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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 Oct 2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5-16 and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 5, the claim recites “a surface layer extending from a side surface of the plate portion to at least partially cover front and side surfaces of the protruding portions” in lines 4-5. The specification as originally filed does not provide support for a surface layer extending from a side surface of the plate portion. There is no discussion in the written description of any side surface of the plate portion, let alone the surface layer extending from a side surface of the plate portion. While figure 2 shows a surface layer 214 covering front and side surface of protruding portions 112b, as figure 2 only shows a partial cross section of the polishing base layer including the plate portion, there is no surface in figure 2 which can be reasonably considered to be a side surface of the plate portion. As is clear from the specification, figures, and claims, the protruding portions are intended to be distinct from the plate portion, and thus the side surfaces of the protruding portions 112b cannot be considered to be a side surface of the plate portion 112a. Therefore, the subject matter of claim 5, and claims 6-16 and 21 dependent therefrom, are not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim Rejections - 35 USC § 103
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.
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.
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.
Claim(s) 5, 7-9, 11, 13, and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bajaj (US 2012/0302148, previously cited) in view of Oh (US 2017/0274498, cited by applicant) and Tan (US 2020/0171619).
Regarding claim 5, Bajaj teaches a polishing pad (fig 2) comprising: a base layer (202) including a plate portion (bottom part of element 202 excluding protruding portions) and protruding portions (207) protruding from the base layer (fig 2) and having the same hardness as the plate portion ([0029], fig 2; plate portions and protruding portions form a homogenous body and therefore have the same hardness); and a surface layer (208, 210) extending from a side surface of the plate portion (as shown in fig 2, the surface layer 208, 210 extends across the entire plate portion, including to the side surfaces thereof) to at least partially cover front and side surfaces of the protruding portions (as shown in fig 2, surface layer 208 covers tops and sides of protruding portions 207), and wherein the surface layer is harder than the protruding portions (discussed in [0031]).
Bajaj does not teach the protruding portions are more elastic than the surface layer. Oh teaches a polishing pad wherein a base layer of the polishing pad (200) is more elastic than a surface layer (250; [0062]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make the base layer of Bajaj, (including the protruding portions), more elastic than the surface layer in order to allow greater vertical deflection during grinding as taught by Oh ([0067]).
Bajaj does not teach a width of each protruding portion decreases as distance from the plate portion increases. Tan teaches a polishing pad, wherein a width of each protruding portion (44; fig 5A, 5B) decreases as distance from the plate portion increases (as shown in fig 5A; hemispherical shape has smaller width at top than at base). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the protruding portions of Bajaj in a hemispherical shape such that a width of each protruding portion decreases as distance from the plate portion increases, as the shape of the projection can be chosen to provide the desired wear or pressure profile as taught by Tan ([0039]).
Regarding claims 7-9, Bajaj, as modified, teaches all the limitations of claim 5 as described above. Bajaj further teaches a shore hardness of the surface layer is greater than a shore hardness of the protruding portions ([0031]); the surface layer extends conformally along a surface of the base layer (as shown in fig 2); and wherein the protruding portions include a first polyurethane ([0039]), and the surface layer includes a second polyurethane ([0039]), and wherein the second polyurethane is harder than the first polyurethane ([0031]).
Regarding claim 11, Bajaj, as modified, teaches all the limitations of claim 5 as described above. Bajaj further teaches the base layer (202) includes a plurality of pores ([0040-0041]).
Regarding claim 13, Bajaj, as modified, teaches all the limitations of claim 5 as described above. Tan further teaches each of the protruding portions is hemispherical (shape included as described in the rejection of claim 1 above).
Regarding claims 15-16, Bajaj, as modified, teaches all the limitations of claim 5 as described above. Bajaj further teaches the protruding portions and the surface layer form a plurality of polishing protrusions (as shown in fig 2). Bajaj is silent as to a diameter and vertical dimension of the polishing protrusions. Tan further teaches the protruding portions and the surface layer form a plurality of polishing protrusions, and wherein a diameter of each of the polishing protrusions is in a range of 1 m to 1,000 microns ([0041]; 1mm equals 1000microns and therefore overlaps the claimed range); and the protruding portions and the surface layer form a plurality of polishing protrusions, and wherein a vertical dimension of each of the polishing protrusions is in a range of 10 to 1,000 microns ([0040]; 20 to 500 microns is fully encompassed by the claimed range). As Tan establishes the diameter and vertical dimension of the polishing protrusions is a results effective variable effecting the wear and pressure profile of the pad ([0039]) and teaches ranges which overlap or are fully encompassed by the claimed ranges, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed diameter and vertical dimensions for the polishing protrusions of Bajaj through routine experimentation, resulting in a pad with the desired wear and pressure profile.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bajaj, Oh, and Tan as applied to claim 5 above, and further in view of Lefevre (US 2013/0137349, previously cited).
