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 .
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 with traverse of claims 1-10 and 13-15 in the reply filed on June 11, 2026 is acknowledged.
The Applicant argues that that the Office has failed to provide any evidence to
support the assertion that the claimed product can be made as the Office has alleged. However, as evidenced by Kyotani et al. (JP2020183329, a machine-translated English version is used), silica particles can be made using different types of catalysts (paragraph 0046).
The Applicant argues that that the Office has not established that the product can
be used in a materially different process or that such a process would be materially different. However, as evidenced by Kyotani et al. (JP2020183329, a machine-translated English version is used), silica particles can be used to polish synthetic quartz glass substrates, which are not semiconductor wafers (paragraph 0094).
The Applicant further argues that a search of all the claims would not impose a serious burden on the Office. This is not found persuasive because claims 1-10 and 13-15 are drawn to a composition, while claims 11-12 are drawn to a method of making a product and claims 16-18 are drawn to a method of using a product. Thus, the determination of patentability of Inventions I, II and III would require searches in searching different classes/groups or electronic resources, or employing different search strategies or search queries; and the prior art applicable to one invention would not likely be applicable to another invention. The above reasons support that a search of all the claims would impose serious burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL. Claims 11-12 and 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
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 1-10 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kyotani et al. (JP2020183329, a machine-translated English version is used).
Regarding claims 1-10, Kyotani discloses a silica particle (abstract), wherein an average primary particle diameter measured by a BET method is 34.4nm - 39.3nm (Examples 1-3, Table 1 and paragraph 0026); wherein an average secondary particle diameter measured by a DLS method is 61nm – 63.1 (Examples 1-3, Table 1 and paragraph 0029); wherein an association ratio is 1.55-1.77 (Examples 1-3, Table 1); wherein a content of metal impurity is 5 ppm or less (paragraph 0035); wherein the silica particle is amorphous (paragraph 0019 and Table 1); wherein the silica particle comprises a tetramethoxysilane condensate as a main component (paragraphs 0041 and 0090-0091). Kyotani is silent about wherein, in an image obtained by taking a scanning transmission electron image in a bright field mode using an ultra-high resolution electron microscope, a ratio of an area of a white portion within the silica particle to a total area of the silica particle is 2% to 12%; wherein in the image, a number ratio of fine particles having a particle diameter of 10 nm or less to particles having a particle diameter of 20 nm or more is 10% or less; wherein in the image, the ratio of the area of the white portion within the silica particle to the total area of the silica particle is 7% to 10%; and wherein in the image, a number ratio of fine particles having a particle diameter of 10 nm or less to particles having a particle diameter of 20 nm or more is 10% or less. However, Kyotani discloses that the starting compounds (tetramethoxysilane, methanol, water, ammonia) are the same as disclosed in the current application, while the process conditions (concentrations, reaction temperature, and parameters for pressurized heat treatment – pressure, temperature and time) for making the silica particles are within process parameter ranges disclosed in the current application (Kyotani: paragraphs 0090-0091 and Table 1; current application: paragraphs 0079-0084, 0096-0098 and 0109-0112). Because the starting reactants are the same and process conditions disclosed by Kyoyani are within the corresponding ranges disclosed by the current application, the silica particles produced are expected to have the properties of the silica particles of the current application, including properties indicated by the image data as recited in claims 1, 2 and 5. The fact that an average primary particle diameter measured by a BET method, an average secondary particle diameter measured by a DLS method, an association ratio, and a content of metal impurity are all within the corresponding range recited in the current application (claims 3, 4, 6 and 7) further confirms that silica particles disclosed by Kyotani are substantially the same as claimed in the current application. It is noted that claims 1, 2 and 5 are drawn to a composition claim and the recitations of image data are considered as the properties of the claimed composition. A composition claim covers what the composition is not what the composition does. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition.")
Regarding claim 13, Kyotani discloses silica sol comprising the silica particle according to claim 1 (paragraph 0091 and Table 1).
Regarding claim 14, Kyotani discloses wherein a content of the silica particle is 20 mass % based on 100 mass % of total content of the silica sol (paragraph 0091).
Regarding claim 15, Kyotani discloses a polishing composition comprising the silica sol according to claim 13 (paragraph 0094).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIONG-PING LU whose telephone number is (571) 270-1135. The examiner can normally be reached on M-F: 9:00am – 5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua L Allen, can be reached at telephone number (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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/JIONG-PING LU/
Primary Examiner, Art Unit 1713
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