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
This office action is in response to the Amendment filed on 12/26/2025.
Claims 1-10 are presently pending and under examination; claims 11 is canceled; claims 1, 6 and 8 are amended.
The objection to the abstract is withdrawn in light of the amendments to the abstract.
New objections to claims 6 and 8 are present herein in light of the amendments to the claims.
The rejections of claims 6-9 under 35 U.S.C 112(b) are maintained.
The 35 U.S.C. 102 rejection of claims 1 and 10 over SHIMOMURA is withdrawn in light of the amendments to the claims; the 35 U.S.C. 103 rejections of claims 5-9 over SHIMOMURA, claims 2 and 4 over SHIOMOMURA in view of TATENO, and claim 3 over SHIMOMURA in view of TATENO and CHO are maintained; the rejection of claim 11 is moot as this claim has been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 6 and 8 are objected to because of the following informalities:
Claims 6 and 8 contain a grammatical error; it appears that “85 g,” should read “85 g, and” (see claims 6 and 8 each at line 7).
Appropriate correction is required.
Claim Interpretation
For purposes of claim interpretation, “contact angle” as recited in claim 5 (see claim 5 at lines 1-2) is interpreted as meaning water contact angle, as this would appear most in keeping with Applicant’s intent as discussed in the specification on pg. 28.
For purposes of claim interpretation, “silane-based resin” as recited in claim 2 (see claim 2 at lines 4 and 6) is interpreted as meaning resin derived from a silane compound and comprising a repeat unit derived from a silane compound (e.g., silicone, siloxane), rather than as actually requiring the resin to contain silane, as this would appear most in keeping with Applicant’s intent per the discussion in pages 9-10 of the specification
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.
Claims 6-9 are 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.
Claim 8 recites the limitation “Wet compressibility (%) =
D
3
-
D
4
D
3
X
100
… D2 is the thickness (μm) of a specimen…” (see claim 8 at lines 3 and 9); however, the meaning of “D4” is unclear as there is no definition or explanation regarding what “D4” represents in the claim, and the meaning of “D2” in the claim is also unclear as it is defined in the claim but is not actually included in the equation, and it is unclear from this language whether or not “D2” is meant to be included in the equation.
For purposes of examination, Examiner treated claim 8 as though the recitation of “D2” is actually supposed to say “D4”. Clarification is requested.
Claim 6 recites the limitation “D1 is the thickness (μm) of a specimen obtained… when measured after an adhesive tape is attached to the upper and lower sides of the specimen, which is then pressed for 30 seconds with a weight of 85 g, D2 is the thickness (μm) of a specimen obtained… when measured after an adhesive tape is attached to the upper and lower sides of the specimen, which is then pressed for 30 seconds with a weight of 85 g and further pressed for 3 minutes with an additional weight of 800 g” (see claim 6 at lines 4-12). This language would seem to indicate that the measurements D1 and D2 are taken after the adhesive tape is attached to the specimen but before the specimen is pressed. As written, it is not clear whether the measurement D1 is taken after attaching the tape but before pressing or after being pressed for 30 seconds, and it is not clear whether the measurement D2 is taken after attaching the tape or after pressing for 30 seconds then further pressing for 3 minutes.
Claims 7-9 recite similar limitations to claim 6, and it is unclear in each claim when each measurement (D1, D2 and D5 in claim 7; D3 and D4 in claim 8; and D3, D4 and D6 in claim 9) is taken (i.e., before or after pressing, as the claim language indicates that the measurements are taken after attaching the adhesive tape, then after measurement the specimen is subsequently pressed, and does not indicate that the measurements are taken after pressing), for the same reasons as set forth above in regard to claim 6.
