DETAILED ACTION
This is the Office action based on the 19008224 application filed January 2, 2025, and in response to applicant’s argument/remark filed on December 30, 2025. Claims 1-2 and 4-16 are currently pending and have been considered below. Applicant’s cancellation of claim 3 acknowledged
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 .
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 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.
Claim Interpretations
The claims are drawn to a chemical composition, and as such will be examined under such conditions. The process of forming the composition and using the composition, or the material that the composition acts upon are viewed as recitation of intended use and are given little patentable weight. (Please see MPEP 2114 R1-2115 R2 for further details). It has been held that claim language that simply specifies an intended use or field of use for the invention generally will not limit the scope of a claim (See MPEP 2106; Walter, 618 F.2d at 769, 205 USPQ at 409). Particularly, the process of making the composition is viewed as directed to a product-by-process claim and is given little patentable weight. “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)”. Please see MPEP 2113 for further details.
Claim 1 recites “colloidal silica particles having… a shape coefficient SF1 of 1.20-1.80…the shape coefficient SF1 is calculated based on equation (2): SF1=(area of a circle whose diameter is a maximum diameter of the particle)/(projected area)”.Since the specification discloses that “SF1 is determined by determining the maximum length DL and the projected area S for each of 300 particles recognized by the image analysis apparatus, calculating, for each particle, a calculation value based on the equation shown above, and obtaining an average value of the calculation values” ([0052]), and does not specify which particles are to be used in the calculating, for the purpose of examining it will be assumed that any set of 300 particles, randomly chosen or specifically selected, may be used.
Claim 4 recites the term “an alkali component”. Although the specification discloses “a fifth aspect of the present invention is the polishing composition according to the fourth aspect, wherein the alkali component is potassium hydroxide or potassium hydrogen carbonate, or a mixture of potassium hydroxide or potassium hydrogen carbonate with sodium hydroxide, ammonia, primary ammonium hydroxide, secondary ammonium hydroxide, tertiary ammonium hydroxide, quaternary ammonium hydroxide, primary ammonium carbonate, secondary ammonium carbonate, tertiary ammonium carbonate, quaternary ammonium carbonate, primary ammonium hydrogen carbonate, secondary ammonium hydrogen carbonate, tertiary ammonium hydrogen carbonate, quaternary ammonium hydrogen carbonate, lithium carbonate, sodium carbonate, potassium carbonate, lithium hydrogen carbonate, or sodium hydrogen carbonate”, this is not considered a definition of this term. According to Collins Dictionary, “an alkali is a substance with a pH value of more than 7”. Therefore, for the purpose of examining the term “an alkali component” will be interpreted accordingly.
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.
Claim 1 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. --Claim 1 recites “A polishing composition containing a colloidal silica dispersion comprising silica particles, wherein the colloidal silica dispersion of the silica particles has an Rsp of 0.15 to 0.7 as measured using pulse NMR, and the colloidal silica particles have a shape coefficient SF1 of 1.20 to 1.80, wherein Rsp is calculated based on equation (1): Rsp = (Rav - Rb)/(Rb) (1) (wherein Rsp is an index that indicates water affinity; Rav is an inverse of a relaxation time of the colloidal silica dispersion; and Rb is an inverse of a relaxation time of a blank aqueous solution obtained by removing the silica particles from the colloidal silica dispersion), and the shape coefficient SF1 is calculated based on equation (2): SF1 = (area of a circle whose diameter is a maximum diameter of the particle)/(projected area) (2).” (emphasis added). The specification discloses “(t)he method for producing the colloidal silica dispersion (silica sol) to be used in the present invention can be broadly divided into a step (I) of obtaining activated silica; a step (II) of heating and regulating the size of the activated silica; and a step (III) of adjusting the concentration of the resulting silica sol.” ([0058]), wherein step (III) comprises adding to the colloidal silica dispersion an alkali component, such as KOH, to adjust the pH of the colloidal silica dispersion to 7-12 ([0067, 0075, 0078-0080]). It is noted that the claimed polishing composition, in addition to the colloidal silica dispersion, may further contain “at least one additive selected from the group consisting of an acid component, an alkali component, a water-soluble compound, a chelating agent, an oxidizing agent, and a metal corrosion inhibitor” ([0021, 0076]), wherein the pH may be 1 or 12 ([0024], claim 