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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11 December, 2025 has been entered.
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 1-2, 4-5, and 7 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.
Claim 1 contains the limitations of “
wherein the surface roughness (Ra) of the polishing layer and the window for end-point detection has a surface roughness rate of difference change (SRR) represented by the following Equation 1 of 1.5 to 2.5; and
the surface roughness of the polishing layer has a surface roughness difference (pSRD) value represented by the following Equation 3 of 1 to 4:
[Equation 1]: SRR = (dRa1/dRa2)
[Equation 3]: pSRD = |Rapi-Rapf|
wherein,
dRal is a surface roughness difference between the polishing layer and the window before polishing,
Rapi is a surface roughness of the polishing layer before polishing,
dRa2 is a surface roughness difference between the polishing layer and the window measured after polishing under the following measurement conditions (a) to (d), and
Rapf is a surface roughness (Ra) of the polishing layer after polishing under the following measurement conditions (a) to (d):
(a) supplying a calcined ceria slurry as a polishing slurry at a flow rate of 200 mL/min;
(b) maintaining a wafer load of 6.0 psi;
(c) polishing an oxide film at a rotation speed of 150 rpm for 60 seconds;
(d) polishing a total of 100 wafer sheets...”
Claims 2 and 4-5 depend from claim 1 and recite the additional limitations of
“2. …wherein the window for end-point detection has a surface roughness difference (wSRD) represented by the following Equation 2 of 0.3 to 1.5:
[Equation 2]: wSRD=|Rawi-Rawf|
wherein, Rawi is a surface roughness (Ra) of the window before polishing, and Rawf is a surface roughness (Ra) of the window after polishing under the measurement conditions (a) to (d).
4. …wherein the polishing layer and the window have the surface roughness difference, dRa1 values of 6µ to 7µ.
5. … wherein in the polishing layer and the window have the surface roughness difference, dRa2 values of 3µ to 4µ.”
These limitations are functional, as they describe an intended use for the claimed structure and an expected performance after such a use. Because the relationship between these functionally recited limitations and the structural features of the claimed invention is unclear, one of ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention
Functional language may be employed to limit the claims without using the means-plus-function format. See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363, 52 USPQ2d 1001, 1005 (Fed. Cir. 1999). Unlike means-plus-function claim language that applies only to purely functional limitations, functional claiming often involves the recitation of some structure followed by its function. For example, in In re Schreiber, the claims were directed to a conical spout (the structure) that “allow[ed] several kernels of popped popcorn to pass through at the same time” (the function). In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As noted by the court in Schreiber, “[a] patent applicant is free to recite features of an apparatus either structurally or functionally.” Id.
However, when claims merely recite a description of a result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs “when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty”) (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)). Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc).
The functional limitations of claims 1-2 and 4-5 describe a result achieved by the invention and the disclosure does not explain the particular mechanism by which the claimed structure and materials accomplish the result.
Equations 1-3 define SRR and pSRD as functions of the relative surface roughnesses of the polishing layer and window before and after undergoing a polishing process. Claim 1 further recites a list of steps involved in the polishing process, but does not fully control for all potential variables affecting the changes in relative surface roughnesses, e.g. a wafer microstructure may have different abrasive effects on a porous polishing layer (the pores resulting from the use of a foaming agent as claimed) than on a window that is substantially free from pores. Furthermore, it is not impossible that chemical or thermal interactions of a specific oxide film or wafer material result in different surface roughness impacts due to the relative surface areas for thermal dissipation or chemical reactivity. Without a testing process that adequately controls for all possible variables, it is impossible for one of ordinary skill to determine if a particular wafer would infringe on the claimed invention. Because a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, rejection of the claim under 35 U.S.C. 112(b) is appropriate. See IBSA Institut Biochimique, S.A. v. Teva Pharm. USA, Inc., 966 F.3d 1374, 1378-81, 2020 USPQ2d 10865 (Fed. Cir. 2020).
Additionally, the final limitation of claim 1 recites “the measurement conditions are solely used for determination of SRR and pSRD, and do not limit the structural configuration of the polishing pad.” If the measurement conditions do not limit the structural configuration of the polishing pad, then how is it possible for the claimed ranges resulting from those measurements to limit the structural configuration of the polishing pad (and therefore the scope of the invention). Because this limitation is logically inconsistent with the remaining subject matter of the claim, one of ordinary skill would be unclear as to the scope of the claimed invention.
Finally, claim 1 recites the limitations “a weight average molecular weight (Mw) of about 100 g/mol or more and about less than 300 g/mol, and a high molecular weight polyol having a weight average molecular weight (Mw) of about 300 g/mol or more and about 1,800 g/mol or less”. The term “about” in claim 1 is an approximation which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The disclosure as filed does not provide adequate guidance to the meaning of "about" in the context of the claimed ranges.
For these reasons, rejection of claim 1, (and claims 2, 4-5, and 7 depending therefrom) as indefinite under 35 U.S.C. 112(b) is appropriate.
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.
Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura (US PGPub 20140213151).