For purposes of examination, Examiner treated claims 6-9 as meaning that D1 is measured after the specimen is pressed for 30 seconds with a weight of 85 g, D2 is measured after the specimen is further pressed for 3 minutes with an additional weight of 800 g, D5 is measured after being left for an additional 1 minute after the weight of 800 g is removed, D3 is measured after the specimen is immersed in water for 24 hours and pressed with 30 seconds with a weight of 85 g, D4 is measured after the specimen immersed in water is further pressed for 3 minutes with an additional weight of 800 g, and D6 is measured after the specimen immersed in water is left for an additional 1 minute after the weight of 800 g is removed. Clarification is requested.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Shimomura, et al. (U.S. Pub. No. 2005/0064709-A1) (hereinafter, “SHIMOMURA”).
Regarding claim 1, SHIMOMURA teaches a polishing pad (see SHIMOMURA generally at Abstract)
which comprises a laminate composed of a polishing layer (see SHIMOMURA at paragraphs [0085] and [0212]), an adhesive layer (see SHIMOMURA at paragraphs [0212] and [0544]) and a cushion layer (see SHIMOMURA at paragraphs [0085] and [0212]),
wherein the cushion layer has a water absorption rate of 100% or less according to the following Equation (1): Equation (1): Water absorption rate (%) = W2-W1/W1 X 100, in Equation (1), W1 is the weight (g) of a specimen obtained by cutting the cushion layer to 35 mm in length and in width, and W2 is the weight (g) of the specimen measured after it is immersed in water for 24 hours (see SHIMOMURA at paragraphs [0141]-[0143] and [0552], teaching that the degree of swelling (i.e., water absorption rate) of the cushion layer is 40% or less after being immersed in water for 24 hours),
wherein the adhesive layer is disposed between the polishing layer and the cushion layer (see SHIMOMURA at paragraphs [0212] and [0544]), and
wherein the interfacial adhesion between the polishing layer and the cushion layer encompasses and thereby renders obvious the claimed range of 6.0 kgf/25 mm to 7.7 kgf/25 mm (see SHIMOMURA at paragraph [0272], teaching an adhesion strength of at least 60 g/cm, i.e., at least 0.15 kgf/25 mm). As set forth in MPEP § 2144.05, in the case 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 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). Further, SHIMOMURA teaches that the surface of the cushion layer may be subjected to surface treatment in order to improve the adhesive strength of the adhesive layer (see SHIMOMURA at paragraph [0546]). SHIMOMURA therefore explicitly teaches that the adhesive strength should be improved/optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Regarding claim 5, SHIMOMURA teaches a polishing pad according to claim 1. SHIMOMURA does not explicitly mention that the cushion layer has a contact angle of 76° to 90°.
However, SHIMOMURA teaches that the properties of the cushion layer, such as degree of swelling (which is related to contact angle), affect the properties/performance of the entire polishing pad (see SHIMOMURA at paragraphs [0043], [0046], [0142]), and particularly that polishing pads having a cushion layer with a swelling degree of 40% or less with water have high productivity and are excellent in polishing rate and uniformity (see SHIMOMURA at Table 11 and paragraphs [0574]-[0575]). SHIMOMURA further teaches that the wetting properties of the polishing pad (i.e., degree of swelling, which is less than 40% for the cushion layer and 2 to 15% for the polishing layer), which are evaluated using the water contact angle, are very important, and that poor wetting properties result in reduced polishing rate and uniformity, whereas too excellent wetting properties result in swelling of the polishing pad to deteriorate the stability of the polishing rate (see SHIMOMURA at paragraphs [0036]-[0037], [0106], [0108], [0123] and [0141]). SHIMOMURA teaches that the contact angle of the polishing layer is in the range of 70° to 95° (preferably, 79° to 91°), as a contact angle below this range results in significant wetting properties and swelling of the polishing pad and deterioration of the polishing rate stability, whereas a contact angle above this range results in a polishing pad which does not sufficiently retain or unevenly retains polishing slurry and fails to uniformly polish an object (see SHIMOMURA at paragraphs [0123] and [0126]-[0128]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to also have used a contact angle of 79° to 91° for the cushion layer as well as the polishing layer, as SHIMOMURA teaches that these layers have similar wettability characteristics (both having a degree of swelling of less than 40%), and that the characteristics of the cushion layer affect