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 .
Status of Claims
This action is in reply to the Amendments/Response filed on June 10, 2026. Claim(s) 1 and 19 been amended. No additional claims have been added. Claim(s) 2-3 have been cancelled. Resultant of a restriction, claims 10-18 are non-elected and withdrawn from consideration at present). Claims 1-9 and 19-20 are currently pending and have been examined.
Response to Amendments
The examiner fully acknowledges the amendments to claims 1 and 19, filed on June 10, 2026.
The amendments to claims 1 and 19 have addressed the objections previously submitted, and as such the claim objections set forth in the previous office action pertaining to claims are withdrawn.
The applicant’s amendments to claim 1 and 19 are sufficient to overcome the 35 U.S.C. 102 rejection as presented in the previous action by incorporating limitations from claims 2 and 3. However, the amendments are not considered to have overcome the art of record, Guzman (US PG Pub No. 20220226956), as Guzman was applied to reject claims 1-3, 5-9, and 19-20 in the previous action.
Response to Arguments
The applicant’s arguments, see pages 12-20, filed June 10, 2026 have been fully considered. Therefore, the rejection from the previous office action has been withdrawn.
Claim Objections: The examiner agrees that the claim objections have been addressed through amendments.
Before addressing the individual arguments, the examiner reaffirms that in electing the apparatus claims (claims 1 and 19), the applicant is pursuing claims directed towards an apparatus, i.e. the structural qualities of a polishing pad. The limitations that the applicant has provided that include the equation and operational conditions would fall under the use of the disk, or the process it executes. As the prior art discloses the claimed structure as written, a skilled artisan would expect Guzman to operate as claimed if placed under the same operational conditions and steps.
Conversely, if the applicant were pursuing a method claim, wherein they claim a “method of using a polishing pad comprising…the method comprising….” and listed the steps, the assertion of Guzman as presented in the previous rejection failing to anticipate every limitation, particularly the steps of operation, would be fully considered.
102 Rejections: The applicant has argued that for a 102 rejection, the cited reference fails to disclose each and every element of the claimed invention. However, the limitations the applicant is arguing for pertain to parameters that change/develop as the polishing disk is used. The applicant contends that “the parameter of equation 1…is not merely an expression of the relationship between surface roughness before and after polishing…but is a new type of parameter defined as the product of...before and after polishing…[T]hat causal relationship is novel over the cited references.”
This argument is not effective against the 102 rejection of an apparatus as the patent is for the disk and now how it changes/differs before and after use, which would a process or a product resultant of a process (see MPEP 2114.II.).
Applicant contends on page 16, that Guzman fails to disclose a configuration including multiple windows, however fig. 1a of guzman shows a plan view of the polishing pad with at least three windows (04). The examiner respectfully disagrees with this argument, and it is not found persuasive.
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Applicant concludes (page 17) that Guzman fails in meeting the limitations of a plurality of windows, meeting the parameter equation, and there being a height different between polishing surface and first window. The examiner respectfully disagrees. Please see fig. 1a – ann. 1 regarding the plurality of windows. Guzman doesn’t disclose the parameter of equation 1 as it’s resultant of a process. However, a skilled artisan would anticipate it meeting those limitations as it discloses the claimed features of the polishing pad. The examiner maintains that as [0021] of guzman discloses the ranges of thicknesses for upper and lower portions of the polishing pad, and thicknesses for the window. The difference between those values fall into the range of a height difference as claimed. The applicant has failed to provide where in Guzman’s specification the values of “0.001 to 0.005 mm” occur.
Further, applicant argues about the process of polishing the window on pages 17-18 and how it would result in a more substantial height difference than “0.001 to 0.005.” If the “height difference” of claim 1 is intended to be resultant of polishing, then again it would fall under a product by process of an apparatus claim, which falls under the 2114.II and non-distinguishing the claimed apparatus over the prior art, as an apparatus claim is what an apparatus is, not what does or how it is used.
The rejection of the previous action has been updated to address how claims 2 and 3 have been included into claims 1 and 19.
103 Rejections: Aoi’s teachings do not apply to the applicant’s argued deficiencies of Guzman.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5-9 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guzman (US PG Pub No. 20220226956).
