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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/16/2025 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 09/16/2025.
Claims 1, 5 and 7-20 are presently pending; claims 2-4 and 6 are canceled; claims 13-20 are withdrawn; claims 1, 5, 7 and 10 are amended; claims 1, 5 and 7-12 are under examination.
New objections to claim 1 are present herein in light of the amendments to the claims.
The 35 U.S.C. 103 rejection of claims 1, 5 and 7-12 over SEO are withdrawn, and new grounds of rejection are present herein; the rejections of claims 3 and 6 are moot as these claims have been canceled.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 contains a grammatical error; it appears that “by being foamed a curing process” should read “by being foamed during a curing process” (see claim 1 at lines 7-8).
In claim 1, line 9, “Spk” should have a subscript and read “Spk” to be consistent with all of the other recitations of “Spk” in the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 09/16/2025 with respect to claims 1, 3 and 5-12 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Qian, et al. (U.S. Pub. No. 2016/0176012-A1) (hereinafter, “QIAN”):
QIAN teaches a polishing pad comprising a polishing layer, wherein the polishing layer includes a plurality of pores with controlled and uniform pore size (see QIAN paragraphs [0018]-[0019], [0053], [0060] and Fig. 5A), wherein the polishing layer contains a cured product of a composition for manufacturing the polishing layer, comprising a urethane prepolymer composition, an unexpanded, solid-phase foaming agent (e.g., Expancel® 031DU40 from AkzoNobel), and a curing agent (see QIAN at paragraphs [0007]-[0008], [0018]-[0019], [0033] and [0038]).
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731