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 Amendments
The amendments filed March 20, 2026 have been entered. Accordingly, claims 1-2 and 4-10 are currently pending and have been examined. The Examiner acknowledges the amendments of claim 1. The previous specification objection has been withdrawn due to newly submitted and accepted “Abstract” dated 03/20/2026. The previous 102/103 rejections has been modified due to applicant’s amendments. The arguments of the incorporations of claim 3 into independent claim 1 have been considered and are found unpersuasive as indicated below. The arguments of claim 10 have been considered and found persuasive, thus the rejection of claim 10 is withdrawn. For the reason(s) set forth below, applicant’s arguments have not been found persuasive. The action is Final.
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.
Claim 1-2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Koike (JP 2002127000) in view of Matsui (US Pub. No. 2016/0332280).
Regarding claim 1 Koike, discloses: a method (see figures 1-5 and see also paragraph 0001/0014) for producing a substrate (see paragraph 0001 “mask blank substrates”) in which final polishing is performed by a polishing apparatus (see paragraphs 0001/0014 and see also figure 1 showing the polishing apparatus) having an upper polishing plate (element 12) equipped with a polishing pad (element 12a and see also paragraph 0038), the method comprising the steps of:
placing a substrate stock (element 10) in the polishing apparatus so that the main surface (see figure 1 annotated below Detail A) of the substrate stock face toward the upper polishing plate (see figure 1 annotated below showing the main surface (top surface as indicated by Detail A) of the substrate stock (element 10) facing toward portions of the upper polishing plate (element 12));
rotating the upper polishing plate (see paragraph 0032) and polishing the substrate stock concomitantly with a polishing slurry on the main surface of the substrate stock (see figure 1 annotated below and see also paragraph 0065 where the prior art discloses “a polishing liquid” (slurry) is supplied between the work (substrate stock) top surface (main surface) and element 12a (polishing pad) while the upper polishing plate is “rotated”) ; and
raising the upper polishing plate which is kept being rotated to separate it from the main surface of the polished substrate stock (see paragraph 0102 where the prior art discloses utilizing “a control means” for “raising” element 12 (upper polishing plate) via elevating means for moving element 12 up “before finishing the polishing process and before stopping the rotation of the upper and lower platens” (upper platen is element 12)).
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However, Koike appears to be silent wherein the upper polishing plate is separated from the main surface of the polished substrate stock at a raising speed of 0.1 to 50 mm/second.
On the other hand, Matsui teaches it was known in the art to have a method for producing a substrate (Figure 1 and see also paragraph 0020) comprising a polishing apparatus (element 1) having an upper polishing plate (element 2) capable of vertical movement (see paragraph 0021) having a speed of 0.1 to 50 mm/second (see paragraph 0030).
Furthermore, it has been held that an “obvious to try” rationale when choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is a support for a conclusion of obviousness which is consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham, if the following findings can be established: (1) a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem; (2) a finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem; (3) a finding that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success; and (4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness. See MPEP § 2143(I)(E). In the instant, and as per (1), it should be noted that the prior art of Koike appears to discloses an upper polishing plate (element 12) being raised in a vertical direction (see paragraph 0102). In Matsui, one of ordinary skill in the art would recognize the alternate movement (lowering) arrangement. In light of the above, one of ordinary skill in the art would recognize the type of raising or lowering movements would allow the user to polish the workpiece and reliably separate the upper surface plate and substrate during operations. As per (2) one of ordinary skill in the art would recognize that the configuration of the speed of 0.1 to 50 mm/second of the upper polishing plate can only be selected from the following three options: (A) the upper polishing plate being raised at the claimed speed; or (B) the upper polishing plate being lowered at the claimed speed; or (C) the upper polishing plate remaining in the same level at the claimed level. As per (3) one of ordinary skill in the art would recognize that selecting any of the abovementioned solutions would have not rendered the prior art inoperable for its intended purpose, nor would it have changed the principles of the operation of the prior art. As per (4) one of ordinary skill in the art would recognize that reversing the claimed speed range to be the raised speed would necessarily provide the predictable result of separating the upper polishing plate from the polished workpiece. Therefore, it would have it would have been it would have been to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of the prior arts and to have modified the by having the speed of 0.1 to 50 mm/second be the raised speed, as a matter of selecting a finite number of predictable solutions, further in order to provide the same predictable result of reliably separating the upper surface plate and substrate during operations.
