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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 9-10 cite that the polishing compositing is used for polishing a material of a certain Vickers hardness or for polishing silicon carbide. It is not clear how these limitations further limit the base claim because the solution is already a polishing composition capable of polishing as cited. A composition is defined by its chemical composition, not by how it is used.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 6, 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsuo et al (US 2020/0332163 A1).
Matsuo discloses a polishing composition [0002] comprising
an oxidant containing sodium permanganate [0017], and
an abrasive A, such as silica [0034], which because it is the same abrasive as in the instant invention is expected to have the same properties of a Mohs hardness of less than 8 (MPEP 2112.01, II If the composition is physically the same, it must have the same properties; species anticipates a genus MPEP 2132.02 I),
wherein the oxidant does not contain persulfate compounds (the solution may contain an additional inorganic compound, [0038], such as nitric acid, inorganic nitrates, transition metal salts, iron-containing complexes or peroxo acid salts [0040], but the composition does not require a persulfate compound because nitric acid or nitrate is preferred [0048]; in addition the composition may contain a weak acid or soluble salt therefore [0016], [0020] but this also does not require a persulfate compound) , and
wherein the abrasive contains a silica abrasive [0034].
As to claim 2, Matsuo discloses that the abrasive A content is 0.001-50 mass% or 0.1-10 mass% [0037], which is expected to overlap or be within the cited range.
As to claim 6, Matsuo discloses that the polishing composition may comprise a second metal salt selected from cations containing metals such as transition metals [0043], that belong to Groups 3 to 12 in the periodic table and are thus within the cited range of groups, and anions (e.g., nitrate [0044] or halides [0045]).
As to claim 8, Matsuo discloses that the composition is acidic and has a pH of 1.0 or more and less than 6.0 [0031].
As to claims 9-10, the composition of Matsuo is capable of being used as cited. [0059]
As to claim 11, Matsuo discloses polishing an object to be polished using the polishing composition according to claim 1 ([0059], Table 2).
As to claim 12, Matsuo discloses that the abrasive A has an average particle size of 0.01-3.0 μm [0036], or 10-3000 nm, which overlaps with the cited range.
Claims 1-2, 4-5 and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Ito et al (US 2020/0399505 A1).
Ito ’505 discloses a polishing composition [0001] comprising
an oxidant containing sodium permanganate [0028], and
an abrasive A, such as silica [0035], which because it is the same abrasive as in the instant invention is expected to have the same properties of a Mohs hardness of less than 8 (MPEP 2112.01, II If the composition is physically the same, it must have the same properties; species anticipates a genus MPEP 2132.02 I),
wherein the oxidant does not contain persulfate compounds (the solution may contain persulfate as an oxidant [0028]; however, the persulfate is part of a list of oxidants and does not require persulfate when another oxidant from the list is selected), and
wherein the abrasive contains a silica abrasive [0035].
As to claim 2, Ito ’505 discloses that the abrasive A content is 1 weight% or more and 10 weight% or less [0042], which is within the cited range.
As to claims 4-5, Ito ’505 discloses an alkaline earth metal salt (such as magnesium, calcium, strontium, barium, [0021]) such as a nitrate [0022]-[0023].
As to claim 8, Ito ’505 discloses that the composition is acidic and has a pH of 2-12 or 3-11, or lower than 6.5 [0048], which overlaps with the cited range.
As to claims 9-10, the composition of Ito ’505 is capable of being used as cited. [0017], [0073]
As to claim 11, Ito ’505 discloses polishing an object to be polished using the polishing composition according to claim 1 [0073].
As to claim 12, Ito ’505 discloses that the abrasive A has an average particle size of 20 nm or more and 800 nm or less [0040], which overlaps with the cited range.
Claims 1-2 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 2024/0117219 A1).
The applied reference has a common inventor 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.
Ito ’219 discloses a polishing composition [0017] comprising
an oxidant containing sodium permanganate [0020], and
an abrasive A, such as silica [0043], which because it is the same abrasive as in the instant invention is expected to have the same properties of a Mohs hardness of less than 8 (MPEP 2112.01, II If the composition is physically the same, it must have the same properties; species anticipates a genus MPEP 2132.02 I),
wherein the oxidant does not contain persulfate compounds, and
wherein the abrasive contains a silica abrasive [0043].
As to claim 2, Ito ’219 discloses that the abrasive A content is 10 weight% or less [0053].
As to claims 4-5, Ito ’219 discloses an alkaline earth metal salt (“First Metal Salt” [0025]) such as a nitrate [0027].
As to claims 6-7, Ito ’219 discloses a second metal salt as cited [0032]-[0033], such as an aluminum salt [0034].
