DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claims 1, 3-11 are pending
Claim 2 has been canceled
Response to Amendment
The amendment filed 07/30/2026 has been entered. Claim 1 and claims 8-11 have been amended, claim 2 has been canceled, and claims 3-7 remain pending as previously presented. Accordingly, claims 1 and 3-11 are currently pending in the application.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1, 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ward et al. (US 2018/0340095 A1).
Regarding claim 1, Ward teaches a polishing composition (a fluid composition for chemical-mechanical polishing of inorganic materials; paragraphs [0017]-[0019]). Ward continues to teach a metal salt and water (an aqueous polishing fluid containing aluminum nitrate as a multivalent cation component; paragraphs [0018], [0024], [0047]). Ward further teaches wherein the metal salt is selected from salts of cations containing a metal belonging to Groups 13-16 in the periodic table and an anion (the multivalent cation component may include ions, salts, acids, or bases of Group 2 through Group 16 elements; Al³⁺ is specifically identified as a multivalent cation, aluminum nitrate is specifically identified as an Al³⁺ salt, and nitrate is identified as a corresponding anionic component; paragraph [0024]; see also aluminum nitrate used in the polishing composition of paragraph [0047]).
Ward does not expressly teach sodium permanganate as an oxidant in the aluminum-nitrate-containing polishing composition of paragraph [0047], which instead uses potassium permanganate as the primary oxidizer.
However, Ward teaches sodium permanganate as an oxidant (the primary oxidizing agent may be a salt or acid of permanganate, including potassium permanganate or sodium permanganate; paragraph [0019]; further teaching an oxidizing agent comprising sodium permanganate or potassium permanganate; paragraph [0074]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polishing composition of Ward to substitute sodium permanganate for potassium permanganate as the oxidant because Ward teaches sodium permanganate and potassium permanganate as alternative permanganate oxidizers serving the same oxidizing function for its chemical-mechanical polishing fluid compositions, and simple substitution of one known element for another to obtain predictable results is obvious. See MPEP § 2143, rationale I(B).
Regarding claim 3, modified Ward teaches the limitations of claim 1 as discussed above. Modified Ward further teaches the polishing composition according to claim 1, further comprising an abrasive (Ward teaches adding 1 wt.% of 100 nm polycrystalline alumina abrasive to a permanganate polishing composition containing aluminum nitrate; paragraph [0056]; see also paragraphs [0036], [0040]).
Regarding claim 4, modified Ward teaches the limitations of claim 1 as discussed above. Modified Ward further teaches the polishing composition according to claim 1, wherein a pH is 1.0 or more and less than 6.0 (Ward teaches an aqueous potassium-permanganate polishing composition containing aluminum nitrate adjusted to a pH of 2.10 using nitric acid; paragraph [0047]; Ward further teaches a polishing-fluid pH of about 1-3 or about 2; paragraph [0032]).
Regarding claims 5 and 6, modified Ward teaches the limitations of claim 1 as discussed above.
Regarding claim 5, modified Ward further teaches the polishing composition according to claim 1, in use for polishing a material having a Vickers hardness of 1500 Hv or more (Ward expressly teaches that the disclosed chemical-mechanical polishing fluids are used to polish silicon carbide and experimentally tests the polishing fluids on silicon carbide wafers; paragraphs [0037], [0045]-[0047]). The instant specification identifies silicon carbide as an example of a material having a Vickers hardness of 1500 Hv or more (paragraph [0080]). Accordingly, Ward’s polishing composition is capable of the recited use.
Regarding claim 6, modified Ward further teaches the polishing composition according to claim 1, in use for polishing silicon carbide (Ward expressly teaches silicon carbide as an inorganic material to be polished using the disclosed polishing fluid and experimentally polishes silicon carbide wafers using the disclosed fluids; paragraphs [0037], [0045]-[0047]).
Claims 5 and 6 recite intended uses of the claimed polishing composition. A recitation of the intended use of a claimed composition must result in a structural difference between the claimed composition and the prior art composition in order to patentably distinguish the claimed invention from the prior art. If the prior art composition is capable of performing the intended use, then it meets the limitation. In the present case, Ward additionally expressly teaches the recited use of polishing silicon carbide.
