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 § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 7-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshizaki et al (JP 2020-025066 A).
As to claim 7, Yoshizaki discloses polishing composition (abstract) comprising an abrasive [0019], a basic compound [0051], and water [0044], wherein the polishing composition comprises a globular abrasive as the abrasive (“spherical” abrasives are globular, [0021]), and further comprises an alkali metal salt [0033], [0037].
As to amended claim 7, in one example, Yoshizaki teaches abrasive grains at 1.5% by weight [0083] and the alkali metal salt at 0.19% by mass [0083], which is expected to provide a ratio of about 0.19/1.5 = 0.12, which is within the cited range.
As to claim 8, Yoshizaki discloses that the globular abrasive has an average aspect ratio 1.0 or more, or preferably 1.5 or less, which encompasses the cited range. The method of determining the average aspect ratio is not expected to materially affect the aspect ratio and is treated as providing little patentable weight because the ratio will be the same no matter the technique used to calculate the two lengths that provide the ratio value.
As to claim 9, Yoshizaki discloses that the globular abrasive is silica particles [0019].
As to claim 10, Yoshizaki discloses that the average primary particle diameter of the globular abrasive is 20 nm or more and 300 nm or less [0026], which overlaps with the cited range. Prior art which teaches a range overlapping, approaching or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03. The (i) largely overlapping ranges, (ii) Yoshizaki and the instant invention both use the abrasive for the same purpose of a polishing composition, and (iii) lack of criticality of the size, together show that the full range is taught with sufficient specificity.
As to claims 11-12, Yoshizaki discloses that the polishing composition further comprises an inorganic acid salt as the alkali metal salt, such as a sulfate [0037].
As to claim 14, Yoshizaki teaches that the polishing composition may further comprise a quaternary ammonium [0051] as the basic compound.
As to claim 15, Yoshizaki teaches that the polishing composition is used in a polishing step for an object to be polished, the object containing a silicon material [0082]. This limitation is given little patentable weight because the composition is defined by its structure, not by its intended use. The composition of Yoshizaki is capable of polishing silicon material.
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.
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 16 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshizaki et al (JP 2020-025066 A).
As to claim 16, Yoshizaki discloses an alkali metal content of 0.19% by mass [0083], but fails to disclose the content of the basic compound [0051]. Rather, Yoshizaki teaches that the content of the basic compound is not particularly limited and may be adjusted so that the polishing composition has a desired pH [0052]. A comparative example provides basic compound tetramethylammonium hydroxide, TMAH, at 0.075% ([0093], Table 1, comparative example 1), which suggests a ratio of 2.5, which is within the cited range. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the cited ratio in the composition of Yoshizaki because the composition can be optimized for best results, and Yoshizaki suggests a point within the cited range as a starting point. MPEP 2144.05, II, A.
Response to Amendment
Applicant’s arguments, see page 6, filed May 14, 2026, with respect to the rejection over Mae and the double patenting rejection have been fully considered and are persuasive. The rejections of the claims have been withdrawn.
The claims remain rejected over Yoshizaki et al (JP 2020-025066 A). New claim 16 is rejected under 35 USC 103 as being obvious over Yoshizaki.
Response to Arguments
Applicant's arguments filed May 14, 2026 have been fully considered but they are not persuasive, to the extent they still apply.
The rejection has been rewritten to omit the reference to the alkali metal salt as a basic compound because Yoshizaki discloses that the alkali metal salt is separate from the basic compound. New claim 16 is obvious as explained above in the rejection, and because applicant has failed to show unexpected results. Compositions are routinely optimized for best results, which may be optimized for different purposes compared to the applicant’s reasons, and Yoshizaki suggests the cited range.
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/Patent Examiner, Art Unit 1713
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