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 .
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.
Claims 1 and 3-13 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.
In claim 1, line 3, the claim requires the inclusion of “additives” in the plural. Claim 1, line 11, defines an “additive” of “being at least one” selected from the Markush group. This definition of “additive” in the singular implies that other additives are present that have not been defined. It is unclear whether more than one additive is required or simply one additive selected from the Markush group. For purposes of the rejection, the claim is treated as requiring at least one additive, open to having additional additives, but not requiring more than one additive.
Claims 2-13 fail to cure the indefiniteness of the base claim and are therefore also rejected.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
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.
Claims 1 and 3-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al (US 2022/0348791 A1).
Suzuki discloses a polishing composition (see abstract) consisting of
abrasive grains having a negative zeta potential (“a negative zeta potential regardless of surface modification…larger absolute value of zeta potential than unmodified abrasive grains” [0022]) in the polishing composition, and
a polyalkylene oxide compound [0032], a dispersing medium [0122] and additives [0015] (see explanation of additives below with reference to the Markush group listing of additives), wherein the polyalkylene oxide compounds is represented by formula (1) (see Formula (I) of Suzuki, [0032]), wherein R1 and R3 represent a hydrogen atom; R2 represents a tetramethylene (e.g., polybutylene glycol, [0039], which is polytetramethylene oxide), and n is within the cited range (because the molecular weight is 300 or higher, [0042]),
and having a pH of less than 6 [0120], which is within the cited range.
As to the additives, Suzuki discloses that the composition may optionally contain a “water-soluble polymer having no alcoholic hydroxyl group in a side chain” [0054]-[0055] or a “water-soluble polymer having a lactam structure” [0078]-[0079]. These are optional additives and therefore not required in the composition. Moreover, if added to the composition, these read on claim 1’s additive of “a water-soluble polymer other than the polyalkylene oxide compound represented by formula (1)” and are therefore encompassed by the language of claim 1.
Suzuki also discloses that the composition may optionally contain a “polyvalent carboxylic acid (salt)” [0087]-[0088]. Suzuki discloses that the polyvalent carboxylic acid (salt) is also a pH adjusting agent [0098]. Accordingly, the polyvalent carboxylic acid (salt) is an optional additive, and even if included, is encompassed by the pH adjuster additive as in amended claim 1.
Suzuki also discloses that the composition includes an oxidizing agent [0102]-[0103] such as sulfuric acid [0104] among a list of acids. Oxidizing agents of acids adjust the pH to acidic ranges [0114]. Applicant has also described sulfuric acid as a pH adjusting agent in the instant specification (page 15, line 25). Accordingly, the oxidizing agent is an additive of a pH adjusting agent, and is encompassed claim 1.
As to claim 3, Suzuki discloses a weight-average molecular weight of 3000 or lower [0042].
As to claim 4, Suzuki discloses that abrasive grains are contained in an amount of 0.01% by mass or higher, or particularly preferably 0.5% by mass or higher [0029], and 20% by mass or lower, more preferably 10% by mass or lower [0029]. This range overlaps with the cited range and discloses the claimed range with sufficient specificity. MPEP 2131.03.
As to claim 5, Suzuki discloses an average secondary particle size of 20 nm or more [0026] and particularly preferably 100 nm or smaller [0026]. This range overlaps with the cited range and discloses the claimed range with sufficient specificity. MPEP 2131.03.
As to claim 6, Suzuki discloses that the abrasive grains are an anion-modified colloidal silica [0023].
As to claim 7, Suzuki discloses a pH is particularly preferably 2 or more [0121] and preferably 5 or less [0121].
As to claim 8, Suzuki discloses to include an organic acid or an inorganic acid as a pH adjusting agent [0114].
As to claim 9, Suzuki discloses that the object to be polished contains silicon nitride and polycrystalline silicon [0135]. This limitation is given little patentable weight because the polishing composition of Suzuki is capable of being used in applications where an object to be polished contains silicon nitride and polycrystalline silicon.
As to claim 10, the ratio of polishing rates is a method limitation of intended use that is given little patentable weight in composition claims. The composition of Suzuki is the same as that claimed, and therefore the same results are expected. MPEP 2112.01 II.
As to claim 11, Suzuki discloses polishing an object containing silicon nitride and polycrystalline silicon [0135].
Claim Rejections - 35 USC § 102, 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.
Claims 12-13 are rejected under 35 U.S.C. 102(a)(1) or 35 U.S.C. 103 as being unpatentable over Suzuki et al (US 2022/0348791 A1), as applied to claim 1, and further in view of Kim et al (US 2022/0325079 A1).
As to claims 12-13, Suzuki fails to disclose the electrical conductivity. Kim teaches that in polishing slurries (abstract) with a negative zeta potential [0142], that the electrical conductivity is zero to 1 mS/cm [0141], which overlaps or is close to the cited ranges. Kim teaches a different polishing solution for a different purpose, but nonetheless is a general teaching that electrical conductivity is a known property of solutions with values within or close to the cited range.
The examiner is unable to determine the electrical conductivity of the composition of Suzuki. However, the electrical conductivity is expected to be the same as cited because the composition is the same. MPEP 2112.01, II (If the composition is physically the same, it must have the same properties).
Therefore, one would expect that the cited electrical conductivity is inherently present in the composition of Suzuki.
However, the examiner cannot determine whether or not the reference inherently possesses the cited electrical conductivity.
The burden thus shifts to the applicant to prove that the composition of Suzuki does not necessarily or inherently possess the characteristics including the electrical conductivity. See MPEP 2112 V.
In the alternative, it would have been obvious to one with ordinary skill in the art at the time the invention was made to provide the cited electrical conductivity in the composition of Suzuki because Kim teaches that electrical conductivity is a known property and values within or close to the cited range are useful for polishing compositions.
Response to Amendment
The rejection of claim 10 under 35 USC 112 has been withdrawn in view of the amendment providing proper antecedent basis to , the terms “the silicon nitride” and “the polycrystalline silicon.”
Claims 1 and 3-13 are rejected under 35 U.S.C. 112(b).
Claims 1 and 3-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al (US 2022/0348791 A1).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al (US 2022/0348791 A1), as applied to claim 1, and further in view of Kim et al (US 2022/0325079 A1).
Response to Arguments
Applicant's arguments filed April 16, 2026, have been fully considered but they are not persuasive, to the extent they still apply.
It is acknowledged that Suzuki requires an oxidizing agent. However, the oxidizing agent also serves as a pH adjusting agent, and thus reads on the additives as broadly claimed. Even applicant uses sulfuric acid as a pH adjusting agent (see rejection above). A component can serve dual purposes, and still read on the claim. In other words, sulfuric acid can serve as both an oxidizing agent and a pH adjusting agent, therefore a claim directed to one (pH adjusting agent) is open to including the other (oxidizing agent).
It is acknowledged that Suzuki may include a water-soluble polymer, but these too read on the additives listed in claim 1 (see rejection above).
Applicant highlights Table 1 in the instant specification. Table 1 does not appear to include the combination of polymers as in Suzuki, so it is unclear how the results extend to Suzuki, Moreover, new claim 12 encompasses electrical conductivities of Comparative Example 4, so even if unexpected results were present, which is not admitted, they are not commensurate in scope with the claim language.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
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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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/ANITA K ALANKO/Primary Examiner, Art Unit 1713
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