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 1-9, in the reply filed on 11/10/2025 is acknowledged.
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.
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Claim(s) 1-4 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Egami et al (US 2021/0002513) in view of Lamphere et al (US 5,876,268).
Regarding claim 1, Egami et al disclose a polishing composition comprises: silica particles, reads on the claimed “abrasive grains”, which have (a) a primary particle diameter of 5-300 nm as calculated on the basis of a specific surface area determined by a BET method using nitrogen adsorption, (b) a particle diameter variation coefficient of 10% or less, and (c) a Sears number Y of 10.0-12.0, in a dispersion liquid (medium) [0020],[0055],[0056]; and a water-soluble polymer (see abstract; [0022],[0026]).
Egami et al also indicates that the silica particles form aggregates of 10-1,000 nm, which equates 0.01 to 1 micrometer in average particle diameter [0057].
Egami et al disclose that the sphericity of the silica particles is preferably 0.80 to 1.00. When the shape of the silica particles is a true sphere or closer to a true sphere, the smoothness of the polished surface is improved and the occurrence of defects can be suppressed. Therefore, the sphericity is more preferably 0.90 to 1.00 and particularly preferably 1.00 [0048], aforesaid sphericity corresponds the claimed “circularity” of the particles.
Egami et al fails to disclose the average particle size of more than 1.0 micrometer.
However, in the same field of endeavor, Lamphere et al disclose a composition with loose abrasive particles having an average particle size range from about 0.1 to about 50 micrometers, typically from about 1 to 30 micrometers; and the abrasivecomprises silica (col.14, lines 55-67).
Lamphere et al also disclose that loose abrasive slurries are usually the preferred means to generate the final polish because of the ability of the loose abrasive slurries to remove essentially all the remaining scratches to generate an optically clear surface that is essentially free of any defects, imperfections and/or minute scratches (col.2, lines 45-59).
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 Lamphere et al's teaching of using silica particles having more than 1.0 micrometer average particles size into the teaching of Egami et al for removing essentially all the remaining scratches to generate an optically clear surface that is essentially free of any defects as suggested by Lamphere et al.
It is noted that the claimed dispersion degree of the abrasive grains could be easily achievable as al the polishing components are disclosed above, are in similar nature as the claimed ones.
Regarding claim 2, Egami et al disclose that the content of the water- soluble polymer is preferably 0.001 to 10% by mass based on the total amount of the polishing composition [0060], which overlaps the claimed range of “less than 0.1 % by mass”; and overlapping ranges are prima facie obvious, MPEP 2144.05.
Regarding claims 3-4, Egami et al disclose that examples of the water-soluble polymer include a water- soluble cellulose, a water- soluble vinyl polymer, and a polyhydric alcohol polymer. Specific examples of the water-soluble cellulose include hydroxymethyl cellulose, hydroxyethyl cellulose, hydroxypropyl cellulose, etc. Further, examples of the water- soluble vinyl polymer include polyvinyl alcohol, polyvinyl pyrrolidone and carboxy vinyl polymer. Among the above, hydroxyethyl cellulose and polyvinyl pyrrolidone are preferable [0059] and aforesaid soluble polymer reads on th ethe claimed “nonionic polymer” as the instant claim 3.
Regarding claims 6-8, polishing an object containing a resin and a filler, would have been purely an intended use of the claimed composition and that has no patentable weight.
Additionally, the recitation of “the polishing composition is used for polishing an object to be polished containing resin and a filler” does not patentably distinguish the claimed polishing solution from the composition disclosed; and that is a statement of intended use that does not further limit the claimed invention while features of an apparatus (or product) may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114. Further, the claimed limitation is the inclusion of an article worked upon by the claimed structure, which does not impart patentability to the claims. See MPEP 2115. Since the structure of the prior art teaches all of the structural limitations of the claim, the structure is considered capable of meeting the intended use limitations
Egami et al in view of Lamphere et al at this time since the prior art meets the structural and/or chemical limitations set forth and there is nothing on record to evidence that the prior art product could not function in the desired capacity or that there is some additional implied structure associated with the term. The burden is shifted upon the Applicant to evidence the contrary.
