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
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 and 5 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “the average diameter (Da) of the plurality of pores is 5 µm to 200 µm”, and the claim also recites “the plurality of pores includes thermally expanded microcapsules…wherein the thermally expanded microcapsules have an average particle diameter of 20 µm to 40 µm” which is the narrower statement of the range/limitation. The claim defines two different average diameter ranges for the pores, which are thermally expanded microcapsules. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 5 is rejected as indefinite due to its dependency upon rejected claim 1.
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 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2013/0012108, previously cited) in view of Itoyama (US 2014/0242894, previously cited).
Regarding claim 1, Li teaches a polishing pad which comprises a plurality of pores (abstract), wherein the average diameter of the plurality of pores is 5 to 200 microns ([0148], 5 to 100 microns, fully encompassed by claimed range), wherein the plurality of pores have a sphericity of 0.001 to 0.9 ([0046]; polymer particles are substantially spherical, having a sphericity of at least 0.75, overlapping the claimed range; [0051] describes dissolving of the polymer particles to form the pores, resulting in spherical pores) according to the following equation 1: sphericity =
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(the claimed equation is the mathematical definition of sphericity and indicates the same “sphericity” described in [0046] of Li), wherein the plurality of pores includes second pores having a sphericity of 0.75 to 1 ([0046]; overlapping the claimed range), and wherein the second pores have a total volume of pores that is at least 63% by volume of the total volume of the total plurality of pores ([0046] describes the entirety of the pores being within this range), and wherein the plurality of pores includes microcapsules each comprising a shell having a shell having a polymer shell and a foaming agent encapsulated inside the shell ([0049]; pores can be formed by solid polymer particles containing entrapped gas), wherein the microcapsules have an average particle diameter of 20 µm to 40µm (see 112b rejection above; Li discloses several examples which satisfy both diameter ranges; see “Pore Size Mean” in examples 1-4 in table 1 and material 5350D in paragraph 209).
While not explicitly teaching the sphericity range of the second pores being 0.2 to 0.9, Li’s disclosed range of at least 0.75 (amounting to a disclosed range 0.75 to 1.0) overlaps 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, as Li desires spherical pores with increased pore uniformity for improved polishing performance ([0004], [0042]) and discloses a range of sphericity overlapping the claimed range ([0046]), it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed sphericity through routine experimentation.
Li does not explicitly teach the pores being derived from thermally expanded microcapsules, or the shell having a thermoplastic resin. Itoyama teaches a polishing pad including pores comprising thermally expanded microcapsules ([0073]), comprising a shell having a thermoplastic ([0116]) and a foaming agent encapsulated inside the shell ([0016]; “hydrocarbon embedded in the outer shell”). 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 select a thermally expanded microcapsule with a shell of thermoplastic containing an encapsulated foaming agent for the plurality of pores in the pad of Li, as thermally expanded microcapsules are known for providing microsphere pores in a polishing pad for dispersing slurry as taught by Itoyama ([0073]), and which microspheres are desired by Li ([0049]).
While not explicitly teaching a particular sphericity or amount of non-spherical first pores, Li further teaches the plurality of pores can include non-spherical pores ([0148]). Additionally, Itoyama teaches there can be a combination of closed cells and open cell pores ([0044]), open cell pores corresponding to non-spherical pores (“first pores” in the claim), as when the cells connect as described ([0045]) they are no longer spherical. Additionally, Itoyama further teaches the closed cell pores (corresponding to the claimed spherical second pores) are present in a volume percentage of 80-98% ([0043], [0046]), which is fully encompassed by the claimed range of at least 63%. While not explicitly teaching a particular sphericity of the non-spherical first pores, Li recognizes that sphericity of the pores has a direct effect on polishing performance ([0042], [0046]), and it would be recognized that as long as a substantial portion of the pores are uniformly spherical, these improvements would be achievable with some portion of non-spherical pores, particularly in light of the teachings of Itoyama which describes using a large portion of closed cell pores (corresponding to the claimed spherical second pores) for reducing scratches ([0044-0047]). Additionally, applicant has provided no showing of criticality to the claimed sphericity or amount of first pores. 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 arrive at the claimed sphericity of the first pores through routine experimentation, as the prior art of Li and Itoyama recognize that good polishing performance and scratch prevention can be achieved with a small number of non-spherical pores.
The claim additionally recites a polishing rate for a silicon oxide layer being polished by the claimed pad under particular polishing conditions. However, the manner of operating the device does not differentiate apparatus claims from the prior art (MPEP 2114 II.). Therefore, the silicon oxide layer and polishing conditions are not limiting of the structure of the claimed polishing pad. As Li and Itoyama render obvious the structure of the claimed pad, they are seen as being capable of achieving the claimed polishing rate on a silicon oxide layer at the claimed polishing conditions.
Regarding claim 5, Li, as modified, teaches all the limitations of claim 1 as described above. Li further teaches the average diameter is 7 to 100 microns ([0148]).
Response to Arguments
Applicant's arguments filed 2 Sep 2025 have been fully considered but they are not persuasive. Applicant argues that Li and Itoyama do not teach the claimed polishing rate of the polishing pad. However, the claimed polishing rate, as admitted by applicant, occurs “as a result” of the claimed structure of the polishing pad. The claimed polishing rate does not differentiate from the structure rendered obvious by the prior art (MPEP 2114 II.). As Li and Itoyama render the structure of the pad obvious, a pad having the capability of the claimed polishing rate is rendered obvious. Applicant argues that this polishing rate is a “synergy effect” which is achieved by the claimed combination of features. However, effect of pore size and uniformity is widely known in the prior art to have an effect on polishing performance, such as polishing rate and uniformity as disclosed by both Li ([0004], [0042]) and Itoyama ([0036], [0073]). Therefore these effects are not unexpected for a person having ordinary skill in the art.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723