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 .
Response to Amendment
This Office action is in response to the amendment filed on 12/04/2025; after entry of this amendment, claims 1-14 are currently pending in this Application.
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) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP
2016-196058 to Hirohito et al. (hereinafter Hirohito).
The JP document (and its translation) had been relied on in the previous two
Office actions.
With respect to claims 1-5, Hirohito teaches a polishing pad comprising a
polishing sheet of polyurethane material (Overview, claim 1, [0001]-[0002]). Hirohito
teaches that the number average molecular weight of a high molecular weight polyol
has a certain relationship with the peak temperature tan δ and discloses a method of
making such a polyurethane layer/sheet and the calculation/measurement of tan, elastic modulus E" and storage elastic modulus E' ([0009] and [0014]).
Hirohito discloses the reaction of a polyisocyanate compound such as 2,4-
tolylene diisocyanate or TDI having equivalent of NCO of 200-800, preferably 400-600
([0022], [0026]) with a polyol such as poly(oxytetramethylene)glycol (PTMG) having an
average molecular weight of 600-2200 ([0023]-[0024]) using a curing agent, or a chain
extender, such as 3,3'-dichloro-4,4'-diaminodiphenylmethane (methylenebis o-
chloroaniline) of MOCA ([0028]-[0029]). Hirohito, also, teaches the use of diethylene
glycol or DEG and polypropylene glycol in the process of polymer production ([0031]);
they are "polyhydric alcohol" compounds. Hirohito teaches that the curing agent can be a polyamine compound, a polyol compound, or a mixture of both ([0032]). Additionally, Hirohito teaches the use of hollow bodies which are hollow microspheres made of a thermoplastic resin and a low-boiling hydrocarbon contained in the resin outer shell, having an average particle diameter of 5-130 microns ([0034]).
Moreover, in one particular embodiment, i.e. Example 1, Hirohito teaches that
after mixing TDI and PTMG, this mixture is kept in a first liquid tank at a temperature of
80°C, and MOCA as a curing agent was charged into a second tank and kept at a
temperature of 120°C ([0049]). The reference, then, discloses that the two liquids were
then charged into a mixer, and the two liquids were injected into a mold of a molding
machine preheated to 80°C, the mold was clamped and heated at a mold temperature
of 80°C for 30 minutes to perform primary curing ([0049]).
Hirohito teaches the primarily cured molded produced is demolded, and then secondarily cured in an over at 120˚C for 5 hours to obtain a urethane molded produce which is then sliced ([0049]). In addition, Hirohito teaches aging of polyurethane resin sheet at a temperature of 80-120˚C for about 1-10 hours ([0037]) which would reveal the fact that the reference recognizes at least a heat treatment at the disclosed range of temperature and for the disclosed time period which would overlap at the claimed temperature and time. These disclosures are seen to read on and render the amendment to claim 1 obvious. 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). Nevertheless, and in the alternative, a temperature and time during which a curing occurs for the formation of the polyurethane sheet is a process limitation in a product claim, and as such, it is not seen to further limit the product under examination. MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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).
Thus, as can be seen, hereabove, and in more details in the reference, Hirohito
teaches a very similar process of production to what has been disclosed in the
embodiments, i.e. Examples such as Example A1, of the present Application under
examination with many of the very same compounds, as disclosed in the body of the
reference as cited above, having substantially similar molecular weight, where
applicable, and temperatures which are either exactly the same or close to what are
disclosed in the present Application under examination. Hirohito even teaches some of
the very same process steps of using two tanks, then mixing the liquids and applying
them into a mold at a very similar or close temperature.