Regarding claim 9, Egami et al in view of Lamphere et al disclose a polishing composition and a method of making such composition (see the rejection for the claim 1 in the above paragraphs).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Egami et al (US 2021/0002513) in view of Lamphere et al as applied to claim 1 above, and further in view of Asai et al (US 2019/0084121).
Modified Egami et al disclose above for the claim 1 but fail to teach the composition further comprises a redispersing agent.
However, in the same field of endeavor, Asai et al disclose a polishing composition comprises an auxiliary dispersing agent to ease redispersion of an aggregate of the abrasives may be further added to the polishing composition as necessary [0106],[0107].
Claim(s) 1-4 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over SUMITANI et al (US 2022/0363554) in view of Lamphere et al (US 5,876,268).
Regarding claims 1 and 3-4, SUMITANI et al disclose a polishing composition comprises silica particle in which an average value of a circularity coefficient measured by a field-emission scanning electron microscope is 0.90 or more, which prevent secondary aggregation, have excellent dispersion stability, and are suitable for polishing [0018],[0021]. SUMITANI et al also disclose the dispersion stability of the silica particles in a dispersion liquid is excellent, and an object to be polished having a smooth surface is obtained and the silica particles are excellent in the stability of the polishing performance [0036].
Therefore, without showing any criticality of the dispersion degree, it is expected that the claimed dispersion degree of the abrasive grains could be easily achievable as all the polishing components are disclosed above, are in similar nature as the claimed ones and expected to have the same property in order to achieve excellent polishing performance as suggested by SUMITANI et al [0036].
SUMITANI et al also disclose the composition further comprises a water-soluble polymer [0117] and the water-soluble polymer enhances wettability of the polishing composition with respect to the object to be polished typified by a silicon wafer [0118] and examples of the water-soluble polymer include a cellulose derivative, polyvinyl alcohol, polyvinylpyrrolidone, etc. [0119],[0120].
SUMITANI et al fails to disclose the average particle size of more than 1.0 micrometer.
However, in the same field of endeavor, Lamphere et al disclose a composition with loose abrasive particles having an average particle size range from about 0.1 to about 50 micrometers, typically from about 1 to 30 micrometers; and the abrasivecomprises silica (col.14, lines 55-67).
Lamphere et al also disclose that loose abrasive slurries are usually the preferred means to generate the final polish because of the ability of the loose abrasive slurries to remove essentially all the remaining scratches to generate an optically clear surface that is essentially free of any defects, imperfections and/or minute scratches (col.2, lines 45-59).
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 Lamphere et al's teaching of using silica particles having more than 1.0 micrometer average particles size into the teaching of SUMITANI et al for removing essentially all the remaining scratches to generate an optically clear surface that is essentially free of any defects as suggested by Lamphere et al.
Regarding claim 9, SUMITANI et al in view of Lamphere et al disclose a polishing composition and a method of making such composition (see the rejection for the claim 1 in the above paragraphs).
Regarding claims 6-8, polishing an object containing a resin and a filler, would have been purely an intended use of the claimed composition and that has no patentable weight.
Additionally, the recitation of “the polishing composition is used for polishing an object to be polished containing resin and a filler” does not patentably distinguish the claimed polishing solution from the composition disclosed; and that is a statement of intended use that does not further limit the claimed invention while features of an apparatus (or product) may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See MPEP 2114.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-6 of co-pending Application No. 18/278,467 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention in the co-pending application ‘283 encompasses the instant invention. It is expected that the claimed dispersion degree of the abrasive grains in the instant invention could be easily achievable as all the polishing components are disclosed in the application ‘467 having the similar average primary particles size (D50) and the circularity of the primary particles and expected to have the same property.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record, PTO-892 and not relied upon is considered pertinent to applicant's disclosure. Kwon et al (US 2017/0051180) disclose that evenly dispersing the metal oxide abrasive particles in the dispersing solution, which is essential for adjusting size, uniformity and dispersion stability degree of the particles [0058];
Hong et al (US 2009/0193721) disclose that most important factors in the CMP process, a polishing speed, quality of a polishing surface, that is, an occurrence rate of micro-scratch on the polishing surface may be given. These two factors may rely greatly on a degree of dispersion of the abrasive particles, characteristics of the polishing surface, crystallinity of the abrasive particles, and the like [0003].
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).
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713