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 05/12/2026.
Claims 1, 5 and 7-20 are presently pending; claims 2-4 and 6 are canceled; claims 13-20 are withdrawn; claim 1 is amended; claims 1, 5 and 7-12 are under examination.
The objections to claim 1 are withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejection of claims 1, 5 and 7-12 over HEO is maintained.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 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.
Claims 1, 5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Heo, et al. (U.S. Pub. No. 2019/0321937-A1) (hereinafter, “HEO”).
Regarding claim 1, HEO teaches a polishing pad comprising a polishing layer, wherein the polishing layer includes a plurality of pores (see HEO generally at Abstract and paragraphs [0002]-[0003]),
and the pores have a D10 of 10 to 20 μm, D50 of 18 to 22 μm and D90 of 20 to 45 μm (see HEO at paragraphs [0036]-[0037], teaching an average pore diameter (i.e., D50) of 10 to 40 μm, e.g., 14 to 22 μm, which overlaps with and thereby renders obvious the claimed range; see HEO at paragraph [0141] and Fig. 4, Ex. 2, showing a polishing pad pore size distribution having D10 and D90 values falling within the claimed ranges; as shown below, the data from Fig. 4, Ex. 2 has been used to plot the cumulative ratio (%) vs. pore diameter and obtain the D10 value of approximately 14 μm and D90 value of approximately 38 μm),
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wherein the polishing layer contains a cured product of a composition for manufacturing the polishing layer, comprising a prepolymer composition (see HEO at paragraphs [0015]-[0016], teaching a urethane-based prepolymer composition), a foaming agent (see HEO at paragraphs [0015]-[0016] and [0050]-[0051]), and a curing agent (see HEO at paragraphs [0015]-[0016]),
wherein the foaming agent is an unexpanded solid-phase foaming agent (see HEO at paragraphs [0050]-[0051], teaching using a thermally expandable (i.e., unexpanded) solid phase foaming agent, which is subsequently thermally expanded).
As set forth in MPEP § 2144.05, 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)).
HEO does not explicitly disclose “wherein the unexpanded solid-phase foaming agent forms the plurality of pores by being foamed during a curing process” as recited by claim 1; however, this is considered product-by-process claim language and is not given patentable weight. The present claims are directed toward a cured polishing pad, not toward a composition for manufacturing a polishing layer or a method of manufacturing a polishing pad, and the method by which the pores are formed, i.e., whether the foaming agent is expanded before or during curing, does not limit the present product claims. “Even 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); see MPEP § 2113.
HEO does not explicitly mention that a polishing surface of the polishing layer has a Spk reduction rate according to the following Equation 1 of 5 to 25%:
[Equation 1] |Initial Spk - After polishing Spk|/Initial Spk
where, Spk relates to a three-dimensional parameter for surface roughness, and means the average height of the protruding peak after expressing the height of the total surface roughness in a graph, the initial Spk is Spk for the polishing surface before the polishing process, and Spk after polishing is Spk for the polishing surface after attaching a 300 mm diameter silicon wafer on which silicon oxide is deposited to a surface plate, maintaining a polishing load of 4.0 psi and a rotational speed of the polishing pad of 150 rpm, injecting the calcined ceria slurry at a rate of 250 mL/min, and performing the polishing process for 60 seconds.
However, the polishing pad of HEO is identical or substantially identical to the polishing pad of the present invention, and as discussed above, HEO teaches D10, D50 and D90 values as claimed, and further teaches the pores should have a uniform diameter and that the pore size and size distribution should be controlled in order to enhance physical properties and polishing rate and prevent scratches (i.e., HEO explicitly teaches that the D10, D50 and D90 values are result-effective variables which can be optimized by one of ordinary skill in the art; see HEO at Abstract and paragraphs [0019], [0081] and [0108]); paragraph [0070] of Applicant’s specification explicitly states that the claimed Spk reduction rate is due to controlling the size of the micropores. HEO teaches a polishing pad as claimed by claim 1, therefore the polishing pad of HEO would be expected to have the same or overlapping properties as the claimed polishing pad and would be expected to perform the same way as the polishing pad of claim 1, i.e., would be expected to have an Spk reduction rate of or overlapping with 5 to 25% according to Equation 1 when subjected to the polishing process recited in the present claim; therefore, HEO renders the claimed equation obvious. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 5, as applied to claim 1 above, HEO teaches a polishing pad according to claim 1, wherein the composition for manufacturing a polishing layer further comprises a catalyst (see HEO at paragraphs [0061]-[0062], teaching a tertiary amine-based reaction rate controlling agent, i.e., catalyst).
