DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claims 1-11 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Singh (US 2021/0238448 A1).
Regarding claim 1, Singh discloses a polishing composition comprising sodium permanganate as an oxidant and water (claims 1, 3 and 4).
Regarding claim 2, Singh further teaches that the composition further comprises a metal salt selected from salts each of which has a cation containing a metal belonging to Groups 3 to 16 in the periodic table, and an anion (zirconium oxynitrate, which includes a Group 4 metal, and a nitrate anion [paragraph. 0031, claim 5]).
Regarding claim 3, Singh further discloses that the polishing composition further comprises an abrasive (claim 6).
Regarding claim 4, Singh further discloses that the pH is 1.0 or more and less than 6.0 (claim 3).
Regarding claims 5 and 6, the limitation “ in use for polishing a material having a Vickers hardness of 1500 Hv or more” and “in use for polishing silicon carbide,” are statements of intended use. Composition claims cover what a compositions is, not what a composition is used for. See MPEP 2114 (II). A functional or intend-use limitation must impart a composition distinction to patentably distinguish over prior art. If the prior art composition recited intended use, then the limitation is met. See MPEP 21114.
Singh discloses polishing compositions capable of polishing hard materials, including silicon carbide (paragraph [0006]). The applicant’s published application (pg pub) further acknowledges that silicon carbide has a Vickers hardness of 1500 Hv or more (paragraph [0080]), confirming that the prior art composition is capable of the recited use.
Regarding claim 7, Singh discloses a polishing method comprising polishing an object to be polished using the polishing composition (claims 14-19).
Regarding claim 8, Singh discloses a metal salt forming a hydrated metal cation, including Zr02+ (claim 9). The applicant’s pg pub teaches that Zr02+ exhibits a pKa of less than 7(paragraph [0026]). Accordingly, the hydrated metal cation disclosed by Singh inherently meets the limitation of claim 8.
Regarding claim 9, Singh discloses a cation selected from a group consisting of ZrO2+ (paragraph [0031]).
Regarding claim 10, Singh discloses the anion is a nitrate ion (NO3-) (paragraph [0031]).
Regarding claim 11, Singh discloses polishing compositions comprising zirconium oxynitrate at concentrations shown in table 1, which correspond to a metal salt of 5mM or more, thereby meeting the limitation of claim 11 (For example zirconium oxynitrate concentration of 10 gm/L corresponds to 44 mM, which is greater than 5mM as required by claim 11).
Conclusion
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/JONATHAN L CARTER/Examiner, Art Unit 1713
/JOSHUA L ALLEN/Supervisory Patent Examiner, Art Unit 1713