Regarding claim 2, Koike modified discloses: the method of claim 1, wherein the upper polishing plate is separated from the main surface of the polished substrate stock at a rotation speed of 0.5 to 50 rpm (see paragraph 0019 where the prior art discloses the upper polishing plate (element 12) having a “rotation speed” of 20 to 48 rpm).
Regarding claim 6, Koike modified discloses: the method of claim 1, wherein the polishing slurry contains colloidal silica particles as an abrasive grain component (see paragraph 0021/0081).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Koike (JP 2002127000) in view of Matsui (US Pub. No. 2016/0332280), as evidence by Pagano (NPL Article, found at “https://www.sciencedirect.com/science/article/pii/S0920410521014030#:~:text=In%20this%20study%2C%20MasterRoc%C2%AE,by%20volume%20of%2030%25%20and”).
Regarding claim 4, Koike modified discloses: the method of claim 1, wherein the polishing slurry has a viscosity of 0.5 to 30 mPa·s at 20°C (see paragraph 0081 where the prior art discloses utilizing “colloidal silica” as the polishing liquid (polishing slurry), which is known to have a viscosity of 0.5 to 30 mPa·s at 20°C, as evidence by Pagano (see annotated figure below), thus having a viscosity of 10 mPa·s which is within the claimed range).
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Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Koike (JP 2002127000) in view of Matsui (US Pub. No. 2016/0332280) as applied to claim 1 above, and further in view of Ooya (WO 2016111165).
Regarding claim 5, Koike modified discloses all limitations as stated in the rejection of claim 1, but appears to be silent wherein the polishing slurry contains 5 to 50% by weight of an abrasive grain component.
Ooya is also concern in providing a slurry for polishing a workpiece (see page 0007) and further teaches the polishing slurry contains 5 to 50% by weight of an abrasive grain component (see page 0009-0010 where the prior art discloses the slurry having “abrasive grains” (abrasive grain component) and that slurry has an abrasive content of “5 to 30% by weight”).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Koike to incorporate the teachings of Ooya to provide wherein the polishing slurry contains 5 to 50% by weight of an abrasive grain component. One of ordinary skill in the art would recognize that having the slurry contain a desired weight of abrasive content including 5 to 30% would necessarily provide a slurry excellent in both cost and performance as disclosed by Ooya (see page 10).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Koike (JP 2002127000) in view of Matsui (US Pub. No. 2016/0332280) as applied to claim 1 above, and further in view of Mitsu (US Pub. No. 2022/0228031).
Regarding claim 7, Koike modified discloses all limitations as stated in the rejection of claims 1 and 6, but appears to be silent wherein colloidal silica particles have a mean primary particle size calculated from a specific surface measured by a gas adsorption method of 5 nm or more and 50 nm or less.
Mitsu is also concern in providing a polishing composition used for polishing (see Abstract) and further teaches the polishing composition having colloidal silica particles (see paragraph 0052) and wherein colloidal silica particles have a mean primary particle size calculated from a specific surface measured by a gas adsorption method of 5 nm or more and 50 nm or less (As per applicants disclosure in paragraph 0049, “the mean primary particle size of the colloidal silica particles can be calculated from a specific surface area (for example, the BET specific surface area) measured by a gas adsorption method”, similarly the prior discloses in paragraph 0052 that silica particles are colloidal silica particles and the silica particles have “average primary particle diameter as measured by the BET method (nitrogen gas adsorption method)” 20nm”, thus having a value within the claimed range.)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Koike to incorporate the teachings of Mitsu to provide wherein colloidal silica particles have a mean primary particle size calculated from a specific surface measured by a gas adsorption method of 5 nm or more and 50 nm or less. One of ordinary skill in the art would recognize that having the slurry contain a desired colloidal silica size would necessarily provide the predicable result of treating a surface in order to achieve a smooth flat finish during polishing operations.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Koike (JP 2002127000) in view of Matsui (US Pub. No. 2016/0332280) as applied to claim 1 above, and further in view of Kojima (US Pub. No. 2010/0075577).
