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
Amendments made to claims 1-2, 5 and 16, the cancelation of claims 12-14, the withdrawal of claims 17-20, and the addition of claim 21, as filed on August 26, 2026, are acknowledged.
Applicant’s arguments with respect to amended claims 1 and 2 have been considered but are moot because the arguments do not apply to new ground(s) of rejection in this Office Action necessitated by the amendments made to the claims.
Claim Rejections - 35 USC § 102
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 1-4, 5-8, 10 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alety et al. (US20220306902).
Regarding claim 1, Alety discloses a polishing composition (paragraph 0005) comprising: an aluminum(III) salt (aluminum nitrate, paragraph 0069), a permanganate salt (potassium permanganate, paragraph 0057), and water (paragraph 0031), wherein an amount of the permanganate salt is from 3 to 5.5 wt % based on a total weight of the polishing composition (paragraph 0058); an amount of the aluminum(III) salt is from 0.2 to 1.5 wt % based on the total weight of the polishing composition (paragraph 0070); a pH of the polishing composition is from 2 to 2.5 (paragraph 0072); and the polishing composition is essentially free of abrasive particles (the specification of current application specifies that “essentially free of abrasive particles means that an amount of abrasive particles is not greater than 0.1 wt%”, paragraph 0008; Alety discloses that the total abrasive particles ranges from 0.005 wt.-% to 0.01 wt.-%, paragraph 0065). Alety is silent about that the polishing composition is configured to polish a substrate including silicon carbide with an average material removal rate (MMR) of at least 3.5 tm/hour according to a silicon carbide polishing test. However, a polishing composition alone does not determine an average material removal rate of using the composition, as evidenced by Xiao (Introduction to Semiconductor Manufacturing Technology, SPIE Press, 2012, ISBN 978-0-8194-9092-6, section 12.4.1). It is noted that claim 1 is drawn to a composition claim and the recitation of "configured to polish a substrate including silicon carbide with an average material removal rate (MMR) of at least 3.5 tm/hour according to a silicon carbide polishing test" is considered as intended use 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 2, Alety discloses a polishing composition (paragraph 0005) comprising: an aluminum(III) salt (aluminum nitrate, paragraph 0069), at least one permanganate salt in an amount from 3 to 5.5 wt % based on a total weight of the polishing composition (paragraphs 0057-0058), and water (paragraph 0031), wherein a pH of the polishing composition is from 2 to 2.5 (paragraph 0072); and the composition is essentially free of abrasive particles (the specification of current application specifies that “essentially free of abrasive particles means that an amount of abrasive particles is not greater than 0.1 wt%”, paragraph 0008; Alety discloses that the total abrasive particles ranges from 0.005 wt.-% to 0.01 wt.-%, paragraph 0065). Alety is silent about that the polishing composition is configured to polish a substrate including silicon carbide with an average material removal rate (MMR) of at least 3.5 tm/hour according to a silicon carbide polishing test. However, a polishing composition alone does not determine an average material removal rate of using the composition, as evidenced by Xiao (Introduction to Semiconductor Manufacturing Technology, SPIE Press, 2012, ISBN 978-0-8194-9092-6, section 12.4.1). It is noted that claim 1 is drawn to a composition claim and the recitation of "configured to polish a substrate including silicon carbide with an average material removal rate (MMR) of at least 3.5 tm/hour according to a silicon carbide polishing test" is considered as intended use of the claimed composition. A composition claim covers what the composition is not what the composition does.
Regarding claim 3, Alety discloses wherein the aluminum (III) salt includes aluminum nitrate (paragraph 0069).
Regarding claim 4, Alety discloses wherein the aluminum (III) salt consists essentially of aluminum nitrate (paragraph 0069).
Regarding claims 6-7, Alety discloses wherein the permanganate salt includes potassium permanganate (paragraph 0057).
Regarding claim 8, Alety discloses wherein the amount of the permanganate salt is from 4 to 5 wt % based on the total weight of the polishing composition (paragraphs 0057-0058).
Regarding claim 10, Alety discloses wherein the pH of the polishing composition is from about 3 to about 4.5 (paragraph 0072).