7). However, although the specification discloses the method of making the colloidal silica dispersion, it fails to teach a method of obtaining “a blank aqueous solution obtained by removing the silica particles from the colloidal silica dispersion” and an instruction of how to do so. The specification discloses “(t)he state of water involved in the surface of the silica particles used as polishing abrasive grains in the polishing composition is divided into bound water and free water. Free water refers to the water that is present around the silica particles, but is not bound therewith and present in a free state, and not the water as a solvent. Bound water refers to the water bound with the silica particles by hydrogen bonding with silanol groups on the silica particle surface. Bound water plays an important role in ensuring good contact of the silica particles with water it is not clear how to separate the aqueous solution that are absorbed in the surface” ([0030]) and that “ A practitioner of skill in the art would not be clear how to completely separate the silica particles from the colloidal silica dispersion, especially how to separate the bound water from the silicon particles, such as the absorbed water at the surface of the silicon particles, in order to obtain the “blank aqueous solution” for determining the value Rsp. It is noted that the silica particles are very small, having an average diameter of 10-80 nm ([0040], Claim 2). It is further noted that a portion of the silica particle may be physically dissolved into the aqueous solution, or by chemically dissolved by a chemical reaction with components in the dispersion, such as when the alkali component is potassium hydroxide ([0022]) and the pH is 12 ([0024]). Regarding Applicant’s Affidavit that “(t)here are no measurement differences between using "solution obtained by removing
silica particles by centrifugation/ultrafiltration' and using "solution prior to dissolving the silica abrasive grains (dispersion medium only)" as a blank aqueous solution” because the solubility of silica in water at pH 6-10.6 is only 120 -876 ppm, and rarely affect the NMR measurement, this argument is not persuasive. First, Applicant fails to take into account the bound water that is bonded to the silica particles. Secondly, Applicant fails to take into account that additives, i.e. acid or an alkali such as KOH, that may cause a chemical reaction with silicon, as it is well known in the art that KOH etches silicon. Third, Applicant fails to take into account a solubility at the low end of the pH range taught in the specification, i.e. 1, or at the high end of the pH range, i.e. 12. Thus, one of ordinary skill in the art would not be clear how to determine the value Rsp for the colloidal silica dispersion, as recited in claim 1.
Claims 2 and 4-16 rejected under 35 U.S.C. 112(b) because they are directly or indirectly dependent on claim 1.
Claim Rejections - 35 USC § 102/35 USC § 103
The following is a quotation of 35 U.S.C. 102:
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.
(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..
The following is a quotation of 35 U.S.C. 103:
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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 1 and 4-16 rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mosley (U.S. PGPub. No. 20190185713), hereinafter “Mosley”:--Claims 1, 4, 5, 6, 8, 9, 10, 11, 12, 13, 14: Mosley teaches a method of producing a chemical mechanical polishing composition, comprising:colloidal silica particles having an average particle diameter 30-150 nm ([0010]) at a concentration 0.25-30 wt.% ([0005]), wherein the colloidal silica particles can take any form, including spherical, oblong, bent, nodular or elongated ([0037])an oxidizer ([0114-0115]) and/or a corrosion inhibitor ([0116-0117]). Mosley further teaches that the colloidal silica particles may be made by combining silicic acid alkali salt with aqueous cation exchange resin to form a dispersion having pH below 4; separately prepare a reaction mixture comprising reactive aqueous colloidal silica dispersion having pH 7-11, then heating the mixture to 70-120°C while cofeeding trialkylsulfoxonium salt or hydroxide to maintain the pH to 7-11 for 300-900 minutes to polymerize the silicic acid to form the colloidal silica particles ([0013-0014]). Mosley further teaches that an acid or KOH may be used as a pH adjuster ([0011]). It is noted that KOH is an alkali component. It is noted that the colloidal silica particles of Mosley’s are made by the same method as described in the specification in paragraphs [0019-0020, 0061]). Since the chemical mechanical polishing composition taught by Mosley is the same as Applicant’s, it must possess the physical property as taught by Applicant, such as Rsp =0.15 to 0.7 as recited in claim 1. According to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”, Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Alternately, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to produce a polishing slurry comprising abrasives having the components above, and having the claimed properties, i.e. Rsp, Rav, Rb and SF1, recited in claim 1, in the invention of Mosley.