DETAILED ACTION
This action is responsive to Applicant’s reply filed 6/11/2026.
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 .
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.
Claim Status
Claims 1-20 are pending.
Claims 17-20 are withdrawn.
Claims 1, 5, 12-13, 15-16 are currently amended.
Claim Interpretation
In the interest of compact prosecution and clarity of the record, the Examiner notes the claims are construed as detailed in this section. What follows below is an abbreviated version of the full remarks as presented in the Office Action dated 3/11/2026.
The “slurry liquid” is not a structural element of the apparatus, it is a recitation of how the applicant intends the apparatus to function. As such, it is construed as an intended use and is only given patentable weight to the extent that the prior art is capable of performing the intended uses. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114(II).
The Examiner notes that zeta potential, by definition, is not an inherent quality of a particle itself. Instead, it is a value established by a potential difference between a liquid and a particle. Since zeta potential is defined as a potential difference between a particle and a liquid, the zeta potential as claimed is also construed as an intended use of the apparatus.
The diamond particles, therefore, are structurally limiting in their chemical and physical nature alone (terminations, size, heights, etc.), not by their zeta potential in a particular liquid.
In addition to the above, the Examiner notes claim 1 has been amended to recite: “surface bonds of the plurality of diamond particles are passivated by the specific elements”. The scope of the phrase: “specific elements” is construed in light of the disclosure to only cover hydrogen (par. [0048] of the instant PG-Pub) and oxygen (par. [0054], Id.) termination.
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.
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 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US Pub. 2020/0206870) in view of Ansari Mahabadi (US Pub. 2021/0269314, hereinafter – “Mahabadi”).
Regarding claim 1, Lee teaches a chemical mechanical polishing apparatus ([0019] and Fig. 11, CMP apparatus #10) comprising: a polishing pad ([0023] and Fig. 1, polishing pad #30) providing a flat main surface to which a slurry liquid having polishing particles is supplied ([0023] and Fig. 1, via #50); and a conditioning disk on the main surface of the polishing pad ([0032] and Figs. 1 and 4, conditioning disk #170), wherein the conditioning disk includes a plurality of diamond particles that are positioned on a surface of the conditioning disk facing the main surface of the polishing pad ([0041]), wherein the plurality of diamond particles are terminated with specific elements on surfaces thereof (as diamonds are formed entirely of elements, and diamonds have surfaces, Lee teaches this limitation because “specific elements” are not further limited).
Lee does not explicitly teach wherein the specific elements cause surface bonds of the plurality of diamond particles to be passivated.
However, Mahabadi teaches H-terminated and O-terminated diamonds (Mahabadi – [0018]-[0019]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to modify the surface termination of the diamond particles of Lee to be H- or O-terminated similar to Mahabadi in order to control the hydrophobicity/hydrophilicity of the diamond surfaces (Mahabadi – [0018]-[0019]).
Regarding the limitation: “a polarity of a zeta potential on the surfaces of the plurality of diamond particles is the same as a plurality of a zeta potential on the polishing particles of the slurry liquid”, the limitation is construed as an intended use of the apparatus since the slurry liquid is not structurally limiting (see Claim Interpretation). As such, it is possible to provide a slurry liquid to the modified Lee apparatus such that the polarity of the zeta potentials of the diamond particles and polishing particles are the same. The modified Lee apparatus, therefore, is regarded as capable of performing the functional limitation above.
Regarding claims 2-3, Lee does not explicitly teach wherein the specific elements include hydrogen atoms or oxygen atoms.
However, Mahabadi teaches H-terminated and O-terminated diamonds (Mahabadi – [0018]-[0019]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to modify the surface termination of the diamond particles of Lee to be H- or O-terminated similar to Mahabadi in order to control the hydrophobicity/hydrophilicity of the diamond surfaces (Mahabadi – [0018]-[0019]).
Regarding the limitations concerning the positive/negative zeta potential polarity, the limitations are construed as an intended use of the apparatus since the slurry liquid is not structurally limiting (see Claim Interpretation). As such, it is possible to provide a slurry liquid to the modified Lee apparatus such that the polarity of the zeta potentials of the diamond particles and polishing particles are the same, especially considering Mahabadi teaches positive and negative polarity terminations (see above). The modified Lee apparatus, therefore, is regarded as capable of performing the functional limitation above.
Regarding claims 4 and 6, each claim is merely an intended use and is given patentable weight to the extent that the prior art is capable of performing the intended use (see Claim Interpretation). The Examiner respectfully submits that the modified Lee apparatus would be capable of dispensing a slurry liquid according to the two claims, as such a slurry is known in the art prior to the time of filing. The Examiner submits Seo (US Pub. 2021/0130651), commonly assigned with the instant application, as an evidentiary reference supporting this assertion (see at least claims 4 and 8 of Seo).