the characteristics of the entire polishing pad (see SHIMOMURA at paragraphs [0043], [0046], [0142], [0123], [0126]-[0128] and [0574]-[0575]). One of ordinary skill in the art could have used a cushion layer contact angle within this range with a reasonable expectation of success, yielding the predictable result of providing a cushion layer and overall polishing pad having optimum wetting properties and an excellent polishing rate and uniformity. A contact angle of a contact angle of 79° to 91° overlaps with and thereby renders obvious the claimed range of 76° to 90°; as set forth in MPEP § 2144.05, in the case 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 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Further, SHIMOMURA explicitly teaches that the wetting properties (which are evaluated using water contact angle) of the cushion layer is a result-effective variable which affects the performance of the entire polishing pad (see SHIMOMURA at paragraphs [0043], [0046], [0142] and [0574]-[0575]). MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to vary, through routine experimentation and optimization, the water contact angle of the cushion layer, including contact angles of 76° to 90° as claimed, in order to achieve desired wetting properties and overall performance of the polishing pad, such as polishing rate, polishing rate stability, and uniformity (see SHIMOMURA at paragraphs [0036]-[0037], [0106], [0108], [0123], [0126]-[0128], [0141] and [0574]-[0575]).
Regarding claim 6, SHIMOMURA teaches a polishing pad according to claim 1, wherein the cushion layer has a dry compressibility of 3% to 15% according to the following Equation (2): Equation (2): Dry compressibility (%) = D1-D2/D1 X 100 in Equation (2), D1 and D2 are the thickness (μm) of a specimen obtained by cutting the cushion layer which is then pressed with a weight and further pressed for with an additional weight (see SHIMOMURA at [0257]-[0258], [0268], [0271]-[0273], [0287]-[0290], [0540] and [0556]-[0558], teaching a cushion layer compressibility of 3.5 to 15%, e.g., 10%, 12% or 15%, according to Equation 2, wherein D1 is measured after applying 30 kPa for 60 seconds, and D2 is measured after applying an additional 180 kPa for 60 seconds).
SHIMOMURA teaches the claimed compressibility percentage but uses different conditions (pressure and amount of time) to measure compressibility of the cushion layer, and does not explicitly mention that the layer is cut to a size of 25 mm in length and in width when measured after an adhesive tape is attached to the upper and lower sides of the specimen, which is then pressed for 30 seconds with a weight of 85 g and further pressed for 3 minutes with an additional weight of 800 g, respectively. However, it is not clear in what way first attaching an adhesive tape to the upper and lower sides of the specimen before cutting it to a given size would change the dimensions of the sample. Further, as SHIMOMURA teaches a polishing pad as claimed by the present claim, wherein the cushion layer has the water absorption rate as claimed and has compressibility within the claimed range when measured under different conditions, the polishing pad of SHIMOMURA would be expected to have the same or overlapping properties as the claimed polishing pad, and the cushion layer would be expected to exhibit the same characteristics (e.g., compressibility) when subjected to the same process recited in the present claim. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When 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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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.
The USPTO does not possess the laboratory facilities to test the properties of the referenced product; however, in light of the disclosure of SHIMOMURA as discussed herein, it appears the claimed invention and that of SHIMOMURA have the same or very similar properties. As a prima facie case of obviousness has been established, the burden shifts to Applicant to demonstrate otherwise.
Regarding claim 7, as applied to claim 6 above, SHIMOMURA teaches a polishing pad according to claim 6. SHIMOMURA does not explicitly mention that the cushion layer has a dry compressive elasticity of 55% or less according to the following Equation (4): Equation (4): Dry compressive elasticity (%) = D5-D2/D1-D2 X 100 in Equation (4), D5 is the thickness (μm) of a specimen obtained by cutting the cushion layer to a size of 25 mm in length and in width when measured after an adhesive tape is attached to the upper and lower sides of the specimen, which is then pressed for 30 seconds with a weight of 85 g, further pressed for 3 minutes with an additional weight of 800 g, and left for 1 minute after the weight of 800 g is removed.
