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(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The clause “each potential of the workpiece and of sludge is controlled by the anodic oxidation with the alkaline electrolyte solution to suppress agglomeration of the sludge, suppress the agglomeration of abrasive grains released from the wheel layer, and suppress adhesion of the sludge to the processing surface” is without adequate explanation in the application to demonstrate that the person of ordinary skill was able to make and use the full scope of the claim. Rejections under 112(a) for lack of enablement require the investigation of the Wands factors-- There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims; here, the control of ‘potential’ by any undisclosed means is being claimed—and thus is broad and weighs against a finding of enablement. No particular solution is being proffered, just the idea of controlling something without an explanation of what the control actually involves (voltage? Chemistry? Selection of original conditions? Modifications over time? Multiple tests?—the disclosure fails to limit the nature of the experimentation needed to use this invention as set forth).ere
(B) The nature of the invention; Here, a chemical process with chemistry, mechanical, and electrical component simultaneously leads us to conclude that the solution is not straightforward—and more disclosure is generally warranted. Here, the span of concepts weighs against a finding of enablement
(C) The state of the prior art; While polishing and anodizing are both known, the control of sludge by indefinite intervention is not well developed, and weighs against a finding of enablement.
(D) The level of one of ordinary skill; while generally high (knowledge in each of the domains) the reactions of chemicals, electrical aspects, and mechanical polishing leads us to conclude that this factor weighs against a finding of enablement.
(E) The level of predictability in the art; here is low, due to the variety of potential materials and possible voltages, speeds, etc. in the claims breadth, which weighs against a finding of enablement.
(F) The amount of direction provided by the inventor; here is vague and solutions oriented rather than providing a specific set of instructions of how control is effected, therefore weighs against a finding of enablement.
(G) The existence of working examples; here is unknown and un-specified, and therefore weighs against a finding of enablement.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Here it appears high—in the present record—and therefore, weighs against a finding of enablement.
All the Wands factors showing a lack of enablement, in the weighing test, the claims are held to lack enablement under 112(a) and are all rejected on that basis.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As noted above with enablement, the scope of the claim, and what is meant by control over the process by reducing sludge is unable to be demonstrably within applicant’s possession on the present record, and therefore lacks written description adequate to meet 112(a) and are rejected on that basis.
Claim Rejections - 35 USC § 112(b)
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 1-6 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. The requirement of claim 1, each potential of the workpiece and of sludge is controlled by the anodic oxidation with the alkaline electrolyte solution to suppress agglomeration of the sludge, suppress the agglomeration of abrasive grains released from the wheel layer, and suppress adhesion of the sludge to the processing surface is unclear because no particular solution is being proffered, just the idea of controlling something (‘workpiece’ and ‘sludge’ potential which suppresses adhesion (result?) and “agglomeration”). Without an explanation of what the control actually involves (voltage? Chemistry? Selection of original conditions? Modifications over time? Multiple tests?) it is unclear what this clause means in the context it is being claimed. The disclosure fails to limit the nature of the invention as set forth- it is not clear how to implement the control being claimed. Is it through setting the initial conditions of a solitary polishing method—or is it adjustment of electric voltage/ potential/ pH/ slurry type etc. to effect the desired results (again—these are vague—how much ‘suppression’ is enough—and what is the objective criteria used to evaluate success or compliance with the scope of the claim. ere
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.
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.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over JP2021027359 (Yamamura herein ; Cited in IDS as Applicant: Univ Osaka) in view of Hui Deng, et al. “Hui” herein; “Electro-chemical mechanical polishing of single-crystal SiC using Ce)2 Slurry
Regarding claim 1 Yamamura discloses a surface processing method for planarizing a processing surface of a workpiece (See abstract lines 1-3, discussing shape correction) which is a silicon carbide semiconductor (See, e.g . [0002]) , comprising: with a wheel layer and the processing surface of the workpiece facing each other (See Figures 2, inter alia, as between 1 and 9--) with an electrolyte solution between them (“immersed in the electrolyte 10…” [0049] see also NaCl, inter alia throughout) , forming an oxide on the processing surface of the workpiece by anodic oxidation by passing a current through the workpiece as an anode; (e.g. [0012]: “An anodic oxidation process in which a voltage is applied using the workpiece as an anode in the presence of an electrolytic solution to oxidize the surface of the workpiece, and a fixed abrasive in which abrasive grains of a predetermined hardness and particle size are fixed to a substrate. The polishing process of polishing and removing the oxide formed on the surface of the work piece with the grain polishing body is simultaneously or alternately performed…”
Yamamura further discloses using the wheel layer, removing the oxide formed on the processing surface by the anodic oxidation (e.g. ‘polished…diamond wheel…’ inter alia; [0075]),
Yamamura does not disclose the use of “…with an alkaline electrolyte solution” because the NaCl and other electrolyte solutions listed are neutral in terms of pH.
Yamamura does not detail that each potential of the workpiece and of sludge is controlled by the anodic oxidation with the alkaline electrolyte solution to suppress agglomeration of the sludge, suppress the agglomeration of abrasive grains released from the wheel layer, and suppress adhesion of the sludge to the processing surface. As best understood—this control is an effect of the use of alkaline slurry. No method of updating or controlling or varying the slurry/sludge is disclosed (see 112(a) above) and the nature of the scope of this limitation is ambiguous (see 112(b) above).
In the art of chemical mechanical polishing—the concurrent use of a single electrolyte slurry material such as ceria (CeO2) is known (See Hui Deng, et al. “Hui” herein; “Electro-chemical mechanical polishing of single-crystal SiC using CeO2 Slurry”). (Page 1 col 2 line 3-8, “anodic oxidation and …polishing are effectively combined. [when CeO2 Slurry is used for both electrolyte and polish slurry]). CeO2 Slurry has pH of 9.24 (See ibid at p. 2. Col. 1 line 2). It would have been obvious to replace the electrolyte solution of Yamamura with that of Hui, since doing so would improve speed and processing time because the slurry and electrolyte can be the same CeO2 material, which is the purpose of the Hui disclosure.
Regarding claim 2, the above combination shows a material electrolyte with pH of 9.24 within the claimed range of 9 or more and 13 or less.
Regarding claim 3, the use of CeO2 as in the above combination will result in a hardness of the oxide film being reduced by the anodic oxidation with the alkaline electrolyte solution to be easily removed the oxide film using the wheel layer (See page 1 column 2 of Hui et al.).
Claims 4-6 are effects of the method, which are clearly met by the device and methodology shown above as depicted in Yamamura as modified in light of the material known for polishing by Hui.
Conclusion
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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/ Primary Examiner, Art Unit 3724
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