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 .
Drawings
The drawings filed 27 September 2023 are accepted.
Specification
The disclosure is objected to because of the following informalities:
Throughout the specification, paragraph numbers are listed without leading zeroes, e.g., “[1]” instead of “[0001]”. Pursuant to 37 C.F.R. 1.52(b)(6), paragraph numbers must be a minimum of 4 digits, including leading zeroes;
Paragraphs 10, 16–20, 41 and 62 each recite “an SEM of” or “an SEM at 500× magnification”. Since SEM is the instrument (scanning electron microscope), the phrase should read “an SEM image of” (or “photo of”, as written in paragraph 12).
Appropriate correction is required.
Claim Objections
Claims 1, 3 and 5 are objected to because of the following informalities:
Claim 1, missing space: Claim 1 recites “and 1 to 20wt %”, wherein a space should be added between “20” and “wt.%”, i.e., “and 1 to 20 wt %”;
Claim 1, inconsistent unit formatting: Claim 1 recites “less than 2 wt% expandable…”, which does not include a space between “wt” and “%”, even though the recitation of “1 to 20wt %” does include a space between “wt” and “%”. For consistency, the Examiner recommends choosing one format and applying it to all units, i.e., either “20 wt%” or “20 wt %”;
Claim 1, missing word: “an SEM of a cut surface” should read “an SEM image of a cut surface”, because SEM refers to the instrument (scanning electron microscope), not the images produced thereby;
Claim 3, redundancy: “average particle size D50 particle size” is redundant. It should read “average particle size D50” or “D50 particle size”;
Claim 5, missing word: “the reaction product an isocyanate” should read “the reaction product of an isocyanate”;
Claim 5, missing word: “a reaction product of a polyol prepolymer, toluene diisocyanate, a low molecular weight polyol” should have an “and” before “a low molecular weight polyol”, i.e., “…toluene diisocyanate, and a low molecular weight polyol”.
Appropriate correction is required.
Claim Interpretation
Claim 1 recites the limitation “…adjacent to at least a portion of the polymer particles”. This has ambiguous antecedent basis because claim 1 recites two types of polymer particles: non-expandable polymeric particles and expandable polymeric microspheres. However, even though both are technically particles, one is specifically referred to as “particles” and the other is specifically referred to as “microspheres”, so the Examiner will herein interpret this limitation as applying only to the non-expandable polymeric particles.
Claim 1 recites the limitation “wherein an SEM [image] of a cut surface of the polishing layer shows a crescent shaped opening…”. The appearance of the claimed product in SEM images is considered to be a visual manifestation of its underlying structure, and this structure should be inherent to any sufficiently similar composition. Therefore, any reference (or combination of references) that teaches the product of claim 1 is presumed to have the same structure, and would therefore exhibit the same visual appearance as the claimed product, because identical compositions cannot have mutually exclusive properties (see MPEP 2112.01).
Claim 6 refers to “the isocyanate prepolymer”, while its parent claim 5 refers to “an isocyanate-terminated prepolymer”. An “isocyanate prepolymer” does not necessarily require isocyanate groups to be terminal, and so this could be considered to be an antecedence error. However, in the field of polymer chemistry, polyurethane synthesis necessarily requires the prepolymer to have terminal isocyanate groups. A person of ordinary skill in the art would have understood that “the isocyanate prepolymer” must be referring to a prepolymer with terminal isocyanate groups, which means claim 6 does have proper antecedent basis. The Examiner suggests amending claim 6 to recite “the isocyanate-terminated prepolymer” for clarity, but claim 6 does not warrant a rejection or objection for the claim language as it is currently written.
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 4–6 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.
The limitation “wherein the matrix polymer is ductile” in claim 4 is relative, which renders the claim indefinite. The term “ductile” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Ductility refers to a material’s ability to plastically deform without breaking, but there is no indication of how much deformation is considered ductile. Even brittle materials can be deformed by micrometers or less without breaking, but such materials would not generally be considered “ductile”. For purposes of examination, the Examiner will herein interpret the term “ductile” broadly, and any material in prior art that is not explicitly recited as brittle will be presumed to have at least some amount of ductility.
Claim 5 recites the limitation "the reaction product" in line 5. There is insufficient antecedent basis for this limitation in the claim because claim 5 recites “the reaction product of an isocyanate terminated prepolymer” and “a reaction product of a polyol prepolymer”, so it is unclear which reaction product “the reaction product” refers to. The Examiner believes that the simplest resolution is to delete this phrase, because “the reaction product is further reacted with an amine curative” is already recited earlier in the claim, i.e., “comprising the reaction product [of] an isocyanate terminated prepolymer and an amine curative”.
The term “a low molecular weight polyol” in claim 5 is a relative term which renders the claim indefinite. The term “low molecular weight” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification, at paragraph 0029, gives examples of low molecular weight polyols, but it is not clear if these examples are meant to represent the only species that can be considered low molecular weight, or if there are other species with comparatively higher molecular weights which might still be considered low molecular weight polyols.