Regarding claim 8, Koike modified discloses all limitations as stated in the rejection of claim 1, but appears to be silent wherein the polishing slurry has pH of 8 to 11.
Kojima is also concern in providing a method for polishing a glass substrate (see Abstract) utilizing a polishing slurry (see paragraph 0051) and further teaches wherein the polishing slurry has pH of 8 to 11 (see paragraph 0066 where the prior art discloses the polishing slurry is “is adjusted to a pH of 0.5 to 10”, thus for illustrative purposes the examiner takes the value of pH of 10 and would therefore be within the claimed ratio of pH of 8 to 11).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Koike to incorporate the teachings of Kojima to provide wherein the polishing slurry has pH of 8 to 11. One of ordinary skill in the art would recognize that having a desired polishing slurry pH of 10 would necessarily improve the polishing efficiency and can also prevent the generation of new flaws due to glass powder or waste grass removed by the polishing as disclosed by Kojima (see paragraph 0066).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Koike (JP 2002127000) in view of Matsui (US Pub. No. 2016/0332280) as applied to claim 1 above, and further in view of Ito (US Pub. No. 2008/0311487).
Regarding claim 9, Koike modified discloses: the method of claim 1, wherein the substrate is a glass substrate for use as a mask blank (see paragraph 0073 where the prior art discloses the work being used in the polishing method is “a glass substrate for mask blanks”).
However, Koike appears to be silent wherein the glass substrate for use as the mask blank containing SiO2 as a main component.
Ito is also concern in providing a polishing method for producing the glass substrate (see abstract) and further teaches wherein the glass substrate for use as the mask blank containing SiO2 as a main component (see abstract and paragraph 0018).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Koike to incorporate the teachings of Ito to provide wherein the glass substrate for use as the mask blank containing SiO2 as a main component. One of ordinary skill in the art would recognize that having a desired glass substrate containing SiO2 as a main component would necessarily provide the predictable result of polishing a low-expansion glass (as disclosed by Ito see paragraph 0044) to a desired finished during operations.
Allowable Subject Matter
Claim 10 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 10 recites limitations directed to a glass substrate for use as a mask blank which is obtained by the method of claim 9, specifically “wherein a maximum value of PSD_AVE (θ) of the substrate obtained by averaging the power spectral density PSD (f, θ) in the polar coordinate format in a range of a spatial frequency of 10 µm-1 or more and 100 µm-1 or less obtained by measuring a surface shape of a region of 1 µm × 1 µm with an atomic force microscope is 0.05 nm4 or less”.
The prior art of Yarita discloses a similar glass substrate comprising a value of surface roughness (RMS) obtained by measuring the surface morphology of the region of 10 µm × 10 µm with the atomic force microscope is 0.15 nm or less with a maximum value of a circularly averaged power spectral density at a spatial frequency of
0.4
m
m
-
1
or more and
100
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m
-
1
or less is
10
12
n
m
4
or less, the maximum value being obtained by measuring a surface morphology of a region of 6 mm × 6 mm with a white light interferometer (see paragraph 0018). However, the measurement region of Yarita's substrate is 10 µm square while that of the present invention is 1 µm square and the maximum value being obtained by measuring a surface morphology of a region of 6 mm × 6 mm with a white light interferometer while the present invention measures a surface shape of a region of 1 µm × 1 µm with an atomic force microscope is 0.05 nm4 or less.
Response to Arguments
Applicant's arguments filed 03/20/2026 have been fully considered but they are not persuasive.
On pages 7-9 of the Remarks, the applicant argues that the prior arts combinations fails to disclose the incorporation of the subject matter of claim 3 into independent claim 1, specifically:
"the upper polishing plate is separated from the main surface of the polished substrate stock at a raising speed of 0.1 to 50 mm/second."
The Examiner argues that Matsui "teaches it was known in the art to have a method for producing a substrate (Figure 1 and see also paragraph 0020) comprising a polishing apparatus (element 1) having an upper polishing plate (element 2) capable of vertical movement (see paragraph 0021) having a speed of 0.1 to 50 mm/second (see paragraph 0030).
