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 .
DETAILED ACTION
Priority
The Examiner recognizes Foreign Priority to JP2022-051452, with a filing date of 03/28/2022.
Information Disclosure Statement (IDS)
The information disclosure statements (IDS) submitted on 04/03/2026 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner. Please refer to applicant’s copy of the 1449 herewith.
Election/Restrictions
Applicant’s election without traverse of claims 1-7, 12-15, and 17 in the reply filed on 02/25/2026 is acknowledged. Claims 8-11, and 16 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a process of using a product, there being no allowable generic or linking claim. Election was made without traverse in reply filed on 02/25/2026.
Claim Interpretations
Regarding Claim 3, 4, 12, 13 – the Examiner understands,
“a pressing amount” to mean a distance or, as pressing is a variant of pressure, some level of pressure as a pressing amount defined by a distance would require a level of pressure to do so.
Examiner Note: A method is defined as a series of actions (MPEP 2106 (I), i.e., “processes…defines “actions”; inventions that consist of a series of steps or acts to be performed). Thus, since methods are defined by actions, the method is given weight only to the extent that it impacts the method in a manipulative sense. See Ex parte Pfeiffer, 135 USPQ 31, noting “recited structural limitations must affect method in manipulative sense and not amount to mere claiming of a use of a particular structure”. Listed below are structural limitations:
Regarding Claim 6 – “the surface after the second polishing process has no needle-like silicon nitride crystal particles, and has no recesses of 40 μm or more in depth” is merely a structural outcome of the method.
Regarding Claims 7, 15 – “a warp amount of the boron nitride plate after the second polishing process is not more than 0.1 mm, and a maximum height roughness Rz of the boron nitride plate after the second polishing process is not more than 40 μm”, is merely a structural outcome of the method.
Claim Objections
The below are in the form read/Examiner suggestion:
Regarding Claim 1 and 17 –polishing the surface by using a second polishing member/ polishing the surface of the boron nitride plate by using a second polishing member
Regarding Claim 6 – the surface after the second polishing process / the surface of the boron nitride plate after the second polishing process.
Regarding Claim 17 – preparing the boron nitride plate/ preparing
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 1-2, 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2021010478A1
(English language translation of the Description and provided herewith and referenced herein) by
Amemiya et. al. (herein “Amemiya”) and in further view of CN102198610B (English language
translation of the Description and provided herewith and referenced herein) by Qun (herein “Qun”).
Regarding Claim 1, Amemiya teaches,
a boron nitride plate surface treatment method; line 560, “The surface of the cBN (cubic boron
nitride as cited in lines 16-17) sintered body is polished…”
comprising:
a first polishing process of polishing a surface of a boron nitride plate by using a first polishing
member having a grit within a range of not less than F120 and not more than F220 or
within a range of not less than #240 and not more than #320;
and a second polishing process of polishing the surface by using a second polishing member
having a grit within a range of not less than #360 and not more than #1000 after the first
polishing process;
Line 616-617, “After processing the cubic nitride sintered body with a flat surface polishing
machine, mirror surface polishing is performed with a mirror surface polishing device…”.
While Amemiya discloses the sintered body is polished in order with polishing cloths having a count of
of # 140, # 400, # 600, # 1000, # 1500, and # 2000 (grit #) (lines 560-561) , Amemiya fails to disclose the
grit # for each the first polishing process and the second polishing process, such that,
a first polishing process of polishing a surface of a boron nitride plate by using a first polishing
member having a grit within a range of not less than F120 and not more than F220 or
within a range of not less than #240 and not more than #320;
and a second polishing process of polishing the surface by using a second polishing member
having a grit within a range of not less than #360 and not more than #1000 after the first
polishing process;
In an analogous endeavor of polishing structural and functional ceramics (line 15; boron nitride is
considered a structural ceramic) ), Qun teaches multiple sequential polishing processes for ceramic
complex surfaces . Further, Qun discloses Step 1 of polishing using a coarse grain abrasive cloth or
sandpaper of 200-300 # (line 78-79) along with W3.5-W.10 abrasives (3.5-10um abrasive particles) and
Step 2 of polishing using a medium- fined grained abrasive cloth or sandpaper of 400-600 # (lines 82-83)
with W3.5-W.10 abrasives.
