DETAILED ACTION
Claims 1-14 are pending before the Office for review.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 28, 2026.
Applicant's election with traverse of Group I (claims 1-9) in the reply filed on August 28, 2026 is acknowledged. The traversal is on the ground(s) that the patent office has not established that it would pose an undue burden to examine the full scope of the invention and Applicants do not agree with the assessment that Hou discloses the subject matter of claim 1 and that therefore a lack of unity of invention exists. This is not found persuasive because a lack of unity of invention exists in view of the current rejection of the claims under Nishida in view of Lan and Hou. In addition, the require for a restriction is based on lack of unity of invention wherein the group are not so linked as to form a single general inventive concept under PCT Rule 13.1
The requirement is still deemed proper and is therefore made FINAL.
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.
The factual inquiries 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 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over LAN et al (WO 2014/184708) in view of NISHIDA et al (U.S. Patent Application Publication 2003/0186634) and OGATA et al (U.S. Patent Application Publication 2016/0222265).
With regards to claim 1, Lan discloses a composition comprising water (Page 13 lines 11-13 discloses mixing components in water) and a colloidal silica particle wherein the surface modified silica particles are modified by metallate ions selected from the group consisting of aluminate wherein the composition is acidic (Pages 4-6).
Lan does not explicitly disclose a core-shell silica particles, the core-shell particles comprise a core and a shell, said shell comprising aluminate moieties internal to an outer surface of the silica particles.
Nishida discloses a polishing particle having a core-shell structure wherein the core-shell silica particle comprises a core comprising materials including SiO2 and a shell wherein the shell portion comprises silica (Paragraphs [0014]-[0023]). Ogata discloses forming a core-shell particle wherein the cover layer includes alumina in addition to silica wherein the alumina source incudes sodium aluminate (Paragraphs [0002], [0017], [0033]). As such Lan as modified by Nishida and Ogata renders obvious a core-shell silica particles, the core-shell particles comprise a core and a shell, said shell comprising aluminate moieties internal to an outer surface of the silica particles.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Lan to include the core-shell particle as rendered obvious by Nishida because the reference of Nishida teaches that particles having a core and shell are capable of insuring desired polishing rate and polishing precision to provide a smooth polished surface without any scratches (Paragraph [0043]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing composition using the particles as rendered obvious by Nishida. MPEP 2143D
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Lan to aluminate moieties as rendered obvious by Ogata because one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing composition using the aluminate moieties as rendered obvious by Nishida. MPEP 2143D
With regards to claim 2, the modified teachings of Lan render obvious wherein the composition has a pH of about 2 to 6 (Lan Page 4 lines 31-33, page 11 lines 26-28) which renders obvious a pH of at least 1.5 and of at most 5.5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05(I)
With regards to claim 3, the modified teachings of Lan render obvious wherein the aluminate-comprising shell has a thickness of 1 to 50 nm (Nishida Paragraph [0016]) which renders obvious at least 0.10 nm and at most 2.0 nm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05(I)
With regards to claim 5, the modified teachings Lan renders obvious wherein the composition has a zeta potential of -15 mV and wherein the core-shell silica particles are comprised in the composition in at least 0.1 wt% and at most 30 wt% (Lan Page 5 lines 14-21) which renders obvious wherein the composition has a zeta potential of at most 0 mV and of at least −30 mV, determined by electrophoretic light scattering for a composition comprising 15 wt % of silica particles, with wt % relative to the total weight of the composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05(I)
With regards to claim 6, the modified teachings of Lan render obvious wherein the core-shell silica particles are comprised in the composition in at least 0.1 wt% and at most 30 wt% (Lan Page 5 lines 14-21) which renders obvious at least 0.1 wt% and in at most 50 wt% with wt% being relative to the total weight of the composition.
With regards to claim 7, the modified teachings of Lan render obvious wherein the silica particles comprise an alkoxy organosilane on the surface (Nishida Paragraphs [0028]-[0034]).
With regards to claim 8, the modified teachings of Lan render obvious wherein the composition comprises any one or more of the group consisting of biocide, pH adjusting agent, pH buffering agent, oxidizer, chelating agent, corrosion inhibitor and surfactant (Lan Pages 6-11).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over LAN et al (WO 2014/184708) in view of NISHIDA et al (U.S. Patent Application Publication 2003/0186634) and OGATA et al (U.S. Patent Application Publication 2016/0222265), as applied to claims 1-3 and 5-7, in further view of HOU et al (U.S. patent Application Publication 2008/0096470).
With regards to claim 4, the modified teachings of Lan render obvious the limitations to claim 1.
However the modified teachings of Lan doe not explicitly disclose wherein the amount of aluminum comprised in the aluminate-comprising phase is at least 500 ppm and at most 25,000 ppm, with ppm relative to the respective weight of the aluminate-comprising shell.
Hou discloses a composition comprising surface modified silica polishing particles wherein the surface modifier is a metal oxide including aluminum wherein the surface charge modified is sodium aluminate such that the silica polishing particles can be maintained stably and suitably in the acidic environment of the composition (Paragraphs [0038]-[0045]). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) MPEP 2144.05(II)(A) Therefore it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to optimize the amount of aluminum in the aluminate phase to amounts including Applicant’s claimed amount of at least 500 ppm and at most 25,000 ppm in order to modify the surface charge of the silica polishing particle such that the silica polishing particles can be maintained stably and suitably in the acidic environment of the composition as taught by the modified teachings of Lan (MPEP 2144.05(II)(A), Hou Paragraph [0045]).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to further modify the modified composition of Lan to aluminate moieties aluminum concentration as rendered obvious by Hou because one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing composition using the aluminate moieties aluminum concentration as rendered obvious by Hou. MPEP 2143D
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE P. DUCLAIR whose telephone number is (571)270-5502. The examiner can normally be reached 9-6:30 M-F.
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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713
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