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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed 02/20/2024, 01/06/2025, 07/03/2025 and 12/30/2025 fail to comply with 37 CFR 1.98(a)(3)(i) because they do not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. They have been placed in the application file, but some of the information referred to therein (the non-patent literature references) has not been considered.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on 07/09/2026 is acknowledged.
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/09/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Specification
The use of the terms “EcoTRION”, “Sovermol”, “Noroo”, “Priplast” and “Velvetol” (see pg. 8 of the specification), which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 6 recites the limitation “wherein the bio-polymer polyol comprises at least one selected from the group consisting of…”; however, the bio-polymer polyol is optional in claim 5 from which claim 6 depends, and it is not clear from claim 6 whether the bio-polymer polyol is actually required, or whether it is still optional and must only be one of the recited polyols if present.
For purposes of examination, Examiner treated claim 6 as though it recites wherein the bio-polyol comprises the bio-polymer polyol, and wherein the bio-polymer polyol comprises at least one selected from the recited group; however, it is noted that this limitation is considered product-by-process claim language and is not given patentable weight in the present product claim (see MPEP § 2113).
Claim 7 recites the limitation “wherein the bio-monomer polyol comprises at least one selected from the group consisting of…”; however, the bio-monomer polyol is optional in claim 5 from which claim 7 depends, and it is not clear from claim 7 whether the bio-monomer polyol is actually required, or whether it is still optional and must only be one of the recited polyols if present.
For purposes of examination, Examiner treated claim 7 as though it recites wherein the bio-polyol comprises the bio-monomer polyol, and wherein the bio-monomer polyol comprises at least one selected from the recited group; however, it is noted that this limitation is considered product-by-process claim language and is not given patentable weight in the present product claim (see MPEP § 2113).
Claim 7 recites “wherein the bio-monomer polyol comprises at least one selected from the group consisting of bio-ethylene glycol, bio-diethylene glycol, bio-1,2-propylene glycol, bio-1,3-propanediol, bio-2-methyl-1,3-propanediol, bio-1,3-butanediol, bio-1,4-butanediol, bio-2,3-butanediol, bio-n-butanol, bio-isobutanol, bio-1,5-pentanediol, bio-2-octanol, bio-1,9-nonediol, bio-1,10-decanediol, bio-diethylene glycol, and bio-isosorbide”; however, it is not clear how the bio-monomer polyol could comprise n-butanol, isobutanol, or 2-octanol, as none of these alcohols are polyols. It is not clear whether the claim is actually meant to require a polyol, or whether one of these monohydric alcohols can be selected instead; however, it is noted that this limitation is considered product-by-process claim language and is not given patentable weight in the present product claim (see MPEP § 2113).
Claims 8 and 9 each recite the limitation "the isocyanate raw material" (see claims 8 and 9 each at line 1). There is insufficient antecedent basis for this limitation in the claim. It is noted that claim 3, from which claims 8-9 depend, positively recites an “isocyanate material”, not an “isocyanate raw material”.
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.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa, et al. (U.S. Pub. No. 2019/0211136-A1) (hereinafter, “HASEGAWA”).
