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.
Terminal Disclaimer
The terminal disclaimer filed on May 5, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the full statutory term of any patent granted on pending Application Number 18/686,053 has been reviewed and is accepted. The terminal disclaimer has been recorded. The previous double patenting rejections, as set forth in the Office Action mailed on February 5, 2026, have been withdrawn.
Response to Amendments/Arguments
The amendments made to claims 1 and 3, the withdrawal of claims 15-17, and the addition of claims 21-22, as filed on May 5, 2026, are acknowledged.
Applicant’s arguments with respect to amended claims 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 1-7, 9, 14, 18-20 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang et al. (US20210253904).
Regarding claim 1, Huang discloses a polishing liquid (polishing composition, abstract), comprising: abrasive grains containing cerium oxide (ceria, paragraph 0017), and an ammonium salt (ammonium carbonate, paragraph 0028), wherein a pH of the polishing liquid is 9.00 or more (at least about 9, paragraph 0021).
Regarding claim 2, Huang discloses wherein the ammonium salt includes ammonium carbonate (paragraph 0028).
Regarding claim 3, Huang discloses wherein the ammonium salt further includes ammonium persulfate (paragraph 0032).
Regarding claims 4 and 18, Huang discloses wherein a content of the ammonium salt is about 0.5% by mass (paragraphs 0028-0029).
Regarding claim 5, Huang discloses the polishing liquid further comprising ammonia (paragraph 0017).
Regarding claim 6, Huang discloses the polishing liquid further comprising an ether compound having a hydroxy group (2-methoxyethanol, paragraph 0035).
Regarding claim 7, Huang discloses wherein the ether compound includes an alkoxy alcohol (2-methoxyethanol, paragraph 0035).
Regarding claim 9, Huang discloses wherein a content of the alkoxy alcohol is about 0.6% by mass on the basis of the total mass of the polishing liquid (paragraph 0036).
Regarding claim 14, Huang discloses wherein the pH is at least about 9 and at most about 11 (paragraph 0021).
Regarding claim 19, Huang discloses wherein a content of the ammonium salt is about 100 parts by mass with respect to 100 parts by mass of the abrasive grains (about 0.1% of ammonium salt, paragraphs 0028-0029; about 0.1% of abrasive, paragraph 0018).
Regarding claim 20, Huang discloses wherein the ether compound includes a compound having one ether group (2-methoxyethanol, paragraph 0035).
Regarding claim 22, Huang discloses a polishing liquid (polishing composition, abstract), comprising: abrasive grains containing cerium oxide (ceria, paragraph 0017), an ammonium salt (ammonium carbonate, paragraph 0028), and an ether compound having a hydroxy group (2-methoxyethanol, paragraph 0035), wherein a content of the ammonium salt is 0.01% by mass or more on the basis of a total mass of the polishing liquid (paragraphs 0028-0029), the ether compound includes a compound having one ether group (2-methoxyethanol, paragraph 0035), and a pH of the polishing liquid is 9.00 or more (paragraph 0021).
Claims 1-2, 6-7 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishimizu et al. (US20200317955).
Regarding claim 1, Ishimizu discloses a polishing liquid (polishing composition, abstract), comprising: abrasive grains containing cerium oxide (ceria, abstract), and an ammonium salt (ammonium carbonate, paragraph 0046), wherein a pH is from 10-11 (paragraph 0044).
Regarding claim 2, Ishimizu discloses wherein the ammonium salt includes ammonium carbonate (paragraph 0046).
Regarding claim 6, Ishimizu discloses the polishing liquid further comprising an ether compound having a hydroxy group (formula (2), claim 4).
Regarding claim 7, Ishimizu discloses wherein the ether compound includes an alkoxy alcohol (formula (2), claim 4).
Regarding claim 10, Ishimizudiscloses wherein the ether compound includes a compound having two or more hydroxy groups (formula (2), claim 4).
Regarding claim 11, Ishimizudiscloses wherein the ether compound further includes a polyether (formula (2), claim 4).
Regarding claim 12, Ishimizudiscloses wherein the polyether includes polyglycerol (formula (2), claim 4).
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US20210253904) as applied to claim 7 above, in view of Kondo et al. (US20200369918).
Regarding claim 8, Huang is silent about wherein the alkoxy alcohol includes methoxy-3-methyl-1-butanol. However, Huang discloses the alkoxy alcohol is an example of organic solvents selected from the group consisting of ethanol, 1-propanol, 2- propanol, n-butanol, propylene glycol, 2-methoxyethanol, 2-ethoxyethanol, propylene glycol propyl ether, dimethyl sulfoxide, and ethylene glycol (paragraph 0035). In addition, Kondo teaches that organic solvents used in a polishing liquid include alcohols such as methanol, ethanol, propanol, and 3-methoxy-3-methylbutanol (paragraph 0124). 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 3-methoxy-3-methylbutanol which is a known organic solvent used in a polishing liquid as taught by Kondo for organic solvent 2-methoxyethanol in the polishing composition of Huang, 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.
Claims 1, 6-7, 10-11, 13 and 21 are rejected under 35 U.S.C. 103 as being obvious over Komatsu et al. (US20190367777).
Regarding claim 1, Komatsu discloses a polishing liquid (polishing composition, abstract), comprising: abrasive grains containing cerium oxide (paragraph 0080) and an ammonium salt (ammonium carbonate, paragraph 0242), wherein a pH is from 4 to 9 (paragraph 0241), 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, Komatsu discloses the polishing liquid further comprising an ether compound having a hydroxy group (polyethylene glycol, paragraph 0256).
Regarding claim 7, Komatsu discloses wherein the ether compound includes an alkoxy alcohol (polyethylene glycol, paragraph 0256).
Regarding claim 10, Komatsu discloses wherein the ether compound includes a compound having two hydroxy groups (polyethylene glycol, paragraph 0256).
Regarding claim 11, Komatsu discloses wherein the ether compound further includes a polyether (polyethylene glycol, paragraph 0256).
Regarding claim 13, Komatsu discloses wherein a content of the polyether is 0.0001 to 1% by mass on the basis of the total mass of the polishing liquid (paragraph 0258), which overlaps with the range recited in the instant claim.
Regarding claim 21, Komatsu discloses a polishing liquid (polishing composition, abstract), comprising: abrasive grains containing cerium oxide (paragraph 0080), an ammonium salt (ammonium carbonate, paragraph 0242), and an ether compound having a hydroxy group (2-methoxyethanol, paragraph 0240), wherein an average particle diameter D50 of the abrasive grains is 10 to 500nm (paragraph 0080), the ether compound includes a compound having one ether group (2-methoxyethanol, paragraph 0240), and a pH is from 4 to 9 (paragraph 0241). The diameter and pH ranges overlap with the corresponding ranges 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).
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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