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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 03 April 2026, with respect to the rejection(s) of claim(s) 1-14 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Li et al. (US Serial No. 2013/0012108), in view of Tsai et al. (US Serial No. 2022/0119586).
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US Serial No. 2013/0012108), in view of Tsai et al. (US Serial No. 2022/0119586).
Regarding claim 1-3, 5-6, and 14; Li et al. teaches a polishing pad comprising a (meth)acrylate-modified polyfunctional isocyanate material having at least two (meth)acrylate modified isocyanate groups (e.g. reaction product of a polyurethane prepolymer and a (meth)acrylate having OH or amino group(s)) [0101], a photoinitiator [0105]; further comprising a second resin having at least two groups, such as amino groups (thermal curative) [0067-0069, 0093].
Li et al. fails to teach the composition further comprising on or more acrylate monomers. Tsai et al. teaches curable resin formulations for forming a polishing pad comprising or more blocked isocyanates (acrylate urethane oligomer), one or more acrylate monomers, such as isobornyl methacrylate, 2-carboxyethyl acrylate, and ethylene glycol dimethacrylate [0029], and a photoinitiator [abs; 0034]. Li et al. and Tsai et al. are analogous art because they are both concerned with the same field of endeavor, namely curable resin formulations suitable in the production of polishing pads. At the time of filing, a person of ordinary skill in the art would have found it obvious to add an acrylate monomer, such as isobornyl methacrylate, as taught by Tsai et al., to the formulation of Li et al., and would have been motivated to do so in order to achieve a desired viscosity of the curable resin, as suggested by Tsai et al. [0029].
Regarding claim 4; Li et al. teaches suitable photoinitiators include, for example, diphenyl (2,4,6-trimethylbenzoyl) phosphine oxide [0105].
Regarding claim 7; Li et al. teaches suitable monomers for capping said isocyanate/urethane include 2-hydroxyethylacrylate [0102], however fails to teach 2-(tert-butylamino)ethyl methacrylate. Tsai et al. teaches compounds used for blocking isocyanate/urethane compounds include 2-hydroxyethyl acrylate and 2-(tert-butylamino) ethyl methacrylate [0028]. Therefore, Tsai et al. teaches that 2-hydroxyethyl acrylate and 2-(tert-butylamino) ethyl methacrylate are functional equivalents for the purpose of blocking isocyanate/urethane compounds for use in formulations in producing polishing pads. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Regarding claims 8-9; Li et al. teaches the polyurethane can be prepared from aliphatic isocyanates, aromatic isocyanates, and combinations thereof [0023, 0054, 0057-0058].
Regarding claims 10-12; the references do not explicitly disclose the formulation having a pot life of greater than 9, 11, and 12 hours. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. According to the original specification, a pot life may be altered by altering an aliphatic/aromatic ratio of the acrylate-capped oligomers; specifically, a formulation having the aliphatic/aromatic ratio of 60/40 has a pot life of greater than 12 hours [0045]. Therefore, the claimed effects and physical properties, i.e. pot life, would necessarily be present in a formulation with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claim 13; the prior art of record does not explicitly disclose wherein one or more acrylate-capped oligomers comprises a mixture of a deblockable acrylate capped aromatic urethane oligomer and a deblockable acrylate capped aliphatic urethane oligomer having an aliphatic/aromatic ratio of at least 55/45. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to optimize the aliphatic/aromatic ratio of at least 55/45, and would have been motivated to do so based on the desired properties of the formulation (i.e. rigidity/flexibility). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05.
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.
Claim 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 8-10 of copending Application No. 18/210422 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to the same art specific subject matter, namely a composition for preparing a chemical-mechanical polishing pad. The essential different between the instant application and the copending application is that copending application further requires a molar ratio of the first component and the second component to be 1:0.6 to 1:0.8. A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990); MPEP 2131.02(II).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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