DETAILED ACTION
Claims 1-9, 12-14, 16, 18-21, 23 and 25-26 are pending before the Office for review.
In the response filed January 20,2026:
Claim 8 was amended.
No new matter is present.
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 .
Election/Restrictions
Claims 1-7, 14, 16, 18-21, 23 and 25-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 20, 2026.
Applicant's election with traverse of Group II (claims 8-9 and 12-13) in the reply filed on January 20, 2027 is acknowledged. The traversal is on the ground(s) that the groups require the same technical feature and therefore it would not be a serious burden to search all the groups. This is not found persuasive because a search of all the groups would be an undue burden on the examiner since (1) the technical feature shared by the group is not a special technical feature in light of the teachings of Lan et al (U.S. Patent Application Publication 2015/0380263) and (2) a search of all the groups would place an undue burden on the Examiner as additional search terms, classes and queries would be necessary to thoroughly search the various non-overlapping limitations present in each group. Therefore since the claims do not share a special technical feature in view of the prior art of Lan and a search would be an undue burden on the Examiner, the Examiner maintains the restriction.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 12 is objected to because of the following informalities: Claim 12 line 9 the word “and” should be delete between ‘… poly 3-butyl-1H-imidazol-3-ium acetate, and poly 3-(2,2'-(ethane-1,2-diylbis(oxy))bis(ethane)-1H-imidazol-3-ium acetate..” in order to put the group in appropriate form. Appropriate correction is required.
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.
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.
Claim 9 is 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 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 9 recites the broad recitation “between 1and 14”, and the claim also recites “1 and 6” which is 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.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries 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 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over LAN et al (U.S. Patent Application Publication 2015/0380263).
With regards to claim 8, Lan discloses a chemical mechanical polishing composition comprising an additive including one or more polymers selected from a group consisting of n-vinyl homopolymers and n-vinyl copolymers (Paragraph [0046]), an abrasive (Paragraphs [0033]-[0044], water (Paragraphs [0032], [0078]) and optionally an oxidizing agent (Paragraph [0086]-[0087]); a corrosion inhibitor (Paragraph [0090]) and a pH adjusting agent (Paragraph [0093]).
Lan does not explicitly disclose an imidazolium based poly(ionic liquid) comprising at least one monomer having at least one imidazolium group with structure 1.
However Lan discloses wherein the polymers are obtained from one or more monomers including 3-methyl-1-vinylimidazolium chloride (Paragraphs [053]-[0054]) which renders obvious Applicant’s claimed imidazolium based poly(ionic liquid) comprising at least one monomer having at least one imidazolium group with structure 1 wherein condition B is satisfied wherein the halide group is chlorine.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the embodiment composition of Lan to include the 3-methyl-1-vinylimidazolium chloride (imidazolium based poly(ionic) liquid) as taught by the general disclosure of Lan because one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing composition using the imidazolium based poly(ionic liquid) (3-methyl-1-vinylimidazolium chloride) as rendered obvious by the general disclosure of Lan. MPEP 2143D
With regards to claim 9, the modified teachings of Lan renders obvious wherein the abrasive selected from the group consisting of inorganic oxide particles the abrasive ranges from 0.4 wt% to about 30 wt% (Paragraphs [0033]-[0041] discloses colloidal silica particles) which renders obvious 0.5 wt.% to 20 wt.%; the oxidizing agent is selected from the group consisting of peroxy compound selected from the group consisting of hydrogen peroxide (Paragraph [0086]) and the oxidizing agent ranges from about 1 to 5 wt% (Paragraph [0087]) which renders obvious 0.1 wt.% to 10 wt.% and the pH adjusting agent is selected from the group consisting of (a)nitric acid, sulfuric acid, and mixtures thereof to lower the pH; and (b) potassium hydroxide, sodium hydroxide, ammonia, mixtures thereof to raise the pH (Paragraph [0093]); and pH of the composition is preferably from 2 to 6 (Paragraph [0092]) which renders obvious between 1 and 14, or 1 and 6. 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). MPEP 2144.05(I)
Allowable Subject Matter
Claims 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of Lan et al (U.S. Patent Application Publication 2015/0380263) renders obvious the composition with regards to claim 8. However the cited prior art fails to teach or render obvious the imidazolium based poly(ionic liquid) as presented in claims 12 and 13. A further search of the prior art has failed to produce analogous art which teaches or renders obvious Applicant’s claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE P. DUCLAIR whose telephone number is (571)270-5502. The examiner can normally be reached 9-6:30 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached at 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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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713