Thus, the rejection relies on the description at paragraph [0030] of Matsui to teach the claimed raising speed. Matsui discloses at paragraph [0030]:
"The upper polishing plate should be lowered at a speed of 5 mm/second to 20 mm/second, preferably 5 mm/second to 15 mm/second, more preferably 5 mm/second to 10 mm/second, in consideration of damages to the substrate stocks and evaporation of the impact-absorbing liquid."
Although the speed described in paragraph [0030] of Matsui overlaps with the raising speed of the present invention, what Matsui is describing is the lowering speed of the upper polishing plate. This is different from the raising speed which is the speed of the upper polishing plate when it is separated from the surface of the substrate stocks. As disclosed in paragraph [0030] of Matsui, the lowering speed is employed in consideration of damages to the substrate stocks and evaporation of the impact-absorbing liquid. On the other hand, as disclosed in paragraphs [0004], [0005], and [0006] of Koike, the prior art recognizes that the sticking of the "work" (substrate stock) to the upper polishing plate is a problem, and it is considered that defects arise fundamentally due to the removal methods, such as airflow or a piston adopted to address the above problem. Additionally, paragraphs [0014], [0018], and [0030] of Koike suggest that in order to prevent the work from sticking to the upper polishing plate, the upper polishing plate is raised while being rotated (at a different rotation speed from that of the lower polishing plate). Thus, in Koike, there is no disclosure of concern for damage to the substrate stocks caused by the raising of the upper polishing plate.
Matsui focuses on the damage caused by a collision between the upper polishing plate and the substrate stocks in the step before polishing starts (i.e. damage occurs when the upper polishing plate makes contact with the substrate stocks in consideration of damages to the substrate stocks and evaporation of the impact-absorbing liquid). By comparison, Koike is concerned with a method for raising the upper polishing plate and does not care about damage to the substrate stocks caused by the contact with the upper polishing plate. In view of the above, the skilled artisan would find no motivation to apply the lowering speed of Matsui to Koike, other than the motivation that arises from the present claims that is informed only by hindsight.
Furthermore, the timing for lowering the upper polishing plate and the timing for raising the upper polishing plate are in different steps in the entire polishing process (i.e., before polishing starts and after polishing finishes). Therefore, what follows these steps is also different between the contact of the substrate stocks and the upper polishing plate and the separation of the substrate stocks and the upper polishing plate. From this perspective as well, there is no motivation for the skilled artisan to apply the lowering speed of Matsui to Koike as the raising speed of the upper polishing plate.
The examiner respectfully disagrees. The applicant argues that the examiner is relying on the teaching of Matsui to teach a raising speed of 0.1 to 50 mm/second as required in claim 1. However, as indicated in the rejection of claim 1 above, the Examiner is utilizing the prior art of Matsui to teach that it is known in the art to have an upper polishing plate (element 2) which has “a vertical movement” with a speed of 0.1 to 50 mm/second (see paragraph 0030). The examiner is not relying on the teaching of Matsui to teach the that the disclosed speed is a “raising” speed, but rather that is a speed of a vertical movement of the upper polishing plate.
Furthermore, the prior art of Koike teaches a raising movement (i.e. vertical movement) of the upper polishing plate when separated from the main surface of the polishing substrate stock (see paragraph 0102) which would inertly have a raising speed. However, the prior art does not explicitly disclose the speed being 0.1 to 50 mm/second. Thus, the prior art of Matsui is applied in order to teach that it is known in the art to have a vertical movement” with a speed of 0.1 to 50 mm/second. Therefore, as stated in the rejection above, it would have been “obvious to try” to apply the claimed speed range as the raising speed of Koike since selecting any of the abovementioned solutions would have not rendered the prior art inoperable for its intended purpose, nor would it have changed the principles of the operation of the prior art and one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of the prior arts and to have modified the by having the speed of 0.1 to 50 mm/second be the raised speed, as a matter of selecting a finite number of predictable solutions, further in order to provide the same predictable result of reliably separating the upper surface plate and substrate during operations. Thus, arguments are found unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 ALBERTO SAENZ whose telephone number is (313)446-6610. The examiner can normally be reached Monday-Friday 7:30-4:30PM EST.
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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.
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/A.S./Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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