Regarding claim 1, HASEGAWA teaches a polishing pad (see HASEGAWA at paragraphs [0001] and [0016], teaching a chemical mechanical (CMP) polishing pad made from a polyurethane resin),
which comprises a top pad layer prepared from a biomass-containing composition (it is noted that “prepared from a biomass-containing composition” is considered product-by-process claim language which is not given patentable weight in the present product claim (see MPEP § 2113), and that the structural limitation of the claimed polishing pad is that the top pad layer comprises biomass; see HASEGAWA at paragraphs [0001], [0016], [0022], [0048], [0057], [0060] and [0258], teaching that the foaming thermoplastic polyurethane resin is used to make a CMP pad layer (i.e., the polishing layer) and is made using a biological first polyol component, e.g., derived from plants, i.e., a bio-polyol)
and has a total biomass content of 1 to 50% by weight (see HASEGAWA at paragraphs [0100] and [0108], teaching forming the isocyanate group-terminated polyurethane prepolymer by mixing, by mass, 5 to 100 parts of polyisocyanate with 100 parts of the first polyol component (i.e., the bio-polyol, which is derived from plants, i.e., 100% biomass) (i.e., the bio-polyol comprises 50-95% of the resulting prepolymer composition), then adding the second polyol component to this prepoloymer composition in an amount of 3 to 30 parts of the second polyol to 100 parts of the prepolymer composition (i.e., the amount of the bio-polyol is 50/130 to 95/103, or 38% to 92% by weight of the polishing layer; see HASEGAWA at Tables 1-2 teaching examples using amounts of the first polyol which would result in a biomass content within the claimed range for the bio-polyol, e.g. Example 5 comprising 97 parts isocyanate mixed with 100 parts first polyol (49% first polyol), 100 parts of which is mixed with 4.9 parts of the 2nd polyol; 49/105 is 47% by weight of the first (bio) polyol). 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)).
HASEGAWA further teaches that the content of the first polyol (i.e., bio-polyol, biomass content) and mixing ratio with other components affects the properties of the resulting polyurethane foaming molded article (CMP pad) such as uniformity and mechanical properties such as breaking strength and tear strength (see HASEGAWA at paragraphs [0134]-[0136], [0071], [0081]-[0082] and [0199]), i.e., HASEGAWA explicitly teaches that the content of the bio-polyol 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).
HASEGAWA does not explicitly mention that the biomass content is measured by the ASTM D 6866 standard; however, as discussed above HASEGAWA explicitly teaches using a plant-derived polyol and teaches polishing pads having a biomass content which is overlapping with or within the claimed range regardless of the method by which it is measured. The biomass content would be expected to be the same or similar when measured by the ASTM D 6866 standard.
Regarding claim 2, as applied to claim 1 above, HASEGAWA teaches a polishing pad according to claim 1, wherein the biomass content of the top pad layer is 2 to 70% by weight based on the total weight of the top pad layer (as discussed in the rejection of claim 1 above, see HASEGAWA at paragraphs [0048], [0057], [0100], [0108], [0134]-[0136], [0071], [0081]-[0082], [0199] and Tables 1-2, teaching polishing pads with a polyurethane foaming molded article layer comprising about 38% to 92% biomass by weight, e.g., 47% by weight, and teaching that the content of the bio-polyol is a result-effective variable which may be optimized by one of ordinary skill in the art via routine experimentation and optimization). 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)). 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 3, as applied to claim 1 above, HASEGAWA teaches a polishing pad according to claim 1. It is noted that “wherein the composition comprises a biomass-containing urethane prepolymer, and the biomass-containing urethane prepolymer is prepared from a urethane prepolymer composition comprising an isocyanate material; and a polyol material comprising a bio-polyol” is considered product-by-process claim language and is not given patentable weight, and that the structural limitations of the present product claim are that the top layer comprises a biomass-containing urethane (see HASEGAWA at paragraphs [0022], [0048] and [0057], teaching a biomass-containing polyurethane as discussed in the rejection of claim 1 above; although not required to meet the limitations of the present product claim, HASEGAWA teaches that the polyurethane is prepared from a urethane prepolymer composition comprising an isocyanate material and a polyol material comprising a bio-polyol).