Regarding claim 7, Lee teaches wherein the plurality of diamond particles are arranged in a regular pattern on the surface of the conditioning disk ([0041]: evenly fixed).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US Pub. 2020/0206870) and Ansari Mahabadi (US Pub. 2021/0269314, hereinafter – “Mahabadi”), as applied to claims 1-4 and 6-7 above, further in view of Kinoshita (US Patent 6,309,433).
The limitations of claims 1-4 and 6-7 are set forth above.
Regarding claim 5, modified Lee does not teach the added limitations of the claim.
However, Kinoshita wherein a maximal width of each of the plurality of diamond particles is in a range of about 200 micrometers to about 250 micrometers (Kinoshita – C1, L64-66: 50-300 microns).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to set the diamond particle size of modified Lee to the claimed range as a matter of obviousness due to overlapping ranges. The courts have held that where claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See In re Wertheim, 541 F.sd 257, 191 USPQ 90 (CCPA 1976), and MPEP 2144.05.
Regarding the limitation: “wherein a diameter of the polishing particle is in a range of about 50 micrometers to about 100 micrometers”, the limitation is construed as an intended use of the apparatus since the slurry liquid is not structurally limiting (see Claim Interpretation). As such, it is possible to provide a slurry liquid to the modified Lee apparatus with polishing particles of any size.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US Pub. 2020/0206870) and Ansari Mahabadi (US Pub. 2021/0269314, hereinafter – “Mahabadi”), as applied to claims 1-4 and 6-7 above, further in view of Lawing (US Pub. 2002/0182401).
The limitations of claims 1-4 and 6-7 are set forth above.
Regarding claim 8, Lee teaches wherein the plurality of diamond particles individually protrude from the surface of the conditioning disk ([0041]).
Modified Lee does not explicitly teach wherein they have a plurality of different heights.
However, Lawing teaches this limitation (Lawing – [0037], Fig. 3F).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to modify the diamond particles of modified Lee to comprise different heights in order to allow more stable, controllable, and reproducible pad conditioning (Lawing – [0037]).
Regarding claim 9, modified Lee does not teach the added limitations of the claim.
While Lawing does not explicitly teach wherein a height difference of the plurality of protruded heights is in a range of 10% to 20% of an average height of the plurality of diamond particles, Lawing does teach that particle height is a result effective variable. Specifically, that controlling/optimizing particle height directly affects the stability, controllability, and reproducibility of pad conditioning (Lawing – [0037]).
It would have been obvious to a person of ordinary skill in the art, as of the effective filing date of the instant application, to discover the optimum range for the protruding heights of the diamond particles of modified Lee through routine experimentation in order to affect the stability, controllability, and reproducibility of pad conditioning (Lawing – [0037]). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Regarding claim 10, modified Lee does not teach the added limitations of the claim (Lee teaches a uniform height).
However, Lawing teaches wherein the plurality of diamond particles include first diamond particles having a first average height; and second diamond particles having a second average height, wherein the second average height is less than the first average height (Lawing – [0037], Fig. 3F).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to modify the diamond particles of modified Lee to comprise different heights in order to allow more stable, controllable, and reproducible pad conditioning (Lawing – [0037]).
Claims 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US Pub. 2020/0206870) in view of Ansari Mahabadi (US Pub. 2021/0269314, hereinafter – “Mahabadi”).
Regarding claim 11, Lee teaches a chemical mechanical polishing apparatus ([0019] and Fig. 11, CMP apparatus #10), comprising: a device body ([0026] and Figs 1-4, body #120); a pivot arm operatively connected to the device body ([0026] and Figs. 1-4, pivot arm #140); a housing having an inner space at an end portion of the pivot arm distal from the device body ([0032] and Figs. 1-4, housing #146); a head unit operatively connected to the housing ([0032] and Figs. 1-4, head unit #160 with related elements as follows), wherein the head unit includes, a motor in the inner space of the housing ([0032] and Figs. 1-4, motor #162), wherein the motor includes a rotatable shaft ([0033] and Figs. 1-4, shaft #162a); a disk holder operatively connected to a rotatable shaft of the motor ([0032] and Figs. 1-4, disk holder #168); and a conditioning disk ([0032] and Figs. 1 and 4, conditioning disk #170) operatively connected to the disk holder (see Figs. 1, 4); and a polishing pad ([0023] and Fig. 1, polishing pad #30) having a main surface configured to receive a slurry liquid containing a plurality of polishing particles ([0023] and Fig. 1, via #50), wherein the conditioning disk includes a plurality of diamond particles positioned on a surface of the conditioning disk facing the main surface of the polishing pad ([0041]).
