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 § 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.
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.
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.
Claims 19 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0202409 to Shinchi et al. (hereinafter Shinchi).
Regarding Claims 19 and 20. Shinchi teaches a polishing pad including a base polyurethane resin composition which may include a foaming agent [0019], i.e. a polishing pad comprising a polishing layer composed of a polyurethane resin foam. The polyurethane resin foam is derived from an isocyanate-group terminated prepolymer and a curing agent.
The isocyanate-group terminated prepolymer is produced by reacting a polyisocyanate with an aromatic polyester polyol and a polyether polyol [0019], corresponding to an isocyanate-terminated prepolymer including a polyisocyanate compound-derived configuration unit and a high molecular weight polyol-derived configuration unit composed of a polyether configuration unit and a polyester unit. The polyether configuration unit may specifically correspond to a polypropylene glycol configuration unit [0044]. The polyester configuration unit is derived from a dicarboxylic acid compound and a diol compound [0033]. The polyester configuration unit is thus reasonably considered to correspond to a polyester diol configuration unit. The dicarboxylic acid compound may be succinic acid, adipic acid, azelaic acid, sebacic acid, dodecanedicarboxylic acid, fumaric acid, 1,3-cyclopentanedicarboxylic acid, or 1,4-cyclhexanedicarboxylic acid [0039]. Each of these compounds is set forth as a species of aliphatic dicarboxylic acid or alicyclic polycarboxylic acid in [0055] of the instant specification.
Shinchi teaches the aromatic polyester polyol and polyether polyol are provided in a mass ratio of 5/95 to 70/30 [0020]. Thus, when the polyether polyol is polypropylene glycol, the polypropylene glycol configuration unit will correspond to 30 to 95 weight percent of the high molecular weight polyol-derived configuration unit. While this range is not identical to the claimed ranges of less than 60 weight of the polypropylene glycol configuration unit or 30 to 50 weight percent of the polypropylene glycol configuration unit with respect to the high molecular weight polyol-derived configuration unit, they do overlap. It has been held that where the 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 21. Shinchi teaches the polishing pad of Claim 19 wherein the polyester diol configuration unit is derived from a polyester diol having a number average weight of preferably 500 to 2,000 g/mol [0040].
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0202409 to Shinchi et al. (hereinafter Shinchi).
Regarding Claim 22. Shinchi teaches a method for manufacturing a polishing pad comprising including a base polyurethane resin composition which may include a foaming agent [0019], i.e. a polishing pad comprising a polishing layer composed of a polyurethane resin foam.
The method comprising a step of reacting a polyisocyanate with a high molecular weight polyol containing at least an aromatic polyester polyol and a polyether polyol to obtain an isocyanate-group terminated prepolymer [0019]. The polyether may specifically correspond to a polypropylene glycol [0044]. The polyester configuration unit is derived from a dicarboxylic acid compound and a diol compound [0033]. The polyester configuration unit is thus reasonably considered to correspond to a polyester diol configuration unit. The dicarboxylic acid compound may be succinic acid, adipic acid, azelaic acid, sebacic acid, dodecanedicarboxylic acid, fumaric acid, 1,3-cyclopentanedicarboxylic acid, or 1,4-cyclhexanedicarboxylic acid [0039]. Each of these compounds is set forth as a species of aliphatic dicarboxylic acid or alicyclic polycarboxylic acid in [0055] of the instant specification.
Shinchi teaches the aromatic polyester polyol and polyether polyol are provided in a mass ratio of 5/95 to 70/30 [0020]. Thus, when the polyether polyol is polypropylene glycol, the polypropylene glycol will correspond to 30 to 95 weight percent of the high molecular weight polyol. While this range is not identical to the claimed range of less than 60 weight of the polypropylene glycol with respect to the high molecular weight polyol, it does overlap. It has been held that where the 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
Response to Arguments
Applicant's arguments filed June 17, 2026 have been fully considered but they are not persuasive. Applicant argues that the new limitation that the polyester diol configuration unit is “derived from a dicarboxylic acid compound and a diol compound, wherein the dicarboxylic acid compound is at least one selected from the group consisting of an aliphatic dicarboxylic acid, an unsaturated bond-containing dicarboxylic acid, and an alicyclic polycarboxylic acid” is not taught by Shinchi.
However, Shinchi expressly teaches the polyester configuration unit is derived from a dicarboxylic acid compound and a diol compound [0033]. While Shinchi does require the polyester configuration unit be aromatic, Shinchi does not require the aromaticity be provided by the dicarboxylic acid compound. Shinchi teaches this unit “is produced from a dicarboxylic acid and a diol and includes a dicarboxylic acid having an aromatic skeleton and/or a diol having an aromatic skeleton and/or a diol having an aromatic skeleton as essential components. In addition, a dicarboxylic acid not having an aromatic skeleton…may be further combined” [emphasis added] [0033]. Thus, Shinchi expressly envisions embodiments in which a non-aromatic dicarboxylic acid is used and the aromaticity is provided by only the diol, as well as embodiments in which a non-aromatic dicarboxylic acid is provided in conjunction with an aromatic dicarboxylic acid. Shinchi further teaches succinic acid, adipic acid, azelaic acid, sebacic acid, dodecanedicarboxylic acid, fumaric acid, 1,3-cyclopentanedicarboxylic acid, or 1,4-cyclhexanedicarboxylic acid as suitable dicarboxylic acids [0039]. Each of these compounds is set forth as a species of aliphatic dicarboxylic acid or alicyclic polycarboxylic acid in [0055] of the instant specification.
The Office consequently maintains the position that Shinchi is properly relied upon to teach the new claim limitation of a polyester diol configuration unit derived from a dicarboxylic acid compound selected from the group consisting of an aliphatic dicarboxylic acid, an unsaturated bond-containing dicarboxylic acid, and an alicyclic polycarboxylic acid.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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