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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8, drawn to a polishing pad, in the reply filed on 7/2/2026 is acknowledged.
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 6-8 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.
Substitution of “the zeta potential value” for “a zeta potential value” is deemed appropriate in compliance with US Patent Practice.
The same token applies to the D50 particle size as well as the polishing rate.
Claim Rejections - 35 USC § 102
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 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:
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, 3 and 4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2023/0015668 to Qian et al. (hereinafter “Qian”).
Qian discloses a polishing pad comprising a polishing layer and a support layer (paragraph 25), wherein the polishing layer comprises a urethane-based prepolymer, a chlorine-free aromatic polyamine curing agent, and a chlorine-free microelements corresponding to the claimed foaming agent (abstract). The polishing layer has a content of chlorine of less than 0.1 wt% or 1000 ppm (paragraph 34).
As to claim 3, Qian discloses that the microelements are expandable polymeric microspheres having a particle size of 1 to 120 microns, and a shell comprising acrylonitrile copolymer with a wall thickness of 30 to 300 nm (paragraphs 17 and 18).
As to claim 4, Qian discloses that the curing agent is 3,5-dimethylthio-2,6-diaminotoluene (DMTDA) (paragraph 34).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Qian.
Qian discloses the polishing layer having a content of Chlorine of less than 1000 ppm. This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the content of the chlorine will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the content of the chlorine is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the polishing layer having a content of the chlorine in the range instantly claimed, motivated by the desire to provide a chlorine-free polishing layer having a higher polishing rate than a polishing layer containing chlorine. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Qian as applied to claim 1 above, and further in view of US 2019/0314954 to Heo et al. (hereinafter “Heo”).
Qian discloses the polishing layer having a shore D hardness of 28 to 75 (paragraph 22). Qian does not explicitly disclose the polishing layer having a tensile strength of 15 to 25 N/mm2, and an elongation of 90 to 130%.
Heo, however, discloses a polishing pad obtained from a composition comprising a urethane-based prepolymer, a curing agent and a foaming agent (paragraphs 64, 91 and 93). The polishing pad has a thickness of 1.5 to 2.5 mm, a specific gravity of 0.7 to 0.9 g/cc, a surface hardness of 50 to 65 shore D, a tensile strength of 15 to 25 N/mm2, and an elongation of 80 to 250% (paragraphs 76-79).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the polishing layer of Qian having a tensile strength of 15 to 25 N/mm2, and an elongation of 80 to 250% disclosed in Heo, motivated by the desire to provide a polishing layer that is excellent in physical properties.
Claims 6-8 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Qian.
Qian does not explicitly disclose:
(i) a zeta potential value of an aqueous solution of a pH of 5.5 containing debris obtained by conditioning the polishing layer at a concentration of 0.01% by weight is -10 mV to 30 mV,
(ii) when the polishing pad is conditioned while deionized water is supplied at 300 c/minute under the conditions of a platen speed of 93 rpm, a conditioner load of 9 lbs, a conditioner speed of 64 rpm, and a sweep of 19 times/minute, the D50 particle size of the polishing pad debris formed of 30 microns or less, and
(iii) when the silicon oxide layer of a silicon wafer is polished with a ceria slurry using the polishing pad, the polishing rate is 2200 to 2600 Å/min.
It appears that the polishing pad of Qian meets all structural limitations and chemistry required by the claims.
The polishing pad comprises a polishing layer and a support layer (paragraph 25), wherein the polishing layer comprises a urethane-based prepolymer, a chlorine-free aromatic polyamine curing agent, and a chlorine-free microelements corresponding to the claimed foaming agent (abstract). The urethane-based prepolymer comprise 8-10 wt% of unreacted NCO groups (paragraph 12). The polishing layer has a content of chlorine of less than 0.1 wt% or 1000 ppm (paragraph 34). The curing agent is 3,5-dimethylthio-2,6-diaminotoluene (DMTDA) and present in an amount of 5 to 40 wt% relative to the total weight of the prepolymer and the curing agent (paragraphs 15 and 34). The microelements are expandable polymeric microspheres having a particle size of 1 to 120 microns, and a shell comprising acrylonitrile copolymer with a wall thickness of 30 to 300 nm (paragraphs 17 and 18).
The content of the microelements distributed within the polymeric matrix in the polishing layer is from 5 to 50% volume based on the total volume of the polishing layer (paragraph 19). The polishing layer has a density of 0.7 to 1.0 g/cc (paragraph 21), a shore D hardness of 28 to 75 (paragraph 22), and a thickness of 1.3 to 2.5 mm (paragraph 23).
Therefore, the examiner takes the position that (i) the zeta potential value of -10 mV to 30 mV, (ii) the D50 particle size of the polishing pad debris formed of 30 microns or less, and the polishing rate of 2200 to 2600 Å/min would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/747,451 (reference application) in view of Qian.
Each and every limitation of the claims of the claimed invention is disclosed by the claims of the reference application except for a support layer.
Qian, however, discloses a polishing pad comprising a polishing layer and a support layer (paragraph 25), wherein the polishing layer comprises a urethane-based prepolymer, a chlorine-free aromatic polyamine curing agent, and a chlorine-free microelements corresponding to the claimed foaming agent (abstract). The polishing layer has a content of chlorine of less than 0.1 wt% or 1000 ppm (paragraph 34). The support layer is a compressible base layer to improve conformance of the polishing layer to the surface of the substrate being polished (paragraph 25).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a support layer disclosed in Qian in combination with the polishing layer of the reference application, motivated by the desire to provide dimensional stability while improving conformance of the polishing layer to the surface of the substrate being polished.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/884,117 (reference application) in view of Qian.
Each and every limitation of the claims of the claimed invention is disclosed by the claims of the reference application except for a support layer.
Qian, however, discloses a polishing pad comprising a polishing layer and a support layer (paragraph 25), wherein the polishing layer comprises a urethane-based prepolymer, a chlorine-free aromatic polyamine curing agent, and a chlorine-free microelements corresponding to the claimed foaming agent (abstract). The polishing layer has a content of chlorine of less than 0.1 wt% or 1000 ppm (paragraph 34). The support layer is a compressible base layer to improve conformance of the polishing layer to the surface of the substrate being polished (paragraph 25).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a support layer disclosed in Qian in combination with the polishing layer of the reference application, motivated by the desire to provide dimensional stability while improving conformance of the polishing layer to the surface of the substrate being polished.
Neither the reference application nor Qian discloses (i) a zeta potential value of an aqueous solution of a pH of 5.5 containing debris obtained by conditioning the polishing layer at a concentration of 0.01% by weight is -10 mV to 30 mV, and
(ii) when the polishing pad is conditioned while deionized water is supplied at 300 c/minute under the conditions of a platen speed of 93 rpm, a conditioner load of 9 lbs, a conditioner speed of 64 rpm, and a sweep of 19 times/minute, the D50 particle size of the polishing pad debris formed of 30 microns or less.
However, it appears that the polishing pad of the reference application as modified by Qian meets all structural limitations and chemistry required by the claims.
The resulting polishing pad comprises a polishing layer and a support layer, wherein the polishing layer comprises a urethane-based prepolymer, a chlorine-free curing agent, and a chlorine-free foaming agent. The polishing layer has a content of chlorine of 1 to 100 ppm. The polishing layer has a hardness of 50 to 65 shore D, a tensile strength of 15 to 25 N/mm2, and an elongation of 90 to130%, a polishing rate of 2200 to 2600 Å/min. Therefore, the examiner takes the position that the elements (i) and (ii) discussed above would inherently be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights