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.
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 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 window composition is free of the foaming agent (window is produced without air bubbles, Kimura [0042]; Kimura also does not disclose the use of any foaming agents in the production of the window, see Kimura [0033]-[0043]), and
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 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 the use of the invention. In other words, they represent a claim of properties or functions of the claimed pad.
It has been held that “[w]hen 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 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 filed 23 June, 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that SRR and pSRD represent different characteristics than the asserted objective, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Furthermore, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., features resulting from unclaimed steps of window fabrication) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, to the extent that a production process is claimed, “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).
Applicant’s arguments assert that the claimed invention of is patentably distinct from the pad of Kimura as modified, but do not provide sufficient support. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”).
In response to applicant's arguments against the references individually regarding their disclosure related to polyols, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
For these reasons, the rejections of claims 1, 2, 5, and 7 are maintained.
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.
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
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