Most Examples of Hirohito teach a concentration for curing agent which falls
within the claimed range of 20-50 parts by mass per 100 parts by mass of urethane
prepolymer; among the Examples, Examples 1-4 and 7-9 teach concentrations of 23.8,
23.8, 23.8, 23.8, 21.8, 23.8, and 29.1 parts by mass per 100 parts by mass of
prepolymer. Therefore, because most of the most preferred embodiments of the
reference disclose an amount of curing agent which falls within the claimed range of 20-50 parts by mass per 100 parts by mass of the prepolymer, it is expected of the
reference to render the claimed concentration of curing agent obvious for the general
teachings of the reference as well. Again, although the reference does not disclose one specific embodiment anticipating the cumulative claimed amount of curing agent, as well as the claimed number average molecular weight of the specifically claimed
prepolymer, and the NCO equivalent amount, it is expected of the amount of curing
agent for the disclosed prepolymer with its number average molecular weight and NCO
equivalent which would have overlapping with the claimed ranges, to have, at least,
some overlapping with respect to the amount of curing agent with what is instantly
claimed. Thus, although Hirohito may not disclose the concentration of curing agent in
the general teachings of the reference, and although the reference may not specifically disclose an embodiment anticipating the cumulative limitations of the specifically claimed polyol, its molecular weight, NCO equivalent, and curing agent content, the disclosure in the examples of Hirohito renders it obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, that the concentration of curing agent for what is disclosed in the general teachings of the reference can be expected to have, at least, some overlapping with the claimed content of the curing agent.
In addition, Hirohito teaches the components of the polishing pad are preferably
mixed such that the R value, which is the equivalent ratio of active hydrogen groups
(amino groups and hydroxyl groups) present in the curing agent to isocyanate groups
present at the terminals of the polyurethane bond-containing isocyanate compound is
0.6 to 1.4, preferably 0.65 to 1.3 ([0033]).
As such, the finally obtained product of Hirohito is expected to have substantially similar, if not overlapping, range of dynamic and other properties, as claimed in the claims, when compared to those claimed in the present claims under examination.
Therefore, it is expected of the reference to render the claimed characteristics of
"polyurethane sheet exhibits a peak of loss tangent tan δ in the range from 40 to 60°C in dynamic viscoelasticity measurement performed under conditions of a frequency of 1.6 Hz and a temperature of 20 to 100°C in a water immersion condition", "a value of the peak of loss tangent tan 5 is 0.15 to 0.35", "wherein the polyurethane sheet has a value of loss elastic modulus E" at 40°C, of 21 MPa or more, in dynamic viscoelasticity
measurement performed under conditions of a frequency of 1.6 Hz and a temperature
of 20 to 100°C in a water immersion condition", "wherein, in the polyurethane sheet, a
difference A in loss tangent tan 5 between 60°C and 70°C is lower than a difference B in loss tangent tan 6 between 50°C and 60°C and a difference C in loss tangent tan 6
between 70°C and 80°C, in dynamic viscoelasticity measurement performed under
conditions of a frequency of 1.6 Hz and a temperature of 20°C to 100°C in a water
immersion condition", "wherein the polyurethane sheet comprises a polyurethane resin and a hollow fine particle dispersed in the polyurethane resin" are all expected to follow from the polyurethane sheet and polishing pad of Hirohito absence evidence to the contrary.
This is further motivated by the fact that based on paragraph [0045] of the
specification of the as filed Application, R value is a factor determining the peak
temperature of loss tangent tan, in both water immersion condition and dry condition;
therefore, although R value is not claimed, due to the fact that the reference teaches a
substantially overlapping range of R value with what is disclosed in the specification of
the present Application under examination in addition to disclosing a very similar
process of producing a polyurethane sheet, and wherein the components as detailed
out above, are also the same or substantially similar to what are used in Example 1 of
the present Application under examination, the claimed characteristics of claim 1, lines
3-5 and the characteristics claimed in claims 2-5, are all expected to naturally follow
from the disclosure of Hirohito.