Regarding claim 7, as applied to claim 1 above, HEO teaches a polishing pad according to claim 1, wherein the unexpanded solid-phase foaming agent comprises a resin material shell and an expansion-causing component that is encapsulated inside the shell (see HEO at paragraph [0050]).
Regarding claim 8, as applied to claim 7 above, HEO teaches a polishing pad according to claim 7, wherein the shell contains a thermoplastic resin (see HEO at paragraph [0050]).
Regarding claim 9, as applied to claim 7 above, HEO teaches a polishing pad according to claim 7, wherein the expansion-causing component is selected from the group consisting of a hydrocarbon compound, a chlorofluoro compound, a tetraalkylsilane compound, and combinations thereof (see HEO at paragraph [0050]).
Regarding claim 10, as applied to claim 1 above, HEO teaches a polishing pad according to claim 1, wherein the foaming agent is contained in an amount of 0.5 to 10 parts by weight with respect to 100 parts by weight of the prepolymer composition (see HEO at paragraph [0090]).
Regarding claim 11, as applied to claim 5 above, HEO teaches a polishing pad according to claim 5, wherein the catalyst is selected from the group consisting of an amine-based catalyst, a bismuth-based metal catalyst, an Sn-based metal catalyst, and mixtures thereof (see HEO at paragraphs [0061]-[0062], teaching amine-based catalyst).
Regarding claim 12, as applied to claim 11 above, HEO teaches a polishing pad according to claim 11. HEO fails to explicitly teach that the catalyst is contained in an amount of 0.001 to 0.01 parts by weight with respect to 100 parts by weight of the prepolymer composition.
However, HEO teaches that the tertiary amine-based reaction rate controlling agent, i.e., catalyst, may be employed in amounts within a broad range of 0.1 to 2 parts by weight based on 100 parts by weight of the urethane-based prepolymer composition (see HEO at paragraphs [0094]). HEO further teaches that the amount of catalyst used affects the reaction rate and the pore size of the resulting product (see HEO at paragraphs [0094] and [0103]). Although there is no disclosure on the catalyst being contained in an amount of 0.001 to 0.01 parts by weight with respect to 100 parts by weight of the prepolymer composition, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)), see MPEP 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to vary the amount of catalyst contained, including amounts of 0.001 to 0.01 parts by weight with respect to 100 parts by weight of the prepolymer composition as presently claimed, in order to optimize the reaction rate and obtain the desired pore size as taught by HEO (see HEO at paragraphs [0094] and [0103]).
Response to Arguments
Applicant's arguments filed 05/12/2026 have been fully considered but they are not persuasive.
Applicant argues:
“it is clear from the commercial names of the foaming agents used in Examples 1 and 2 of Heo that it discloses only cases employing pre-expanded dry-state solid foaming agents… the present invention employes a dry unexpanded (DU) type foaming agent” (see Remarks at pg. 13).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because HEO discloses examples using unexpanded foaming agents, the Examiner respectfully disagrees. As set forth in MPEP § 2123, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). As set forth in the rejection above, HEO explicitly discloses that the foaming agents may be expanded foaming agents or thermally expandable (i.e., unexpanded) foaming agents which are subsequently thermally expanded (see HEO at paragraphs [0050]-[0051]).
Additionally, as discussed in the rejection above, the recitation of the foaming agent being an unexpanded foaming agent which forms the pores by being foamed (i.e., expanded) during a curing process is considered product-by-process claim language and is not given patentable weight in the present product claim. The present claims are directed toward a cured polishing pad, not toward a composition for manufacturing a polishing layer or a method of manufacturing a polishing pad, and the method by which the pores are formed, i.e., whether the foaming agent is expanded before or during curing, does not hold patentable weight in the present product claims. “Even 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); see MPEP § 2113.
Applicant argues:
“the disclosed numerical range relates not to D10, D50, or D90, but rather to a separately devised parameter referred to as AWAPD… Further, the disclosed values merely represent various ranges of a single parameter, rather than respective ranges for three distinct parameters” (see Remarks at pg. 14).
“Fig. 4 of Heo cited by the Examiner merely provides a schematic graph illustrating pore size distribution for a particular example and does not directly disclose or define… D10, D50, or D90. The derivation of D-values… appears to be an arbitrary reconstruction based on the graph… rather than information expressly disclosed in the specification. Such reconstruction constitutes improper hindsight construction of technical features not explicitly disclosed in the prior art reference and exceeds what a person of ordinary skill in the art… could directly and unambiguously recognize from Heo” (see Remarks at pg. 15).
