90010106 (B.P.A.I. Aug. 31, 2010)

Ex Parte 5921855 et al

Board of Patent Appeals and InterferencesAug 31, 2010

90010106 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/010,106 03/12/2008 5921855 10014-00022 3317 32588 7590 03/17/2011 APPLIED MATERIALS, INC. P. O. BOX 450A SANTA CLARA, CA 95052 EXAMINER ENGLISH, PETER C ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 03/17/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte Applied Materials, Inc., Appellant ____________ Appeal 2010-008122 Reexamination Control 90/010,106 Patent 5,921,855 Technology Center 3900 ____________ Before RICHARD TORCZON, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-008122 Reexamination Control 90/010,106 Patent 5,921,855 2 STATEMENT OF THE CASE Appellant requests that we reconsider the Board’s Decision of August 31, 2010 (hereinafter “Decision”) in which we affirmed the Examiner’s rejection of claims 1, 3, 5, 7, 9, 10, 13, 15-23, 25-29, 33, 34, and 37-42 under 35 U.S.C. § 103(a) as obvious over Weling2 in view of Talieh3 and Breivogel4 and claims 11, 12, 24, 30-32, 35, and 36 under 35 U.S.C. § 103(a) as obvious over Weling in view of Talieh and Breivogel, and further in view of Glass Polishing Pads.5 See Appellant’s Request for Rehearing (hereinafter “Req. for Reh’g”), filed October 29, 2010, Appellant contends that the Board misapprehended or overlooked: (1) Appellant’s argument that Weling teaches away; and (2) Appellant’s arguments and evidence regarding the commercial success of the claimed product. (Req. for Reh’g 4.) ANALYSIS 1. Appellant’s Teaching Away Argument Appellant contends that the Board misapprehended that Weling’s teaching is merely that perforations are to be avoided in favor of grooves, rather than the additional teaching that deeper features should be avoided relative to shallower features. (Req. for Reh’g 5-6.) Appellant argues that 2 “Improving CMP Performance Using Grooved Polishing Pads,” CMP-MIC Conference held Feb. 22-23, pp. 40-46 (1996). 3 EP 0 674 972 A1, published Oct. 04, 1995. 4 JP H5-146969 A, published June 15, 1993 (English translation of record). 5 Product Brochure entitled “Glass Polishing Pads,” Rodel, Inc., 2 pages (Dec. 1991). Appeal 2010-008122 Reexamination Control 90/010,106 Patent 5,921,855 3 the same technical reasoning for favoring a shallow feature applies to both grooves and perforations, and further contends that in reaching our decision, we presumed that the reasoning for grooved pads and perforated pads must be different. (Req. for Reh’g 6.) We have reviewed our decision in light of Appellant’s arguments, but are not persuaded that we misapprehended Weling’s disclosure. Specifically, as we found in the Decision, Weling’s comparison of the ease of rinsing shallow grooves is relative to perforated pads. (Decision, p. 8, FF 4.) Moreover, as we stated in the Decision: “Weling does not criticize or otherwise disparage the use of deeper grooves.” (Decision, p. 15.) In other words, although Weling discloses that rinsing shallow grooves is easier than rinsing perforations, Weling does not disclose that deeper grooves may not be satisfactorily rinsed or would be incapable of functioning in the disclosed pads. Thus, we disagree with Appellant that Weling contains an additional teaching that deeper grooves are to be avoided. Accordingly, we did not misapprehend Weling’s disclosure vis-à-vis teaching away from deeper grooves. 2. Appellant’s Commercial Success Arguments Appellant contends that the Board incorrectly assumed that the IC- 1000 pads are covered by the instant claims, and the Board’s point that a nexus between the claimed features and the alleged commercial success is lacking because customers need to purchase one of the IC-1000 or IC-1010 pads in order to secure a guarantee only makes sense if both the IC-1000 and IC-1010 pads share the claimed features. (Req. for Reh’g 9-10.) Appellant Appeal 2010-008122 Reexamination Control 90/010,106 Patent 5,921,855 4 also contends that the Board misapprehended and unfairly dismissed the quality of the market share evidence provided by Appellant. (Req. for Reh’g 10.) Specifically, Appellant contends that because Appellant did not historically sell polishing pads directly, it would follow that Appellant would not have exact sales information. (Req. for Reh’g 10.) However, Appellant argues that even if the ranges disclosed for the market share information are resolved against Appellant, the disclosed ranges are large enough and over a sufficient period of time to demonstrate commercial success. (Req. for Reh’g 10.) We have reviewed the Decision in light of Appellant’s arguments, but we are not persuaded that we misapprehended the evidence of commercial success presented by Appellant. Initially, we disagree with Appellant that an insufficient nexus between the claimed features and the alleged commercial success only makes sense if both the IC-1000 and IC-1010 pads are covered by the claims. As we stated in the Decision (p. 19): although customers may have had a choice of polishing pads, other than the IC-1000 and IC-1010 pads, to use with Appellant’s polishing machines, the guaranteed performance of the polishing machines is dependent on using either the IC- 1000 or the IC-1010 polishing pad. This is an economic or commercial factor unrelated to the quality of the claimed subject matter, which may have contributed to the commercial success of the IC-1010 pad, and weighs against Appellant’s position that the commercial success is due to the claimed features of the polishing pads. Although we acknowledged that both the IC-1000 and IC-1010 pads were related to the guarantee offered by Appellant, we expressly stated it was the commercial success of the IC-1010 pad that we considered. Appeal 2010-008122 Reexamination Control 90/010,106 Patent 5,921,855 5 Regardless of whether the IC-1000 pad was also subject to the guarantee, the guarantee as related to the IC-1010 pad itself is an economic or commercial factor unrelated to the quality of the claimed subject matter. Thus, there was a reason to have used the IC-1010 pad which was unrelated to any feature recited in the claims. We also do not agree with Appellant that because customers had a choice between the IC-1000 and IC-1010 pad in order to secure the guarantee, and the IC-1010 pad was about twice as expensive and only lasted 1.3 to 1.6 times as long, the increase in market share from 0 to 50% demonstrates the commercial success is related to the recited features. (Req. for Reh’g 9-10.) As discussed further below, there is insufficient market share data to support Appellant’s claim. Accordingly, there is insufficient evidence on the record to support Appellant’s argument. Regarding Appellant’s second contention, that the Board misapprehended and unfairly dismissed the quality of the market share evidence provided by Appellant. (Req. for Reh’g 10.) We are not persuaded. Appellant’s admission that it does not have exact sales information regarding the market share of the IC-1010 pad highlights underscores the deficiencies in Appellant’s evidence of commercial success. Without specific sales information regarding the IC-1010 pad in the relevant market, Appellant’s evidence of commercial success range data is not sufficient to outweigh the evidence of obviousness as presented by the Examiner. (See Decision, p. 20.) In this regard, we decline Appellant’s invitation to construe the vague 20% ranges present in the record as being sufficient to define the market share of the IC-2010 pad. Appeal 2010-008122 Reexamination Control 90/010,106 Patent 5,921,855 6 CONCLUSION Based on the analysis above, we discern no error in our conclusion that Weling does not teach away from employing deeper grooves and that Appellant’s evidence of commercial success was insufficient to outweigh the Examiner’s evidence of obviousness. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED cu FOR PATENT OWNER: APPLIED MATERIALS, INC. P.O. BOX 450A SANTA CLARA, CA 95052 FOR THIRD-PARTY REQUESTER: MORGAN S. HELLER, II DOWNS RACHLIN MARTIN, PLLC 199 MAIN STREET P.O. BOX 190 BURLINGTON, VT 05402-0190