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 .
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 5-6 and 8-15 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.
Claims 5-6 have intended use limitations “in use for polishing a material having a Vickers hardness of 1500 Hv or higher” and “in use for polishing silicon carbide.” It is unclear how these claims further limit the base claim. Do these limitations change the composition in some manner that is not described in the claim? A composition is defined by its components, not by how it is used.
Claims 8-15 have the term “type” in the term “multi-agent-type polishing composition” render the claims indefinite. MPEP 2173.05 (b) E. The term may be simply deleted to overcome this rejection.
In claim 15, the term ”part C” is unclear. Is this a required part of the claim? What does it comprise? The metes and bounds of the claim are thus unclear.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mori et al (US 2024/0400862 A1).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Mori discloses a polishing composition comprising sodium permanganate as an oxidant [0020], a transition metal salt different from the oxidant [0061]), and water [0075],
wherein the polishing composition comprises the oxidant in an amount of more than 10 % by weight (e.g., about 45 wt% or less, 40 wt% or less [0021]). A range of below 45 wt% or below 40 wt%, overlaps with the cited range of greater than 10 wt% with sufficient specificity so as to anticipate the range because of the large overlapping ranges.
As to claim 2, the transition metal salt of Mori comprises a transition metal and oxygen [0062]-[0063]. It is expected to form a multi-nuclear transition metal complex when dissolved in water because it is the same composition as in the instant invention [e.g. 0033, boric acid salt], and therefore the same results are expected. MPEP 2112.01, II (If the composition is physically the same, it must have the same properties).
As to claim 3, Mori discloses that the polishing composition further comprises an abrasive [0037].
As to claim 4, Mori discloses that the polishing composition has a pH of 6.0 or less and 1.0 or more [0079].
As to claims 5-6, these limitations relate to the method of using the composition, and are given little patentable weight in a composition claim.
As to claim 7, Mori discloses using the polishing composition to polish an object to be polished [0082], [0085].
As to claim 8, Mori discloses a multi-agent polishing composition comprising
a part A comprising water and sodium permanganate as an oxidant [0020]
a part B comprising water [0075] and a transition metal salt different from the oxidant [0061],
wherein the polishing composition comprises the oxidant in an amount of more than 10 % by weight (e.g., about 45 wt% or less, 40 wt% or less [0021]). A range of below 45 wt% or below 40 wt%, overlaps with the cited range of greater than 10 wt% with sufficient specificity so as to anticipate the range because of the large overlapping ranges.
As to claim 9, the transition metal salt of Mori comprises a transition metal and oxygen [0062]-[0063]. It is expected to form a multi-nuclear transition metal complex when dissolved in water because it is the same composition as in the instant invention [e.g. 0033, boric acid salt], and therefore the same results are expected. MPEP 2112.01, II (If the composition is physically the same, it must have the same properties).
As to claim 10, Mori discloses that the order of mixing is not fixed and thus components can be mixed in any order [0080], which encompasses adding abrasive as cited.
As to claim 11, Mori discloses to add the components is not limited, and thus any order is appropriate [0080], which encompasses having the abrasive as a part C, as cited.
As to claims 12-13, these limitations relate to the method of using the composition, and are given little patentable weight in a composition claim.
As to claim 14, Mori discloses using the polishing composition to polish an object to be polished [0082], [0085].
As to claim 15, Mori discloses that the order to combine the different parts of the composition is not fixed [0080], which broadly interpreted encompasses mixing as cited and supplying the mixed polishing composition during polishing.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fu et al (US 2021/0062045 A1) in view of Matsuyama et al (US 2019/0010359 A1).
Fu discloses a polishing composition comprising permanganate as an oxidant (potassium permanganate, [0020]), a transition metal salt different from the oxidant (multi-valent metal borate, such as iron borate [0011]-[0012]; iron is a transition metal that is different from the oxidant), and water [0023],
wherein the polishing composition comprises the oxidant in an amount of more than 10 % by weight (e.g., not greater than 40 wt%, not greater than 20 wt% [0021], [0060] as it depends from [0058]). A range of below 40 wt% or below 20 wt%, overlaps with the cited range of greater than 10 wt% with sufficient specificity so as to anticipate the range because of the large overlapping ranges.
Fu fails to disclose sodium permanganate. Rather, Fu discloses potassium permanganate. Matsuyama teaches a polishing composition similar to Fu that includes a permanganate [0030] and transition metal salt such as an iron salt [0039] and water (aqueous solution 0033]). Further Matsuyama teaches that to improve the polishing efficiency, the permanganate salt may be either sodium permanganate, potassium permanganate, or both [0030]. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include sodium permanganate as an oxidant in the composition of Fu because Matsuyama teaches it is functionally equivalent to potassium permanganate, and because it is expected provide polishing efficiency to the polishing composition.
As to claim 2, the iron borate salt of Fu comprises a transition metal, iron, and oxygen. It is expected to form a multi-nuclear transition metal complex when dissolved in water because it is the same composition as in the instant invention [0033, boric acid salt], and therefore the same results are expected. MPEP 2112.01, II (If the composition is physically the same, it must have the same properties).
