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 .
Response to Amendment
The amendment filed on 10/28/2025 has been entered. Claim(s) 2-4 and 7 are canceled. Claim(s) 1, 5-6 and 8-10 remain pending and have been examined below. The amendments to the claims have overcome the objections to the claims and the rejections under 35 U.S.C. 112(b), therefore the objections to the claims and the rejections under 35 U.S.C. 112(b) are hereby withdrawn.
Response to Arguments
Applicant's arguments filed 10/28/2025 have been fully considered but they are not persuasive. The applicant has argued the following points:
A) starting on page 5 the applicant has argued that the prior art Matsuoka and the present invention both use the term “groove” they do not address the same technical problem and the effects are different. Such that the prior art the circumferential ridges are expressly for optical scattering and not for mechanical adhesion.
B) starting on page 6 that the groove depth must be within a claimed range and that the overlap at 0.5 mm is minimal and incidental.
C) further on page 6 that there is a criticality of the claimed range and that table 1 on page 9 shows unexpected results.
And that for these reasons the newly amended limitations are non-obvious over the prior art.
Respectfully the Office disagrees for the following reasons:
A) In response to applicant's argument that the grooves of the prior art does not address the same technical problem, 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). Further per MPEP 2114(II) "[A]pparatus claims cover what a device is, not what a device does." In the instant case, regardless of how the groove is used, the groove is still structurally a groove and is shown to be that way and to meet the structural limitations of being a groove.
B) Per MPEP 2131.03(I) "If the prior art discloses a point within the claimed range, the prior art anticipates the claim.", where in the instant case, the prior art discloses a point (0.5mm) within the claimed range. Therefore the point (0.5mm) is not minimal or incidental as it is part of the claimed range and the prior art is shown to meet that point and therefore anticipates the claimed range.
C) The Office notes that the burden for unexpected results can be found in MPEP 716.02. Regarding the table 1 on page 9 of the applicant’s specification, this does not meet the burden for unexpected results for two reasons:
First, the table 1 does not meet the requirements set forth in 716.02(d) where the data does not show the claimed ranges being tested and specifically linked to the test data. Applicant needs to test the ranges of the invention and further also needs to show test data outside of the claimed range of the invention. For example, the applicant would need to show data at 0.5 – 3 mm for the depth of the groove to the bonding strength (similar to table 1) and would also need to show data outside of this range. Then this data would have to then meet sections 716.02(a) and 716.02(c).
Second, the data in table 1 is shown to a “traditional polishing pad” per applicant’s pp [0043], where per MPEP 716.02(e) requires the data be tested to the closest prior art, in the instant case to the polishing pad and window of Matsuoka, and that data of Matsuoka, would also need to be tested to within it’s claimed range (0.1 – 0.5 mm) and then made according to the applicant’s claimed range (0.5 – 3 mm) and that data would also be factored in to the analysis of 716.02(a) and 716.02(c) in order to show un-obviousness over the prior art. This data is able to be submitted via affidavit, should the applicant wish to pursue this course to prove un-obviousness over the prior art of the claimed range.
In the meantime, since this data has not yet been submitted and is not within the applicant’s specification, this argument is not found persuasive.
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.
Claim 10 is 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.
Regarding claim 10 (Currently Amended), a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10, which depends from claim 9, recites the broad recitation “wherein the chemical mechanical polishing pad is prepared by the integrated pouring”, and the claim 9 also recites “wherein the polishing pad is prepared by an integrated pouring, such that pad resin material fills the plurality of circumferential grooves of the window during molding, forming an embedded mechanical interlock without adhesive” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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, 5-6 and 8-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Matsuoka et al (US PGPUB No. 2022/0347815), hereinafter referred to as Matsuoka.
Regarding claim 1 (Currently Amended), Matsuoka discloses an endpoint detection window [Matsuoka, fig 5, 200], wherein a side surface of the window is provided with a plurality of circumferential grooves [Matsuoka, fig 5d, spaces between 206Bb], and wherein the plurality of circumferential grooves includes a maximum circumferential depression depth (R) of 0.5-3 mm [Matsuoka, page 8, pp 0144, teaching that the distance at which 203Bb extends from the body 203 is 0.1 to 0.5 mm which means that the spaces between each 203Bb is the same distance which overlaps the claimed invention] and a maximum radial width (L) of R and < 5R [Matsuoka, page 8, pp 0144 teaching that the distance of the protruding portion is the same as the groove and these are all the same dimension, which is R, and thus overlaps the claimed invention], and a depression area of < 2R2 [Matsuoka, page 8, pp 0114 teaching R is 0.1-.5 mm, where a calculated depression area could range must be less than 18mm^2, where when R is = 0.5mm as taught by the prior art, then the depression area is 0.5 mm^2, which overlaps the claimed range], wherein a shape of the plurality of circumferential grooves are selected from the group consisting of arc, polygon, or wave shapes [Matsuoka, fig 5d, the shape of a grooves is rectangular, which is a polygon], and wherein an exposed surface of the window has a surface roughness of 0.1-10 Ra [Matsuoka, page 6, pp 0092, 2 to 50 Ra which overlaps the claimed invention].
Regarding claim 5 (Currently Amended), Matsuoka further discloses the endpoint detection window of claim 1, wherein the polygon is selected from the group consisting of one or more of a triangle, a rectangle and a zigzag [Matsuoka, fig 5d, the shape of a grooves is a rectangle].
Regarding claim 6 (Currently Amended), Matsuoka further discloses the endpoint detection window of claim 1, wherein a distance (H) of adjacent edges of respective adjacent plurality of circumferential grooves is 0-5R [Matsuoka, page 8, pp 0114 teaches that the distance of the protruding portion is the same as the groove and that this is R, therefore the distance between respective grooves is R, which overlaps the claimed invention].
Regarding claim 8 (Currently Amended), Matsuoka further discloses the endpoint detection window of claim 1, wherein a shape of the exposed surface of the window is selected from the group consisting of one or more of a circle, an ellipse and a rounded rectangle [Matsuoka, fig 5c, showing the exposed surface of 200 is a circle].
Regarding claim 9 (Currently Amended), Matsuoka further discloses a chemical mechanical polishing pad with a window, wherein the chemical mechanical polishing pad is provided with the endpoint detection window of claim 1 [Matsuoka, fig 5c, 102], wherein the polishing pad is prepared by an integrated pouring [Matsuoka, page 1, pp 0012, pouring and molding the material of 200 into the polishing pad], such that pad resin material fills the plurality of circumferential grooves of the window during molding, forming an embedded mechanical interlock without adhesive [Matsuoka, page 1, pp 0012, since the pad material is poured around the article, the grooves are filled forming an interlock between the grooves the pad and page 2, pp 0013 it is formed without an adhesive].
Regarding claim 10 (Currently Amended), Matsuoka further discloses a preparation method of the chemical mechanical polishing pad with the window of claim 9, wherein the chemical mechanical polishing pad is prepared by the integrated pouring [Matsuoka, page 1, pp 0012, pouring and molding the material of 200 into the polishing pad].
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 ROBERT NEIBAUR whose telephone number is (571)270-7979. The examiner can normally be reached M - F 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Posigian can be reached at 313-446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT F NEIBAUR/Primary Examiner, Art Unit 3723
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