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 § 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito et al (WO 2020/255921 A1).
For purposes of the rejection, reference is made to the English language equivalent document, US 2022/0243093 A1.
Ito discloses an abrasive slurry (polishing composition, abstract) comprising:
manganese oxide abrasive grains containing manganese oxide particles [0024];
permanganate ions [0067], [0069]; and
phosphates [0081].
As to claim 2, Ito discloses hydrogen phosphates [0081], which are inorganic phosphorus compounds.
As to claim 8, Ito discloses polishing [0111] an object to be polished [0111] using the abrasive slurry according to any one of claim 1.
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.
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 3-7 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (WO 2020/255921 A1), as applied to claim 1, and further in view of Morinaga et al (US 2019/0153263 A1).
For purposes of the rejection, reference is made to the English language equivalent document of Ito et al, US 2022/0243093 A1.
As to claim 3, Ito fails to explicitly disclose pyrophosphate and discloses only a general class of “phosphates” [0081].
Morinaga teaches that in abrasive slurries, phosphates may include pyrophosphate compounds. More specifically, Morinaga teaches an abrasive slurry [0001] comprising manganese oxide abrasive grains [0038], a liquid medium such as water [0052], a pH adjustment agent [0055], and other additives [0060] that are known in the patent literature (“PTLs” [0061]) and ordinary to include in polishing compositions [0061]. Among the additives are pyrophosphates salts [0067] as dispersing agents [0067], [0060].
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include pyrophosphates in the abrasive slurry of Ito because Morinaga teaches that they are useful to include in such slurries as dispersing agents.
As to claims 4-5, Morinaga also teaches that carboxymethyl cellulose is a useful water-soluble polymer to include in an abrasive slurry [0066] to act on the surface of the polishing object or the surface of the abrasive [0060]. It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to include carboxymethyl cellulose in the abrasive slurry of Ito because Morinaga teaches that they are useful to include in slurries to act on either the polishing object or the surface of the abrasive. Because the carboxymethyl cellulose is the same composition as cited, it is also expected to act as a surfactant. MPEP 2112.01, II (If the composition is physically the same, it must have the same properties).
As to claim 6, Ito fails to disclose the content of the manganese oxide abrasive grains. However, Ito teaches that other metal oxide abrasive grains may be contained at 1% by weight or more from the viewpoint of polishing removal rate, or 50% by weight or less from the viewpoint of dispersibility, polishing stability and the like [0028]. Ito thus teaches to vary the percentage of the abrasive in order to optimize abrasive slurry for best results of polishing removal rate, dispersibility and polishing stability. 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 amount of manganese oxide particles in the abrasive slurry of Ito in order to optimize the slurry for best properties of polishing removal rate, dispersibility and polishing stability.
Ito teaches that the permanganate ions serve as an oxidant [0066] with a content of 0.005 mol/L or more from the viewpoint of polishing removal rate or 0.5 mol/L or less from the viewpoint of surface quality after polishing [0073]. 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 about of permanganate ions in the slurry of Ito in order to optimize the slurry for best results of polishing removal rate and surface quality after polishing.
Ito fails to disclose the amount of phosphates, but teaches to vary the amount to vary the pH [0081]. Morinaga teaches that the additives are not limited, but preferably present in an amount of less than 1 mass%, or less than 0.5 mass% [0061]. 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 phosphates in order to optimize the pH and dispersing ability of the abrasive slurry for best results.
As to claim 7, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to the cited ranges for the reasons cited with respect to claim 6.
Further as to content of the cellulose-based surfactant of 1.0 mass% or less, Morinaga teaches the additives are not limited, but preferably present in an amount of less than 1 mass%, or less than 0.5 mass% [0061], which is within the cited range. 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 amounts of cellulose-based surfactant in the abrasive slurry of Ito because Morinaga teaches similar ranges are useful, and because the content can be optimized for best results of surface chemistry of polishing objects or polishing abrasive.
As to claims 9-10, both Ito [0111] and Morinaga [0074] teach that the abrasive slurry is used for polishing . It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to polish as cited using the modified abrasive slurry of Ito because the compositions are taught to be used for polishing.
As to claims 11-13, the content is obvious for the same reasons cited with respect to claims 6-7.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/874,919 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are fully encompassed by those of the reference application.
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. WO 2024/004752 A1 is cited to show a method of polishing SiC with manganese oxide abrasive grains, permanganate ions and phosphoric acids. Choi et al (US 2026/0258281 A1) is cited to show a polishing composition with mangania/manganese oxide [0013], permanganate [0016+] and phosphate surfactant [0026].
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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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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/ANITA K ALANKO/Primary Examiner, Art Unit 1713
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