Lee does not explicitly teach wherein the plurality of diamond particles are terminated with hydrogen atoms on surfaces thereof.
However, Mahabadi teaches H-terminated and O-terminated diamonds (Mahabadi – [0018]-[0019]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to modify the surface termination of the diamond particles of Lee to be H- or O-terminated similar to Mahabadi in order to control the hydrophobicity/hydrophilicity of the diamond surfaces (Mahabadi – [0018]-[0019]).
Regarding claim 12, Lee does not explicitly teach wherein the plurality of diamond particles are terminated with hydrogen atoms on surfaces thereof.
However, Mahabadi teaches H-terminated and O-terminated diamonds (Mahabadi – [0018]-[0019]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to modify the surface termination of the diamond particles of Lee to be H- or O-terminated similar to Mahabadi in order to control the hydrophobicity/hydrophilicity of the diamond surfaces (Mahabadi – [0018]-[0019]).
Regarding the limitation: “the plurality of polishing particles of the slurry liquid have a positive zeta potential polarity”, the limitation is construed as an intended use of the apparatus since the slurry liquid is not structurally limiting (see Claim Interpretation). As such, it is possible to provide a slurry liquid to the modified Lee apparatus such that the polarity of the zeta potentials of the H-terminated diamond particles and polishing particles are the same. The modified Lee apparatus, therefore, is regarded as capable of performing the functional limitation above.
Regarding claims 13-15, each claim is merely an intended use and is given patentable weight to the extent that the prior art is capable of performing the intended use (see Claim Interpretation). The Examiner respectfully submits that the Lee apparatus would be capable of dispensing a slurry liquid according to the above claims, as such a slurry is known in the art prior to the time of filing. The Examiner submits Seo (US Pub. 2021/0130651), commonly assigned with the instant application, as an evidentiary reference supporting this assertion (see at least claims 4 and 8 of Seo).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (US Pub. 2020/0206870) and Ansari Mahabadi (US Pub. 2021/0269314, hereinafter – “Mahabadi”), as applied to claims 11-15 above, further in view of Kinoshita (US Patent 6,309,433).
The limitations of claims 11-15 are set forth above.
Regarding claim 16, Lee does not teach the added limitations of the claim.
However, Kinoshita wherein a maximal width of each of the plurality of diamond particles is in a range of about 200 micrometers to about 250 micrometers (Kinoshita – C1, L64-66: 50-300 microns).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the instant application, to set the diamond particle size of Lee to the claimed range as a matter of obviousness due to overlapping ranges. The courts have held that where claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See In re Wertheim, 541 F.sd 257, 191 USPQ 90 (CCPA 1976), and MPEP 2144.05.
Regarding the limitation: “wherein a diameter of the polishing particle is in a range of about 50 micrometers to about 100 micrometers”, the limitation is construed as an intended use of the apparatus since the slurry liquid is not structurally limiting (see Claim Interpretation). As such, it is possible to provide a slurry liquid to the modified Lee apparatus with polishing particles of any size.
Response to Arguments
Applicant has appropriately amended various claims to eliminate indefinite claim language, thus the §112(b) rejections are withdrawn.
Regarding the §102(a)(1) rejection of claim 1, Applicant’s arguments have been carefully considered but are moot in light of the new grounds of rejection as presented herein. The Examiner has withdrawn all §102(a)(1) rejections and set forth new grounds of rejection under §103 as necessitated by Applicant’s Amendment.
Since amended claim 1 is now rejected using Mahabadi, the Examiner’s rebuttal (immediately below) to Applicant’s arguments (Remarks, pgs. 11-12) concerning Mahabadi applies to all claims, not just previous claims 2, 3, and/or 11.
Regarding the §103 rejection of claim 11, the arguments have been carefully considered but are not persuasive for at least the reasons set forth herein. The rejection of claim 11 (and claims dependent thereon) is maintained.
Applicant’s first argument appears to be directed to an alleged disagreement in whether the instant application, Lee, and Mahabadi are all related as analogous art. The Examiner respectfully submits that these three references are all analogous art according to at least the “relevant field of endeavor” test. See MPEP 2141.01(a)(I).
There should be little disagreement that the instant application and Lee are from the same field of endeavor- both references teach a CMP apparatus and have a common assignee.
Turning to Mahabadi, while the reference does not disclose a CMP apparatus, it does remark that the diamonds can be used in “photonics, optics, and other industrial areas” (par. [0001], Id.) and “for any application, such as, electronic applications, optical applications, mechanical applications, etc.” (par. [0013], Id.). Thus there does not appear to be any particular limitation in how the Mahabadi functionalized diamonds can be used.
Of particular relevance is the disclosure in Mahabadi relating to the physical properties resulting from the H- or O- functionalization (see pars. [0017]-[0019]): particularly the hydrophobic/hydrophilic behavior of the diamond material.