Qun discloses the claimed invention except for use on a boron nitride substrate. It would have been
obvious to one having ordinary skill in the art at the time of the effective filing date of the claimed
invention to use the polishing method of Qun for the polishing method of Amemiya, as one would be
motivated to do so for the purposes of the having the sandpapers act as an abrasive storage space
during polishing, where in the first polishing step the friction is large and the roughness is lowered
quickly and where in the second polishing step the result provides a surface that is smoother, as noted
by Qun (lines 104, 121, 127).
Regarding Claim 2– Amemiya and Qun in the rejection of claim 1 above teach all of the
limitations of claim 1.
While Amemiya teaches the sintered body is polished with a polishing cloth (line 560), Amemiya does
not disclose, specifically,
the first polishing member and the second polishing member are abrasive papers;
Qun teaches abrasive papers for the first polishing member (line 78-79) and the second polishing
member (lines 82-83).
Further, abrasive polishing paper (sandpaper) is common in the grinding and polishing art. A person of
ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of innovation but of ordinary skill and common
sense. KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
Regarding Claim 5 – Amemiya and Qun in the rejection of claim 2 above teach all of the
limitations of claim 2.
Amemiya further teaches wherein,
a processing point speed in the first polishing process is faster than a processing point speed in
the second polishing process;
It would be obvious to PHOSITA that in a two-step process the first step can be performed at
faster speeds, the same speed, or slower speed than the second step. One would have chosen
to try a faster speed in the first step to more efficiently and expediently remove heavier surface
defects, such as pits/scratches/indentations that are typically present in a sintered ceramic
body.KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Regarding Claim 6 – Amemiya and Qun in the rejection of claim 1 above teach all of the
limitations of claim 1.
Amemiya further teaches wherein,
the surface after the second polishing process has no needle-like silicon nitride crystal particles,
and has no recesses of 40 μm or more in depth. The instant claim is directed to a structural
limitation; See Claim Interpretations. See MPEP 2112.01 - Where the claimed and prior art
products are produced by identical or substantially identical processes, a prima facie case of
either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977).
Regarding Claim 7 – Amemiya and Qun in the rejection of claim 1 above teach all of the
limitations of claim 1.
Amemiya further teaches wherein,
a warp amount of the boron nitride plate after the second polishing process is not more than 0.1
mm,
and a maximum height roughness Rz of the boron nitride plate after the second polishing
process is not more than 40 μm. The instant claim is directed to a structural
limitation; See Claim Interpretations. See MPEP 2112.01 - Where the claimed and prior art
products are produced by identical or substantially identical processes, a prima facie case of
either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977).
Claims 3, 4, 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Amemiya et. al. and in further view of Qun and in further view of U.S. Patent 5,791,969 by Lund (herein
“Lund”).
Regarding Claim 3– Amemiya and Qun in the rejection of claim 1 above teach all of the
limitations of claim 1.
While Qun discloses process parameters (time, lines 78, 85) and cites that pressure needs to be large or
cut (small) , the combination fails to disclose,
in the first polishing process, a pressing amount of the first polishing member is not less than 0.2
mm and not more than 1.0 mm,
and a processing point speed is not less than 80 mm/s and not more than 180 mm/s.
In an analogous endeavor of polishing a single side of a semiconductor wafer (Col 3 lines 47-55) (wafers
made of hard materials like silicon, silica, carbides and sapphire where cBN is a hard material), Lund
teaches the use abrasive tape that can have a flexible backing of paper (Col 5 line 67, Col 6 line 1) that is
fed over a load roller ( Col 6 lines 17-18). The tape is fed at a rate of 7 inches/min ( 3mm/s). Further,
when the load roller is compressed against the wafer the compression of the roller is 1/10th of an inch
(2.54mm). Further, the user can program into the device tape speed and load roller force ( to compress
the nip roller) (Col 10 lines 27-28). Lund discloses the claimed invention except for the claimed ranges
for tape speed and the pressing amount on a boron nitride substrate in a first polishing process. It
would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the
claimed invention to optimize the parameters of tape speed and pressing amount for a semiconductor
wafer from the process of Lund in the first polishing process of the combination for boron nitride, as one
would be motivated to do so for the purposes of supporting polishing the surface to achieve a more
uniform accurate thickness regardless of the surface hardness, as noted by Lund (Col 3 lines 17-18).
