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 .
Claims 1-17 are pending
Claim 9 is withdrawn
Claims 1-8 and 10-17 are under consideration
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-8 and 10-17 in the reply filed on 08/28/2026 is acknowledged.
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/28/2026.
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 10-12 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.
Claim 10 recites the limitation " the polishing composition" lines 7-8 on page 3 of the claims. There is insufficient antecedent basis for this limitation in the claim.
Claims 11 and 12 depend on claim 10 and do not cure the deficiency noted above and are therefore rejected for the same reason.
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 1, 2, 4, 5, 7, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Murata (JP 2008-255232 A) in view of Bouvy et al. (US 6,582,505 B1).
Regarding claim 1, Murata teaches a polishing composition comprising abrasives, a hydrophobic dispersion medium, water, and a surfactant (Murata teaches an abrasive composition comprising abrasive particles, lubricating oil, an organic solvent, a surfactant, a thickener, and water; paragraphs [0005], [0008]).
Murata teaches the abrasives (teaching abrasive particles including alumina, silica, kaolin, cerium oxide, titania, zirconia, germania, manganese dioxide, iron oxide, tin oxide, silicon carbide, boron carbide, tungsten carbide, carbon black, and diamond, with alumina and silica being preferred; paragraphs [0008]-[0010]).
Murata further teaches the hydrophobic dispersion medium (teaching organic solvents including saturated aliphatic hydrocarbon solvents such as normal paraffins including nonane, decane, and dodecane, isoparaffins and naphthenes; petroleum-based aliphatic solvents including kerosene, solvent naphtha, and Stoddard solvent; and terpene-based solvents including camphor oil, turpentine oil, and pine oil; paragraphs [0013]-[0015]).
Murata teaches water (teaching that water constitutes the remainder of the abrasive composition after the abrasive particles, lubricating oil, organic solvent, surfactant, and thickener; paragraph [0021]). Murata further teaches a surfactant containing a polyoxyethylene alkyl ether (teaching nonionic surfactants including polyoxyethylene alkyl ether, polyoxyethylene alkylphenyl ether, polyoxyethylene sorbitan fatty acid ester, and sucrose fatty acid ester; paragraph [0016]).
Murata does not expressly teach the polyoxyethylene alkyl ether represented by Formula (i) RO-(C2H4O)n-H, wherein R represents a branched-chain alkyl group having 12 to 20 carbon atoms and n represents an average number of added moles of oxyethylene and is 3 or more and 50 or less.
Bouvy teaches branched alcohol ethoxylates having a branched alkyl group and an average number of ethylene oxide units within the claimed ranges (Bouvy teaches branched primary alcohol alkoxylates wherein the branched alkyl residue desirably contains 10 to 20 carbon atoms, particularly 12 to 18 carbon atoms; column 1, lines 64-67. Bouvy further teaches that the alkylene oxide groups are desirably ethylene oxide residues and that the number of units in the polyoxyalkylene chain is 5 to 40 and is an average value; column 2, lines 1-9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polishing composition of Murata to use Bouvy’s branched alcohol ethoxylate as the polyoxyethylene alkyl ether surfactant because Bouvy teaches the branched alcohol ethoxylate surfactant for dispersing titanium dioxide and iron oxide particles in paint and surface-coating formulations, while Murata similarly teaches surfactants for dispersing abrasive particles and teaches abrasive particles including titania and iron oxide (see Bouvy col. 2-4 and Murata para. 8 and 16). Accordingly, Bouvy’s known use of the branched alcohol ethoxylate for dispersing overlapping types of particles would have provided one of ordinary skill in the art with reason to use the surfactant in Murata’s polishing composition with a reasonable expectation of successfully dispersing the abrasive particles, and known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art, see MPEP 2141 III(F).
Regarding claim 2, modified Murata teaches all the limitations of claim 1 as discussed above.
Modified Murata further teaches wherein the average number of added moles of oxyethylene, n, is 5 or more and 15 or less (Bouvy teaches branched alcohol ethoxylates having 10, 13, and 15 ethylene oxide units; column 5, lines 44-51).
Regarding claim 4, modified Murata teaches all the limitations of claim 1 as discussed above.