“referring to Fig. 4… Example 2… shows a peak value of approximately 30 μm, a relatively narrow distribution, and substantially no distribution beyond 60 μm. Therefore, it would be reasonable to expect the D50 range to appear around the peak value, i.e., around 30 μm, which is significantly greater than the D50 range of the present invention” (see Remarks at pg. 15).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because the D-values are calculated based on the graph of Fig. 4 rather than being expressly disclosed, the Examiner respectfully disagrees. As set forth in MPEP § 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). The reference does not need to expressly disclose the D-values; as discussed in the rejection above, the values are disclosed in Fig. 4. Simple calculations to determine cumulative pore size distribution values based on pore size distribution data that is explicitly disclosed in HEO are not a reconstruction of any kind; they are an analysis of the explicitly disclosed data to determine the D-values of the exemplary polishing pad of HEO.
In response to Applicant’s argument that Fig. 4 shows a peak value of approximately 30 μm, therefore the D50 should be around 30 μm, the Examiner respectfully disagrees; Fig. 4 does not show cumulative distribution, and the peak value at around 50% is not D50. Fig. 4 (Ex. 2) shows that about 28% of the pores have a size of 10-20 μm, and about 49% of the pores have a pore size of 20-30 μm, which is a cumulative percentage of about 77%, not 50%. As shown in Table 1 of HEO, the D50 of Ex. 2 is 24.6 μm, not 30 μm. While the D50 of this example is slightly outside of the claimed range of 18 to 22 μm, as discussed in the rejection above, HEO explicitly teaches an average pore diameter, i.e., D50, range of 10 to 40 μm, e.g., 14 to 22 μm, which overlaps with and thereby renders obvious the claimed range. Fig. 4 (Ex. 2) shows that HEO also teaches that the polishing pad can have D10 and D90 values within the respective claimed ranges. Additionally, as discussed in the rejection above, HEO explicitly teaches that the pores should have a uniform diameter and that the pore size and size distribution should be controlled in order to enhance physical properties and polishing rate and prevent scratches, i.e., HEO explicitly teaches that the D10, D50 and D90 values are result-effective variables which can be optimized by one of ordinary skill in the art (see HEO at Abstract and paragraphs [0019], [0081] and [0108]). MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Applicant argues:
“Heo contains absolutely no teaching or suggestion regarding the Spk reduction ratio, nor any teaching or suggestion regarding scratch counts. The present invention employs a completely different type of foaming agent from that used by Heo. Heo discloses nothing on the claimed D10, D50, and D90 ranges. Accordingly, the effects achieved by the polishing pad of the present invention… could not have been expected or is inherent from the teachings of Heo” (see Remarks at pg. 16).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because HEO does not teach Spk or scratch count, the Examiner respectfully disagrees. As discussed above, HEO both teaches D10, D50 and D90 values overlapping with or within the claimed ranges, and teaches that the pore size distribution is a result-effective variable which may be optimized by one of ordinary skill in the art. As set forth in the rejection above, MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of HEO have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Applicant argues:
“where the manufacturing method determines the structure and/or properties of the final product, the recited manufacturing method may be interpreted not merely as a process limitation, but rather as an indicator describing the characteristics of the product itself… if the method results in formation of certain physical properties (e.g., particle/pore distribution characteristics such as D10, D50, and D90), such characteristics should be considered as resulting structural properties… the feature in which the unexpanded solid foaming agent expands in-situ during the curing process of the pad constitutes a direct means for realizing the pore structure characteristics (D10, D50, and D90) and the Spk reduction ratio of the polishing layer” (see Remarks at pg. 17).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that in-situ expansion of the foaming agent during curing results in the D10, D50 and D90 so it should not be treated as a product-by-process limitation, the Examiner respectfully disagrees. Saying that a foaming agent expands during curing does not provide any clear structural characteristics/limitations to the claimed polishing pad. Additionally, the structural limitations referenced by Applicant, D10, D50 and D90, are already explicitly included as structural limitations of the claimed polishing pad; a reference must disclose or render obvious these values regardless of how the polishing pad is made. As discussed above, HEO renders obvious the claimed pore size distribution, which is the structural limitation recited in the present claim. Paragraph [0070] of Applicant’s specification explicitly states that the claimed Spk reduction rate is due to controlling the size of the micropores. HEO teaches a polishing pad as claimed by claim 1, therefore the polishing pad of HEO would be expected to have the same or overlapping properties as the claimed polishing pad and would be expected to perform the same way as the polishing pad of claim 1, i.e., would be expected to have an Spk reduction rate of or overlapping with 5 to 25% according to Equation 1 when subjected to the polishing process recited in the present claim; therefore, HEO renders the claimed equation obvious. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of HEO have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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