DETAILED ACTION
Claims 1-7 are pending before the Office for review.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 ends with a period in the middle of the claim after “… formula (4) below.” Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i). MPEP 608.01(m) Appropriate correction is required.
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.
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 1-7 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.
Claim 1 is indefinite as it is unclear the limitations with regards to the alumina particles and “…a BET specific surface are is denoted by SA, and a theoretical specific surface area is calculated from the D50 is denoted by SA’, a degree of deformity N represented by formula (1) below satisfies a relationship of formula (1) below satisfies a relationship of formula (2) below, and a degree of distortion S represented by formula (3) below satisfies a relationship of formula (4) below.” It is the Examiner position that the method of measurement and calculation of the values is unclear. For example, Applicant’s claim is unclear as to the calculation of the “a theoretical specific surface area.” For the purpose of Examination, a composition comprising Applicant’s particle size distribution will be interpreted as rendering obvious Applicant’s claimed composition.
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.
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.
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 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over OSHIMA et al (U.S. Patent Application Publication 2004/0266323).
With regards to claim 1, Oshima discloses a polishing composition used for a polishing target containing a resin material (Paragraph [0158]), the polishing composition comprising: water (Paragraph [0117]); and alumina particles (Paragraph [0033]) ;
Oshima does not explicitly disclose wherein, in the alumina particles, when a particle size at which a cumulative frequency from a small particle size side is 2% in a volume-based particle size distribution is denoted by D2,a particle size at which a cumulative frequency from a small particle size side is 50% in a volume-based particle size distribution is denoted by D50,a particle size at which a cumulative frequency from a small particle size side is 98% in a volume-based particle size distribution is denoted by D98,a BET specific surface area is denoted by SA, and a theoretical specific surface area calculated from the D50 is denoted by SA', a degree of deformity N represented by formula (1) below satisfies a relationship of formula (2) below, and a degree of distortion S represented by formula (3) below satisfies a relationship of formula (4) below.
However Oshima discloses wherein the abrasive contains particles having particle sizes of from 5 to 120 nm in an amount of 50% by volume or more of the entire amount of the abrasive, wherein the abrasive contains: (i) 10 to 100% by volume of small size particles having particle sizes of from 5 nm or more and less than 40 nm based on an entire amount of the abrasive particles having particle sizes of from 5 to 120 nm; (ii) 0 to 70% by volume of intermediate size particles having particle sizes of from 40 nm or more and less than 80 nm based on an entire amount of the abrasive particles having particle sizes of from 5 to 120 nm; (iii) 0 to 40% by volume of large size particles having particle sizes of from 80 nm or more and less than 120 nm based on an entire amount of the abrasive particles having particle sizes of from 5 to 120 nm (Paragraphs [0035]-[0039]) which renders obvious wherein, in the alumina particles, when a particle size at which a cumulative frequency from a small particle size side is 2% in a volume-based particle size distribution is denoted by D2,a particle size at which a cumulative frequency from a small particle size side is 50% in a volume-based particle size distribution is denoted by D50,a particle size at which a cumulative frequency from a small particle size side is 98% in a volume-based particle size distribution is denoted by D98. 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). MPEP 2144.05(I) While Oshima does not explicitly disclose Applicant claims mathematical formulas, it is the Examiner position that Oshima discloses Applicant’s claimed alumina particles and particle distribution and therefore renders obvious a BET specific surface area is denoted by SA, and a theoretical specific surface area calculated from the D50 is denoted by SA', a degree of deformity N represented by formula (1) below satisfies a relationship of formula (2) below, and a degree of distortion S represented by formula (3) below satisfies a relationship of formula (4) below.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Oshima to include the particle size distribution as rendered obvious by the teachings of Oshima because ethe reference f Oshima teaches that such distribution reduces microwaviness and provides a smooth surface (Paragraph [0070]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing using the particle size distribution as rendered obvious by Oshima. MPEP 2143D
With regards to claim 4, the modified teachings of Oshima render obvious wherein the resin material contains polyimide (Paragraph [0158]).
With regards to claim 5, the modified teachings of Oshima render obvious the polishing target further contains a metal material (Paragraph [0158]).
With regards to claim 6, the modified teachings of Oshima disclose wherein the polishing composition comprises abrasive, oxidizing agent, acid and water (Paragraphs [0119]-[0123]) which renders obvious wherein the polishing composition is substantially free of a chelating agent.
