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.
Election/Restrictions
Applicant’s election without traverse of claims 1-14 and 18-20 in the reply filed on January 6, 2026 is acknowledged. Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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, 14 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki (US20130029489).
Regarding claim 1, Suzuki discloses a polishing liquid (polishing slurry, abstract), comprising: abrasive grains containing cerium oxide (paragraph 0024) and an ammonium salt (ammonium persulfate, paragraphs 0045 and 0047), wherein a pH is 9.00 or more (paragraph 0024).
Regarding claims 4 and 18, Suzuki discloses wherein a content of the ammonium salt is 0.5% by mass (Example 8, Table 1).
Regarding claim 5, Suzuki discloses the polishing liquid further comprising ammonia (paragraphs 0030 and 0032).
Regarding claim 14, Suzuki discloses wherein the pH is 10 (Example 8, Table 1).
Regarding claim 19, Suzuki discloses wherein a content of the ammonium salt is 1000 parts by mass with respect to 100 parts by mass of the abrasive grains (Example 8, Table 1).
Claim Rejections - 35 USC § 103
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 of this title, 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.
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 2-3 are rejected under 35 U.S.C. 103 as being obvious over Suzuki (US20130029489) as applied to claim 1 above, in view of Kitamura et al. (US20240263039).
Regarding claim 2, Suzuki is silent about wherein the ammonium salt includes ammonium carbonate. However, Suzuki disclosed that the polishing composition comprises a pH adjusting agent such as potassium hydroxide (paragraph 0038). In addition, Kitamura teaches that both potassium hydroxide and ammonium carbonate are known pH adjusting agents for a polishing composition (paragraph 0102). Therefore, it would have been obvious to one of ordinary skill, in the art before the effective filing date of the claimed invention, to substitute potassium hydroxide in the polishing composition of Suzuki with ammonium carbonate, which is a known equivalent pH adjusting agent as taught by Kitamura, with a reasonable expectation of success. It has been held that substituting equivalents known for the same purpose is obvious. See MPEP 2144.06 II.
Regarding claim 3, Suzuki discloses wherein the ammonium salt includes ammonium persulfate (paragraph 0047).
Claims 1-2, 6-7 and 10-11 are rejected under 35 U.S.C. 103 as being obvious over Kitamura et al. (US20240263039).
Regarding claim 1, Kitamura discloses a polishing liquid (polishing composition, abstract), comprising: abrasive grains containing cerium oxide (paragraph 0071) and an ammonium salt (ammonium carbonate, paragraph 0077), wherein a pH is 9.00 or more (paragraph 0024), which overlaps with the range recited in the instant claim. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 2, Kitamura discloses wherein the ammonium salt includes ammonium carbonate (paragraph 0077).
Regarding claim 6, Kitamura discloses the polishing liquid further comprising an ether compound having a hydroxy group (polyethylene glycol, paragraph 0080).
Regarding claim 7, Kitamura discloses wherein the ether compound includes an alkoxy alcohol (polyethylene glycol, paragraph 0080).
Regarding claim 10, Kitamura discloses wherein the ether compound includes a compound having two or more hydroxy groups (polyethylene glycol, paragraph 0080).
Regarding claim 11, Kitamura discloses wherein the ether compound further includes a polyether (polyethylene glycol, paragraph 0080).
Claims 1, 5-9 and 20 are rejected under 35 U.S.C. 103 as being obvious over Kondo et al. (US20200369918).
Regarding claim 1, Kondo discloses a polishing liquid (abstract), comprising: abrasive grains containing cerium oxide (ceria, paragraph 0082) and an ammonium salt (ammonium persulfate, paragraph 0129), wherein a pH is from 8.0 to 11.0 (paragraph 0132), which overlaps with the range recited in the instant claim. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 5, Kondo discloses the polishing liquid further comprising ammonia (paragraph 0094).