--Claims 7, 15: Mosley further teaches that the chemical mechanical polishing composition has a pH of 2-7 ([0034], abstract).--Claim 16: Mosley further teaches that the colloidal silica particles have a zeta potential of from −2 mV to 40 mV at a pH of 3.5, and further teaches that the zeta potential is depend on the pH and the amount of trialkylsulfoxonium salt or hydroxide used during the making of the colloidal silica particles (Table 3 and 4 and related paragraphs). Therefore, the pH is a result effective variable and it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a chemical mechanical polishing composition having a pH of 8 in the invention of Mosley. It is further noted that the specification fails to show any unexpected value or any significance for having a pH value of 8.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103: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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2 rejected under 35 U.S.C. 103 as obvious over Mosley as applied to claim 1 above, and further in view of Takemiya (U.S. PGPub. No. 20080171441), hereinafter “Takemiya”:--Claim 2: Mosley teaches the invention as above. Mosley further teaches that the sizes of the colloidal silica particles may be measured by Dynamic Light Scattering (DLS) using a Malvern Zetasizer device (Malvern Instruments, Malvern, UK) calibrated per manufacturers recommendations ([0031]). Mosley fails to teach to measure the particle size by using nitrogen gas adsorption method.Takemiya, also directed to a method of making a chemical mechanical polishing composition, teaches that the primary particle size may be measured by using a nitrogen adsorption BET method, and the secondary particle size may be measured by a dynamic light scattering method ([0070]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use a nitrogen adsorption BET method for measuring the primary particle size, but using a dynamic light scattering method to measure the secondary particle size in the invention of Mosley because Takemiya teaches that such method would be effective.
Claims 1-2 and 4-16 rejected under 35 U.S.C. 103 as obvious over Takemiya in view of Mosley:--Claims 1, 4, 5, 6, 8, 9, 10, 11, 12, 13, 14: Takemiya teaches a method of making a chemical mechanical polishing composition comprising colloidal silica particles having an average particle size 5-300 nm, at a concentration 0.1-20 wt.% ([0060, 0062-0063]), wherein the colloidal silica particles can have irregular shapes ([0065]), wherein the chemical mechanical polishing composition further comprises a basic compound and an oxidizer, and has a pH of 2-10 ([0034-0035]). Takemiya further teaches that the colloidal silica particles may be formed by various known methods ([0060]), but fails to discloses the claimed Rsp value. Mosley, also directed to a method of making a chemical mechanical polishing composition, further teaches that the colloidal silica particles may be made by combining silicic acid alkali salt with aqueous cation exchange resin to form a dispersion having pH below 4; separately prepare a reaction mixture comprising reactive aqueous colloidal silica dispersion having pH 7-11, then heating the mixture to 70-120°C while cofeeding trialkylsulfoxonium salt or hydroxide to maintain the pH to 7-11 for 300-900 minutes to polymerize the silicic acid to form the colloidal silica particles ([0013-0014]). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to use the method taught by Mosley to make the colloidal silica particles in the invention of Takemiya because Takemiya teaches that the colloidal silica particles may be formed by various known methods, and Mosley teaches that such method would be effective. Mosley further teaches that an acid or KOH may be used as a pH adjuster ([0011]). It is noted that KOH is an alkali component. It is noted that the colloidal silica particles of Mosley’s are made by the same method as described in the specification in paragraphs [0019-0020, 0061]). Since the chemical mechanical polishing composition taught by Mosley is the same as Applicant’s, it must possess the physical property as taught by Applicant, such as Rsp =0.15 to 0.7 as recited in claim 1. According to MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”, Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Alternately, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention, in routine experimentations, to produce a polishing slurry comprising abrasives having the components above, and having the claimed properties, i.e. Rsp, Rav, Rb and SF1, recited in claim 1, in the invention of Takemiya modified by Mosley. --Claims 7, 15, 16: Takemiya further teaches that the chemical mechanical polishing composition has a pH of 2-10 ([0034-0035]).--Claim 2: Takemiya further teaches that the primary particle size may be measured by using a nitrogen adsorption BET method, and the secondary particle size may be measured by a dynamic light scattering method ([0070]).