With regards to claim 7, Oshima discloses a polishing method comprising a polishing target containing a resin material (Paragraph [0158]) using a polishing composition, the polishing composition comprising: water (Paragraph [0117]); and alumina particles (Paragraph [0033]) ;
Oshima does not explicitly disclose wherein, in the alumina particles, when a particle size at which a cumulative frequency from a small particle size side is 2% in a volume-based particle size distribution is denoted by D2,a particle size at which a cumulative frequency from a small particle size side is 50% in a volume-based particle size distribution is denoted by D50,a particle size at which a cumulative frequency from a small particle size side is 98% in a volume-based particle size distribution is denoted by D98,a BET specific surface area is denoted by SA, and a theoretical specific surface area calculated from the D50 is denoted by SA', a degree of deformity N represented by formula (1) below satisfies a relationship of formula (2) below, and a degree of distortion S represented by formula (3) below satisfies a relationship of formula (4) below.
However Oshima discloses wherein the abrasive contains particles having particle sizes of from 5 to 120 nm in an amount of 50% by volume or more of the entire amount of the abrasive, wherein the abrasive contains: (i) 10 to 100% by volume of small size particles having particle sizes of from 5 nm or more and less than 40 nm based on an entire amount of the abrasive particles having particle sizes of from 5 to 120 nm; (ii) 0 to 70% by volume of intermediate size particles having particle sizes of from 40 nm or more and less than 80 nm based on an entire amount of the abrasive particles having particle sizes of from 5 to 120 nm; (iii) 0 to 40% by volume of large size particles having particle sizes of from 80 nm or more and less than 120 nm based on an entire amount of the abrasive particles having particle sizes of from 5 to 120 nm (Paragraphs [0035]-[0039]) which renders obvious wherein, in the alumina particles, when a particle size at which a cumulative frequency from a small particle size side is 2% in a volume-based particle size distribution is denoted by D2,a particle size at which a cumulative frequency from a small particle size side is 50% in a volume-based particle size distribution is denoted by D50,a particle size at which a cumulative frequency from a small particle size side is 98% in a volume-based particle size distribution is denoted by D98. 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). MPEP 2144.05(I) While Oshima does not explicitly disclose Applicant claims mathematical formulas, it is the Examiner position that Oshima discloses Applicant’s claimed alumina particles and particle distribution and therefore renders obvious a BET specific surface area is denoted by SA, and a theoretical specific surface area calculated from the D50 is denoted by SA', a degree of deformity N represented by formula (1) below satisfies a relationship of formula (2) below, and a degree of distortion S represented by formula (3) below satisfies a relationship of formula (4) below.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Oshima to include the particle size distribution as rendered obvious by the teachings of Oshima because the reference of Oshima teaches that such distribution reduces microwaviness and provides a smooth surface (Paragraph [0070]) and one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing using the particle size distribution as rendered obvious by Oshima. MPEP 2143D
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over OSHIMA et al (U.S. Patent Application Publication 2004/0266323), as applied to claims 1 and 4-7, in view of HOFIUS (U.S. Patent Application Publication 2015/0315442).
With regards to claims 2-3, the modified teachings of Oshima render obvious the limitations of claim 1.
However, the modified teachings of Oshima are silent as to wherein D50 of the alumina particles is 0.2 µm or more and 0.4 µm or less and wherein a transformation rate of the alumina particles is 80% or more and 98% or less.
Hofius discloses a polishing composition comprising an alumina polishing particle wherein the particular alumina may be in a useful range a of about 0.1 µm to 5µm; wherein the primary particle goes through a transformation to form alpha alumina wherein the alpha alumina is of a high purity (Paragraphs [0062]-[0064], [0078], [0090]-[0093]). As such Oshima as modified by Hofius renders obvious wherein D50 of the alumina particles is 0.2 µm or more and 0.4 µm or less and wherein a transformation rate of the alumina particles is 80% or more and 98% or less. 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). MPEP 2144.05(I)
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the composition of Oshima to include the alpha alumina as rendered obvious by Hofius because one of ordinary skill in the art prior to the effective filing date of the invention would have had a reasonable expectation of predictably achieving the desired polishing using the alpha alumina particle as rendered obvious by Hofius MPEP 2143D
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE P. DUCLAIR whose telephone number is (571)270-5502. The examiner can normally be reached 9-6:30 M-F.
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/STEPHANIE P DUCLAIR/Primary Examiner, Art Unit 1713
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