Regarding claim 15, Alety discloses wherein the polishing composition further comprises a pH buffer (paragraph 0071).
Claims 1, 3-11 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ward et al. (US20180340095).
Regarding claim 1, Ward discloses a polishing composition (claim 1 and paragraph 0018) comprising: an aluminum (III) salt (aluminum nitrate reads on an aluminum (III) salt, claim 5), a permanganate salt (claim 10), and water (claim 17), wherein an amount of the permanganate salt equals to about 10 wt% based on a total weight of the polishing composition (paragraph 0020); an amount of the aluminum(III) salt equals to about 10 wt.% based on the total weight of the polishing composition (paragraph 0026); a pH of the polishing composition is not greater than 4.5 (less than about 4, paragraph 0032); and the polishing composition is essentially free of abrasive particles (abrasive-free, paragraph 0002). Alety is silent about that the polishing composition is configured to polish a substrate including silicon carbide with an average material removal rate (MMR) of at least 3.5 tm/hour according to a silicon carbide polishing test. However, a polishing composition alone does not determine an average material removal rate of using the composition, as evidenced by Xiao (Introduction to Semiconductor Manufacturing Technology, SPIE Press, 2012, ISBN 978-0-8194-9092-6, section 12.4.1). It is noted that claim 1 is drawn to a composition claim and the recitation of "configured to polish a substrate including silicon carbide with an average material removal rate (MMR) of at least 3.5 tm/hour according to a silicon carbide polishing test" is considered as intended use 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 2, Ward discloses a polishing composition (claim 1 and paragraph 0018) comprising: an aluminum (III) salt (aluminum nitrate reads on an aluminum (III) salt, claim 5), at least one permanganate salt in an amount equals to about 10 wt% based on a total weight of the polishing composition (claim 10 and paragraph 0020), and water (claim 17), wherein a pH of the polishing composition is less than about 4 (paragraph 0032); and the polishing composition is essentially free of abrasive particles (abrasive-free, paragraph 0002). Alety is silent about that the polishing composition is configured to polish a substrate including silicon carbide with an average material removal rate (MMR) of at least 3.5 tm/hour according to a silicon carbide polishing test. However, a polishing composition alone does not determine an average material removal rate of using the composition, as evidenced by Xiao (Introduction to Semiconductor Manufacturing Technology, SPIE Press, 2012, ISBN 978-0-8194-9092-6, section 12.4.1). It is noted that claim 1 is drawn to a composition claim and the recitation of "configured to polish a substrate including silicon carbide with an average material removal rate (MMR) of at least 3.5 tm/hour according to a silicon carbide polishing test" is considered as intended use of the claimed composition. A composition claim covers what the composition is not what the composition does.
Regarding claim 3, Ward discloses wherein the aluminum (III) salt includes aluminum nitrate (claim 5).
Regarding claim 4, Ward discloses wherein the aluminum (III) salt consists essentially of aluminum nitrate (claim 5).
Regarding claim 5, Ward discloses wherein the composition is essentially free of abrasive particles (abrasive-free, paragraph 0002).
Regarding claims 6-7, Ward discloses wherein the permanganate salt includes potassium permanganate (claim 10).
Regarding claim 8, Ward discloses wherein the amount of the permanganate salt is about 10 wt % based on the total weight of the polishing composition (paragraph 0020).
Regarding claim 9, Ward discloses wherein the amount of the aluminum (III) salt equals to about 10 wt.% based on the total weight of the composition (paragraph 0026).
Regarding claim 10, Ward discloses wherein the pH of the polishing composition is about 3 (paragraph 0032).
Regarding claim 11, Ward discloses wherein the amount of aluminum (III) salt is about 10 wt % based on the total weight of the polishing composition (paragraph 0026), the amount of permanganate salt is about 10 wt % based on the total weight of the polishing composition (paragraph 0020), and the pH of the polishing composition is about 3 (paragraph 0032).
Regarding claim 16, Ward discloses wherein the polishing composition consists essentially of potassium permanganate, aluminum (III) nitrate and water (claims 1, 5, 10, and 17).
Regarding claim 21, Ward discloses wherein the composition is essentially free of abrasive particles (abrasive-free, paragraph 0002).
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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