP ‘317: Example 1 on page 3 of Translation; Higuchi et al. 787: see claim 5).
The additional feature of claim 3 would be derived by modifying the mixing process of methanol, aqueous ammonia and two silane compounds used in the preparation method of JP ‘317, in accordance with circumstances, if necessary, by a person skilled in the art (see Example 1 on page 3 of Translation).
The additional feature of claim 4 would be derived by a person skilled in the art from JP ‘317, disclosing raising the temperature to 50°C and stirring for 5 hours (see Example 1 on page 3 of Translation). The disclosed temperature is falling within the instantly claimed temperature range of “30oC to 70oC” or “48oC to 52oC”.
The additional feature of claim 5 is merely one of several possibilities from which a person skilled in the art would select or modify, without required of inventive skill, considering JP ‘317 disclosing reacting in the glass reactor with a thermometer (see Example 1 on page 3 of Translation).
The at least two organoalkoxysilanes of claims 6-9 are some of several possibilities from which a skilled person would select, without the inventive skill required, considering JP ‘317 disclosing tetramethoxysilane, tetraethoxysilane, etc. used as the silane compound (A) and methyltrimethoxysilane, ethyltrimethoxysilane, etc. used as the silane compound (B) (see page Example 1 on page 3 of Translation). Also, the mole % or the molar ratio (ROR) of claims 7-9 can be simply controlled and applied by routine experimental means according to experimental conditions by a person skilled in the art considering JP ‘317 disclosing that the mole concentration of each material is 0.4 moles of tetramethoxysilane, 0.2 moles of phenyltrimethoxysilane, 3.0 moles of water/, and 2.0 moles of ammonia (see Example 1 on page 3 of Translation). See also In re Boesch.
The additional features of claims 10-12 would be derived by a person skilled in the art from JP ‘317 and Higuchi et al. ‘787 disclosing ammonia used as catalyst; and Higuchi et al. ‘787 disclosing preparing a mother liquid containing an alkali catalyst and water and having a pH of 9 to 12 (JP ‘317: see Example 1 on page 3 of Translation; Higuchi et al. 787: see claim 5).
The additional feature of claim 13 would be derived by a person skilled in the art from reacting in agitator, drip port and a glass reactor equipped with a thermometer in Example 1 of JP ‘317 (see Example 1 on page 3 of Translation).
The additional feature of claim 14 can be simply controlled and applied by routine experimental means according to experimental conditions by a person skilled in the art considering that the hydrolysis liquid is prepared by hydrolysis of an alkyl silicate with pure water and when tetramethyl orthosilicate is used as the alkyl silicate, an equimolar amount or more of water relative to methoxy group is added so as to allow the reaction to be performed, and to thereby prepare an active silicic acid solution in Higuchi et al. ‘787 (see col. 10, lines 1-20).
The additional feature of claim 15 would be derived by a person skilled in the art from Higuchi et al. ‘787 disclosing that the amount of an alkyl silicate added to water is adjusted so that a final silica concentration of the hydrolysis liquid is generally 1 to 20 wt. % and silica particles are allowed to effectively grow in Higuchi et al. ‘787 (see col. 10, lines 24-29).
The additional feature of claim 16 would be derived by a person skilled in the art from Higuchi et al. ‘787 disclosing that the alcohol remaining in the reaction liquid may be removed by distillation in Higuchi et al. ‘787 (see col. 12, line 44-47).
The additional feature of claim 17 can be appropriately added, if necessary, by a person skilled in the art without the exercise of inventive skill.
The additional features of claims 18, & 19 are not disclosed in JP ‘317 or Higuchi et al. ‘787. However, modifying the surface of the nanoparticles can be appropriately added, if necessary, by a person skilled in the art without the exercise of inventive skill.
Regarding the additional features of claims 20 and 21, the process of synthesizing non- spherical primary silica nanoparticles of claim 1 would have been obvious over JP ‘317 in view of Higuchi et al. ‘787. Accordingly, the additional features of claims 20 and 21 would come within the range if the yields of particles produced from JP ‘317 and Higuchi et al. ‘787 were measured.
Claims 1-21 are unpatentable as being obvious over JP ‘317 in view of Higuchi et al.
Citations
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All references are cited for related art. See PTO-892 Form prepared attached.
US 9,248,383 (discloses a method for production of porous spherical silica nanoparticles from organoalkoxysilanes).
Conclusion
10. Claims 1-24 & 26 are pending. Claims 1-21 are rejected. Claims 22-24 & 26 are withdrawn. No claims are allowed.
Contacts
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner CAM N. NGUYEN whose telephone number is (571)272-1357. The examiner can normally be reached on M-F (8:30 am – 5:00 pm) at alternative worksite or at cam.nguyen@uspto.gov.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer, can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Cam N. Nguyen/Primary Examiner, Art Unit 1736
/CNN/
June 09, 2026
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