The Examiner respectfully submits this very same property is a focal point of the instant application- the disclosure is replete with discussions of adjusting zeta potentials of a slurry liquid and diamond polishing particles via surface functionalization. As established in the Claim Interpretation section, zeta potential is a concept inextricably linked to surface polarity and, by extension, the hydrophobic/hydrophilic nature of said surface.
The Examiner respectfully submits that the instant Applicant and Mahabadi are both in the same field of endeavor in terms of diamond functionalization for surface property modifications, and are regarded as analogous art.
Lee teaches utilizing diamond particles for pad conditioning (at least par. [0041]). Thus all three references are in the same field of endeavor of utilization of diamond particles. Usage in a CMP apparatus and diamond hydrophobicity/hydrophilicity modifications via functionalizations further link the references.
Applicant’s arguments appear to be directed to the “reasonably pertinent” test for solving the same problem as the instant application. On their own, these arguments are insufficient to rebut the Examiner’s position because the Examiner specifically relies upon the opposite test for analogous art.
However, the Examiner respectfully submits that a reasonable case could be made that the three references, particularly Mahabadi, are also reasonably pertinent to the problem faced by the instant inventors.
As explained above, Mahabadi contains specific teachings relating to the physical properties resulting from the H- or O- functionalization of diamond particles (see pars. [0017]-[0019]): particularly their hydrophobic/hydrophilic behavior.
The Examiner respectfully submits this very same property is a focal point of the instant application- the disclosure is replete with discussions of adjusting zeta potentials of a slurry liquid and diamond polishing particles via surface functionalization. As noted herein, zeta potential is a concept inextricably linked to surface polarity and, by extension, the hydrophobic/hydrophilic nature of said surface. In support of this assertion, the Examiner submits Izumi (US Patent 6,022,400) and/or Matsui (US Pub. 2008/0227297) as evidentiary references demonstrating the knowledge of a PHOSITA prior to the instant filing date.
The Examiner notes that the discussion above relating to the “reasonably pertinent” test are provided in fairness to the Applicant and to fully address their remarks. The outcome of this test and the arguments presented in support by the Examiner are not strictly relied upon in any rejection of the claims, and should not be construed as altering any grounds of rejection.
Concerning par. [0061], Applicant appears to argue that Mahabadi teaches away from and/or otherwise discourages using diamonds for mechanical polishing processes. This is both factually unsupported by Mahabadi and does not constitute “teaching away” even if, arguendo, the statement was factually supported. MPEP 2145(X)(D)(1) describes this “teaching away” as disclosure which “criticize[s], discredit[s], or otherwise discourage[s] the solution claimed”, citing In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See also UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 692, 2023 USPQ2d 448 (Fed. Cir. 2023).
The text of par. [0061] of Mahabadi is reproduced below:
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Presumably, the Applicant is referencing the final clause (b) above in their arguments. It is the Examiner’s understanding of the above passage that Mahabadi is only teaching that prior to plasma etching a diamond surface for high aspect ratio nano-patterning (par. [0058], Id.), the surface of the diamond should be free from any damage that would have resulted from an earlier mechanical polishing process.
In accordance, Mahabadi is not “teaching away” from using a functionalized diamond structure in mechanical polishing.
Regarding the combination of Mahabadi with Lee, Applicant argues (pg. 12, Id.) that because Lee allegedly teaches bonding diamond polishing particles to a nickel bonding layer, a PHOSITA would not be motivated to functionalize the surface of the diamond particles with hydrogen/oxygen terminations due to being bonded to a nickel layer. The Examiner respectfully disagrees.
Principally, Lee does not require where the diamond particles are chemically bonded to said nickel bonding layer, which appears to be the focal point of the Applicant’s argument.
The Examiner respectfully submits that various other means of bonding are commonly utilized other than chemically bonding the two species, as would be understood by a PHOSITA- see at least Nagahara (US 5,941,761 – adhesive tape). If this method were utilized by Lee, the alleged chemical bonding problem would not be present.
Additionally, from a chemical perspective, it is unclear to the Examiner how chemically bonding H or O-functionalized diamond particles to a nickel substrate would be prevented from occurring. The mere assertion that the H or O-functionalized surfaces are “chemically inert” does not mean they are incapable of bonding, nor would it suggest to a PHOSITA that such a bonding would be discouraged and/or problematic.
For at least these reasons, the Examiner respectfully submits that Lee and Mahabadi are both properly utilized in a proper prima facie case of obviousness – the §103 rejections are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kurt Sweely whose telephone number is (571)272-8482. The examiner can normally be reached Monday - Friday, 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at (571)-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kurt Sweely/Primary Examiner, Art Unit 1718
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