In regards to claim 1, Guzman disclosesa polishing pad (pad 01, fig. 1), comprising:
a polishing layer (polishing layer 05, fig. 1b) comprising
a first surface (see fig. 1b - ann. 1) that is a polishing surface and
a second surface (see fig. 1b - ann. 1) that is a back surface of the first surface and
comprising first through holes (see fig. 1b - ann. 1) formed to penetrate from the first surface to the second surface;
windows (04, 204, 504; fig. 1a, 4b-i, 5) placed within the first through holes; and
a support layer (subpad 06, fig. 1b) placed on a side (see fig. 1b - ann. 1) of the second surface of the polishing layer, comprising a third surface (see fig. 1b - ann. 1) that is placed on a side of the polishing layer and a fourth surface (see fig. 1b - ann. 1) that is a back surface of the third surface, and
comprising second through holes (see fig. 1b - ann. 1) formed to penetrate from the third surface to the fourth surface and connected to the first through holes,
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wherein the polishing pad comprises two or more first through holes (first through holes positioned as bores in the top surface; which surround the windows 04, see fig. 1b – ann. 1), two or more second through holes (second through holes positioned as bores in the bottom surface; which surround the windows 04, see fig. 1b – ann. 1), and two or more windows (plurality of windows 04; see fig. 1a – ann. 1).
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wherein the windows (04, 204, 504; fig. 1a, 4b-i, 5) comprise a first region where a height of a top surface is lower than a height of the first surface (see fig. 4h),
and a height difference between the first surface and the first region is 100 μm to 1.5 mm (fig. 4h shows a window (214) that is shorter than upper portion (206); within the range of values for both heights are values that would result in a height difference between 100 μm to 1.5 mm [0021])
[0021]: For example, the overall height (e.g. h.sub.total) of the window can be 1 to 5 mm, or 1 to 4 mm, where the height of the upper and lower portions can be 1 to 2 mm and the height of a middle portion can be 0.3 to 2, 0.4 to 1, or 0.5 to 0.8 mm.
Regarding the remaining limitations, while the operational conditions, relational equations, and intended use are not explicitly disclosed by Guzman, those factors are not what determines patentiabilty of an apparatus claim.
Pursuant of MPEP 2114.II, the manner of operating the device does not differentiate apparatus claim from the prior art."[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
As such Guzman discloses the structural limitations of the polishing pad. While it does not explicitly disclose the polishing pad value as calculated by applicant’s recited equation 1, nor the process executed under recited conditions order to achieve the measurables to be used as variables within the equation, the claimed polishing pad anticipated by Guzman.
Further, regarding fulfilling the equation regarding “window excellency (applicant’s spec page 15), the polishing pad of Guzman would fully be capable if meeting a value between 0.00 and 1.45 under the given intended use conditions as Guzman discloses the materials recited in the applicant’s disclosure. The equation, “P/T x (Fa – la)” describes a relationship depending upon initial surface roughness, final surface roughness, transmissivity, and area of the polishing window. The applicant’s specification cites the window:
“one embodiment, the window 102may include a non-foamed cured product of a window composition containing a first urethane-based prepolymer…to secure the light transmittance and appropriate surface hardness required for endpoint detection… The 'prepolymer' refers to a polymer with a relatively low molecular weight obtained by stopping the degree of polymerization at an intermediate stage to facilitate molding in the production of cured products. The prepolymer20 may be bjected to an additional curing process such as heating and/or pressurization, or may be mixed and reacted with additional compounds such as other polymerizable compounds, for example, heterogeneous monomers or heterogeneous prepolymers, and then molded into a final cured product. (page 43).”
Guzman discloses “[0018]:… Each window 04 can be of the same material. Alternatively, a first window can be of a different size, a different shape, or a different material from a second window or any third or more windows...The windows can be made from a polymer or polymer blends desired so long as it has sufficient transmission at the wavelengths …Examples of window materials include polyurethanes, acrylic polymers, cyclic olefin co-polymers (e.g. TOPAS 8007, etc.). Use of polyurethane materials can be…Advantageously, the window has transmission to as low of wavelength as possible, such as that achieve with windows manufactured with aliphatic polyurethanes or other materials having optical transparency.”
As they employ the same materials, light-weight polymer and polymer blends in the windows, a skilled artisan would recognize that if the polishing pad of Guzman were to undergo the same polishing process in applicant’s recited “Condition 1”, they would expect a window excellency value between 0.00 and 1.45.