Claim 6, being dependent on claim 5, inherits its deficiencies. Claim 6 is therefore rejected on the same grounds as claim 5.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1–5 and 7–9 are rejected under 35 U.S.C. 103 as being unpatentable over Masui et al. (US 7,378,454 B2, hereinafter “Masui”) and Zhu et al. (CN 106891246 A, hereinafter “Zhu”).
Regarding claim 1, Masui teaches a chemical mechanical polishing pad having a polishing layer (see generally abstract), wherein the polishing layer comprises a matrix polymer (see col. 1, ll. 7–9 teaching a polyurethane matrix) and 1 to 20 wt.% based on the total weight of the polishing layer of non-reactive, non-expandable polymeric particles dispersed in the matrix polymer (see col. 2, ll. 55–61 teaching the inclusion of solid beads and col. 3, ll. 1–5 emphasizing that the solid beads are not hollow, and therefore are not expandable; also see col. 13, ll. 16–17 teaching the bead content as 3–25 wt.%, which overlaps with the claimed range; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Masui fails to explicitly teach the additional inclusion of expandable polymeric microspheres. While this technically satisfies the “less than 2 wt%” limitation, because 0 wt.% is less than 2 wt.%, in the interest of compact prosecution, the Examiner will herein interpret the microspheres as being “less than 2 wt.%, but greater than 0 wt.%”. Zhu teaches a polyurethane-based CMP pad (see generally abstract and paragraph 0006), which is microporous due to the inclusion of expandable microspheres (see paragraph 0010 teaching microspheres as leading to microporosity; also see paragraph 0033 describing the microspheres as “expanded hollow microspheres”, which indicates they are expandable). Zhu teaches the microspheres as being present in an amount of from 0.1–5 wt.%, which includes values that overlap with the claimed “less than 2 wt%” limitation (see paragraph 0016; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Zhu teaches microporosity as helping to balance removal efficiency and wafer defects during the polishing process, reducing the hardness of the polishing pad without significantly impacting the tensile strength, and helping to improve modulus, tear strength, and temperature resistance of the polishing pad (see generally paragraph 0033). Masui also teaches a microporous polyurethane pad, wherein the micropores are formed by introducing air into the polymer before curing (see col. 10, ll. 28–33), and recites benefits such as improved modulus of elasticity and slurry retention during polishing (see col. 3, ll. 20–31). Since both references describe a microporous polyurethane polishing pad and the benefits thereof, a person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Masui according to Zhu, achieving microporosity through inclusion of expandable microspheres instead of air bubbles. This modification is supported by KSR Rationale B, which states that it is prima facie obvious to simply substitute one known element (microporous polyurethane formed through air bubbles) for another (microporous polyurethane formed through inclusion of expandable microspheres) to obtain predictable results (both disclosures arrive at a microporous polyurethane, so the success of such a modification is highly predictable).
The resulting product of Masui as modified by Zhu arrives at the product of claim 1. Accordingly, any structural properties of the instant invention are presumed to be common to the product of Masui and Zhu as well, which means the product of Masui as modified by Zhu would reasonably be expected to exhibit the same crescent-shaped openings as claimed, if analyzed using scanning electron microscopy (see the above Claim Interpretation section). Masui, as modified by Zhu, therefore renders claim 1 obvious.
Regarding claims 2 and 3, Masui, as modified by Zhu, teaches the chemical mechanical polishing pad of claim 1. Masui further teaches the limitation of claim 2 wherein the non-reactive, non-expandable polymeric particles comprise cross-linked polymethacrylate (see col. 12, ll. 25–31 teaching the solid beads as polymethylmethacrylate, which is a type of polymethacrylate; also see col. 15, Example 4, wherein the polymethylmethacrylate is cross-linked). Masui further teaches the limitation of claim 3, wherein the non-reactive, non-expandable polymeric particles have a D50 particle size of 5 to 15 microns (see col. 13, ll. 4–8 teaching the particle diameter as ranging from 0.1–100 µm; also see col. 15, Example 4 teaching an embodiment wherein the diameter is 15 µm; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Claims 2 and 3 are therefore rendered obvious.
Regarding claim 4, Masui fails to explicitly teach the matrix polymer as ductile. Polyurethane is not inherently ductile, as the material’s properties depend on the exact formulation. However, Masui explicitly teaches away from rigid polyurethane (see col. 8, l. 61–col. 9, l. 9); rigid polymers are brittle and break before deforming, and the absence of rigidity would suggest at least some amount of ductility. Since claim 4 and the specification fail to provide a standard for ascertaining the requisite degree (see the above 112(b) rejection of claim 4), any amount of ductility satisfies the limitations of the claim. Claim 4 is therefore rendered obvious.