Regarding claim 7, modified Ward teaches the limitations of claim 1 as discussed above. Modified Ward further teaches a polishing method comprising a step of polishing an object to be polished using the polishing composition according to claim 1 (Ward teaches applying the disclosed fluid composition to a polishing pad and polishing an inorganic material with the polishing pad; paragraph [0115]).
Regarding claim 8, modified Ward teaches the limitations of claim 1 as discussed above. Modified Ward further teaches the polishing composition according to claim 1, wherein the metal is a metal exhibiting a pKa of less than 7 in form of a hydrated metal ion (Ward teaches an aqueous polishing composition containing Al³⁺ provided as aluminum nitrate; paragraphs [0018], [0024], [0047]). Ward further explains that multivalent metal salts undergo hydrolysis in water and specifically discusses aqueous Al³⁺ in this context (paragraph [0025]).
The instant specification identifies Al³⁺ as exhibiting a pKa of 5.0 in form of a hydrated metal ion, which is less than 7 (paragraph [0025]). Accordingly, because Ward teaches the same Al³⁺ ion in an aqueous polishing composition, and the pKa of hydrated Al³⁺ is an intrinsic property of that species, the recited pKa is an inherent property of Ward’s hydrated Al³⁺ ion. See MPEP § 2112.01.
Regarding claim 9, modified Ward teaches the limitations of claim 1 as discussed above. Modified Ward further teaches the polishing composition according to claim 1, wherein the cation is selected from the group consisting of Al³⁺, Ga³⁺, and In³⁺ (Ward expressly teaches Al³⁺ as the multivalent cation component and specifically teaches aluminum nitrate as an Al³⁺ salt; paragraph [0024]; Ward further experimentally evaluates Al³⁺ supplied as aluminum nitrate in a permanganate polishing composition; paragraphs [0047]-[0050]).
Regarding claim 10, modified Ward teaches the limitations of claim 1 as discussed above. Modified Ward further teaches the polishing composition according to claim 1, wherein the anion is a nitrate ion (NO₃⁻) or a chloride ion (Cl⁻) (Ward teaches that the corresponding anionic component of the multivalent cation component may comprise nitrate or chloride and specifically identifies aluminum nitrate as a multivalent-cation component; paragraph [0024]).
Regarding claim 11, modified Ward teaches the limitations of claim 1 as discussed above. Modified Ward further teaches the polishing composition according to claim 1, wherein the concentration of the metal salt in the polishing composition is 5 mM or more (Ward teaches an abrasive-containing polishing composition having aluminum nitrate nonahydrate at 0.25 wt.%, corresponding to 6.89 mM Al³⁺ in the polishing composition; paragraph [0056]). Because aluminum nitrate contains one Al³⁺ ion per formula unit, the disclosed 6.89 mM Al³⁺ concentration corresponds to a calculated aluminum nitrate concentration of 6.89 mM, which is greater than the claimed 5 mM.
Response to Arguments
Applicant argues that amended claim 1 now recites “wherein the metal salt is selected from salts of cations containing a metal belonging to Groups 13-16 in the periodic table and an anion,” and that the prior art relied upon in the previous rejection does not teach or suggest this limitation. See Applicant’s Remarks filed 07/30/2026.
Applicant’s arguments with respect to the rejection of claims 1-11 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. The previous rejection relied upon zirconium oxynitrate to satisfy the metal salt limitation. Zirconium is a Group 4 metal, whereas amended claim 1 now requires the metal of the cation to belong to Groups 13-16.
Accordingly, the previous rejection of claims 1-11 under 35 U.S.C. 102(a)(1) as being anticipated by Singh et al. (US 2021/0238448 A1) is withdrawn. Claim 2 has been canceled and is no longer under consideration.
However, upon further consideration, a new ground of rejection of claims 1 and 3-11 under 35 U.S.C. 103 is made over Ward et al. (US 2018/0340095 A1), as set forth in this Office action.
Applicant’s cited principles regarding obviousness have been considered. The new rejection accounts for the limitations of amended claim 1 and provides an articulated reason with rational underpinning for the modification of Ward.
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 JONATHAN CARTER whose telephone number is (571)272-8176. The examiner can normally be reached Monday - Friday 6:00 AM - 3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen can be reached at (571) 272-3176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN L CARTER/Examiner, Art Unit 1713
/ERIN F BERGNER/Primary Examiner, Art Unit 1713
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