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Regarding claim 4, as applied to claim 3 above, HASEGAWA teaches a polishing pad according to claim 3. The recitation of “wherein the biomass content of the biomass-containing urethane prepolymer is 4 to 80% by weight based on the total weight of the biomass-containing urethane prepolymer” is considered product-by-process claim language and is not given patentable weight in the present product claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Although not required to meet the limitations of the present product claim, as discussed in the rejection of claim 1 above, HASEGAWA teaches polishing pads with a polyurethane foaming molded article layer formed from a prepolymer composition comprising about 38% to 92% biomass by weight, e.g., 47% by weight, and teaching that the content of the bio-polyol is a result-effective variable which may be optimized by one of ordinary skill in the art via routine experimentation and optimization see HASEGAWA at paragraphs [0048], [0057], [0100], [0108], [0134]-[0136], [0071], [0081]-[0082], [0199] and Tables 1-2. 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)). 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, as applied to claim 3 above, HASEGAWA teaches a polishing pad according to claim 3. The recitation of “wherein the bio-polyol comprises at least one selected from the group consisting of a bio-polymer polyol and a bio-monomer polyol” is considered product-by-process claim language and is not given patentable weight in the present product claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Although not required to meet the limitations of the present product claim, it is noted that HASEGAWA teaches bio-polymer polyols and monomer polyols (see HASEGAWA at paragraphs [0048]-[0049], [0057], [0060], [0062], [0064], [0069]-[0070], [0075]).
Regarding claim 6, as applied to claim 5 above, HASEGAWA teaches a polishing pad according to claim 5. The recitation of “wherein the bio-polymer polyol comprises at least one selected from the group consisting of a bio-polyether polyol, a bio-polyester polyol, a bio-polycarbonate polyol, and a bio-polycaprolactam polyol” is considered product-by-process claim language and is not given patentable weight in the present product claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Although not required to meet the limitations of the present product claim, it is noted that HASEGAWA teaches such bio-polymer polyols, e.g., bio-polyester (see HASEGAWA at paragraphs [0048] and [0057]).
Regarding claim 7, as applied to claim 5 above, HASEGAWA teaches a polishing pad according to claim 5. The recitation of “wherein the bio-monomer polyol comprises at least one selected from the group consisting of bio-ethylene glycol, bio-diethylene glycol, bio-1,2-propylene glycol, bio-1,3-propanediol, bio-2-methyl-1,3-propanediol, bio-1,3-butanediol, bio-1,4-butanediol, bio-2,3-butanediol, bio-n-butanol, bio-isobutanol, bio-1,5-pentanediol, bio-2-octanol, bio-1,9-nonediol, bio-1,10-decanediol, bio-diethylene glycol, and bio-isosorbide” is considered product-by-process claim language and is not given patentable weight in the present product claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Although not required to meet the limitations of the present product claim, it is noted that HASEGAWA teaches monomer polyols (see HASEGAWA at paragraphs [0062]-[0064] and [0074]-[0075]).
Regarding claim 8, as applied to claim 3 above, HASEGAWA teaches a polishing pad according to claim 3. The recitation of “wherein the isocyanate raw material comprises at least one selected from the group consisting of toluene diisocyanate (TDI) and 4,4'-methylenedicyclohexyl diisocyanate (H12MDI)” is considered product-by-process claim language and is not given patentable weight in the present product claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Although not required to meet the limitations of the present product claim, it is noted that HASEGAWA teaches TDI and hydrogenated MDI (i.e., H12MDI) (see HASEGAWA at paragraphs [0034]-[0035]).
Regarding claim 9, as applied to claim 3 above, HASEGAWA teaches a polishing pad according to claim 3. The recitation of “wherein the isocyanate raw material comprises a bio-isocyanate” is considered product-by-process claim language and is not given patentable weight in the present product claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Although not required to meet the limitations of the present product claim, it is noted that HASEGAWA teaches bio-isocyanate, e.g., lysine triisocyanate (see HASEGAWA at paragraph [0032]).
Regarding claim 10, as applied to claim 1 above, HASEGAWA teaches a polishing pad according to claim 1, wherein the total biomass content of the polishing pad is 8 to 50% by weight (as discussed in the rejection of claim 1 above, see HASEGAWA at paragraphs [0048], [0057], [0100], [0108], [0134]-[0136], [0071], [0081]-[0082], [0199] and Tables 1-2, teaching polishing pads with a polyurethane foaming molded article layer comprising about 38% to 92% biomass by weight, e.g., 47% by weight, and teaching that the content of the bio-polyol is a result-effective variable which may be optimized by one of ordinary skill in the art via routine experimentation and optimization). 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)). 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).
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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