Regarding Claim 4– Amemiya and Qun in the rejection of claim 1 above teach all of the
limitations of claim 1.
While Qun discloses process parameters (time, lines 78, 85) and cites that pressure needs to be large or
cut (small) , the combination fails to disclose,
in the second polishing process, a pressing amount of the second polishing member is not less
than 0.2 mm and not more than 1.0 mm, and a processing point speed is not less than 20 mm/s
and not more than 100 mm/s;
Lund teaches the same elements as described in Claim 3. Lund discloses the claimed invention except
for the claimed ranges for tape speed and the pressing amount on a boron nitride substrate in a second
polishing process. It would have been obvious to one of ordinary skill in the art at the time of the
effective filing date of the claimed invention to optimize the parameters of tape speed and pressing
amount for a semiconductor wafer from the process of Lund in the second polishing process of the
combination for cBN, as one would be motivated to do so for the purposes of supporting polishing the
surface to achieve a more uniform accurate thickness regardless of the surface hardness, as noted by
Lund (Col 3 lines 17-18).
Regarding Claim 12 – Amemiya and Qun in the rejection of claim 1 above teaches all of the
limitations of claim 1.
While Amemiya teaches the sintered body is polished with a polishing cloth (line 560), Amemiya does
not disclose, specifically,
the first polishing member and the second polishing member are abrasive papers;
Qun teaches abrasive papers for the first polishing member (line 78-79) and the second polishing
member (lines 82-83).
Further, abrasive polishing paper (sandpaper) is common in the grinding and polishing art. A person of
ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of innovation but of ordinary skill and common
sense. KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
While Qun discloses process parameters (time, lines 78, 85) and cites that pressure needs to be large or
cut (small) , the combination fails to disclose,
and in the first polishing process, a pressing amount of the first polishing member is not less
than 0.2 mm and not more than 1.0 mm;
and a processing point speed is not less than 80 mm/s and not more than 180 mm/s.
Lund teaches polishing a single side of a semiconductor wafer (Col 3 lines 47-55) (wafers
made of hard materials like silicon, silica, carbides and sapphire where cBN is a hard material). Further,
Lund teaches the use abrasive tape that can have a flexible backing of paper (Col 5 line 67, Col 6 line 1)
that is fed over a load roller ( Col 6 lines 17-18). The tape is fed at a rate of 7 inches/min ( 3mm/s).
Further, when the load roller is compressed against the wafer the compression of the roller is 1/10th of
an inch (2.54mm). Further, the user can program into the device tape speed and load roller force ( to
compress the nip roller) (Col 10 lines 27-28). Lund discloses the claimed invention except for the
claimed ranges for tape speed and the pressing amount on a boron nitride substrate in a first polishing
process. It would have been obvious to one of ordinary skill in the art at the time of the effective filing
date of the claimed invention to optimize the parameters of tape speed and pressing amount for a
semiconductor wafer from the process of Lund in the first polishing process of the combination for cBN,
as one would be motivated to do so for the purposes of supporting polishing the surface to achieve a
more uniform accurate thickness regardless of the surface hardness, as noted by Lund (Col 3 lines 17-
18).
Regarding Claim 13 – Amemiya, Qun and Lund in the rejection of claim 12 above teaches all of the
limitations of claim 12.
While Qun discloses process parameters (time, lines 78, 85) and cites that pressure needs to be large or
cut (small) , the combination fails to disclose,
in the second polishing process, a pressing amount of the second polishing member is not less
than 0.2 mm and not more than 1.0 mm;
and a processing point speed is not less than 20 mm/s and not more than 100 mm/s;
Lund teaches the same elements as described in Claim 12. Lund discloses the claimed invention except
for the claimed ranges for tape speed and the pressing amount on a boron nitride substrate in a second
polishing process. It would have been obvious to one of ordinary skill in the art at the time of the
effective filing date of the claimed invention to optimize the parameters of tape speed and pressing
amount for a semiconductor wafer from the process of Lund in the second polishing process of the
combination for boron nitride, as one would be motivated to do so for the purposes of supporting
polishing the surface to achieve a more uniform accurate thickness regardless of the surface hardness,
as noted by Lund (Col 3 lines 17-18).
