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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-19, in the reply filed on 12/05/2025 is acknowledged.
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 1-19 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.
The term “substantially pure rutile titanium oxide” in claim 1, is a relative term which renders the claim indefinite. The term “substantially pure rutile titanium oxide” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specification does not provide any definition for the term that how much pure or the degree of purity is referred to claimed substantially pure? For the purpose of the examination, examiner interprets that any titanium oxide abrasive reads on the claimed substantially rutile titanium oxide.
Claims 2-19 directly or indirectly depends on the claim 1 and therefore, also include the limitation.
The term “substantially no ferric ion” in claim 15 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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(s) 1,4-8, 12,15 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jhang et al (US 2022/003368; provided with the IDS dated 8/7/20253).
Regarding claim 1, Jhang et al disclose a polishing composition comprises a water based liquid carrier; titanium oxide particles dispersed in the liquid carrier, the titanium oxide particles including rutile and anatase; and a pH in a range from about 7 to about 10 [0010]; and in a preferred embodiment, the titanium oxide particles may be substantially pure rutile [0021].
Jhang et al disclose that the liquid carrier comprises, consists essentially of, or consists of water, more preferably deionized water [0013].
Jhang et al disclose that the polishing composition may further include an oxidizing agent [0031].
Unlike the instant invention, Jhang et al may not disclose the entire pH range of the polishing composition is about 7 or less.
However, Jhang et al disclose above that the pH is about 7-10 [0010]; and aforesaid range overlaps the claimed range of pH about 7 or less and overlapping ranges are prima facie obvious, see MPEP 2144.05.
Regarding claims 4-5, Jhang et al disclose that the polishing composition may include about 0.01 wt. % or more of the titanium oxide particles at point of use (e.g., about 0.02 wt. % or more, about 0.05 wt. % or more, or about 0.1 wt. % or more); polishing composition may also include about 5 wt. % or less of the titanium oxide particles at point of use (e.g., about 2 wt. % or less, about 1 wt. % or less, or about 0.5 wt. % or less [0024]; and aforesaid range overlaps the claimed ranges in the claims 4-5 and overlapping ranges are prima facie obvious, see MPEP 2144.05.
Regarding claims 6-7, Jhang et al disclose that the polishing composition the titanium oxide particles may have an average particle size in a range from about 10 nm to about 300 nm (e.g., from about 20 nm to about 250 nm, from about 40 nm to about 200 nm, or from about 50 nm to about 150 nm) [0023].
Regarding claim 8, Jhang et al disclose that the oxidizing agent comprises peroxide [0031].
Regarding claim 12, Jhang et al disclose that the amount of peroxide (oxidizing agent) in the composition may be from about 0.1 wt. % to about 10 wt. % [0031]; and aforesaid range overlaps the claimed range of 1-20 wt% and overlapping ranges are prima facie obvious, see MPEP 2144.05.
Regarding claim 15, nowhere in the disclosure, Jhang et al teach the polishing composition comprises a ferric ion and therefore, it meets the limitation of the composition comprises substantially no ferric ion.
Regarding claims 18-19, Jhang et al disclose that the polishing composition may include substantially any suitable pH adjusting agents or buffering systems.; and suitable buffering agents may include phosphates, sulfates, acetates, malonates, oxalates, borates, ammonium salts, propionates, mixtures thereof, and the like [0025].
Claim(s) 2-3, 9-11 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jhang et al (US 2022/0033683) as applied to claim 1 above, and further in view of Chien et al (US 2019/0085205).
Regarding claims 2-3, Jhang et al disclose above for the claim 1 above but fail to disclose the claimed pH range of about 6 or less (claim 2) and a pH of about 5 or less (claim 3).
However, such pH ranges are obvious over the pH of about 7 taught by the Jhang et al because they are close enough that one of ordinary skill in the art would have expected them to have the same preferred properties. See MPEP 2144.05.I.
Additionally, in the same field of endeavor, Chien et al disclose a polishing composition having a pH of less than 7, For example, the polishing composition can have a pH of about 6.5 or less, e.g., about 6 or less, about 5.5 or less, about 5 or less, about 4.5 or less, or about 4 or less. Alternately, or in addition, the polishing composition can have a pH of about 1.0 or more, e.g., about 1.5 or more, about 2.0 or more, about 2.5 or more, about 3.0 or more, or about 3.5 or more [0051]; and aforesaid ranges overlaps the claimed ranges and overlapping ranges are prima facie obvious, MPEP 2144.05.
With regards to claims 9-11, Jhang et al disclose above for the claim 1 but fail to disclose the oxidizing agent is selected form the component listed in the claims 9-11.
However, in the same field of endeavor, Chien et al disclose a polishing composition comprises suitable oxidizing agents are known in the art and include, for example, peroxides, permanganates. Still other illustrative oxidizers include non-per compounds (e.g., bromates, chlorates, iodates, iodic acid, and cerium (IV) compounds such as ammonium cerium nitrate) [0059]; and aforesaid permanganates broadly encompasses the potassium permanganate in claim 11.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Chien et al's teaching of using any oxidizer without any limitation into the teaching of Jhang et al because all of them are functionally equivalent of each other as suggested by Chien et al.
Additionally, it would have been a simple substitution of known materials for predictable results.
Regarding claim 16-17, Chien et al disclose the polishing composition further comprises stabilizers, including organic acid and preferred organic acids include acetic acid, phthalic acid, citric acid, adipic acid, oxalic acid, malonic acid, aspartic acid, succinic acid, glutaric acid, pimelic acid, suberic acid, azelaic acid, sebacic acid, maleic acid, glutaconic acid [0066].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Chien et al's teaching of introducing organic acid as a stabilizer into the teaching of Jhang et al for the benefit of stabilizing the polishing composition as suggested by Chien et al.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jhang et al (US 2022/0033683) as applied to claim 1 above, and further in view of Scott (US 2005/0059085).
Jhang et al disclose above for the claim 1 but fail to disclose the composition further comprises a ferric ion.
However, in the same field of endeavor, Scott discloses a polishing composition (abstract; [0005]), wherein the composition comprises certain compound may perform more than one function. For example, some compounds can function both as a chelating and an oxidizing agent (e.g., certain ferric nitrates and the like) [0051].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ Scott's teaching of introducing a chelating agent as a ferric ion into the teaching of Jhang et al for the chelating function of the composition as suggested by Scott.
Conclusion
The prior art made of record, listed in the PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format.
For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713