Modified Murata further teaches wherein the content of the abrasives is 5 to 30 mass% based on the total mass of the polishing composition (Murata teaches that the proportion of abrasive particles is 1 to 30 parts by weight, preferably 5 to 25 parts by weight, per 100 parts by weight of the total abrasive composition; paragraph [0010]).
Regarding claim 5, modified Murata teaches all the limitations of claim 1 as discussed above.
Modified Murata further teaches wherein the abrasives contain aluminum oxide (Murata teaches abrasive particles including aluminum oxide, i.e., alumina, and identifies alumina as a preferred abrasive; paragraphs [0008]-[0010]).
Regarding claim 7, modified Murata teaches all the limitations of claim 1 as discussed above.
Murata further teaches wherein the hydrophobic dispersion medium contains at least one of normal paraffinic hydrocarbons, isoparaffinic hydrocarbons, naphthenic hydrocarbons, and terpene hydrocarbons (Murata teaches organic solvents including normal paraffins, isoparaffins, naphthenes, and terpene-based solvents; paragraph [0013]).
Murata further teaches wherein the hydrophobic dispersion medium has a flash point of 30 to 100°C (Murata teaches IP Solvent 2028, an isoparaffin, as the organic solvent in Example 1; paragraph [0027]. IP Solvent 2028 inherently has a flash point within the claimed range, as evidenced by the Dowpol Chemical technical product data sheet for IP Solvent 2028, revised April 2010, which reports a flash point of 86°C measured according to ASTM D93).
Regarding claim 14, modified Murata teaches all the limitations of claim 2 as discussed above.
Modified Murata further teaches wherein the content of the abrasives is 5 to 30 mass% based on the total mass of the polishing composition (Murata teaches that the proportion of abrasive particles is 1 to 30 parts by weight, preferably 5 to 25 parts by weight, per 100 parts by weight of the total abrasive composition; paragraph [0010]).
Regarding claim 15, modified Murata teaches all the limitations of claim 2 as discussed above.
Modified Murata further teaches wherein the abrasives contain aluminum oxide (Murata teaches abrasive particles including alumina, titania, and iron oxide, identifies alumina as a preferred abrasive, and teaches that the abrasive particles may be used individually or in combination; paragraphs [0008]-[0010]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a combination of Murata’s known abrasive particles including aluminum oxide in the polishing composition because Murata expressly teaches that its disclosed abrasive particles may be used in combination, and combining prior art elements according to known methods to yield predictable results is obvious, see MPEP 2141 III(A).
Regarding claim 16, modified Murata teaches all the limitations of claim 2 as discussed above.
Murata further teaches wherein the hydrophobic dispersion medium contains at least one of normal paraffinic hydrocarbons, isoparaffinic hydrocarbons, naphthenic hydrocarbons, and terpene hydrocarbons (Murata teaches organic solvents including normal paraffins, isoparaffins, naphthenes, and terpene-based solvents; paragraph [0013]).
Murata further teaches wherein the hydrophobic dispersion medium has a flash point of 30 to 100°C (Murata teaches IP Solvent 2028, an isoparaffin, as the organic solvent in Example 1; paragraph [0027]. IP Solvent 2028 inherently has a flash point within the claimed range, as evidenced by the Dowpol Chemical technical product data sheet for IP Solvent 2028, revised April 2010, which reports a flash point of 86°C measured according to ASTM D93).
Claims 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Murata in view of Bouvy, as applied to claims 1 and 2 above, respectively, and further in view of Konuma et al. (JP 2006-045495 A).
Regarding claims 3 and 13, modified Murata teaches all the limitations of claims 1 and 2 as discussed above, respectively.
Modified Murata does not expressly teach wherein the HLB value indicating affinity for water and oil of the surfactant is 10 or more and 16 or less.
Konuma teaches a polyoxyethylene alkyl ether surfactant having an HLB within the claimed range (Konuma teaches nonionic surfactants including polyoxyethylene alkyl ether and teaches an HLB of 14 or less, preferably 13 or less; paragraph [0024]. Konuma further specifically teaches a polyoxyethylene alkyl ether having an HLB of 12.5; paragraph [0047]).