Regarding Claim 14 – Amemiya, Qun and Lund in the rejection of claim 13 above teaches all of the
limitations of claim 13.
Amemiya further teaches wherein,
a processing point speed in the first polishing process is faster than a processing point speed in
the second polishing process; ; A PHOSITA would know the first polishing process speed can be
faster than subsequent/second polishing process speeds due to the common in the art use of
grit sizes that change from coarse to fine (relative) in sequential polishing processes. The coarse
grit is used at greater polishing speeds to remove more material, relative to subsequent/second
polishing process speeds that use finer grit to remove less material. The combination of familiar
elements according to known methods is likely to be obvious when it does no more than yield
predictable results. KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Regarding Claim 15 – Amemiya, Qun and Lund in the rejection of claim 14 above teaches all of the
limitations of claim 14.
Amemiya further teaches wherein,
a warp amount of the boron nitride plate after the second polishing process is not more than 0.1
mm,
and a maximum height roughness Rz of the boron nitride plate after the second polishing
process is not more than 40 μm. . The instant claim is directed to a structural
limitations ; See Claim Interpretations. See MPEP 2112.01 - Where the claimed and prior art
products are produced by identical or substantially identical processes, a prima facie case of
either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977).
Claim 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2021010478A1
(English language translation of the Description and provided herewith and referenced herein) by
Amemiya et. al. (herein “Amemiya”) and in further view of CN102198610B (English language
translation of the Description and provided herewith and referenced herein) by Qun (herein “Qun”).
Regarding Claim 17 – Amemiya teaches a method for producing a boron nitride plate, the method
comprising:
preparing the boron nitride plate made of a boron nitride sintered body; line 616, “After
processing the cubic boron nitride sintered body with a flat surface polishing machine…”. Here,
preparing is the polishing, and a flat surface polishing machine, by inference, prepares a plate
shape.
a first polishing process of polishing a surface of a boron nitride plate by using a first polishing
member having a grit within a range of not less than F120 and not more than F220 or
within a range of not less than #240 and not more than #320;
and a second polishing process of polishing the surface by using a second polishing member
having a grit within a range of not less than #360 and not more than #1000 after the first
polishing process;
Line 616-617, “After processing the cubic nitride sintered body with a flat surface polishing
machine, mirror surface polishing is performed with a mirror surface polishing device…”.
While Amemiya discloses the sintered body is polished in order with polishing cloths having a count of
of # 140, # 400, # 600, # 1000, # 1500, and # 2000 (grit #) (lines 560-561) , Amemiya fails to disclose the
grit # for each the first polishing process and the second polishing process, such that,
a first polishing process of polishing a surface of a boron nitride plate by using a first polishing
member having a grit within a range of not less than F120 and not more than F220 or
within a range of not less than #240 and not more than #320;
and a second polishing process of polishing the surface by using a second polishing member
having a grit within a range of not less than #360 and not more than #1000 after the first
polishing process;
In an analogous endeavor of polishing structural and functional ceramics (line 15; boron nitride is
considered a structural ceramic) ), Qun teaches multiple sequential polishing processes for ceramic
complex surfaces . Further, Qun discloses Step 1 of polishing using a coarse grain abrasive cloth or
sandpaper of 200-300 # (line 78-79) along with W3.5-W.10 abrasives (3.5-10um abrasive particles) and
Step 2 of polishing using a medium- fined grained abrasive cloth or sandpaper of 400-600 # (lines 82-83)
with W3.5-W.10 abrasives.
Qun discloses the claimed invention except for use on a boron nitride substrate. It would have been
obvious to one having ordinary skill in the art at the time of the effective filing date of the claimed
invention to use the polishing method of Qun for the polishing method of Amemiya, as one would be
motivated to do so for the purposes of the having the sandpapers act as an abrasive storage space
during polishing, where in the first polishing step the friction is large and the roughness is lowered
quickly and where in the second polishing step the result provides a surface that is smoother, as noted
by Qun (lines 104, 121, 127).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER PAUL DAIGLER whose telephone number is (571)272-1066. The examiner can normally be reached Monday-Friday 7:30-4:30 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached on 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER PAUL DAIGLER/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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