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 with traverse of Group II, claims 3-11, in the reply filed on 7/22/2026 is acknowledged. The traversal is on the ground(s) that one of the ordinary skill in the art would not select abrasive grains based on an average value of the positron lifetime as suggested by WO-923. This is not found persuasive because WO-923 teaches or suggests abrasive’s positron lifetime value matters as the abrasive as the abrasive grains are selected on the basis of the average value, discusses in the previous communication; and no single general inventive concept exists, therefore, restriction is appropriate.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
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) 3-7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubota et al (WO-2022070923 A1), additionally, in view of Kanamaru et al (US 2021/0189176).
Regarding claims 3-4, Kubota et al disclose a CMP slurry comprising selecting cerium oxide abrasive grains wherein the abrasive grains having a positron lifetime of 0.3650 ns or less or (365 ps or less) and “the positron lifetime required for the positron emitted from 22 Na to annihilate with the electron, and is used as a probe for ultrafine voids such as lattice defects and free volumes on the order of sub-nanometer to nanometer [0017], [0018]. That is, the shorter the positron lifetime, the higher the density of the particles” or claimed abrasive grains are selected on the basis of average value of a positron lifetime measured by a positron annihilation method [0018],[0019].
Unlike the claimed invention, Kubota doesn’t describe the positron lifetime value is 360 ps or less.
Kubota et al disclose that the abrasive grains are prepared by wet processing (liquid phase), which appears to be similar process as the instant invention and expected to have the same crystallinity of the obtained abrasive grains.
However, Kubota’s teaching of 365 ps or less would include those under 360 ps and also describes that “the shorter the positron lifetime, the higher the density of the particles ([0018]). Overlapping ranges are held obvious. See MPEP 2144.05. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, one of ordinary skill in the art would find it obvious before the effective filing date of the invention to use ranges including claimed range, depending on a desired density of the particles, to provide a CMP composition with expected results.
Additionally, in the same field of endeavor, Kanamaru et al disclosed that ceria (cerium oxide) can be obtained by oxidizing cerium salts such as cerium carbonate, cerium oxycarbonate, cerium nitrate, cerium sulfate, cerium oxalate, and cerium hydroxide. Examples of the oxidation method include a firing method in which a cerium salt is fired at about 600 to 900° C. [0039].
Examiner pointed out that obtaining or producing the cerium oxide abrasive grains of Kanamaru et al is similar in natrure, such as firing temperature of the cerium source between 600-900 degree C as the instant invention (see [0018],[0019] in the instant specification) and expected to have the same property, namely, the average value of a positron lifetime as measured is 360 ps or less.
Paragraph 19 of the application’s specification describes “as the firing temperature of the cerium source when a raw material (raw material for obtaining abrasive grains) containing cerium is obtained is higher, there is a tendency that the positron Lifetime is smaller (shorter)” therefore, it is expected that the cerium oxide abrasive grains from Kanamaru et al’s method would have a the average value of a positron lifetime as measured is 360 ps or less as measured by a positron annihilation method.
Regarding claims 5-6, Kubota et al disclose that average particle size of the abrasive grains are 30 nm or more or 50 nm or more [0022]-[0023]; and aforesaid teaching overlaps the claimed rages; and overlapping ranges are prima facie obvious, MPEP 2144.05.
Regarding claim 7, Kubota et al disclose that the abrasive grains comprising cerium oxide (abstract), [0013]).
Regarding claims 9-11, Kubota et al disclose above for the claim 3 but fail to disclose the abrasive grains of cerium oxide derived form cerium hydroxide (claim 9), cerium carbonate (claim 10) and cerium oxycarbonate (claim 11).
However, in the same field of endeavor, Kanamaru et al disclosed that ceria (cerium oxide) can be obtained by oxidizing cerium salts such as cerium carbonate, cerium oxycarbonate, cerium nitrate, cerium sulfate, cerium oxalate, and cerium hydroxide [0039].
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 Kanamaru et al's teaching of using cerium hydroxide or cerium carbonate or cerium oxycarbonate into the teaching of Kubota et al because they are suitable equivalents or a simple substitution of known materials for predictable result.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubota et al (WO-2022070923 A1), additionally, in view of Kanamaru et al (US 2021/0189176) as applied to claim 3 above, and further in view of PubChem (1,2,3-Propanetricarboxylic acid, 2-hydroxy-,cerium(3+) salt (1:1); provided with the IDS dated 8/31/2026).
With respect to claim 8, modified Kubota et al fail to describe the cerium oxide derived from a cerium complex of trimesic acid.
However, cerium complex of trimesic acid such as 1,2,3-Propanetricarboxylic acid, 2-hydroxy-,cerium(3+) salt (1:1) is a known compound as shown here by PubChem.
Therefore, in the absent of an expected result or criticality of such, it would have been obvious to one skilled in the art before the effective filing date of the invention to use any known cerium source including any cerium complex of trimesic acid in order to make cerium oxide.
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).
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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713
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