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) 1-15, as to the point that the applied prior art fail to teach the particles are made of light-sensitive material, 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.
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) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (US 2024/0101865) in view of WO 99/06500 (here in after WO-500) and further in view of Bauer et al (US 2016/0362589) and further in view of Valls Angles (US 2018/0318922).
Regarding claims 1-2, Regarding claim 1, Zhang et al disclose a chemical mechanical polishing composition consists of, consists essentially of, or comprises a liquid carrier, cationic abrasive particles dispersed in the liquid carrier [0004]; The liquid carrier may include any suitable carrier (e.g., a solvent) including lower alcohols (e.g., methanol, ethanol, etc.), ethers (e.g., dioxane, tetrahydrofuran, etc.), water, and mixtures thereof. The liquid carrier preferably consists of, or consists essentially of, deionized water [0007]; and aforesaid abrasive particles reads on the claimed “printed particles”.
Zhang et al disclose that the abrasive particles may have an average particle size of about 10 nm or more (e.g., about 20 nm or more, about 40 nm or more, or about 50 nm or more). The abrasive particles may have an average particle size of about 200 nm or less (e.g., about 180 nm or less, about 160 nm or less, or about 150 nm or less). Accordingly, the colloidal silica particles may have an average particle size in a range from about 5 nm to about 200 nm [0015]; and aforesaid teaching obviously reads on the claimed first particles and a second particles having different dimension or size.
Additionally, WO-500 discloses abrasive article comprises a mixture of rare earth oxide modified abrasive grains and alpha alumina seeded or iron oxide nucleated abrasive grains (abstract).
Zhang et al fail to disclose the abrasive particles are made of light-sensitive material.
However, WO-500 also discloses that the metal oxide incorporated into the abrasive grains comprises Certain rare earth oxides and divalent metal cations react with alumina to form a rare earth aluminate represented by the formula LnMAlπOio, wherein Ln is a trivalent metal ion such as La.sup.3+, Nd.sup.3+, Ce.sup.3+, Pr.sup.3+, Sm.sup.3+, Gd.sup.3+, Er.sup.3+, or Eu .sup.+, and M is a divalent metal cation such as Mg.sup.2+, Mn.sup.2+, Ni.sup.2+, Zn.sup.2+, or Co.sup.2+. Such an aluminate has a hexagonal crystal structure; and such metal oxides (sometimes referred to as metal oxide modifiers) may be incorporated to change the physical properties and/or the crystal microstructure of the resulting abrasive grains (see pages 7-8).
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 WO-500's teaching of modified metal oxide as the abrasive particles into the teaching of Zhang et al for changing physical properties or crystal structure of the abrasive particles that are beneficial in the industries as suggested by WO-500.
Modified Zhang et al fails to teach the first and the second particles are fabricated by additive manufacturing.
However, in a product-by-process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production, If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP 2113.
Additionally, Bauer et al disclose that a shaped abrasive particles are useful for various material removal operations including grinding, finishing, and polishing [0005]; and there is a need for improvement [0009]; wherein the particles may be obtained from a commercial source or fabricated. Some suitable processes used to fabricate the shaped abrasive particles can include, but is not limited to, additive manufacturing , such as 3D printing (see, [0005],[0069],[0070]; and aforesaid “3-D printing” reads on the claimed "direct ink writing” because, direct Ink Writing (DIW) is a specialized form of 3-D printing; and forming dimensionally stable phase of material is a material that can be formed to have a particular shape and substantially maintain the shape for at least a portion of the processing subsequent to forming [0071].
Bauer et al also disclose that the finally shaped abrasive particles have different shapes with different in dimension [0097].
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 Bauer et al's teaching of producing the shaped abrasive particles into the teaching of Zhang et al for achieving an improved abrasive particles with improved performance as suggested by Bauer et al [0083], [0107].
Modified Zhang et al disclose above for the claim 1 but fail to disclose a standard deviation of a dimension of the printed first and second particles is between about 1 nm and about 10 nm.
However, Valls Angles discloses additive manufacturing (AM) being used to prepare particulates [0017]; and depending on the importance of the metallic volume fraction in the AM particulates and the importance of the homogeneous mixing of the different metallic and in some cases polymer powders, narrow size distributions of the powders have to be used. In this sense the inventor has seen that it is desirable for a good close compacting to have a size distribution with a geometric standard deviation below 1.8, preferably below 1.4, more preferably below 0.8 and even more preferably below 0.4 [0938].