1. Kimura teaches a polishing pad (1) including a polishing layer (9) and a window for end-point detection (9, Kimura fig. 2 and [0032]-[0033]),
wherein the window includes a cured product (e.g., a polyurethane resin, Kimura [0033]) obtained by curing a window composition (curing a resin, Kimura [0043]) comprising a urethane-based prepolymer (combination of isocyanate component and polyol blend, Kimura [0036]) and a curing agent (chain extender such as MOCA is a curing agent, see Kimura [0036], [0040], and [0063]-[0064], note that the material in the window is preferably the same as that used in the polishing layer, Kimura [0035]); and
the polishing layer contains a cured product (e.g., a polyurethane resin, Kimura [0033]) obtained by curing a polishing composition (curing a resin, Kimura [0043]) comprising the urethane-based prepolymer (combination of isocyanate component and polyol blend, Kimura [0036]), the curing agent (chain extender such as MOCA is a curing agent, see Kimura [0036], [0040], and [0063]-[0064]), and a foaming agent (such as a silicone surfactant, nonreactive gas, or other chemical foaming agent, Kimura [0062]),
wherein the urethane-based prepolymer is prepared by reacting an isocyanate compound with a polyol (Kimura [0042]).
Kimura further teaches that the isocyanate compound may include an aromatic diisocyanate compound such as 2,4-toluene diisocyanate (Kimura [0037]), and that the polyol may include both (Kimura [0036]) a high molecular weight polyol such as polytetramethylene ether glycol (PTMEG) and a low molecular weight polyol such as diethylene glycol (Kimura [0038]-[0039]). Regarding the molecular weights, Kimura discloses that the number average molecular weight of the high molecular weight polyol is preferably in a range of about 500 to about 2000 (Kimura [0056]), but is silent as to a preferred range for the number average molecular weight of the low molecular weight polyol.
Kimura therefore does not explicitly teach that the polyol includes a low molecular weight polyol having a weight average molecular weight (Mw) of about 100 g/mol or more and about less than 300 g/mol, and a high molecular weight polyol having a weight average molecular weight (Mw) of about 300 g/mol or more and about 1,800 g/mol or less.
However, it has been held that, where 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). The range of molecular weights disclosed by Kimura for the high molecular weight polyol of 500-2000 substantially overlaps with the claimed range of 300-1800. Although Kimura does not explicitly disclose a preferred range for the number average molecular weight of the low molecular weight polyol, it has been held that “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” MPEP § 2144.01, citing In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Because Kimura teaches a lower bound for the high weight polyol of 500, one of ordinary skill would infer that a corresponding range for the low weight polyol must have an upper limit below the boundary of the high weight polyol (because otherwise the relative definitions of high and low weight would not make sense). The broadest possible range for the molecular weights of the low weight polyol would therefore fall within the range of 0-500, which also substantially overlaps with the claimed range of 100 to 300.
Consequently, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Kimura such that the polyol includes a low molecular weight polyol having a weight average molecular weight (Mw) of about 100 g/mol or more and about less than 300 g/mol, and a high molecular weight polyol having a weight average molecular weight (Mw) of about 300 g/mol or more and about 1,800 g/mol or less, as the claimed ranges overlap or lie inside the ranges disclosed by the prior art, and the disclosure provides no evidence indicating the claimed range is critical to the invention.
Regarding the remaining limitations of claim 1 and the limitations of claims 2 and 4-5 regarding the relative changes in surface roughness between the window and the polishing layer after use described in Equations 1-3, the limitations appear to describe, in functional language, a result obtained through a use of the invention. In other words, they represent a claim of properties or functions of the claimed pad.
It has been held that “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).
For the reasons noted above, Kimura as modified appears to teach the claimed pad, which would, according to applicant's disclosure, be capable of producing the claimed changes in surface roughness under the recited measurement conditions. Consequently, the claimed invention is not patentably distinct from the pad of Kimura as modified, and claims 1-2 and 4-5 stand rejected.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kimura as applied to claim 1 above, and further in view of Kulp et al. (US 8257544, "Kulp").
7. Kimura as modified teaches the polishing pad of claim 1, but does not explicitly teach the urethane-based prepolymer has an unreacted NCO% of 8% by weight to 10% by weight.
However, Kimura does teach that the prepolymer may have an NCO% in the range of 2%-8%. (Kimura [0042]). It has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Additionally, Kulp teaches a polishing pad including an integral window made from a reaction between a polyol and a curative agent (Kulp 3:6-11), wherein the polyol may comprise a mixture of a high weight polyol and a low weight polyol (e.g. a mixture of PTMEG and diethylene glycol, Kulp 3:35-45) and the isocyanate may comprise an aromatic diisocyanate (e.g. 2,4-toluene diisocyanate, Kulp 3:48-49), and the prepolymer has an unreacted NCO% of 8% by weight to 10% by weight (a preferred embodiment comprises PTMEG and has an 8.9-9.3 wt% unreacted NCO, Kulp 3:57-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify Kimura according to the teachings from Kulp regarding a desired wt% for unreacted NCO in a window such that the urethane-based prepolymer had an unreacted NCO% of 8% by weight to 10% by weight, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. See MPEP 2144.05(II) The Examiner notes that a particular parameter must be recognized as a result effective variable, in this case, that parameter is wt% unreacted NCO, which achieves the recognized result of balancing reaction speed to desirable characteristics in an end product, therefore, one of ordinary skill in the art before the effective filing the filing date of the invention would have found the claimed range through routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See also In re Boesch, 617 F.2d 272, USPQ 215 (CCPA 1980). Further, the disclosure provides no evidence indicating the claimed range is critical.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2, 4-5, and 7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN R ZAWORSKI whose telephone number is (571)272-7804. The examiner can normally be reached Monday-Thursday 8:00-5:00, Fridays 9:00-1:00.
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/J.R.Z./Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723