Response to Arguments
Applicant's arguments filed December 30, 2025 have been fully considered as follows:-- Regarding Applicant’s Affidavit that “(t)here are no measurement differences between using "solution obtained by removing silica particles by centrifugation/ultrafiltration' and using "solution prior to dissolving the silica abrasive grains (dispersion medium only)" as a blank aqueous solution” because the solubility of silica in water at pH 6-10.6 is only 120 -876 ppm, and rarely affect the NMR measurement, this argument is not persuasive. First, Applicant fails to take into account the bound water that is bonded to the silica particles. Secondly, Applicant fails to take into account that additives, i.e. acid or an alkali such as KOH, that may cause a chemical reaction with silicon, as it is well known in the art that KOH etches silicon. Third, Applicant fails to take into account a solubility at the low end of the pH range taught in the specification, i.e. 1, or at the high end of the pH range, i.e. 12. Thus, one of ordinary skill in the art would not be clear how to determine the value Rsp for the colloidal silica dispersion, as recited in claim 1.-- Regarding Applicant’s argument that the colloidal silica particles made by Mosley are different than those made by Applicant’s invention, it is noted that the specification teaches that “the step (I) of obtaining activated silica is divided into a step (a) of obtaining activated silica; a step (a1) of increasing the purity of the activated silica; and a step (a2) of collecting the activated silica with an increased purity. The step (a) is essential, and the steps (a1) and (a2) are optional. For example, the step (a) is the step of contacting a hydrogen-type strongly acidic cation exchange resin with an aqueous solution of an alkali metal silicate in which an aqueous alkali metal silicate containing 300 to 10,000 ppm of a metal oxide other than silica, based on the silica content, is dissolved at a concentration of 1 to 6% by weight, as the SiO2 content derived from the silicate, to thereby produce an aqueous solution of activated silica having a SiO2 concentration of 1 to 6% by mass, and collecting the resulting solution. The step (II) of heating and regulating the size of the activated silica includes the following steps (b) and (c): step (b): adding an aqueous solution of potassium hydroxide to the aqueous solution of the activated silica collected in the step (a) to produce a stabilized aqueous solution of the activated silica having a SiO2 concentration of 1 to 6% by mass, and having a pH of 7 to 9; and step (c): supplying, with sufficient stirring, an aqueous solution of an alkali metal silicate obtained by adding an aqueous solution of potassium hydroxide to the aqueous solution of the activated silica collected in the step (b) or an aqueous solution of an alkali metal silicate having a pH of 10 to 12.5 and a SiO2 concentration of 0.1 to 8% by weight obtained by concentrating or diluting the aqueous solution obtained above, and an aqueous solution of activated silica obtained as in the step (b), while maintaining the temperature of the resulting mixture at 110° C. to lower than 150° C., 110 to 145° C., 110 to 140° C., 110 to 135° C., or 110 to 130° C., in a period of 1 to 30 hours, until the pH of the mixture reaches 9 to 12. The step (III) of adjusting the concentration of the resulting silica sol is the step of concentrating the silica sol to a concentration of 10 to 50% by mass, wherein impurities may be removed from the silica sol before or after being concentrated. The step (III) is not essential, but may be performed as required” (paragraphs [0059-0064], emphasis added). It is noted that the steps of making the colloidal silica particles above and the chemical compounds used are open-ended. Since the process conditions for making the colloidal silica particles taught by Mosley overlap the process conditions taught by Applicant, the colloidal silica particles must possess the same property of Rsp as taught by Applicant.
Conclusion
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 extension fee 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 THOMAS PHAM whose telephone number is (571)270-7670. The examiner can normally be reached on MTWThF10to7 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua Allen can be reached on (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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/THOMAS T PHAM/Primary Examiner, Art Unit 1713
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