Konuma further teaches that use of a nonionic surfactant having an HLB exceeding 14 can readily result in bubble formation, thereby providing a reason for selecting a surfactant having an HLB within the claimed range (paragraph [0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select an HLB within the claimed range for the polyoxyethylene alkyl ether surfactant of modified Murata because Konuma teaches an overlapping HLB range for polyoxyethylene alkyl ether surfactants and teaches that an HLB exceeding 14 can readily result in bubble formation, and in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists, see MPEP 2144.05.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Murata in view of Bouvy, as applied to claim 5 above, and further in view of Luna et al. (US 8,197,307 B1).
Regarding claim 6, modified Murata teaches all the limitations of claim 5 as discussed above.
Modified Murata does not expressly teach wherein an α-transformation rate of the aluminum oxide is 50% or more and 100% or less.
Luna teaches aluminum oxide having an α-phase content within the claimed range (Luna teaches P10 Feinst calcined polishing alumina comprising at least 70% α-aluminum oxide (Al₂O₃), having a low calcination degree and a primary crystal size of less than 1 micron; column 6, lines 43-50).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polishing composition of modified Murata to use Luna’s calcined alumina comprising at least 70% α-aluminum oxide because Luna teaches the calcined alumina for polishing painted metallic surfaces, and simple substitution of one known element for another to obtain predictable results is obvious, see MPEP 2141 III (B).
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Murata in view of Bouvy, as applied to claim 2 above, and further in view of Schultz et al. (US 2008/0161220 A1).
Regarding claim 8, modified Murata teaches all the limitations of claim 1 as discussed above.
Modified Murata does not expressly teach wherein the hydrophobic dispersion medium has a vapor pressure at 20°C of 0.004 kPa or more and 2 kPa or less.
Schultz teaches a hydrophobic hydrocarbon liquid having a vapor pressure at 20°C within the claimed range (Schultz teaches a polishing composition for painted exterior surfaces comprising an organic phase including a petroleum-based hydrocarbon liquid, and further teaches light mineral spirits having a vapor pressure of about 3 mmHg at about 20°C, corresponding to about 0.40 kPa; paragraphs [0001], [0018], [0058]-[0061]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Schultz’s hydrocarbon liquid having a vapor pressure within the claimed range in the polishing composition of modified Murata because Schultz teaches use of such petroleum-based hydrocarbon liquids in polishing compositions for painted exterior surfaces and teaches that the petroleum-based liquid assists in removing tar, grease, and other hydrophobic organic residues, and simple substitution of one known element for another to obtain predictable results is obvious, see MPEP § 2141 III(B).
Regarding claim 17, modified Murata teaches all the limitations of claim 2 as discussed above.
Modified Murata does not expressly teach wherein the hydrophobic dispersion medium has a vapor pressure at 20°C of 0.004 kPa or more and 2 kPa or less.
Schultz teaches a hydrophobic hydrocarbon liquid having a vapor pressure at 20°C within the claimed range (Schultz teaches a polishing composition for painted exterior surfaces comprising an organic phase including a petroleum-based hydrocarbon liquid, and further teaches light mineral spirits having a vapor pressure of about 3 mmHg at about 20°C, corresponding to about 0.40 kPa; paragraphs [0001], [0018], [0058]-[0061]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Schultz’s hydrocarbon liquid having a vapor pressure within the claimed range in the polishing composition of modified Murata because Schultz teaches use of such petroleum-based hydrocarbon liquids in polishing compositions for painted exterior surfaces and teaches that the petroleum-based liquid assists in removing tar, grease, and other hydrophobic organic residues, and simple substitution of one known element for another to obtain predictable results is obvious, see MPEP § 2141 III(B).
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Murata (JP 2008-255232 A) in view of Bouvy et al. (US 6,582,505 B1).
Regarding claim 10, Murata teaches a polishing method comprising polishing an object to be polished using a polishing composition comprising abrasives, a hydrophobic dispersion medium, water, and a surfactant (Murata teaches polishing a surface using an abrasive composition comprising abrasive particles, lubricating oil, an organic solvent, a surfactant, a thickener, and water; paragraphs [0005], [0008]).
