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 .
Claim Rejections - 35 USC § 102/Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed 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) 16 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ganapathiappan et al (US10,399,201).
Ganapathiappan sets forth polishing pads produced by additive manufacturing, such as 3D printing, having discrete features and geometries, formed from at least two different materials that include functional polymers, functional oligomers, reactive diluents, addition polymer precursor compounds, catalysts, and curing agents—see abstract.
Regarding claim 16: Ganapathiappan sets forth a polishing pad (Figure 2A) comprising an individual surface that forms a portion of a polishing surface of the polishing pad (200); and one or more sidewalls extending downward from the individual surface to define a plurality of channels disposed between the polishing elements (204), wherein each of the polishing elements has a plurality of pore-features formed therein, each of the polishing elements being formed of a prepolymer composition comprising a urethane acrylate oligomer, see examples 1, 3 and 4, having a storage modulus at a temperature of 30 deg. C (E’30) of 404, 680 and 925 MPa (which is deemed to anticipate the limitation of 1000 MPa or less). The primary difference is Ganapathiappan does not set forth the Tan delta being about 1 or less. However, it is deemed Ganapathiappan sets forth a polishing pad obtained by curing a prepolymer composition comprising a urethane acrylate oligomer and has a storage modulus of less about 1000 MPa or less. However, the courts have upheld “products of identical chemical composition cannot have mutually exclusive properties”. 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. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art--In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the alterative, since The Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
In absence of evidence to the contrary, it is deemed the overall teachings of Ganapathiappan set forth the instantly claimed polishing pad.
Allowable Subject Matter
Claims 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Ganapathiappan does not expressly set forth the viscosity range at 70 deg. C or a composition comprising a urethane acrylate oligomer having a nominal viscosity in the range set froth in claims 18-20 and a Tg by DMA in the range set forth in claims 18-20.
Claims 1-15 are allowed.
The following is an examiner’s statement of reasons for allowance: The prior art, alone or in combination, fails to expressly teach and/or render obvious, without a secondary teaching and/or motivation, a photocurable printing composition comprising about 20% to about 60% by weight based on the total composition of a urethane acrylate oligomer having a viscosity greater than 250 cP at 25 deg. C and a glass transition temperature of -4 deg. C or greater; from 40 to 80 % by weight based on the total composition an acrylate monomer mixture comprising: one or more monofunctional monomers selected from isobornyl acrylate; 3,3,5-trimethylcyclohexyl acrylate (TMCHA), N-vinylpyrrolidone, N, N’-diethylacrylamide (DEAA) or a combination thereof, and one or more multifunctional monomers selected from a trifunctional acrylate ester monomer, 1,6-hexandiol diacrylate or a combination thereof, and a photoinitiator, wherein the printing composition has a viscosity of 20 centipoise or higher at 70 deg. C.
The prior art, alone or combination, fails to expressly set forth a method of forming a polishing pad comprising the instantly claimed steps, wherein the prepolymer composition is required to comprise about 20% to about 60% by weight based on the total composition of a urethane acrylate oligomer having a viscosity greater than 250 cP at 25 deg. C and a glass transition temperature of -4 deg. C or greater; from 40 to 80 % by weight based on the total composition an acrylate monomer mixture comprising: one or more monofunctional monomers selected from isobornyl acrylate; 3,3,5-trimethylcyclohexyl acrylate (TMCHA), N-vinylpyrrolidone, N, N’-diethylacrylamide (DEAA) or a combination thereof, and one or more multifunctional monomers selected from a trifunctional acrylate ester monomer, 1,6-hexandiol diacrylate or a combination thereof, and a photoinitiator, wherein the prepolymer composition has a viscosity of 20 centipoise or higher at 70 deg. C.
The prior art, alone or combination, fails to expressly set forth a polishing pad comprising a plurality of polishing elements as instantly defined, wherein each polishing elements is formed from a prepolymer composition is required to comprise about 20% to about 60% by weight based on the total composition of a urethane acrylate oligomer having a viscosity greater than 250 cP at 25 deg. C and a glass transition temperature of -4 deg. C or greater; from 40 to 80 % by weight based on the total composition an acrylate monomer mixture comprising: one or more monofunctional monomers selected from isobornyl acrylate; 3,3,5-trimethylcyclohexyl acrylate (TMCHA), N-vinylpyrrolidone, N, N’-diethylacrylamide (DEAA) or a combination thereof, and one or more multifunctional monomers selected from a trifunctional acrylate ester monomer, 1,6-hexandiol diacrylate or a combination thereof, and a photoinitiator, wherein the prepolymer composition has a viscosity of 20 centipoise or higher at 70 deg. C.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All documents listed on the PTO-892 are concerned with polishing pads obtained from compositions comprising urethane acrylate oligomers. However, the documents fails to expressly teach and/or fairly suggest a prepolymer composition comprising a urethane acrylate having the instantly claimed properties in combination with a monomer mixture comprising monomers selected from isobornyl acrylate; 3,3,5-trimethylcyclohexyl acrylate (TMCHA), N-vinylpyrrolidone, N, N’-diethylacrylamide (DEAA) or a combination thereof, and one or more multifunctional monomers selected from a trifunctional acrylate ester monomer, 1,6-hexandiol diacrylate or a combination thereof.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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, Heidi Riviere-Kelley can be reached at 571-270-1831. 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.
/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc
Prosecution Insights