However, as SHIMOMURA teaches a polishing pad as claimed by the present claim, wherein the cushion layer has the water absorption rate as claimed, the polishing pad of SHIMOMURA would be expected to have the same or overlapping properties as the claimed polishing pad, and the cushion layer would be expected to exhibit the same characteristics (e.g., dry compressive elasticity) when subjected to the same process recited in the present claim. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When 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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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.
Further, SHIMOMURA teaches that the modulus of elasticity (or hardness, as taught by SHIMOMURA) of the cushion layer should be lower than that of the polishing layer (see SHIMOMURA at paragraphs [0130], [0257]-[0258], [0262], [0271]-[0273] and [0287]-[0290]), and further teaches that the elasticity/hardness of the cushion layer affects characteristics of the whole polishing pad, including uniformity and polishing rate; e.g., a cushion layer hardness (elasticity) of less than 1 results in deterioration of within wafer uniformity, and a hardness (elasticity) of more than 40 causes deterioration of planarizing characteristics (see SHIMOMURA at paragraphs [0043] and [0208]). SHIMOMURA therefore explicitly teaches that elasticity of the cushion layer is a result-effective variable which may be optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to vary, through routine experimentation and optimization, the elasticity of the cushion layer, including dry compressive elasticities of 55% or less as claimed, in order to achieve desired uniformity, polishing rate and planarizing characteristics in the polishing pad (see SHIMOMURA at paragraphs [0043] and [0208]).
Regarding claim 8, SHIMOMURA teaches a polishing pad according to claim 1. SHIMOMURA does not explicitly mention that the cushion layer has a wet compressibility of 5.0% to 6.6% according to the following Equation (3): Equation (3): Wet compressibility (%) = D3-D4/D3 X 100 in Equation (3), D3 and D4 are the thickness (μm) of a specimen obtained by cutting the cushion layer to a size of 25 mm in length and in width when measured after an adhesive tape is attached to the upper and lower sides of the specimen, which is then immersed in water for 24 hours, pressed for 30 seconds with a weight of 85 g, and further pressed for 3 minutes with an additional weight of 800 g, respectively.
However, as SHIMOMURA teaches a polishing pad as claimed by the present claim, wherein the cushion layer has the water absorption rate as claimed, the polishing pad of SHIMOMURA would be expected to have the same or overlapping properties as the claimed polishing pad, and the cushion layer would be expected to exhibit the same characteristics (e.g., wet compressibility) when subjected to the same process recited in the present claim. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When 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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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.
Further, SHIMOMURA teaches a cushion layer compressibility of 3.5 to 15%, and teaches that compressibility of the cushion layer affects characteristics of the whole polishing pad, including uniformity, polishing rate and planality (see SHIMOMURA at paragraphs [0043], [0046] and [0540]). SHIMOMURA therefore explicitly teaches that compressibility of the cushion layer is a result-effective variable which may be optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to vary, through routine experimentation and optimization, the compressibility of the cushion layer, including wet compressibility of 5.0% to 6.6% as claimed, in order to achieve desired uniformity, polishing rate and planality characteristics in the polishing pad (see SHIMOMURA at paragraphs [0043], [0046] and [0540]).
Regarding claim 9, as applied to claim 8 above, SHIMOMURA teaches a polishing pad according to claim 8. SHIMOMURA does not explicitly mention that the cushion layer has a wet compressive elasticity of 60% or less according to the following Equation (5): Equation (5): Wet compressive elasticity (%) = D6-D4/D3-D4 in Equation (5), D6 is the thickness (μm) of a specimen obtained by cutting the cushion layer to a size of 25 mm in length and in width when measured after an adhesive tape is attached to the upper and lower sides of the specimen, which is immersed in water for 24 hours and then pressed for 30 seconds with a weight of 85 g, further pressed for 3 minutes with an additional weight of 800 g, and left for 1 minute after the weight of 800 g is removed.