Murata teaches the abrasives (teaching abrasive particles including alumina, silica, kaolin, cerium oxide, titania, zirconia, germania, manganese dioxide, iron oxide, tin oxide, silicon carbide, boron carbide, tungsten carbide, carbon black, and diamond, with alumina and silica being preferred; paragraphs [0008]-[0010]).
Murata teaches the hydrophobic dispersion medium (teaching organic solvents including saturated aliphatic hydrocarbon solvents such as normal paraffins including nonane, decane, dodecane, isoparaffins and naphthenes; petroleum-based aliphatic solvents including kerosene, solvent naphtha, and Stoddard solvent; and terpene-based solvents including camphor oil, turpentine oil, and pine oil; paragraphs [0013]-[0015]).
Murata teaches water (teaching that water constitutes the remainder of the abrasive composition after the abrasive particles, lubricating oil, organic solvent, surfactant, and thickener; paragraph [0021]).
Murata further teaches a surfactant containing a polyoxyethylene alkyl ether (teaching nonionic surfactants including polyoxyethylene alkyl ether, polyoxyethylene alkylphenyl ether, polyoxyethylene sorbitan fatty acid ester, and sucrose fatty acid ester; paragraph [0016]).
Murata does not expressly teach wherein R of the polyoxyethylene alkyl ether represents a branched-chain alkyl group having 12 to 20 carbon atoms and n represents an average number of added moles of oxyethylene and is 3 or more and 50 or less.
Bouvy teaches branched alcohol ethoxylates having a branched alkyl group and an average number of ethylene oxide units within the claimed ranges (Bouvy teaches branched primary alcohol alkoxylates wherein the branched alkyl residue desirably contains 10 to 20 carbon atoms, particularly 12 to 18 carbon atoms; column 1, lines 64-67. Bouvy further teaches that the alkylene oxide groups are desirably ethylene oxide residues and that the number of units in the polyoxyalkylene chain is 5 to 40 and is an average value; column 2, lines 1-9).
Bouvy teaches branched alcohol ethoxylates having a branched alkyl group and an average number of ethylene oxide units within the claimed ranges (Bouvy teaches branched primary alcohol alkoxylates wherein the branched alkyl residue desirably contains 10 to 20 carbon atoms, particularly 12 to 18 carbon atoms; column 1, lines 64-67. Bouvy further teaches that the alkylene oxide groups are desirably ethylene oxide residues and that the number of units in the polyoxyalkylene chain is 5 to 40 and is an average value; column 2, lines 1-9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polishing method of Murata to use Bouvy’s branched alcohol ethoxylate as the polyoxyethylene alkyl ether surfactant because Bouvy teaches the branched alcohol ethoxylate surfactant for dispersing titanium dioxide and iron oxide particles in paint and surface-coating formulations, while Murata similarly teaches surfactants for dispersing abrasive particles and teaches abrasive particles including titania and iron oxide (see Bouvy col. 2-4 and Murata para. 8 and 16). Accordingly, Bouvy’s known use of the branched alcohol ethoxylate for dispersing overlapping types of particles would have provided one of ordinary skill in the art with reason to use the surfactant in Murata’s polishing composition with a reasonable expectation of successfully dispersing the abrasive particles, and known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art, see MPEP 2141 III(F).
Regarding claim 11, modified Murata in view of Bouvy teaches all the limitations of claim 10 as discussed above.
Modified Murata further teaches wherein the object contains a resin (Murata teaches applying the abrasive composition to an acrylic melamine coating; paragraph [0035]).
Regarding claim 12, modified Murata teaches all the limitations of claim 10 as discussed above.
Murata further teaches supplying the polishing composition to a surface of the object to be polished and bringing a polishing buff into contact with the surface supplied with the polishing composition to polish the object (Murata teaches dropping the abrasive composition onto the painted surface and thereafter rotating a buff while the abrasive composition is interposed between the buff and the painted surface and the buff is pressed against the painted surface; paragraph [0024]).
Conclusion
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/JONATHAN L CARTER/Examiner, Art Unit 1713
/ERIN F BERGNER/Primary Examiner, Art Unit 1713
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