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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8 in the reply filed on 06/26/2026 is acknowledged. The traversal is on the ground(s) that Group II (i.e. claims 9-12) should be rejoined with the claim of Group I for search and examination because, as asserted by Applicant, it would not be a serious burden to search and examine the claims of Groups I and II in this application. This is not found persuasive because Group II, claims 9-12, are directed to a method comprising applying the polishing composition to a surface to remove contaminants and scratches; thus, claims 9-12 are drawn to an invention different and distinct from the invention of Group I. As such, an examination of claims of both Groups I and II would be a serious burden to the examiner.
Claims 9-24 are withdrawn from further examination.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 2 is 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 2 depends from claim 1, and claim 1 claims a polishing “composition” comprising “water”. Thus, this clearly indicates that the polishing composition is a solution or slurry. However, claim 2 claims the cerium oxide component of claim 1 is in “powdered” form. This has made the language of claim 2 indefinite because it is not clear how cerium oxide can be present as “powdered” form in a solution or slurry.
For the purpose of examination, it is assumed that because claim 2 claims the particle size of the cerium oxide, it is meant the claimed particle size refers to the size of particles of cerium oxide in the solution or slurry.
Claim 6 is 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 6 does not include any recitation indicating whether the specifically claimed compounds, in particular, carboxymethyl cellulose, benzisothiazolinone, and dionized water are considered/grouped as suspending agents, preservatives, and water, respectively, especially since claim 6 depends from claim 1. Furthermore, there is no indication that these compounds are simply additional components in addition to what are claimed in claim 1.
Therefore, claim 6 is found indefinite.
Claim 6 needs to be amended to clarify that the water is dionized water, that the suspending agents comprise carboxylmethyl cellulose, and that the preservatives are no longer optional and comprise benzisothiazolinone.
Claim 7 is 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 7 depends from claim 1; claim 7 does not recite that the presence of preservatives is required especially in light of the fact that claim 1 does not require the presence of them. Additionally, claim 7 does not specify whether carboxymethyl cellulose is a suspending agent as claimed in claim 1; was it meant for claim 7 to have the claimed compounds being present in the polishing composition in addition to what is already claimed in claim 1 or was it meant for the compounds to be specific examples of what is claimed in claim 1. Claim 7 needs to clarify this. Furthermore, claim 7 does not specify whether “dionized” water is in addition to the water claimed in claim 1, or it is an additional component.
Therefore, claim 7 is found indefinite.
Claim 7 needs to clarify that the water is dionized water, that the suspending agents comprise carboxylmethyl cellulose, and that the preservatives are no longer optional and comprise benzisothiazolinone.
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.
Claim(s) 1-6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. App. Pub. No. 2018/0002571 to Stender et al. (hereinafter Stender).
With respect to claim 1, Stender teaches a chemical mechanical polishing composition comprising water, an abrasive such as ceria, and a polymer such as poly(meth-acrylic) acid, which reads on the claimed “modified acrylic polymer”; Stender, additionally, discloses compounds such as carboxymethyl cellulose and hydroxypropyl methyl cellulose as the polymer which, also, read on the claimed “one or more suspending agents” (abstract, [0019], [0027]-[0030]) because these compounds, in particular, the carboxymethyl cellulose and the hydroxypropyl methyl cellulose have been disclosed as suspending agents in the original disclosure of the present Application under examination (see specification, paragraph [0026]). Additionally, Stender teaches biocides or biological growth inhibitor such as methylisothiazolinone, methylchloroisothiazolinone, and benzisothiazolinone ([0061]) which read on the claimed “preservatives” because these compounds are disclosed in the original disclosure of the present Application under examination as preservatives (see specification, paragraph [0027]).
Although the reference discloses the use of biological growth inhibitor, it is important to note that use of “one or more preservative” is claimed to be optional.
With respect to claim 2, Stender teaches the use of abrasives in “particle” form ([0029]-[0033]), and this is taken to read on the language of claim 2 in light of the interpretation specified above. It is noted that the particle size of cerium oxide or the purity of the cerium oxide is not required according to the language of claim 2.
With respect to claim 3, as detailed out above, Stender discloses the use of compounds such as carboxymethyl cellulose, hydroxypropyl methyl cellulose, and even compounds such as poly(meth-acrylic acid) or poly(acrylamide/acrylic acid) which are modified versions of acrylic polymer ([0019]), and thus, satisfy the claimed “modified acrylic polymer”. The carboxymethyl cellulose and the hydroxypropyl methyl cellulose have been disclosed as suspending agents in the original disclosure of the present Application under examination (see specification, paragraph [0026]). Therefore, the reference reads on claim 3.