As to claim 8, Ito ’219 discloses that the composition is acidic and has a pH of 6 or less and 1.0 or more [0076].
As to claims 9-10, the composition of Ito ’219 is capable of being used as cited. [0080], [0081].
As to claim 11, Ito ’219 discloses polishing an object to be polished using the polishing composition according to claim 1 [0079].
As to claim 12, Ito ’219 discloses that the abrasive A has an average particle size of 20 nm or more and 100 nm or less [0057], which overlaps with the cited range.
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 2020/0399505 A1), as applied to 6, and further in view of Ward et al (US 10,655,035 B2).
As to claim 7, Ito ’505 discloses combinations of oxidants (last sentence of paragraph [0028]) may be included in the composition, including choosing from a list that includes aluminum salt (aluminum nitrate, lines 3-4 of paragraph [0028]) and sodium permanganate (line 18 of paragraph [0028]), among others such as persulfates [0028]. However, Ito ’505 fails to disclose the specification combination of sodium permanganate and aluminum nitrate as cited in claim 7.
Ward teaches that it would have been obvious to try the combination of a permanganate and an aluminum salt of aluminum nitrate. More specifically, Ward teaches a polishing composition comprising a primary oxidizing agent of sodium permanganate (col.3, line 17) and an abrasive, such as silica (col.6, line 62). Ward further teaches that the polishing composition comprises a multivalent cation component (col.3, lines 43-46). The multivalent cation component can alter the surface charge or zeta potential of most surfaces in contact with the composition (col.3, lines 43-46) to limit scratching (col.3, lines 58-59). An example of the multivalent cation is an aluminum compound, such as aluminum nitrate (col.4, lines 7, 11), which is equivalent to the cited second metal salt. The salts of the multivalent metals can form high oxidizing, low pH solutions even at low concentrations (col.4, lines 24-26). Accordingly, Ward teaches the obviousness of combining sodium permanganate oxidizing agent with an aluminum salt in order to limit scratching and provide high oxidizing, low pH solutions even at low concentrations.
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 composition of sodium permanganate and an aluminum salt in the composition of Ito ’505 because Ward teaches that adding an aluminum salt to a permanganate-oxidizing-agent-containing composition limits scratching and provides high oxidizing, low pH solutions even at low concentrations.
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 1-2 and 4-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-10 and 12-18 of copending Application No. 18/275,321 (reference application) in view of Ward et al (US 10,655,035 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because they are fully encompassed by those of the reference application, except for the cite of the permanganate (claim 18). The discussion of Ward from above is repeated here. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include sodium permanganate as the permanganate in the composition of the reference application because Ward teaches that such is a useful permanganate in polishing solutions and it is expected to give the predictable result of a polishing composition ready for polishing.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 4-12 are directed to an invention not patentably distinct from claims 1-6, 8-10 and 12-18 of commonly assigned 18/275,321. 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 18/275,321, 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.
Response to Amendment
Applicant’s arguments, see pages 4-7, filed July 27, 2026, with respect to the rejections over Ito et al, Ward et al and double patenting over US 11,319,460 B2 have been fully considered and are persuasive. The rejections of the claims have been withdrawn.
Claims 9-10 are rejected under 35 U.S.C. 112(b).
Claims 1-2, 6, 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsuo et al (US 2020/0332163 A1).
Claims 1-2 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 2024/0117219 A1).
Claims 1-2, 4-5 and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Ito et al (US 2020/0399505 A1).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 2020/0399505 A1), as applied to 6, and further in view of Ward et al (US 10,655,035 B2).
Claims 1-2 and 4-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-10 and 12-18 of copending Application No. 18/275,321 (reference application) in view of Ward et al (US 10,655,035 B2).
Response to Arguments
Applicant's arguments filed July 27, 2026, have been fully considered but they are not persuasive, to the extent they still apply.
As to the 35 USC 112 rejection, applicant argues that the composition, among other things, provides excellent removal rates. However, this does not explain how the composition of claims 9 and 10 are different from the composition of the base claim. Is there something different in the composition that results in the excellent removal rates in claims 9 and 10 compared to the base claim? The metes and bounds of the claim are thus unclear. These claims may be simply cancelled to overcome the rejection and reworked into method claims.
As to the teachings of Ward, applicant submits that Ward requires a persulfate. In response, Ward prefers persulfates, but there is a list of other secondary oxidizing agents that may be used (col.5, lines 34-38). Ward, as applied above, is relied upon for other features, and not for its teachings of the secondary oxidizing agent.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/ Primary Examiner, Art Unit 1713