In regards to claim 5, Guzman discloses
the polishing pad according to claim 1, wherein the windows (04, 204, 504; fig. 1a, 4b-i, 5) have a light transmittance of 10 % or more for light with a wavelength of 450 nm after polishing for 20 hours for a thickness of 2 mm under Condition 1 ([0018]; as Guzman discloses the same material for window, a skilled artisan would expect that the resultant light transmittance of Guzman’s polishing pad undergoing the same polishing process would result in 10% or more for light with a wavelength of 450 nm).
In regards to claim 6, Guzman discloses
the polishing pad according to claim 1, wherein, after polishing for a time under Condition 1, when the windows (04, 204, 504; fig. 1a, 4b-i, 5) have a light transmittance of 2.5 % or less for light with a wavelength of 450 nm, the a is 50 or more ([0018]; as Guzman discloses the same material for window, a skilled artisan would expect that the resultant light transmittance of Guzman’s polishing pad undergoing the same polishing process would result in 2.5% or less for light with a wavelength of 450 nm and an alpha is 50 or more).
In regards to claim 7, Guzman discloses
the polishing pad according to claim 1, wherein an Sa change rate of the first region calculated using Equation 2 below is 0 % to 160 %:
[Equation 2](Fa-Ia)/Ia
In Equation 2, Ia is a surface roughness (Sa, um) value of the first region before polishing, and Fa is a surface roughness (Sa, um) value of the first region after polishing for 20 hours under Condition 1.
Examiner’s Note: The claim does not change the structure of the polishing, but rather provides an equation to describe the change that occurs during polishing numerically. As Guzman discloses the polishing pad structure claimed, the claim is anticipated as Guzman’s surface roughness change rate may be expressed in the same manner. Pursuant of MPEP 2114.II, the Sa change of rate is determined by applying the polishing pad through an experiment. The limitations are evaluated according to structure, not the intended use.
In regards to claim 8, Guzman discloses
the polishing pad according to claim 1, wherein an Spk change rate of the first region calculated using Equation 3 below is 0 % to 130 %:[Equation 3](Fp-Ip) xIp In Equation 3, Ip is a surface roughness (Spk, p1m) value of the first region before polishing, and Fp is a surface roughness (Spk,pm) value of the first region after polishing for 20 hours under Condition 1.
Examiner’s Note: The claim does not change the structure of the polishing, but rather provides an equation to describe the change that occurs during polishing numerically. As Guzman discloses the polishing pad structure claimed, the claim is anticipated as Guzman’s Spk change rate may be expressed in the same manner. Pursuant of MPEP 2114.II, the Spk change of rate is determined by applying the polishing pad through an experiment. The limitations are evaluated according to structure, not the intended use.
In regards to claim 9, Guzman discloses
the polishing pad according to claim 1, wherein a surface roughness (Svk) change rate of the first region calculated using Equation 4 below is 0 % to approximately 320 %:[Equation 4] (Fv-Iv)I 100 I4In Equation 4, Iv is a surface roughness (Svk, pm) value of the first region before polishing, and Fv is a surface roughness (Svk,value of the first region after polishing for 20 hours under Condition 1.
Examiner’s Note: Pursuant of MPEP 2114.II, the Svk change of rate is determined by applying the polishing pad through an experiment. The limitations are evaluated according to structure, not the intended use.
In regards to claim 19, Guzman discloses
a polishing pad (pad 01, fig. 1), comprising:
a polishing layer (polishing layer 05, fig. 1b) comprising
a first surface (see fig. 1b - ann. 1) that is a polishing surface and
a second surface (see fig. 1b - ann. 1) that is a back surface of the first surface and comprising first through holes (see fig. 1b - ann. 1) formed to penetrate from the first surface to the second surface;
windows (04, 204, 504; fig. 1a, 4b-i, 5) placed within the first through holes; and
a support layer (subpad 06, fig. 1b) placed on a side of the second surface of the polishing layer, comprising a third surface (see fig. 1b - ann. 1) that is placed on a side of the polishing layer and a fourth surface (see fig. 1b - ann. 1) that is a back surface of the third surface, and comprising second through holes (see fig. 1b - ann. 1) formed to penetrate from the third surface to the fourth surface and connected to the first through holes,
wherein the polishing pad comprises two or more first through holes (first through holes positioned as bores in the top surface; which surround the windows 04, see fig. 1b – ann. 1), two or more second through holes (second through holes positioned as bores in the bottom surface; which surround the windows 04, see fig. 1b – ann. 1), and two or more windows (plurality of windows 04; see fig. 1a – ann. 1).