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 Valls Angles's teaching of preparing particulates using additive manufacturing having desired standard deviation of a dimension of the particulates into the teaching of modified Zhang et al for compacting the particulates, which is beneficial as suggested by Valls Angles.
Additionally, without showing any criticality of such it would have been obvious to optimize the standard deviation of the particle’s dimension for predictable result because the printed particles are fabricated by similar process condition as the instant invention.
Regarding claim 3, Zhang et al disclose that the abrasive particles can have an average particle size of about 10 nm or more [0015]; and, Bauer et al also disclose that the finally shaped abrasive particles have different shapes with different in dimension [0097]; But fail to teach the particle’s size is 5 nm or more and aforesaid disclosure of particle size of about 10 nm or more encompasses the claimed limitation of 5 nm or more.
Additionally, Changes in size of an article were held to be obvious. In re Rose 105 USPQ 237 (CCPA 1955).
Regarding claim 4, Bauer et al disclose that the finally-formed shaped abrasive particles can have particular two-dimensional shapes. For example, the body can have a two-dimensional shape, as viewed in a plane defined by the length and width of the body, and can have a shape including a polygonal shape, ellipsoidal shape [0097].
Regarding claim 5, Zhang et al disclose that the amount of abrasive particles may be in a range of about 0.01 wt. % to about 10 wt. % at point of use [0016].
Regarding claim 6, Zhang et al disclose a chemical mechanical polishing composition consists of, consists essentially of, or comprises a liquid carrier, cationic abrasive particles dispersed in the liquid carrier [0004]; The liquid carrier may include any suitable carrier (e.g., a solvent) including lower alcohols (e.g., methanol, ethanol, etc.), ethers (e.g., dioxane, tetrahydrofuran, etc.), water, and mixtures thereof. The liquid carrier preferably consists of, or consists essentially of, deionized water [0007].
Regarding claims 7-8, Zhang et al also disclose that the polishing composition may include cationic silica particles having a positive charge in the polishing composition of about 10 mV or more (e.g., about 15 mV or more, about 20 mV or more, or about 25 mV or more) [0011].
Further, without showing any criticality of the positive charge value, it would have been obvious to achieve such value as the similar condition being applied to the polishing composition.
Regarding claim 9, Zhang et al disclose that the polishing composition has an acidic pH (i.e., less than 7). For example, the polishing composition can have a pH of less than 7 (e.g., less than about 5). For example, the pH may be greater than about 1 (e.g., greater than about 1.5 or greater than about 2, or greater than about 2.5) [0017], which overlaps the claimed range of a pH between about 2 and about 12. MPEP 2144.05.
Regarding claim 10, Zhang et al disclose that the polishing composition further comprises include an oxidizing agent; may comprises hydrogen peroxide [0025]; and aforesaid hydrogen peroxide reads on the claimed “at least one peroxy group”.
Regarding claim 11, Zhang et al disclose that examples of compounds containing at least one peroxy group include but are not limited to hydrogen peroxide and its adducts such as urea hydrogen peroxide and percarbonates, organic peroxides such as benzoyl peroxide, peracetic acid, and di-t-butyl peroxide, monopersulfates (SO.sub.5.sup.=), dipersulfates (S.sub.2O.sub.8.sup.=), and sodium peroxide [0025].
Regarding claim 12, Zhang et al disclose the oxidizing agent can be present in the polishing composition at a concentration of about 0.1 to about 20 wt. % [0026].
Regarding claim 13-14, Zhang et al disclose that the polishing composition further includes at least one compound that inhibits (or further inhibits) tungsten etching. Suitable inhibitor compounds alkyl ammonium ions, amino alkyls, and amino acids n having nitrogen containing functional groups such as nitrogen containing heteroycles, alkyl ammonium ions, amino alkyls, and amino acids [0027], [0028].
Regarding claim 15, Zhang et al disclose that the polishing composition further include additional additives, such as topography control agents, dispersants, and biocides [0039].
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.
Claim 1,4,5,6,8-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,3-5,9-15 of co-pending Application No. 18/794,068 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the invention in the application No. 18/882,142 broadly encompasses the instant invention because the printed particles in the invention of application ‘068 encompasses the printed particles are made of light- sensitive material as the particles have obvious sensitivity to light without specifying the material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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SHAMIM AHMED
Primary Examiner
Art Unit 1713
/SHAMIM AHMED/Primary Examiner, Art Unit 1713
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