Regarding claim 6, Bajaj, as modified, teaches all the limitations of claim 5 as described above. Bajaj is silent as to a relative elastic modulus of the protruding portions and surface layer. Lefevre teaches a polishing pad wherein an elastic modulus of the protruding portions is greater than an elastic modulus of the surface layer ([0035]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make the elastic modulus of the protruding portions of Bajaj greater than an elastic modulus of the surface layer, as this provides desired polishing characteristics to the polishing pad as taught by Lefevre ([0035]).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bajaj, Oh, and Tan as applied to claim 9 above, and further in view of Jawali (US 2021/0394333, previously cited).
Regarding claim 10, Bajaj, as modified, teaches all the limitations of claim 9 as described above. Bajaj does not teach the first polyurethane includes a polyether-based polyurethane, or the second polyurethane includes a polyester-based polyurethane. However, it is obvious to select “a known material based on its suitability for its intended use”. Jawali teaches that it is known to use polyether based polyurethanes and polyester-based polyurethanes in polishing pads, stating that combinations thereof are known in the art ([0115]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make the first and second polyurethanes of Bajaj from a polyether-based polyurethane, and a polyester-based polyurethane respectively, as both of these materials are known to be suitable for use in polishing pads as taught by Jawali ([0115]).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bajaj, Oh, and Tan as applied to claim 5 above, and further in view of Oliver (US 2010/0178853, previously cited).
Regarding claim 12, Bajaj, as modified, teaches all the limitations of claim 5 as described above. Bajaj does not teach the polishing pad further comprising a support layer softer than the base layer. Oliver teaches a polishing pad comprising a support layer (402) to support a base layer (404; fig 4), and wherein the support layer is softer than the base layer ([0056]; “compressible” relative to the base layer). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide a support layer to support the base layer of Bajaj, such that the support layer is softer than the base layer, as this helps compensate for variations in pad height as taught by Oliver ([0056]).
Claim(s) 14 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bajaj, Oh, and Tan as applied to claim 5 above, and further in view of Lehuu (US 2022/0023991).
Regarding claim 14, Bajaj, as modified, teaches all the limitations of claim 5 as described above. Bajaj does not teach the surface layer has a thickness in the range of 0.1 to 100 microns. Lehuu teaches a polishing pad wherein a surface layer (22; fig 1B) has a thickness in a range of 0.1 to 100 microns ([0106]; 15 to 250 nm, overlapping the claimed range). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists” (MPEP 2144.05 I.). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to form the surface layer of Bajaj to have a thickness in the range of 0.1 to 100 microns, as surface layers within this range are known to be suitable for modifying the polishing properties of the polishing pad as taught by Lehuu ([0106]).
Regarding claim 21, Bajaj, as modified, teaches all the limitations of claim 5 as described above. Bajaj does not teach with respect to a bottom surface of the base layer, a height of one of the protruding portions being less than a height of another of the protruding portions. Lehuu teaches a polishing pad wherein with respect to a bottom surface of a base layer (13; fig 1B), a height of one of the protruding portions (18) is less than a height of another of the protruding portions ([0079]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide protruding portions having different heights relative to the base layer in the polishing pad of Bajaj, as this allows the lower set of protrusion to provide the desired polishing performance after the higher protrusions are worn down as taught by Lehuu ([0079]).
Response to Arguments
Applicant's arguments filed 23 Sep 2025 have been fully considered but they are not persuasive. Regarding claim 1 and its dependents, applicant argues that the surface layer of the prior art does not extend from a side surface of the plate portion as claimed. However, as can be seen in fig 2 of Bajaj, the surface layer extends to a side surface of the plate portion. Furthermore, this new claim limitation raises issues under 112a as detailed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2014/0273777 is cited to show another example of a polishing pad with protrusions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723