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 [0036], [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 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 13, 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 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.
Claims 7-8, 10-11, 13-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mae (US 11,884,843 B2).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
As to claim 7, Mae discloses a polishing composition (abstract) comprising an abrasive (col.4, lines 9-21), a basic compound (basic inorganic compound, col.9, lines 44-67; tetraammonium hydroxide, col.13, line 8), and water (col.12, lines 6-9), wherein the polishing composition comprises a globular abrasive as the abrasive (aspect ratio of less than 1.1 is a “spherical” abrasives, and also are globular, col.2, lines 41-44), and further comprises an alkali metal salt (col.9, lines 45-47).
As to claims 8, 11 and 14, see the rejection of claim 7. Further as to claim 8, Mae discloses to measure the abrasive sizes by SEM image analysis (col. 5, lines 10-16).
As to claim 10, Mae discloses that the average primary particle diameter is preferably 30 nm or more, and particularly preferably 1000 nm or less, for example 350 nm or less (col.6, lines 7-16), 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) Mae 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 claim 13, Mae disclose a content of the alkali metal salt is 0.001% by mass or more and 10% by mass or less (col.10, lines 11-24), and a content of the globular abrasive is 0.2% by mass or more and 20% by mass or less, even more preferably 5% by mass or less (col.9, lines 28-38), which is expected to provide a ratio in the cited range at some point in the ranges.
As to claim 15, Mae discloses to polish silicon material (col.3, lines 54-60). This limitation is given little patentable weight because the composition is defined by its structure, not by its intended use. The composition of Mae is capable of polishing silicon material.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7-8, 10-11 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 and 11 of U.S. Patent No. 11,884,843 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are fully encompassed by the claims of US 11,884,843. A globular particle is a spherical particle with an aspect ratio less than 1.1 (claim 1), or less than 1.08 (claim 9). Further as to claim 15, the composition of Mae is capable of polishing silicon material.
Claims 7-8, 10-11 and 15 are directed to an invention not patentably distinct from claims 1, 9 and 11 of commonly assigned 11,884,843. Specifically, see rejection above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned 11,884,843, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
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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/ANITA K ALANKO/Patent Examiner, Art Unit 1713