Moreover, Hirohito, in fact, teaches peaks of loss tangent tan within the
temperature ranges of 40°C to 60°C as measured in dynamic viscoelasticity performed
under the condition of a frequency of 10 radian/second which is almost 1.59 Hz, and a
temperature of 20-100°C (Overview, [0005], [0014], [0015], [0055], Figures 1 and 3,
claims 1, 4, 7). Based on Figure 1, the peaks occur at roughly between 0.15 and 0.28
(Figure 1) and based on Figure 3, the peaks occur at roughly between 0.14-0.18 (Figure 3). Additionally, the reference teaches tan δ is a ratio of loss elastic modulus E" to a storage elastic modulus E' measured by dynamic viscoelasticity at a frequency of 10 radian/second, i.e. almost 1.59 Hz ([0016]-[0017], [0056]-[0057]). As disclosed by the
reference, tan δ depends on R and R represents the ratio of amino group and hydroxyl
group in the curing agent to the isocyanate group; therefore, because the R value
disclosed by the reference overlaps the one disclosed by the original specification of the present Application under examination, the reference is seen to render characteristics such as elastic modulus obvious as well.
With respect to claims 6-12, Hirohito teaches a polishing pad comprising a
polishing sheet of polyurethane material (Overiview, claim 1, [0001]-[0002]). Hirohito
teaches that the number average molecular weight of a high molecular weight polyol
has a certain relationship with the peak temperature tan δ and discloses a method of
making such a polyurethane layer/sheet and the calculation/measurement of tan, elastic modulus E" and storage elastic modulus E' ([0009] and [0014]).
Hirohito discloses the reaction of a polyisocyanate compound such as 2,4-
tolylene diisocyanate or TDI having equivalent of NCO of 200-800, preferably 400-600
([0022], [0026]) with a polyol such as poly(oxytetramethylene)glycol (PTMG) having an
average molecular weight of 600-2200 ([0023]-[0024]) using a curing agent, or a chain
extender, such as 3,3'-dichloro-4,4'-diaminodiphenylmethane (methylenebis o-
chloroaniline) of MOCA ([0028]-[0029]). Hirohito, also, teaches the use of diethylene
glycol or DEG in the process of polymer production ([0031]); thus, the reference teaches polyhydric alcohol. Hirohito teaches that the curing agent can be a polyamine
compound, a polyol compound, or a mixture of both ([0032]). Additionally, Hirohito
teaches the use of hollow bodies which are hollow microspheres made of a
thermoplastic resin and a low-boiling hydrocarbon contained in the resin outer shell,
having an average particle diameter of 5-130 microns in the polyurethane resin ([0034]).
Moreover, in a particular embodiment, i.e. Example 1, Hirohito teaches that after
mixing TDI and PTMG, this mixture is kept in a first liquid tank at a temperature of 80°C,
and MOCA as a curing agent was charged into a second tank and kept at a temperature of 120°C ([0049]). The reference, then, discloses that the two liquids were then charged into a mixer, and the two liquids were injected into a mold of a molding machine preheated to 80°C, the mold was clamped and heated at a mold temperature of 80°C for 30 minutes to perform primary curing ([0049]).
Hirohito teaches the primarily cured molded produced is demolded, and then secondarily cured in an over at 120˚C for 5 hours to obtain a urethane molded produce which is then sliced ([0049]). In addition, Hirohito teaches aging of polyurethane resin sheet at a temperature of 80-120˚C for about 1-10 hours ([0037]) which would reveal the fact that the reference recognizes at least a heat treatment at the disclosed range of temperature and for the disclosed time period, which overlap with the claimed temperature and time. These disclosures are seen to read on and render the amendment to claim 6 obvious. 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). Nevertheless, and in the alternative, a temperature and time during which a curing occurs for the formation of the polyurethane sheet is a process limitation in a product claim, and as such, it is not seen to further limit the product under examination. MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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).
Thus, as can be seen, hereabove, and in more details in the reference, Hirohito
teaches a very similar process of production to what has been disclosed in the
embodiments, i.e. Examples such as Example A1, of the present Application under
examination with many of the very same compounds, as disclosed in the body of the
reference as cited above, having substantially similar molecular weight, where
applicable, and temperatures which are either exactly the same or close to what are
disclosed in the present Application under examination. Hirohito even teaches some of
the very same process steps of using two tanks, then mixing the liquids and applying
them into a mold at a very similar or close temperature.