Regarding claim 6, Kondo discloses the polishing liquid further comprising an ether compound having a hydroxy group (3-methoxy-3-methylbutanol, paragraph 0124).
Regarding claim 7, Kondo discloses wherein the ether compound includes an alkoxy alcohol (3-methoxy-3-methylbutanol, paragraph 0124).
Regarding claim 8, Kondo discloses wherein the alkoxy alcohol includes 3-methoxy-3-methyl-1-butanol (3-methoxy-3-methylbutanol, paragraph 0124).
Regarding claim 9, Kondo discloses wherein a content of the alkoxy alcohol is 0.5% by mass on the basis of the total mass of the polishing liquid (paragraph 0127).
Regarding claim 20, Kondo discloses wherein the ether compound includes a compound having one ether group (3-methoxy-3-methylbutanol, paragraph 0124).
Claims 1, 6-7 and 10-13 are rejected under 35 U.S.C. 103 as being obvious over Sakanishi (US20210292602).
Regarding claim 1, Sakanishi discloses a polishing liquid (polishing composition, abstract), comprising: abrasive grains containing cerium oxide (ceria, paragraph 0093) and an ammonium salt (ammonium persulfate, paragraph 0085), wherein a pH is from 6 to 10 (paragraph 0115), which overlaps with the range recited in the instant claim. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 6, Sakanishi discloses the polishing liquid further comprising an ether compound having a hydroxy group (polyglycerol, paragraph 0063).
Regarding claim 7, Sakanishi discloses wherein the ether compound includes an alkoxy alcohol (polyglycerol, paragraph 0063).
Regarding claim 10, Sakanishi discloses wherein the ether compound includes a compound having two or more hydroxy groups (polyglycerol, paragraph 0063).
Regarding claim 11, Sakanishi discloses wherein the ether compound further includes a polyether (polyglycerol, paragraph 0063).
Regarding claim 12, Sakanishi discloses wherein the polyether includes polyglycerol (paragraph 0063).
Regarding claim 13, Sakanishi discloses wherein a content of the polyether is 0.3 to 3% by mass on the basis of the total mass of the polishing liquid (paragraph 0065), which encompasses the range recited in the instant claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 5-14 and 20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2, 6-10, 13-14 and 20 of copending Application No. 18/686,053 (hereinafter, ‘053).
Regarding claim 1, ‘053 claims a polishing liquid (claim 1), comprising: abrasive grains containing cerium oxide (claim 1) and an ammonium salt (an ammonium cation, claim 13; an ammonium salt is an ionic compound formed by an ammonium cation with an anion), wherein a pH is 9.00 or more (9.00-11.00, claim 14).
Regarding claim 5, ‘053 claims the polishing liquid further comprising ammonia (claim 13).
Regarding claim 6, ‘053 claims the polishing liquid further comprising an ether compound having a hydroxy group (claim 1).
Regarding claim 7, ‘053 claims wherein the ether compound includes an alkoxy alcohol (claim 2).
Regarding claim 8, ‘053 claims wherein the alkoxy alcohol includes 3-methoxy-3-methyl-1-butanol (claim 6).
Regarding claim 9, ‘053 claims wherein a content of the alkoxy alcohol is 0.2 to 0.8% by mass on the basis of the total mass of the polishing liquid (claim 7).
Regarding claim 10, ‘053 claims wherein the ether compound includes a compound having two or more hydroxy groups (polyglycerol, claim 9).
Regarding claim 11, ‘053 claims wherein the ether compound further includes a polyether (claim 8).
Regarding claim 12, ‘053 claims wherein the polyether includes polyglycerol (claim 9).
Regarding claim 13, ‘053 claims wherein a content of the polyether is 0.5 to 3% by mass on the basis of the total mass of the polishing liquid (claim 10).
Regarding claim 14, ‘053 claims wherein the pH is 9.00 to 11.00 (claim 14).
Regarding claim 20, ‘053 claims wherein the ether compound includes a compound having one ether group (claim 20).
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
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