However, as SHIMOMURA teaches a polishing pad as claimed by the present claim, wherein the cushion layer has the water absorption rate as claimed, the polishing pad of SHIMOMURA would be expected to have the same or overlapping properties as the claimed polishing pad, and the cushion layer would be expected to exhibit the same characteristics (e.g., wet compressive elasticity) when subjected to the same process recited in the present claim. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When 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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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.
Further, SHIMOMURA teaches that the modulus of elasticity (or hardness, as taught by SHIMOMURA) of the cushion layer should be lower than that of the polishing layer (see SHIMOMURA at paragraphs [0130], [0257]-[0258], [0262], [0271]-[0273] and [0287]-[0290]), and further teaches that the elasticity/hardness of the cushion layer affects characteristics of the whole polishing pad, including uniformity and polishing rate; e.g., a cushion layer hardness (elasticity) of less than 1 results in deterioration of within wafer uniformity, and a hardness (elasticity) of more than 40 causes deterioration of planarizing characteristics (see SHIMOMURA at paragraphs [0043] and [0208]). SHIMOMURA therefore explicitly teaches that elasticity of the cushion layer is a result-effective variable which may be optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to vary, through routine experimentation and optimization, the elasticity of the cushion layer, including wet compressive elasticities of 60% or less as claimed, in order to achieve desired uniformity, polishing rate and planarizing characteristics in the polishing pad (see SHIMOMURA at paragraphs [0043] and [0208])
Regarding claim 10, SHIMOMURA teaches a polishing pad according to claim 1, wherein the polishing pad has a within-wafer non-uniformity of 3.5% or less (see SHIMOMURA at Tables 1-3 and paragraphs [0250] and [0314]-[0315], teaching a “within wafer uniformity” of less than 10%, and providing several examples wherein within wafer uniformity is 3%, which is measured as [(Rmax-Rmin)/(2XRavg)]X100, wherein R is thickness; see Applicant’s specification at pg. 23, defining within wafer non-uniformity as (standard deviation of thickness / average thickness)X100; using these equations, a “within wafer uniformity” as defined by SHIMOMURA would be a greater value than the within wafer non-uniformity as defined by the present specification, i.e., as SHIMOMURA teaches a “within wafer uniformity” of 3%, the within wafer non-uniformity as claimed would be even lower than 3%).
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over SHIMOMURA in view of Tateno, et al. (WO-2021193468-A1) (hereinafter, “TATENO”; citations herein refer to the attached machine translation).
Regarding claim 2, SHIMOMURA teaches a polishing pad according to claim 1, wherein the cushion layer comprises a base layer, and the base layer is impregnated with an impregnation composition comprising a resin (see SHIMOMURA at paragraphs [0085] and [0212], teaching that the cushioning layer comprises a polyester nonwoven fabric impregnated with polyurethane resin).
However, SHIMOMURA fails to explicitly teach that the resin is a fluorine-based or silane-based resin.
TATENO teaches a polishing pad (see TATENO at Title) wherein the cushioning layer is a non-woven fabric base layer impregnated with a resin, e.g., preferably a polyurethane-based resin or a polyvinylidene fluoride resin, i.e., fluorine-based resin (see TATENO at paragraphs 31-32).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the polishing pad of SHIMOMURA by simply substituting the polyurethane resin with a polyvinylidene fluoride resin, as TATENO teaches that both of these types of resins can be used interchangeably for the same purpose. One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing a resin which will fill the gaps within the non-woven fabric cushioning layer and reducing permeation of the polishing slurry into the layer (see TATENO at paragraphs 31-32).