Most Examples of Hirohito teach a concentration for curing agent which falls
within the claimed range of 20-50 parts by mass per 100 parts by mass of urethane
prepolymer; among the Examples, Examples 1-4 and 7-9 teach concentrations of 23.8,
23.8, 23.8, 23.8, 21.8, 23.8, and 29.1 parts by mass per 100 parts by mass of
prepolymer. Therefore, because most of the most preferred embodiments of the
reference disclose an amount of curing agent which falls within the claimed range of 20-50 parts by mass per 100 parts by mass of the prepolymer, it is expected of the
reference to render the claimed concentration of curing agent obvious for the general
teachings of the reference as well. Again, although the reference does not disclose one specific embodiment anticipating the claimed amount of curing agent, as well as the claimed number average molecular weight of the claimed prepolymer, and the NCO
equivalent amount, it is expected of the amount of curing agent for the disclosed
prepolymer number average molecular weight and NCO equivalent which would have
overlapping with the claimed ranges, to have, at least, some overlapping with respect to
the amount of curing agent with what is instantly claimed. Thus, although Hirohito may
not disclose the concentration of curing agent in the general teachings of the reference, and although the reference may not specifically disclose an embodiment anticipating the cumulative limitations of the specifically claimed polyol, its molecular weight, NCO equivalent, and curing agent content, the disclosure in the examples of Hirohito renders it obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, that the concentration of curing agent for what is disclosed in the general teachings of the reference can be expected to have, at least, some overlapping with the claimed content of the curing agent.
In addition, Hirohito teaches the components of the polishing pad are preferably
mixed such that the R value, which is the equivalent ratio of active hydrogen groups
(amino groups and hydroxyl groups) present in the curing agent to isocyanate groups
present at the terminals of the polyurethane bond-containing isocyanate compound is
0.6 to 1.4, preferably 0.65 to 1.3 ([0033]).
Thus, as can be seen, hereabove, and in more details in the reference, Hirohito
teaches a very similar process of production to that which has been disclosed in the
embodiments, i.e. Examples such as Example 1, of the present Application under
examination with many of the very same compounds having substantially similar
molecular weight, where applicable, and temperatures which are either exactly the
same or close to what are disclosed in the present Application under examination.
Hirohito even teaches some of the very same process steps of using two tanks, then
mixing the liquids and applying them into a mold at a very similar or close temperature.
As such, the finally obtained product of Hirohito is expected to have substantially
similar, if not overlapping, range of dynamic and other properties compared to those
claimed in the present claims under examination. Therefore, it is expected of the
reference to render the claimed characteristics of "wherein, in the polyurethane sheet, a difference between a peak temperature A of loss tangent tan δ in dynamic
viscoelasticity measurement performed under conditions of a frequency of 1.6 Hz and a temperature of 20 to 100°C in a water immersion condition and peak temperature B of
loss tangent tan 6 in dynamic viscoelasticity measurement performed under conditions
of a frequency of 1.6 Hz and a temperature of 20 to 100°C in a dry condition, is 25 to
47°C", "wherein a changing ratio of the peak temperature A to the peak temperature B
is 0.45 to 0.65", "wherein the peak temperature A is lower than the peak temperature
B", "wherein a peak value a of loss tangent tan 6 at the peak temperature A is 0.15 to
0.35", "wherein a peak value B of loss tangent tan 5 at the peak temperature B is 0.15
to 0.357, and "wherein a peak value a of loss tangent tan δ at the peak temperature A is equal to or more than a peak value B of loss tangent tan δ at the peak temperature B"
are expected to follow from the polyurethane sheet and the polishing pad of the
reference absence evidence to the contrary.