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wherein the windows (04, 204, 504; fig. 1a, 4b-i, 5) comprise a first region where a height of a top surface is lower than a height of the first surface (see fig. 4h),
and a height difference between the first surface and the first region is 100 μm to 1.5 mm (fig. 4h shows a wind (214) that is shorter than upper portion (206); within the range of values for both heights are values that would result in a height difference between 100 μm to 1.5 mm [0021])
[0021]: For example, the overall height (e.g. h.sub.total) of the window can be 1 to 5 mm, or 1 to 4 mm, where the height of the upper and lower portions can be 1 to 2 mm and the height of a middle portion can be 0.3 to 2, 0.4 to 1, or 0.5 to 0.8 mm.
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Regarding the remaining limitations, while the operational conditions, relational equations, and intended use are not explicitly disclosed by Guzman, those factors are not what determines patentiabilty of an apparatus claim.
Pursuant of MPEP 2114.II, the manner of operating the device does not differentiate apparatus claim from the prior art."[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
As such Guzman discloses the structural limitations of the polishing pad. While it does not explicitly disclose the polishing pad value as calculated by applicant’s recited equation 2, nor the process executed under recited conditions order to achieve the measurables to be used as variables within the equation, the claimed polishing pad anticipated by Guzman.
Further, regarding fulfilling the equation regarding Sa change rate of the first region calculated using Equation 2 below is 0 % to 160 %, the claim does not change the structure of the polishing, but rather provides an equation to describe the change that occurs during polishing numerically. As Guzman discloses the polishing pad structure claimed, the claim is anticipated as Guzman’s Sa roughness change rate may be expressed in the same manner. Pursuant of MPEP 2114.II, the Sa change of rate is determined by applying the polishing pad through an experiment. The limitations are evaluated according to structure, not the intended use.
In regards to claim 20, Guzman discloses
the polishing pad according to claim 19, wherein an Spk change rate of the first region calculated using Equation 3 below is 0 % to 130 %: [Equation 3] (Fp-Ip)10C p-p X 100 Ip In Equation 3, Ip is a surface roughness (Spk,pm) value of the first region before polishing, and Fp is a surface roughness (Spk,pm) value of the first region after polishing for 20 hours under Condition I.
Examiner’s Note: The claim does not change the structure of the polishing, but rather provides an equation to describe the change that occurs during polishing numerically. As Guzman discloses the polishing pad structure claimed, the claim is anticipated as Guzman’s Spk change rate may be expressed in the same manner. Pursuant of MPEP 2114.II, the Spk change of rate is determined by applying the polishing pad through an experiment. The limitations are evaluated according to structure, not the intended use.
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.
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.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Guzman in view of Aoi et al. (US PG Pub No. 20040224611).
In regards to claim 4, Guzman discloses
the polishing pad according to claim 1, but fails to disclose the windows (04, 204, 504; fig. 1a, 4b-i, 5) further “comprise a second region where a height of a top surface is equal to a height of the first surface, the first region is located in a center of the window, and the second region is located on the outer periphery of the window.”
However, Aoi, also a polishing pad having a through hole extending from the front side to the rear side and a light transmitting member arranged in the through hole, discloses a window with two regions: a first centrally located, with a window lower than the first surface of the polishing pad, and a region with a surface level with the first surface of the polishing pad ([0096], fig. 15; being formed on the front side of the polishing pad aligns the second region with the first surface).
[0096]… a depressed portion of the light transmitting member (FIG. 15) may be formed on either one of the front and rear sides of the polishing pad. When it is formed on the rear side (non-polishing surface) of the polishing pad, the light transmitting member can be made thin without affecting polishing efficiency.
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Guzman and Aoi are analogous to the claimed invention as they are in the same field of endeavor, polishing pads with windows residing in through holes. Therefore, it 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 to modify the window of Guzman to a desired shape (in this case, having a depressed first central region and elevated outer second region) in adapting the window for used in the polishing pad, since such modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art (see MPEP 2144.04_IV_B).
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 JASON KHALIL HAWKINS whose telephone number is (571)272-5446. The examiner can normally be reached M-F; 8-5PM.
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, 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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/JASON KHALIL HAWKINS/Examiner, Art Unit 3723
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