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 .
Claim Rejections - 35 USC § 102/103
Claims 1-3 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over 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 claim 1. In paragraph 233 Ahn discloses that a silicone-based surfactant, as recited in amended claim 1, can also be included. In 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 8, and in paragraph 185 Ahn discloses that the foaming agent can be a solid phase foaming agent comprising an 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 1 and 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, sulfur, aluminum, and iron. 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 1 (“the final boiling point may be”) indicates that the final boiling point is optional.
Paragraph 237 Ahn discloses that the silicone-containing surfactant can be present in various ranges having a lower bound of 0.2 parts by weight per 100 parts by weight of the raw material mixture; based on the silicon contents observed in Table 2 of the current specification for compositions comprising 1 part by weight of silicone-containing surfactant, even a composition with 0.2 parts by weight of the will lead to a pyrolysis oil having a silicon content within the range recited in claim 1. Claims 1-3 and 7-8 are therefore anticipated by Ahn.
Alternatively, Ahn discloses in paragraph 237 that Ahn discloses that the silicone-containing surfactant be present in an amount of 0.1 to 2.0 parts by weight per 100 parts by weight of the raw material mixture. Based on the silicon contents observed in Table 2 of the current specification for compositions comprising 1 part by weight of silicone-containing surfactant, the pyrolysis oil produced from the polishing pad of Ahn will overlap the range recited in amended claim 1. Claims 1-3 and 7-8 are therefore also rendered obvious 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.
Allowable Subject Matter
Claims 11-13 are allowed. Claim 11 and its dependent claims 12-13 have been amended to require that the pyrolysis oil have a silicon content of 100 to 3000 ppm, and that the pyrolysis oil be obtainable from a polishing layer including specific components including a silicone-based surfactant. Timken, cited in the office action mailed 2/20/26, discloses in Table 1 pyrolysis oil compositions comprising a maximum of 82.5 ppm of silicon, outside the claimed range. Timken does not provide any teaching indicating that the pyrolysis oil compositions of the reference can comprise more than 100 ppm of silicon, and in paragraph 27 discloses that contaminants such as silica should be removed to less than 50 ppm in the waste plastic feedstock for the pyrolysis process. Timken additionally does not indicate that the pyrolysis oil of the reference is obtainable from a composition further comprising a polyurethane resin, foaming agent and curing agent, noting that in paragraph 15 Timken only discloses polyethylene and polypropylene as plastic feedstocks.
Ahn, as discussed in the above rejections, discloses a polishing pad and polishing layer capable of producing a pyrolysis oil having the claimed composition, but there is no motivation for one of ordinary skill in the art to pyrolyze the polishing pad of Ahn to obtain the pyrolysis oil.
Response to Arguments
Applicant's arguments filed 7/20/26 have been fully considered but they are not persuasive. Applicant notes that claim 1 has been amended to recite that the polishing layer of the polishing pad comprises a silicone-based surfactant, and that a pyrolysis oil obtainable from the polishing layer contains 100 to 3000 ppm of silicon. Claim 1 and its dependent claims remain drawn to the polishing pad rather than the pyrolysis oil. Applicant argues that while Ahn discloses silicone-based surfactants, Ahn also discloses that other surfactants can be used, and that the examples of Ahn do not contain a silicone-based surfactant. However, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). Furthermore, Ahn’s disclosure of alternative surfactants does not make Ahn’s disclosure of silicone-based surfactants any less anticipatory.
Applicant does not present separate specific arguments for the obviousness rejection of claims 9-10. It is noted that an alternative obviousness rejection for claims 1-3 and 7-8, necessitated by the amendments, has also been set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
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