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 § 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.
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.
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, 5-6, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joseph (2011/0159786, previously cited) in view of Kihara (US 6239188, previously cited) and Lee (US 2006/0022368, previously cited).
Regarding claim 1, Joseph teaches a polishing pad which comprises a polishing layer comprising a plurality of pores (shown in fig 5A), wherein the polishing layer comprises a cured material of a composition comprising a urethane-based mixture ([0065], [0085]; forming polyurethane polishing layer) and a solid phase foaming agent ([0057]; closed cell pores) wherein the plurality of pores have a number average diameter of 1 µm to 50 µm ([0057]; fully encompassing the claimed range), and an Ed value (calculated from example described [0089]) greater than 0 represented by the Equation 1:
E
d
=
3
×
D
a
-
D
m
/
S
T
D
E
V
=
3
×
33.208
µ
m
-
30.931
µ
m
/
13.686
µ
m
= 0.50, wherein Da stands for the number average diameter of the plurality of pores ([0089]; “mean pore size”), Dm stands for a number median diameter of the plurality of pores ([0089]; “median pore size”), and STDEV stands for a standard deviation of the diameter of the plurality of pores ([0089]; “standard deviation of the pore size distribution”), and wherein, in equation 1, Da is greater than Dm by 2.277 µm ([0089]; 33.208-30.931=2.277), wherein the ED value represented by Equation 1 is greater than 0 to less than 2 (as described above, the Ed value calculated from the example of Joseph is 0.50).
While Joseph does not explicitly recite the average diameter Da being between 16 µm and 30 µm, Joseph’s disclosed range of 1 µm to 50 µm ([0057]) fully encompasses the claimed range. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (MPEP 2144.05 I). Additionally, applicant has provided no showing of criticality to the claimed range. Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to select pores having an average diameter of 16 µm to 30 µm through routine optimization, as the pores have an effect on the flow of polishing composition in the polishing surface as taught by Joseph ([0070]).
While Joseph does not explicitly teach the median diameter being 15 µm to 25 µm, Joseph does teach the pore diameter can be in the range of 1 µm to 50 µm ([0057]) and a preference for uniform pore size distribution, indicating a median within this range as well. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (MPEP 2144.05 I). Additionally, applicant has provided no showing of criticality to the claimed range. Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to select pores having a median pore diameter of 15 µm to 25 µm through routine optimization, as the pores have an effect on the flow of polishing composition in the polishing surface as taught by Joseph ([0070]).
Joseph does not explicitly teach the mixture including a urethane-based prepolymer, and a curing agent. Kihara teaches a polishing pad comprising a cured material of a composition comprising a urethane-based prepolymer (component A; col 3, lines 12-16), and a curing agent (component B; col 3, lines 36-50). It is obvious to select a known material based on its suitability for its intended use (MPEP 2144.07). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to use a urethane-based prepolymer mixed with a curing agent with the solid phase foaming agent Joseph, as these materials are known to undergo polymerization to form polyurethane, which is suitable for use in porous polishing pads as taught by Kihara (abstract; col 3, lines 36-38).
Joseph does not teach a specific weight of the solid phase foaming agent. Kihara further teaches a solid phase foaming agent (“microballons”) with a content of 0.1 to 20 parts by weight (col 4, lines 33-44; fully encompassing the claimed range) based on 100 parts by weight of the composition. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (MPEP 2144.05). Additionally, applicant has provided no teaching of criticality to the claimed range. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to use 0.7 to 2 parts by weight of solid phase foaming agent in the polishing pad composition of Joseph, in order to optimize the polishing rate, flatness, and physical properties of the polishing pad as taught by Kihara (col 4, lines 33-44).
While Joseph does not teach a particular particle diameter or standard deviation of the particle diameter of the foaming agent, or the STDEV being from 8 to 11 (Joseph teaches STDEV=13.686; [0089]), Joseph does prefer a unimodal distribution of pore size ([0057]), indicating a preference for consistent pore size and thus consistent foaming agent size. Additionally, Lee teaches a polishing pad including a solid phase foaming agent (hollow spheres; [0050]) with an average particle diameter of 20-50 µm ([0052]; fully encompassed by the claimed range) wherein the standard deviation of the pore size is kept to a minimum ([0016]). Applicant has not provided a showing of criticality to either of the claimed ranges. As the average and standard deviation of the particle diameter of the foaming agent has a direct effect of the size and deviation of the pores formed by the foaming agent, and the standard deviation of the pores is known to have a direct effect on the polishing characteristics of the pad, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to select a suitable foaming agent particle diameter and standard deviation within the claimed ranges, thus arriving at a STDEV between 8 and 11, in order to arrive at the uniform pore diameter desired by Joseph, as consistent pore size with a uniform size distribution results in a high polishing efficiency with small deviation in polishing characteristics as taught by Lee ([0016]).
