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 .
DETAILED ACTION
Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/11/2026 has been entered. Claims 1-10 are currently under examination on the merits.
Any rejections and/or objections made in the previous office action and not repeated below are hereby withdrawn.
Claim Objections
Claim 1 is objected to because of the following informalities: “alicyclic diisocyante” should read “alicyclic diisocyanate”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shimomura et al (US 2005/0064709, ‘709 hereafter).
Regarding claims 1-5, ‘709 discloses a polishing pad comprising a polishing layer which comprises a cured product of a composition containing a reaction product of an isocyanate compound and a polyol compound ([0149]-[0177]); wherein the isocyanate compound comprises aromatic diisocyanate compounds including 2,4-toluene diisocyanate (2,4-TDI), 2,6-toluene diisocyanate (2,6-TDI), and an alicyclic diisocyanate compound being a H12MDI ( Examples 4-3 and 6-2). The polyol compound comprises a low-molecular-weight polyol being diethylene glycol (DEG) having a weight- average molecular weight being 106 g/mol (Examples 4-3 and 6-2, molecular weight of DEG is 106 ) and a high-molecular-weight polyol being polytetramethylene glycol (PTMG) having a number-average molecular weight of 818 satisfying present claim 4 (Example 4-3, it is noted that polyether generally formed from a step polymerization with a maximum polydispersity index of 2, thus the weight average molecular weight being less than 818x2=1636, falls in the presently claimed range). ‘709 also discloses that content ratio of compound 2,4-TDI to compound 2,6-TDI can be of 25/100 by weight (Example 4-3, 20/80=25/100) and the content of alicyclic diisocyanate compound can be 393/1480=26.6 parts per 100 parts of aromatic isocyanate (Example 4-3). ‘709 does not expressly set forth the processed polishing layer (decomposed by KOH as in claim 1) and layer’s preliminary composition have a nuclear magnetic resonance (NMR) 13C spectrum with peaks and peak areas as recited in the present claims 1-3, however, since polishing layer of prior art formed from a composition of a urethane-based prepolymer, which has chemical structure units (Formed from TDIs, H12MDI, DEG and PTMG) being substantially identical to the urethane-based prepolymer used in the present application (See Examples of present application), it is reasonable to expect that the processed polishing layer and the composition for forming the polishing layer would have the NMR 13C peaks and peak areas as presently claimed, because the NMR spectrum is directly depending from chemical structure of the urethane-based prepolymer, in absence of an objective showing to the contrary (See MPEP 2112).
Regarding claim 6, ‘709 also discloses the isocyanate group (NCO)content being 2.29 meq/g, satisfying presently claimed range (2.29x (molecular weight of NCO being 42 g/mol)x0.1=9.62 wt%).
Regarding claims 7-9, ‘709 teaches all the limitations of claim 1, but does not expressly set forth that the processed polishing layer having molecular weights and polydispersity index as claimed. However, ‘709 discloses a polishing layer formed from TDIs, H12MDI, DEG and PTMG, being substantially identical to the urethane-based prepolymer as used in the present application (See Examples of present application), thus it is reasonable to expect that the processed polishing layer would render a decomposed composition having molecular weights satisfying equation 1 and limitations as recited in the present claims 7 and 8, and polydispersity index satisfying present claim 9, in absence of an objective showing to the contrary (See MPEP 2112).
Regarding claim 10, ‘709 teaches all the limitation of claim 1, but does not expressly set forth that the polishing layer has a tensile strength and a hardness as recited in the claim, however, ‘709 discloses a polishing layer formed from TDIs, H12MDI DEG and PTMG 1000, being substantially identical to the urethane-based prepolymer as used in the present application (See Examples of present application), thus it is reasonable to expect that the polishing layer would have possessed the same properties including tensile strength and hardness as presently claimed, in absence of an objective showing to the contrary (See MPEP 2112).
Response to Arguments
Applicant's arguments filed on 05/11/2026 have been fully considered but they are moot in view of the new grounds of rejection in light of Applicant's amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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