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 .
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 1-11 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 15-19 of copending Application No. 18/691,155 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of copending Application No. 18/691,155 encompass or include that which is recited in the present patent application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, copending Application No. 18/691,155 discloses a polishing pad comprising a polishing layer that is a molded body of a polyurethane composition, wherein the polyurethane composition contains 90 to 99.9 mass% of a thermoplastic polyurethane including a non-alicyclic diisocyanate unit as an organic diisocyanate unit, and 0.1 to 10 mass% of a hygroscopic polymer having a moisture absorption rate of 0.1% or more, and wherein a content ratio of the non-alicyclic diisocyanate unit contained in a total amount of the organic diisocyanate units contained in the thermoplastic polyurethane is 90 to 100 mol% (claim 1).
Copending Application No. 18/691,155 teaches the molded body having a D hardness of 60 or more and less than 75, as measured with a type-D durometer compliant with JIS K 7215 for a load holding time of 5 seconds (claim 1), but fails to specifically teach the molded body having a D hardness of 75 to 90.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the D hardness in copending Application No. 18/691,155 to be in the range of 75 to 90, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05 (II).
Regarding claim 2, copending Application No. 18/691,155 discloses wherein the thermoplastic polyurethane includes, in a total amount of the organic diisocyanate unit, 90 to
100 mol% of 4,4'-diphenylmethane diisocyanate unit serving as the non-alicyclic diisocyanate unit (claim 2).
Regarding claim 3, copending Application No. 18/691,155 discloses wherein the polyurethane composition contains 99 to 99.9 mass% of the thermoplastic polyurethane, and 0.1 to 1 mass% of the hygroscopic polymer (claim 3).
Regarding claim 4, copending Application No. 18/691,155 discloses wherein the hygroscopic polymer includes at least one selected from the group consisting of a polyethylene oxide (PEO), a polypropylene oxide (PPO), a PEO-PPO copolymer, a PEO-PPO block copolymer, and a polyester-based thermoplastic elastomer (TPEE) (claim 4).
Regarding claim 5, copending Application No. 18/691,155 discloses wherein the molded body has a saturated swollen state-breaking elongation of 50 to 250% when swollen to saturation with water at 50°C (claim 6).
Regarding claim 6, copending Application No. 18/691,155 discloses wherein the molded body has a dry state-breaking elongation of 0.1 to 10% at a humidity of 48 RH% and 23°C (claim 7).
Regarding claim 7, copending Application No. 18/691,155 discloses wherein the molded body has a ratio S₁/S₂ of 1.0 to 2.0, where S₁ represents the saturated swollen state-breaking elongation and S₂ represents the dry state-breaking elongation (claim 8), but fails to teach a ratio S₁/S₂ of 20 to 50. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ratio S1/S2 in copending Application No. 18/691,155 to be in the range of 20 to 50, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05 (II).
Regarding claim 8, copending Application No. 18/691,155 discloses wherein the molded body, in a form of a sheet having a thickness of 0.5 mm, has a laser light transmittance of 60% or more for 550-nm wavelength when swollen to saturation with water at 50°C (claim 9).
Regarding claim 9, copending Application No. 18/691,155 discloses wherein the molded body has a Vickers hardness of 5 or more and less than 21 (claim 10), but fails to specifically teach a Vickers hardness of 21 or more. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Vickers hardness in copending Application No. 18/691,155 to be 21 or more, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05 (II).
Regarding claim 10, copending Application No. 18/691,155 discloses wherein the molded body has a storage modulus of 0.1 to 1.0 GPa when swollen to saturation with water at 50°C (claim 11).
Regarding claim 11, copending Application No. 18/691,155 discloses wherein the molded body is an unfoamed molded body (claim 12).
Regarding claim 14, copending Application No. 18/691,155 discloses wherein a content ratio of the non-alicyclic diisocyanate unit contained in a total amount of the organic diisocyanate units contained in the thermoplastic polyurethane is 95 to 100 mol% (claim 15).
Regarding claim 15, copending Application No. 18/691,155 discloses wherein a content ratio of the non-alicyclic diisocyanate unit contained in a total amount of the organic diisocyanate units contained in the thermoplastic polyurethane is 95 to 100 mol% (claim 16).
Regarding claim 16, copending Application No. 18/691,155 discloses wherein a content ratio of the non-alicyclic diisocyanate unit contained in a total amount of the organic diisocyanate units contained in the thermoplastic polyurethane is 100 mol% (claim 17).
Regarding claim 17, copending Application No. 18/691,155 discloses wherein a content ratio of the non-alicyclic diisocyanate unit contained in a total amount of the organic diisocyanate units contained in the thermoplastic polyurethane is 100 mol% (claim 18).
Regarding claim 18, copending Application No. 18/691,155 discloses wherein the hygroscopic polymer has a weight-average molecular weight of 5,000 to 10,000,000 (claim 19).
Regarding claim 19, copending Application No. 18/691,155 discloses wherein a content ratio of nitrogen atoms derived from isocyanate groups in the thermoplastic polyurethane is 4.5 to 7.5 mass% (claim 1).
Response to Arguments
Applicant’s arguments, see pages 7-10, filed 7/16/2026, with respect to the 35 U.S.C. 103 rejection of claims 1-18 as being unpatentable over Maekawa et al. have been fully considered and are persuasive. Therefore, the 103 rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of copending Application No. 18/691,155, which is presented above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
