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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 9, as to the point that the applied prior art fail to teach or suggest the currently amended claims 1 and 9, specifically, the redispersing agent selected from the amended claims 1 and 9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner pointed out that Applicant acknowledged that Lamphere’s immobilized abrasive particles size ranging from 0.01 to 10 micrometer (col.10, lines 31-35), which overlaps the particle size taught in Egami. Applicant argue that Lamphere is directed towards an article including fixed abrasives but not loose abrasive particles in a composition.
In response, examiner states that Lamphere indicates the abrasive particles having average particles size matters during polishing process, it is preferred that average particle size of the abrasive particles is from about 0.001 to 20 micrometers and they are dispersed in a medium and it is preferred that the particle size distribution be tightly controlled such that the resulting abrasive article provides a very consistent surface finish on the glass surface after polishing (col.10, lines 31-55); and aforesaid disclosure easily gives a knowledge to the one of ordinary skill in the art to achieve abrasive particles having the disclosed average size for polishing with uniformity, even they are used in a polishing article.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3,6-9 and 12-13, 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) and further in view of Tsuchiya et al (US 9,579,769).
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 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 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. [0059].
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]; and aforesaid “1 micrometer” very much close enough to the claimed range of “more than 1.0 micrometer”.
The claimed particles average size of more than 1.0 micrometer is obvious over the Egami et al’s disclosure of 1 micrometer, 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.
Egami et al may not explicitly 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 abrasive comprises 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.
Modified Egami et al disclose above for the claim 1 but fail to teach the composition further comprises a redispersing agent and the redispersing agent is selected from the list recited in the claim 1.
However, in the same field of endeavor, Tsuchiya et al disclose a composition that imparts high hydrophilicity to the surface of a polished substrate, reduces LPDs on the surface of a polished substrate, contains a water-soluble polymer, and abrasive grains highly dispersed therein (col. 2, lines 35-42); wherein the composition comprises abrasive grains, a water-soluble polymer, an aggregation inhibitor, and water (col.2, lines 47-50); wherein, the aggregation inhibitor in the polishing composition generally exhibits the action of suppressing aggregation of the abrasive grains by the water-soluble polymer (col.5, lines 33-37). Examples of the aggregation inhibitor include vinyl-based water-soluble polymers, oxyalkylene polymers, oxyalkylene copolymers, and silicone polymers. Specific examples of the vinyl-based water-soluble polymer include polyvinylpyrrolidone, polyvinylcaprolactam, polyacrylamide, and polyacrylic acid. Specific examples of the oxyalkylene polymer include polyethylene glycol and polypropylene glycol (col.5, lines 51-66); and aforesaid “aggregation inhibitor” reads on the claimed “redispersing agent”.
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 Tsuchiya et al's teaching of introducing an aggregation inhibitor (corresponding to the claimed redispersing agent) into the teaching of modified Egami et al for suppressing aggregation of the abrasive grains as taught by Tsuchiya et al.
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 claim 3, Egami et al disclose that 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 the 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 and Tsuchiya et al, 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 and Tsuchiya 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 claim 12, Modified Egami et al disclose above in view of 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 abrasive comprises silica (col.14, lines 55-67).
Regarding 13, Egami et al disclose the dispersion liquid is concentrated at a pH of lower than 7 ([0066];
Tsuchiya et al disclose the pH of the polishing composition is preferably 12 or less, and more preferably 11 or less. When the pH of the polishing composition is in the above range, a practically preferable polishing rate is achieved (col. 7, lines 32-37); and aforesaid overlaps the claimed range of “pH of 2.0 or more and 7.0 or less”.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-6 of U.S. Patent No. 18/278,467 in view of Tsuchiya et al (US 9,579,769).
The only difference between the co-pending application is that the composition in the application ‘283 requires the composition include a water-soluble polymer listed in the claim 1.
However, in the same field of endeavor, Tsuchiya et al disclose a composition comprises a water-soluble polymer that impart hydrophilicity to the surface of a polished substrate, and abrasive grains highly dispersed therein (col. 2, lines 35-42; abstract); and the water-soluble polymer also has such a property as to crosslink the abrasive grains to form aggregates. Examples of the water-soluble polymer include celluloses and polysaccharides. Specific examples of the celluloses include hydroxyethylcellulose, hydroxypropylcellulose, and carboxymethylcellulose. Specific examples of the polysaccharides include starch, cyclodextrin, trehalose, and pullulan (col. 4, lines 55-col.5, line 6).
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 Tsuchiya et al's teaching of introducing a water-soluble polymer into the teaching of the co-pending application’ 467 for imparting hydrophilicity to the surface of a polished substrate during polishing as suggested by Tsuchiya et al.
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 SHAMIM AHMED whose telephone number is (571)272-1457. The examiner can normally be reached M-TH (8-5:30pm).
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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.
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713
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