As to claim 3, Fu discloses that the polishing composition further comprises an abrasive [0027].
As to claim 4, Fu discloses that the polishing composition has a pH of at least 1 and not greater than 7, or not greater than 5, or in another example at least 1.5 and not greater than 5 [0026]. These ranges describe the cited range with sufficient specificity because of the large overlap so as to anticipate the cited range.
As to claims 5-6, these limitations relate to the method of using the composition, and are given little patentable weight in a composition claim.
As to claim 7, Fu discloses using the polishing composition to polish an object to be polished [0034].
As to claim 8, Fu discloses a multi-agent polishing composition comprising
a part A comprising water and permanganate as an oxidant (potassium permanganate, [0020]),
a part B comprising water and a transition metal salt different from the oxidant (multi-valent metal borate, such as iron borate [0011]-[0012]; iron is a transition metal, and thus Fu discloses a transition metal salt that is different from the oxidant),
wherein the oxidant is contained in an amount of more than 10 % by weight in the multi-agent- type polishing composition (e.g., not greater than 40 wt%, not greater than 20 wt% [0021], [0060] as it depends from [0058]). A range of below 40 wt% or below 20 wt%, overlaps with the cited range of greater than 10 wt% with sufficient specificity so as to anticipate the range because of the large overlapping ranges.
Fu fails to disclose sodium permanganate. Rather, Fu discloses potassium permanganate. Matsuyama teaches a polishing composition similar to Fu that includes a permanganate [0030] and transition metal salt such as an iron salt [0039] and water (aqueous solution 0033]). Further Matsuyama teaches that to improve the polishing efficiency , the permanganate salt may be either sodium permanganate, potassium permanganate, or both [0030]. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include sodium permanganate as an oxidant in the composition of Fu because Matsuyama teaches it is functionally equivalent to potassium permanganate, and because it is expected provide polishing efficiency to the polishing composition.
As to claim 9, the iron borate salt of Fu comprises a transition metal, iron, and oxygen. It is expected to form a multi-nuclear transition metal complex when dissolved in water because it is the same composition as in the instant invention [0033, boric acid salt], and therefore the same results are expected. MPEP 2112.01, II (If the composition is physically the same, it must have the same properties).
As to claim 10, Fu discloses that the composition comprises an abrasive [0027]. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include an abrasive in part A or part B in the composition of Fu because Fu teaches that the abrasive is useful to include, and such is expected to give the predictable results of a solution ready to form the desired composition.
As to claim 11, Fu discloses to add the abrasive to the base composition [0027], which encompasses having the abrasive as a part C, as cited.
As to claims 12-13, these limitations relate to the method of using the composition, and are given little patentable weight in a composition claim.
As to claim 14, Fu discloses using the polishing composition to polish an object to be polished [0034].
As to claim 15, Fu discloses to combine the different parts of the composition prior to polishing [0038], which encompasses mixing the separate parts, and Fu discloses polishing while supplying the mixed polishing composition [0038]. Fu discloses that the first package may comprise a multi-valent metal salt, the second package may comprise boric acid, and the multi-valent metal borate is formed when mixed prior to etching [0038]. The oxidant may be contained in the package with the boric acid [0039]. Broadly interpreted, because all parts are mixed, they are all mixed prior to supplying the mixed polishing composition to object to be polished, as cited.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of copending Application No. 18/696,793 (reference application) in view of Fu et al (US 2021/0062045 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the ’793 application claims an oxidant of sodium permanganate (claim 1), an abrasive (claim 1) and a transition metal salt (claim 6). The ’793 application fails to claim that the content of the sodium permanganate is greater than 10 wt%. The discussion of Fu from above is repeated here. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to provide the cited content of the sodium permanganate in the ’793 application as cited because Fu teaches that it is known and useful in order to achieve polishing efficiency, and such is expected to give the predictable result of a polishing composition ready for polishing an object to be polished.
As to claims 2 and 9, the cations of the transition metal element when forming a salt in solution would inherently form a complex with one or both of oxygen and hydrogen as cited because the same materials are present, the same results are expected.
As to claim 3-4, the other claim limitations of the ’793 application render obvious including an abrasive (claim 1) and the pH range (claim 8).
As to claims 7 and 14, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to use the modified composition of the ’793 application for polishing as cited because the composition is specifically described as a polishing composition.
As to claims 10-11 and 15, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to mix as cited in the method of the ’793 application because Fu teaches that it is useful to mix the various parts of the composition.
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 and not relied upon is considered pertinent to applicant's disclosure. Sakai et al (US 2024/0076522 A1) is cited to show a sodium permanganate [0013], and zirconyl salt [0029], and mildly acidic composition [0024] for polishing SiC [0046].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA K ALANKO whose telephone number is (571)270-0297. The examiner can normally be reached Monday-Friday, 9 am-5pm.
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/ANITA K ALANKO/Primary Examiner, Art Unit 1713
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