While the difference between Da and Dm disclosed by Joseph is not within the claimed range of 0.8 to 1.9 µm (the difference disclosed by Joseph is 2.277 µm), it is obvious to choose from a finite number of identified, predictable solutions with a reasonable expectation of success (MPEP 2143 I. E.). The disclosure of the prior art has recognized that there is a need to provide polishing pads which achieve a high degree of uniformity and optimized polishing rate (Joseph [0070]; Lee [0016]). Joseph recognizes the mechanism for providing optimized polishing is through the distribution of slurry on the polishing pad and wafer surface, which is achieved by the inclusion of pores within the pad ([0070], [0056-0058]) within a finite and predictable range of pore sizes ([0057]) which are selected to solve this problem, with particular attention paid to the pore size distribution ([0057]), which necessarily affects the claimed average and median diameters. Additionally, Joseph explicitly discloses an example of a successful polishing pad where the average diameter is greater than the median diameter ([0089]). Therefore, a person having ordinary skill in the art before the effective filing date of the claimed invention could have pursued the known potential solutions with a reasonable expectation of success. In other words, a person of ordinary skill in the art would have been able to pursue a difference in average and mean pore diameter based on the teachings of Joseph and would have expected a difference of between 0.8 and 1.9 µm to successfully achieve the desired polishing uniformity of the polishing pad. Additionally, applicant has placed no particular importance on the specifically claimed range of 0.8 to 1.9 µm. Applicant’s specification does not link the claimed difference to a particular effect or function, and only desires the difference to be positive such that the claimed Ed value is positive (applicant’s specification p 7, lines 13-16). The difference described by Joseph (2.277 µm) is within the broader range discussed by applicant’s specification (0.3 to 3 µm) and the Ed value disclosed by Joseph (0.50 detailed above) is within the range which achieves applicant’s desired effects. Thus there is no evidence to suggest that the claimed range would provide additional improvement over the value disclosed by Joseph, further indicating that the claimed range would have been obvious for a having ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claims 5 and 6, Joseph, as modified, teaches all the limitations of claim 1 as described above. Joseph further teaches the Ed value is 0.5 (as discussed in the rejection of claim 1 above) and a Da of 1 µm to 50 µm ([0057]) fully encompasses the claimed ranges. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” (MPEP 2144.05 I). Additionally, applicant has provided no showing of criticality to the claimed range. Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to select pores having an average diameter of either 16 µm to 21 µm or 21 µm to 30 µm through routine optimization, as the pores have an effect on the flow of polishing composition in the polishing surface as taught by Joseph ([0070]).
Regarding claim 15, Joseph, as modified, teaches all the limitations of claim 1 as described above. Joseph does not teach the composition further including a surfactant. Lee further teaches the polishing pad composition comprising a surfactant ([0022]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a surfactant in the composition of Joseph, as surfactants are widely used in the field of polyurethanes for the purposes of forming a porous polymer pad as taught by Lee ([0021-0022], [0040]).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joseph, Kihara, and Lee as applied to claim 1 above, and further in view of Swisher (US 6477926, previously cited).
Regarding claim 9, Joseph, as modified, teaches all the limitations of claim 1 as described above. Joseph does not teach the composition further including a reaction rate controlling agent. Swisher teaches a polishing pad composition including a reaction rate controlling agent (“catalyst”) in an amount of less than 3 percent by weight (col 7, lines 33-45; fully encompassing the claimed range), wherein the reaction rate controlling agent comprises triethylamine (col 7, lines 33-45). Applicant has provided no showing of criticality to the claimed range. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to include a triethylamine reaction rate controlling agent in the composition of Joseph within the range of 0.05 to 2% by weight, as a catalyst such as triethylamine within this range is known to be effective for facilitating the cross-linking of polyurethane as taught by Swisher (col 7, lines 33-45; col 9, lines 19-39).
Response to Arguments
Applicant's arguments filed 16 Jul 2025 have been fully considered but they are not persuasive. Regarding claim 1 and its dependents, applicant argues that the claimed ranges including the values for Ed, Da, Dm, Da-Dm, and standard deviation achieve unexpected results compared to the comparative examples in applicant’s specification, stating that the desired effects of the invention are “achieved through the organic and complex interaction of the above parameters.” However, as detailed in the rejection above, the claimed parameters do not achieve unexpected results as compared to the prior art, which is replete with examples of controlling pore size distribution to achieve the desired polishing performance. In particular, Joseph anticipates the claimed Ed value, which appears to be a metric created by applicant to encompass the argued “complex interaction” of the desired pore parameters. As admitted by applicant, Joseph discloses a range for Da which fully encompasses the claimed range for Da. Applicant argues that the prior art does not teach or suggest the claimed ranges of Dm, Da-Dm, or standard deviation of the particles. However, the median diameter (Dm) and standard deviation are simply numerical measures of the pores relating to the pore size distribution and uniformity. The prior art as a whole provides many examples of adjusting pore size distribution to achieve desired polishing effects, with several of these effects achieved by controlling the uniformity of the pore size. Therefore, a person of ordinary skill would have easily arrived at the claimed ranges through routine experimentation based on the teachings of the prior art.
Furthermore, applicant has provided no showing of criticality to any of the claimed ranges. The claimed STDEV range of 8 to 11 is different than the range discussed in page 7, lines 21-27, which is 5 to 15. The STDEV of Joseph, which is 13.686 ([0089]), falls within the broader range discussed by applicant and is very near to the claimed range. Furthermore, Joseph ([0057]) discusses a preference for uniform pore size and Lee ([0016]) teaches that uniformly sized pores are preferable in order to improve polishing efficiency and reduce polishing deviation. This knowledge in the prior art provides the framework and motivation for a person of ordinary skill in the art to explore standard deviations within the claimed range. There is no evidence that the claimed ranges provide any new or unexpected result in view of the prior art. Therefore, these ranges would have been obvious for a person of ordinary skill.
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 MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723