Regarding claim 4, as applied to claim 2 above, SHIMOMURA in view of TATENO teaches a polishing pad according to claim 2, wherein the base layer is a nonwoven fabric comprising at least one resin selected from the group consisting of a polyester resin, a polyamide resin, a polyurethane resin, a polyolefin resin, and a fluoropolymer resin (see SHIMOMURA at paragraph [0085], teaching a polyester nonwoven fabric), and the base layer has a thickness of 0.5 mm to 2.5 mm (see SHIMOMURA at paragraph [0213], teaching a thickness of 0.5 to 2 mm).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over SHIMOMURA in view of TATENO as applied to claim 2 above, and further in view of Cho (KR-100785604-B1) (hereinafter, “CHO”; citations herein refer to the attached machine translation).
Regarding claim 3, as applied to claim 2 above, SHIMOMURA in view of TATENO teaches a polishing pad according to claim 2.
However, SHIMOMURA and TATENO fail to explicitly teach a surface coating layer having a thickness of 80 μm to 120 μm.
CHO teaches a polishing pad comprising a lower pad (i.e., cushion layer), a bonding layer (i.e., adhesive layer) and an upper pad (i.e., polishing layer) (see CHO at Abstract and paragraphs 11 and 13) wherein the sides of the cushion layer are coated with a waterproof resin layer with a thickness of 0.05 to 5 mm, i.e., 50 to 5,000 μm (see CHO at Abstract, Figs. 3-4 and paragraphs 11, 18 and 20). CHO teaches that the of the resin coating layer helps to prevent permeation of pure water or slurry into the inside of the polishing pad and to prevent deterioration of polishing characteristics, and that if the thickness is too small the waterproof performance is negatively affected, and if the thickness is too large, polishing performance is negatively affected (see CHO at Abstract and paragraphs 11 and 20-21). CHO therefore explicitly teaches that the thickness of the resin coating layer is a result-effective variable which may be optimized by one of ordinary skill in the art.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the polishing pad of SHIMOMURA in view of TATENO by also using the polyvinylidene fluoride resin (a waterproof resin) used to impregnate the cushion layer (see TATENO at paragraphs 31-32) to form a waterproof resin coating layer having a thickness of 50 to 5,000 μm on the sides of the cushion layer as taught by CHO (see CHO at Abstract, Figs. 3-4 and paragraphs 11, 18 and 20). One of ordinary skill in the art would have been motivated to include such a coating for the benefit of helping to prevent permeation of pure water or slurry into the inside of the polishing pad and improving polishing characteristics as taught by CHO (see CHO at Abstract and paragraphs 11 and 20-21).
The 50 μm to 5,000 μm thickness of the resin coating layer encompasses and thereby renders obvious the claimed range of 80 μm to 120 μm. As set forth in MPEP § 2144.05, in the case 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 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). Further, as discussed above, CHO explicitly teaches that the thickness of the resin coating layer is a result-effective variable affecting the ability of liquid to permeate into the inside of the polishing pad and the resulting polishing characteristics (see CHO at Abstract and paragraphs 11 and 20-21), which may be optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Response to Arguments
Applicant's arguments filed 12/26/2025 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 103 for claims 1 and 10 over SHIMOMURA and under 35 U.S.C. 112(b) for claim 8 as set forth above.
Applicant argues:
“Shimomura merely discloses that the adhesion strength of each layer is… at least 0.15 kgf/25 mm… However, the adhesive strength of 0.15 kgf/25 mm is significantly different from the interfacial adhesion of 6.0 kgf/25 mm or more in the subject invention… Although Shimomura teaches that the cushion layer may be subjected to surface treatment in order to improve the adhesive strength of the adhesive layer, Shimomura fails to disclose or suggest the specific range (upper and lower limit) of the interfacial adhesion in the subject invention, and the resulting technical effects” (see Remarks at pg. 14).