Regarding claim 5, Masui further teaches the limitation wherein the matrix polymer is a polyurethane comprising the reaction product of an isocyanate-terminated prepolymer and an amine curative, wherein the isocyanate-terminated prepolymer comprises the reaction product of a polyol prepolymer, toluene diisocyanate, and a low molecular weight polyol (see col. 7, ll. 16–22 teaching a polyurethane matrix formed from an organic polyisocyanate, a polyol and a chain extender [wherein chain extenders in polyurethane syntheses function as curing agents, as discussed in col. 2, ll. 27–29]; see col. 7, ll. 25–26 teaching the isocyanate as 2,4-toluene diisocyanate; see col. 7, ll. 51–54 teaching the polyol as polypropylene glycol; see col. 9, ll. 15–29 teaching amine-based chain extenders/curing agents; see col. 9, ll. 10–14 teaching the optional inclusion of low molecular weight polyols; Masui therefore teaches the limitation wherein the isocyanate-terminated prepolymer comprises the reaction product of a polyol prepolymer, toluene diisocyanate, and a low molecular weight polyol, and wherein the isocyanate-terminated prepolymer is further reacted with an amine curative). Claim 5 is therefore rendered obvious.
Regarding claim 7, Masui fails to explicitly teach the limitation wherein the polishing pad has a density of at least 1.1 grams per cubic centimeter (see col. 16, Table 1 teaching a maximum density of 0.88 g/cc). Masui further teaches away from densities higher than 0.90 g/cc “in some cases from the viewpoint of polishing speed because of a shortage of microcells in the surface of the polishing pad” (see col. 6, ll. 38–45).
However, Zhu teaches a polishing pad with micropores which achieves a density ranging from 0.5–1.2 g/cc (see paragraph 0037), and describes density and porosity as a balancing act; if density is too high and porosity is too low (which is the effect discussed by Masui above), the pad is prone to deformation. Since Masui only teaches away from high densities “in some cases” because it results in a shortage of microcells, and Zhu teaches that densities up to 1.2 g/cc can be achieved without compromising porosity, a person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Masui, as modified by Zhu, can achieve the claimed density without sacrificing the porosity that is critical to the pad (a density of up to 1.2 g/cc as taught by Zhu meets the “at least 1.1 grams per cubic centimeter” limitation); also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Claim 7 is therefore rendered obvious.
Regarding claim 8, Masui further teaches the limitation wherein the polishing layer includes grooves (see col. 13, ll. 50–61 teaching the surface of the polishing layer as being provided with grooves). Claim 8 is therefore rendered obvious.
Regarding claim 9, while Masui teaches the limitations of parent claim 8, Masui fails to explicitly teach the limitation wherein the grooves are machined into the surface of the polishing layer. Zhu teaches grooves in the surface as well, wherein the grooves are installed using a grooving machine (see paragraph 0046). Since both references teach grooved polyurethane pads, and Masui simply omits the method by which grooves are installed, a person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the method of machining taught by Zhu can be applied to the grooves taught by Masui. This aligns with KSR Rationale C, which states that it is prima facie obvious to use a known technique (machining grooves) to improve similar products (grooved polyurethane CMP pads) in the same way. Claim 9 is therefore rendered obvious.
Allowable Subject Matter
Claims 6 and 10 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 6, neither Masui nor Zhu teach the limitation wherein the isocyanate-terminated prepolymer of claim 5 comprises a blend of a first reaction product and a second reaction product. By using two different prepolymer formulations, the resulting polyurethane would be expected to exhibit heterogeneous properties. While such a product may have niche applications, this is not postulated by Masui or Zhu, so a person of ordinary skill in the art before the effective filing date of the claimed invention would not have been motivated to further modify Masui and Zhu to arrive at the invention of claim 6. Claim 6 therefore contains allowable subject matter.
Regarding claim 10, neither Masui nor Zhu teach the limitation wherein the non-reactive, non-expandable polymeric particles are porous. Zhu only teaches reactive, expandable polymeric particles, and Masui does not teach or suggest porosity of the non-reactive, non-expandable particles. While non-reactive, non-expandable and porous polymeric particles do exist, there is no explicit motivation for a person of ordinary skill in the art to further modify Masui to use porous particles. Both Masui and Zhu teach benefits of microporous polishing pads including increased slurry retention during polishing, as discussed in the above rejection of claim 1. Presumably, porous filler particles would also increase slurry retention, but since both Masui and Zhu already teach a porous pad, the benefits of porosity are already achieved by the pad itself. Since there isn’t any benefit beyond what is already intrinsic to the pad itself, a person of ordinary skill in the art would not be motivated to further modify the product to arrive at the invention of claim 10. Claim 10 therefore contains allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, T, Th, F 6:30-4:30.
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, Amber Orlando can be reached at (571)270-3149. 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.
/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731