DETAILED ACTION
This is the Office action based on the 18771727 application filed July 12, 2024, and in response to applicant’s argument/remark filed on June 15, 2026. Claims 1-20 are currently pending and have been considered below.
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 .
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 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.
Election/Restrictions
Applicant’s election of the invention of Group I, claims 1-14 in the reply filed on June 15, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP §818.03(a)). Claims 15-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claim Interpretations
Applicant has elected Group I, which is drawn to a chemical composition, in response to the Election/Restriction requirement.
The claims are drawn to a chemical composition, and as such will be examined under such conditions. The process of forming the composition and using the composition, or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight. (Please see MPEP 2114 R1-2115 R2 for further details). It has been held that claim language that simply specifies an intended use or field of use for the invention generally will not limit the scope of a claim (See MPEP 2106; Walter, 618 F.2d at 769, 205 USPQ at 409). Particularly, the process of making the composition is viewed as directed to a product-by-process claim and is given little patentable weight. “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Please see MPEP 2113 for further details.
Claim 6 recites “The slurry composition of claim 1, wherein the abrasive particles comprise a single material or a mixture of two types of materials with different average particle diameters. Since claim 6 allows two options: 1) the abrasive particles comprise a single material and 2) the abrasive particles comprise a mixture of two types of materials with different average particle diameters, when Examiner selects one option, the other option will not be considered.
Claim 7 recites “(t)he slurry composition of claim 6, wherein the abrasive particles comprise a single material of first abrasive particles or a mixture of the first abrasive particles and second abrasive particles, and an average particle diameter ratio of the first abrasive particles and the second abrasive particles is about 1:2.5 to about 1:10”. Since claim 7 allows two options: 1) the abrasive particles comprise a single material of first abrasive particles and 2) the abrasive particles comprise a mixture of the first abrasive particles and second abrasive particles, when Examiner selects one option, the other option will not be considered.
Claim 8 recites “(t) he slurry composition of claim 7, wherein the average particle diameter of the first abrasive particles is about 10 nm to about 40 nm, and the average particle diameter of the second abrasive particles is about 25 nm to about 100 nm.”. Since claim 7 allows two options: 1) the abrasive particles comprise a single material of first abrasive particles and 2) the abrasive particles comprise a mixture of the first abrasive particles and second abrasive particles, when Examiner selects one option, the other option will not be considered.
Claim 9 recites “(t) he slurry composition of claim 7, wherein a weight ratio of the first abrasive particles to the second abrasive particles is about 1:1 to about 10:1”. Since claim 7 allows two options: 1) the abrasive particles comprise a single material of first abrasive particles and 2) the abrasive particles comprise a mixture of the first abrasive particles and second abrasive particles, when Examiner selects one option, the other option will not be considered.
Claim 10 recites “(t) he slurry composition of claim 7, wherein a weight ratio of the first abrasive particles to the second abrasive particles is about 2:1 to about 6:1”. Since claim 7 allows two options: 1) the abrasive particles comprise a single material of first abrasive particles and 2) the abrasive particles comprise a mixture of the first abrasive particles and second abrasive particles, when Examiner selects one option, the other option will not be considered.
Claim Rejections - 35 USC § 102/35 USC § 103
The following is a quotation of 35 U.S.C. 102:
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..
The following is a quotation of 35 U.S.C. 103:
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-10 and 12-14 rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dockery et al. (U.S. PGPub. No. 20170121561), hereinafter “Dockery”:--Claims 1, 4, 12, 14: Dockery teaches a polishing composition (abstract) comprisingabrasive particles, preferably cationically-charged silica abrasive particles ([0024]), wherein the abrasive particles may present at a concentration 1-20 wt.% ([0046]);cationic surfactants, such as 1-dodecylpyridinium chloride hydrate ([0090], Table 1);a nitrogen-containing corrosion inhibitor ([0102-0105]);an oxidizer, wherein the oxidizer may present at a concentration about 0.1-5 wt.% ([0100-0101]);a liquid carrier, such as water and/or an alcohol ([0072])a pH adjusting agent to maintains a pH of 2-6 ([0073-0074]). It is noted that 1-dodecylpyridinium chloride hydrate is a C17 aliphatic heterocyclic compound containing a pyridinium ring having a nitrogen, a chlorine, and a C12 alkyl group. Alternately, although Dockery does not disclose the exact combination of components recited in claim 1, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a polishing slurry comprising the above components from the list of possible components taught by Dockery in the absence of an unexpected result.--Claims 2, 3: Since the 1-dodecylpyridinium chloride hydrate is the same as the corrosion inhibitor taught by Applicant in claim 3, it must possess the property of corrosion inhibiting, as taught by Applicant.--Claim 5: Dockery further teaches that the abrasive particles have an average diameter about 10-100 nm ([0023-0024, 0045]).--Claim 6: Dockery further teaches that the abrasive particles may be silica abrasive particles ([0022, 0024]). Please see Claim Interpretations. --Claims 7, 9, 10: Dockery further teaches that the abrasive particles may be silica abrasive particles ([0022, 0024]). Please see Claim Interpretations. --Claim 8: Dockery further teaches that the abrasive particles have an average diameter about 10-100 nm ([0023-0024]). It is noted that this overlaps the range of the average particle diameter of the first abrasive particles recited in claim 8.--Claim 13: Dockery further teaches that the cationic surfactants may present in any suitable amount, such as 1000 ppm ([0093]). It is noted that 1000 ppm is equivalent to about 0.001 wt.%.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 11 rejected under 35 U.S.C. 103 as being unpatentable over Dockery as applied to claim 1 above, and further in view of Grumbine et al. (U.S. Pat. No. 9127187), hereinafter “Grumbine”.--Claim 11: Dockery teaches the invention as above. Dockery further teaches that the abrasive particles are preferably cationically-charged ([0024-0025, 0027]), such as by incorporating aminosilane at an external surface of the particles ([0055-0056, 0061-0062]) by using a method taught in U.S. Pat. No. 9127187 ([0044]). In U.S. Pat. No. 9127187, Grumbine teaches a method for providing cationically charged silica abrasive particles, comprising treating the silica abrasive particles with an aminosilane compound (Col. 5, Lines 13-51).Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to treat the silica abrasive particles with an aminosilane compound to cationically-charged the silica abrasive particles in the invention of Dockery because Dockery teaches to use the method taught by Grumbine, and Grumbine teaches that such method would be effective.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS PHAM whose telephone number is (571) 270-7670 and fax number is (571) 270-8670. The examiner can normally be reached on MTWThF9to6 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (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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/THOMAS T PHAM/Primary Examiner, Art Unit 1713
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