“the polishing pads of the Examples, which satisfy the features of the present invention, has smaller changes in compressibility than those of the polishing pads of Comparative Examples having the interfacial adhesion of greater than 7.7 kgf/25 mm. Additionally, the physical energy of the polishing layers of the Examples was increased, resulting in excellent polishing rate and reduced within-wafer non-uniformity. See Table 4 of the present application. In addition, in the Examples, tearing of the polishing pad was not observed with the naked eye upon polishing for a certain period of time, and the number of surface defects was significantly reduced. See id. Those results are unexpected from the teachings of the prior art” (see Remarks at pg. 14-15).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the claimed invention is not obvious over SHIMOMURA because SHIMOMURA does not disclose or suggest the specific range of the interfacial adhesion of 6.0 kgf/25 mm to 7.7 kgf/25 mm, the Examiner respectfully disagrees. As set forth in the rejection above, SHIMOMURA teaches an adhesion strength of at least 0.15 kgf/25 mm. The Examiner agrees that 0.15 is a different value than 6.0, but SHIMOMURA does not just teach a value of 0.15 kgf/25 mm. The range of at least 0.15 kgf/25 mm includes the claimed range of 6.0 kgf/25 mm to 7.7 kgf/25 mm, thereby rendering the claimed range obvious, which is not mentioned in Applicant’s remarks. As set forth in MPEP § 2144.05, in the case 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 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). Additionally, as discussed in the rejection above, SHIMOMURA teaches that the surface of the cushion layer may be subjected to surface treatment in order to improve the adhesive strength of the adhesive layer (see SHIMOMURA at paragraph [0546]). SHIMOMURA therefore explicitly teaches that the adhesive strength should be improved/optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, one of ordinary skill in the art would find it obvious to vary, through routine experimentation and optimization, the adhesive strength of the adhesive layer, including adhesive strengths of 6.0 kgf/25 mm to 7.7 kgf/25 mm as claimed, in order to achieve the desired improved adhesion between the layers.
In response to Applicant’s argument that the claimed invention is not obvious over SHIMOMURA because an interfacial adhesion within the claimed range provides unexpected results of smaller changes in compressibility, higher physical energy resulting in improved polishing rate and reduced within-water non-uniformity, reduced surface defects and no visible tearing under certain polishing conditions, the Examiner respectfully disagrees. Applicant’s assertion that examples 1-6 having interfacial adhesion within the claimed range have smaller changes in compressibility than the comparative examples 1-3 in Table 4 having higher interfacial adhesion is not clear from Table 4, as Table 4 does not include values of change in compressibility (see pg. 17 of the present specification, showing Equation 6 for change in compressibility). Additionally, even if this assertion is accurate, it does not indicate unexpected results for the present claims, as no evidence is presented that these results would be unexpected, and as the results are not commiserate in scope with the claimed range (the claimed range is 6.0 to 7.7 but the examples only show results for a range of 6.8 to 7.45). Additionally, the specification seems to indicate that these results are due to the water absorption of the cushion layer, not the interfacial adhesion (see the present specification at, e.g., pg. 3, lines 21-25, pg. 11, lines 6-10, etc.), and SHIMOMURA teaches the claimed water absorption (see SHIMOMURA at paragraphs [0141]-[0143] and [0552]). The specification also indicates that the improved physical energy level, and resulting polishing rate, within-wafer non-uniformity and number of defects, is due to the water absorption and change in compressibility (see the present specification at, e.g., pg. 11, lines 6-10, pg. 17, lines 21-27, pg. 23, lines 8-11, etc.), and does not seem to indicate that these results are due to a specific range of interfacial adhesion. The prior art also explicitly teaches that the degree of swelling of 40% or less results in high productivity and excellent polishing rate and uniformity (see SHIMOMURA at Table 11 and paragraphs [0574]-[0575]), so these results are clearly expected from the prior art, not unexpected. Additionally, while the specification does state that tearing of the polishing pad was not observed upon polishing for a certain period of time (see the present specification at pg. 34), it does not seem to mention whether visible tearing is present for the comparative examples. The specification also does not seem to indicate whether the lack of tearing has anything to do with the interfacial adhesion, and no explanation is provided regarding why these results would be considered unexpected.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731