With respect to claim 4, as detailed out above, Stender teaches methylisothiazolinone, methylchloroisothiazolinone, and benzisothiazolinone as biocides or biological growth inhibitors ([0061]). Therefore, the teaching of the reference reads on the claimed “one or more preservatives”.
With respect to claim 5, Stender teaches the use of about 10-90 wt% of water, about 0.1-20wt% of the abrasive an example of which is ceria, of about 0.001-2.0 wt% of the disclosed polymers which includes compounds such as carboxymethyl cellulose, hydroxypropyl methyl cellulose which read on the claimed “one or more suspending agents”, of about 0.0001-0.10wt% of compounds such as methylisothiazolinone, methylchloroisothiazolinone, and benzisothiazolinone which are discloses biocides which read as preservatives ([0019], [0027]-[0034], [0037]-[0039], [0061]-[0063], in particular, [0028], [0034], [0039], [0063]).
MPEP 2144.05 states “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
With respect to claim 6, Stender teaches a chemical mechanical polishing composition comprising deionized water, ceria abrasive particles, polymer such as carboxymethyl cellulose, and preservatives such as benizothiazolinone ([0019], [0027], [0029], [0037], [0061]).
With respect to claim 8, Stender discloses a polishing composition comprising all the claimed components which include water, suspending agents such as carboxymethyl cellulose, hydroxypropylmethyl cellulose or more, ceria as abrasive particles and preservatives such as methylisothiazolinone, methylchloroisothiazolinone, and benzisothiazolinone ([0019], [0027]-[0034], [0037]-[0039], [0061]-[0063]) which would inevitably require the mixing of these components in order to form the disclosed polishing composition. With respect to adding one or more preservative “before” the one or more suspending agents, in the absence of showing any criticality for specifically adding the preservative(s) “before” the suspending agents in the water, the cumulative disclosure of the reference is seen to render the preparation method of claim 8 obvious.
Claim(s) 1-3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. App. Pub. No. 2015/0291851 to Asano et al. (hereinafter Asano).
With respect to claim 1, Asano teaches a polishing composition comprising crystalline abrasive grains having a particle size of 5.0 µm or more and 30 µm or less of materials such as ceria ([0038]-[0039], [0041]), water soluble polymer such as carboxymethyl cellulose in an amount of 0.01 wt% or more ([0050]-[0054]), water ([0060]) and other components such as preservatives ([0059]). Although Asano teaches preservatives, it is noted that the use of preservative is optional according to claim 1. Furthermore, it is noted carboxymethyl cellulose has been disclosed as a suspending agent in the original disclosure of the present Application under examination (see specification, paragraph [0026]).
With respect to claim 2, Asano teaches ceria as abrasive grains, and as noted above, this is taken to satisfy the interpretation of “powdered” form of abrasive grains in a polishing composition. Asano teaches a particle size of 5.0 µm or more and 30 µm or less which has substantial overlapping with the claimed range of “1 to 20 microns” for the particle size of the claimed cerium oxide. MPEP 2144.05 states “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Although the reference teaches a substantially overlapping range of abrasive grains compared to what is claimed, it is noted that the particle size of cerium oxide or its purity are optional based on the language of claim 2.
With respect to claim 3, Asano teaches carboxymethyl cellulose ([0050]-[0051]) which reads on suspending agent according to the original disclosure of the present Application under examination (see specification, paragraph [0026]).
With respect to claim 8, the reference teaches mixing in water and stirring all the claimed components to form the disclosed polishing composition ([0062]), and this is seen to read on claim 8 in the absence of any criticality shown for the specific step of adding preservative(s) “before” adding the suspending agent(s) to the water.
Allowable Subject Matter
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art do not disclose the cumulative limitations of claims 1 and 7.
Although Stender teaches all the claimed components of claim 1 and many dependent claims, the reference does not disclose a particle size of 5 to 10 microns for cerium oxide particles. Stender discloses a particle size of 20-300 nm ([0033]).
Moreover, although Asano teaches all the claimed components of claim 1 and some of the dependent claims, and even though Asano discloses a particle size of 5 microns or more and 30 microns or less for the cerium oxide particles, and an overlapping concentration for both cerium oxide and the water-soluble polymer which includes carboxymethyl cellulose ([0039]-[0044], [0050]-[0054]), the reference does not specifically disclose a concentration of “about 0.10%” for benzisothiazole as the preservative and “about 91.9%” for the water. The reference does not disclose any concentration for the preservative component nor any concentration for the water component.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