This is further motivated by the fact that based on paragraph [0045] of the
specification of the as-filed application, R value is a factor determining the peak
temperature of loss tangent tan, in both water immersion condition and dry condition,
due to the fact that the reference teaches a substantially overlapping range of R value
with what is disclosed in the specification of the present Application under examination in addition to disclosing a very similar process and components as detailed out above, the claimed characteristics of claim 1, lines 3-5 and the characteristics claimed in claims 2-5, are all expected to naturally follow from the disclosure of Hirohito.
Additionally, the reference teaches tan δ is a ratio of loss elastic modulus E" toa
storage elastic modulus E' measured by dynamic viscoelasticity at a frequency of 10
radian/second, i.e. almost 1.59 Hz ([0016]-[0017], [0056]-[0057]). As disclosed by the
reference, tan 6 depends on R and R represents the ratio of amino groups and hydroxyl groups in the curing agent to the isocyanate group; therefore, because the R value disclosed by the reference overlaps the one disclosed by the original specification of the present Application under examination, the reference is seen to render characteristics such as elastic modulus obvious.
With respect to claims 13 and 14, Hirohito discloses the use of their polishing pad in polishing an optical material, a semiconductor device, a hard disk, or a glass
substrate while supplying a slurry or polishing liquid ([0002]-[0004]).
Response to Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
Applicant has asserted none of the examples in Hirohito has all of the ranges that the independent claims recite (Remarks, page 5). Applicant has, additionally, asserted that the Examiner has taken general statements about ranges for PTMG and NCO in paragraphs [0024] and [0026], and the curing agent amounts in Examples 1-4 and 7-9 and has concluded that because at least some of these ranges overlap with the claimed ranges, and because some of the examples have some values in some of these range, the results achieved by the claimed invention would have been expected and therefore obvious (Remarks, page 5).
Applicant has asserted picking and choosing from various examples, none of which satisfies any of the claimed of the present Application, does not yield a proper conclusion of obviousness (Remarks, page 5). Applicant has, then, asserted in an inherently unpredictable technology such as the technology of the present application, changing parameters does not necessarily yield results that inherently would be similar to the results achieved with the combinations in the claims (Remarks, pages 5 and 6).
The Examiner, respectfully, submits the rejections as presented before, and repeated hereinabove, are not 102 anticipatory rejections precisely because there is no single embodiment disclosing every component, concentration, and claimed features. However, the rejections are obviousness rejections because the teaching of the reference as a whole would render the claimed component, in the claimed concentration or molecular weight have been disclosed in the reference, whether in the general teachings of the reference, or in the specific examples or in both. The fact that the examples of Hirohito teach certain concentrations of the curing agent, which have at least overlapping with the claimed range if not falling within the claimed range, would reveal the fact that the use of curing agent in the disclosed concentrations in the examples has been known in the art, and has been known to a skilled artisan. This is found sufficient to render the claimed limitations obvious because the test for obviousness is not whether the features of one section of a reference may be bodily incorporated into the structure of another section of the reference; nor is it that the claimed invention must be expressly suggested in the reference. Rather, the test is what the combined teachings of the reference, in this case the general teachings of the reference and the examples, would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant has asserted Hirohito talks about testing under dry conditions because in paragraph [0012], the reference described measurements of the storage modulus E’ and the loss modulus E” according to the standard JIS K7244, and that this standard, as stated by Applicant specifies measurement under air or an inert gas atmosphere (Remarks, page 6). Applicant has, then, concluded all of Hirohito Examples 1-9 were measured under dry conditions, and not in a water immersion condition, as the claims of the present Application under examination recite (Remarks, page 6). Applicant has asserted that the dry and wet methods that Hirohito described in paragraph [0018] relate to polishing pad manufacturing method, and not to material testing, and that Hirohito never mentions testing under water immersion condition (Remarks, page 6). Applicant has asserted that this is significant because there are differences in loss elastic modulus and tang δ values between dry and water immersions (Remarks, page 6). Applicant has pointed to Figure 1, and asserted that loss tangent tan δ does not have a peak in the range from 40 to 60˚C in a dry condition, but it does in a water immersion condition, and that a difference A in loss tangent tan δ between 60˚C and 70˚C is lower than a difference B in loss tangent tan δ between 50C and 60C and a difference C in loss tangent tan δ between 70˚C and 80˚C in a water immersion condition, and not in a dry condition (Remarks, page 6). Applicant has, then, asserted the examples in the present Application under examination describe a polishing pad that has a porous material containing air bubbles originating from hollow particles, and that such a pad has a certain degree of thermal insulation, and consequently, the measurement results in a dry condition and in a water immersion condition will differ because the effect of the applied temperature on the sample will vary depending on whether the temperature is applied under dry conditions or under water immersion condition (Remarks, page 6).
