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 .
The amendments filed 1/23/26 overcome the rejections set forth under 35 USC 112(b) in the office action mailed 11/6/25, as well as the rejection of claims 11-13 over Slivensky. New grounds of rejection for claims 11-13 have been set forth below. The discussion of the rejections over Ahn has been updated in order to reflect the claim amendments.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/23/26 has been entered.
Claim Rejections - 35 USC § 102
Claims 1-3 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ahn (U.S. PG Pub. No. 2021/0394335).
In paragraphs 24 and 166 Ahn a polishing pad having a polishing layer prepared from a urethane-based prepolymer, a curing agent, and a foaming agent, as recited in claims 1 and 7. In paragraph 176 Ahn discloses that the urethane-based prepolymer can have an isocyanate end group content of 8 to 10% by weight, within the range recited in claim 7. In paragraph 229 Ahn discloses numerous suitable curing agents that are free of chlorine and sulfur, including diethyltoluenediamine (DETDA), as recited in claim 8. In paragraphs 180-212 Ahn discloses that the curing agent can be a solid phase foaming agent, as recited in claim 7, and in paragraph 185 Ahn discloses that the foaming agent can be a solid phase foaming agent comprising a acrylonitrile-based copolymer, a methacrylonitrile-based copolymer, or an acrylic-based copolymer, as recited in claim 8. The foaming agent encapsulated in the copolymer can be various compounds that do not contain chlorine or sulfur.
While Ahn does not specifically disclose the chlorine, iron, sulfur, aluminum, or iron content of a pyrolysis oil obtained by pyrolyzing the polishing layer at 320° C for 6 hours, or the boiling points of such pyrolysis oils, since the polishing layer of Ahn meets the compositional limitations of limitations of the claimed polishing layer, including the specific components recited in claims 7-8, does not require a chlorine- or sulfur-containing curing agent or foaming agent, and also does not require metal, aluminum, or iron components, the pyrolysis oil obtained from the polishing pad of Ahn will meet the limitations of amended claims 1-3 regarding chlorine, iron, aluminum, and iron content. Similarly, the obtained pyrolysis oil will have an initial and final boiling point within the range recited in amended claim 1, although it is noted that the current wording of claim 6 (“the final boiling point may be”) indicates that the final boiling point is optional.
In light of the above, claims 1-3 and 7-8 are anticipated by Ahn.
Claim Rejections - 35 USC § 103
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ahn.
The discussion of Ahn in paragraph 4 above is incorporated here by reference. Ahn discloses a polishing pad meeting the limitations of claim 1, but does not specifically disclose polishing pads having properties within the ranges recited in claims 9-10.
In paragraph 269 Ahn discloses that the polishing pad can have a Shore D hardness of 50 to 65 at 25° C and a tensile strength of 15 to 25 N/mm2, as recited in claim 9, as well as an elongation of 50 to 200%, encompassing the range recited in claim 9. In paragraphs 252-253 Ahn discloses that when a silicon wafer on which a silicon oxide film has been formed is polished using a calcined ceria slurry, the polishing rate is 2,600 to 3,300 Å/min, overlapping the range recited in claim 10.
See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Claims 9-10 are therefore rendered obvious by Ahn.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Timken (U.S. PG Pub. No. 2021/0189249).
In Table 1 (following paragraph 43) Timken discloses a Pyrolysis Sample A, which has chlorine, sulfur, and iron contents within the ranges recited in claim 11, an aluminum content of less than 1.1 ppm, overlapping the range recited in claim 11, and an initial boiling point of about 30.6° C (87° F), within the ranges recited in claim 11. While the final boiling point of Pyrolysis Sample A of Timken is slightly outside the range recited in claim 11, (910° F = about 506° C), the “may be” language of the claim, as opposed to the “is” language regarding the initial boiling point, indicates that the limitation regarding final boiling point is optional. In paragraph 27 Timken more broadly discloses that contaminants need to be removed to less than 50 ppm, falling within or overlapping the ranges recited in claim 11.
While Timken does not disclose that the pyrolysis oils are obtained from polishing layers of the polishing pad of claim 1, claims 11-13 are in product-by-process form, and the patentability of the claims is determined by the product rather than the method of production. See MPEP 2113.
The difference between Timken and the currently presented claims is that some of the ranges of Timken overlap the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); Claims 11-13 are therefore rendered obvious by Timken.
Response to Arguments
Applicant's arguments filed 2/5/26 have been fully considered but they are not persuasive. Applicant argues that the polishing pad of Ahn does not inherently produce pyrolysis oil having the claimed composition of properties. In particular, applicant argues that the polishing pad of the present invention comprises specific solid foaming agents which distinguish the polishing pad over those of Ahn. However, these solid foaming agents are only recited in claim 8; if the they are required components for obtaining a polishing pad meeting the limitations of claim 1, then claim 8 would fail to further limit claim 1. Furthermore, the examiner disagrees with applicant's characterization of Ahn's paragraph 185. Ahn discloses a foaming agent encapsulated inside a shell, where the shell can be various copolymers recited in claim 8. That Ahn discloses these copolymers as a shell in which another foaming agent is encapsulated does not distinguish them from the solid phase foaming agent of claim 8. It is noted that pages 22-23 of the current specification also teach the further inclusion of various liquid phase foaming agents disclosed in paragraph 185 of Ahn. Applicant therefore has not established that the claimed polishing pads, even those of dependent claim 8, are compositionally distinguished from the polishing pad of Ahn.
Regarding claims 11-13, the amendments overcome the rejection set forth over Slivensky in the office action mailed 11/6/25. However, the amended claims are rendered obvious by Timken for the reasons stated in paragraph 6 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771