Applicant has, then, concluded that because Hirohito is silent as to testing under water immersion conditions, the reference does not suggest the subject matter of claims 1-5 and 13 which specifically refer to water immersion conditions (Remarks, pages 6 and 7). Applicant has asserted because Hirohito only produced examples under dry conditions, it is not possible reasonably to extrapolate Hirohito’s results in dry conditions to results under water immersion conditions (Remarks, page 7).
The Examiner, respectfully, submits that as detailed out in the rejection of the claims, because the cumulative teachings of the reference include substantially similar if not the same compounds used in the production of polyurethane, and substantially overlapping ranges of concentration and/or molecular weight and substantially similar NCO equivalent, and even some of very similar process conditions as disclosed in the specification of the present Application under examination, the claimed characteristics such as the measurements of the dynamic viscoelasticity performed under water immersion are naturally and inevitably expected to follow from the reference. The reference needs not to expressly disclose the claimed characteristics in the claimed conditions to render them obvious, but that when the reference teaches substantially similar product in terms of components and concentrations and/or molecular weight and/or NCO equivalent numbers, the characteristics are reasonably expected to follow from the teachings of the reference.
Applicant has asserted Hirohito describes that the mixture for forming the molded body is cured at 50-100˚C, and in Examples 1-9, the primary curing is performed at a mold temperature of 80˚C (Remarks, page 7). Applicant has, then, asserted paragraph [0053] of the present Application indicates that curing is performed at approximately 100-150˚C, and in examples A1 and B1, the primary curing is performed at 110˚C (Remarks, page 7). Applicant then pointed out to independent claims 1 and 6 which specify curing at a temperature in a range from about 100-150˚C (Remarks, page 7). Applicant has asserted when the primary curing temperature is relatively low at 100C or below, as in Hirohito, the reaction proceeds gently, allowing the polymer chains to grow more easily, and consequently, Applicant has concluded, an increase in chain entanglement is expected. Applicant has, then, asserted, as a result polymer chain mobility is suppressed, and the temperature dependence observed in dynamic mechanical analysis (DMA) measurements would be anticipated to be reduced (Remarks, page 7). Applicant has asserted when the primary curing temperature is relatively high, such as 100C or above as in the present Application, the curing proceeds rapidly, and consequently curing is completed before the polymer chain can grow sufficiently, and the entanglement between the chain is expected to be lower (Remarks, page 7). Applicant has asserted polymer chains would be more mobile, and the temperature dependence in DMA measurements would be expected to be greater; Applicant has asserted accurately capturing the appropriately controlling the property changes arising from these differing measurement conditions are what enable the very superior suppression of scratch formation (Remarks, page 7). Applicant has concluded that for at least the foregoing reasons, it is not possible to extrapolate Hirohito’s dry condition results to render obvious the water immersion condition results that the claims of the present Application recite (Remarks, page 7).
The Examiner, respectfully, submits that the newly added limitation to independent claims 1 and 6 is a process step limitation, which would limit curing time and temperature; whereas, the claims under examination are product claims, directed to a polishing pad comprising a polyurethane. MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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).
Nevertheless, in the general teachings of the reference, Hirohito discloses an aging step, which involves heating at a temperature of 80-120˚C and for a time period of 1-10 hours ([0037]) which would substantially overlap with the claimed curing temperature and time. Overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
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.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731