Ex Parte Benner

Patent Trial and Appeal Board

May 28, 2013

11800257 (P.T.A.B. May. 28, 2013)

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.
11/800,257 05/03/2007 Stephen J. Benner 4DIV 8646
7590 05/28/2013
Wendy W. Koba, Esq.
PO Box 556
Springtown, PA 18081
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
05/28/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte STEPHEN F. BENNER 7
___________ 8
9
Appeal 2011-003838 10
Application 11/800,257 11
Technology Center 3700 12
___________ 13
14
15
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and 16
THOMAS F. SMEGAL, Administrative Patent Judges. 17
18
SMEGAL, Administrative Patent Judge. 19
20
DECISION ON APPEAL 21
22
STATEMENT OF THE CASE1 23
Stephen F. Benner (Appellant) seeks review under 35 U.S.C. § 134 of a 24
final rejection of claims 5-8, the only claims pending in the application on 25
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 26
The Appellant invented an improved end effector arm configuration 27
for use in chemical mechanical planarization (Specification, para. [0002]). 28

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed March 17, 2010) and the Examiner’s Answer (“Ans.,” mailed
June 9, 2010).
Appeal 2011-003838
Application 11/800,257

2

An understanding of the invention can be derived from a reading of 1
exemplary claim 5, which is reproduced below. 2
3
5. A method for controlling the 4
application of an abrasive conditioning disk to a 5
polishing pad in a CMP conditioning system such 6
that variable and controllable downforce, including 7
zero downforce, is applied to the conditioning 8
disk, the method comprising the steps of: 9
engaging a pressure-controlled actuator 10
mechanism to control movement of an end effector 11
arm, wherein said actuator mechanism further 12
comprises a piston and a cylinder for housing the 13
piston, the positioning defining an upper actuator 14
chamber above the piston and a lower actuator 15
chamber below the piston; 16
adjusting the atmospheric pressure within 17
the upper and lower actuator chambers to 18
effectuate the movement of the piston within the 19
cylinder; and 20
forming the piston of a graphite material and 21
the cylinder of a glass material to overcome an 22
initial static friction force as the piston is moved 23
within the cylinder. 24
25
The Examiner relies upon the following prior art: 26
Friedline US 3,725,949 Apr. 3. 1973
Tobin US 6,517,414 B1 Feb. 11, 2003
27
REJECTION ON APPEAL 28
29
Claims 5-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 30
Tobin in view of Friedline. 31
Appeal 2011-003838
Application 11/800,257

3

ISSUE 1
The issue on appeal is whether the Examiner failed to substantiate that 2
claims 5-8 are unpatentable over the combination of Tobin in view of 3
Friedline. 4
5
FINDINGS OF FACT 6
We find that the findings of fact, which appear in the Analysis below, 7
are supported by at least a preponderance of the evidence. Ethicon, Inc. v. 8
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 9
evidentiary standard for proceedings before the Office). 10
11
ANALYSIS 12
The rejection of claims 5-8 under 35 U.S.C. § 103(a) as being unpatentable 13
over Tobin in view of Friedline. 14
Appellant argues claims 5-8 as a group (App. Br. 4). We select claim 5 15
as the representative claim for this group and the remaining claims stand or 16
fall with claim 5. 37 C.F.R. § 41.37 (c) (1) (vii) (2011). 17
We are not persuaded by Appellant’s arguments (App. Br. 4-6) that the 18
Examiner failed to establish a prima facie showing of obviousness in 19
rejecting claims 5-8 over the combination of Tobin and Friedline. In 20
particular, Appellant argues that claim 5 recites a pneumatic actuator to 21
control the movement of the conditioner head in a CMP system while Tobin 22
teaches a mechanical actuator to control the same movement. Appellant 23
concedes that Friedline discloses a pneumatic actuator formed of a graphite 24
piston and a glass cylinder. However, Appellant contends that “[w]ithout the 25
presence of ‘friction’ in Tobin et al., there is no need to include the 26
pneumatic actuator mechanism of Friedline et al.” (App. Br. 5). 27
Appeal 2011-003838
Application 11/800,257

4

We agree with the Examiner that “just because Tobin uses bearings 1
within the piston/cylinder arrangement, this does not mean that there is no 2
friction problem” (Ans. 4). Furthermore, as the Examiner further points out 3
at pages 4-5 of the Answer, “[b]ecause bearings are used to reduce friction 4
does not mean it is the most frictionless design available or reduces friction 5
altogether.” Still further, the Examiner correctly observes that “Friedline 6
teaches that a glass cylinder and graphite piston improve tolerances and 7
reduces friction to a minimum, increasing response time to the changes in 8
pressure” (Ans. 5). 9
While Appellant acknowledges that Tobin “explicitly refers to a ‘load 10
sensor 310’ which is formed of a glass cylinder with a graphite shaft,” Tobin 11
also teaches that the “[u]se of a glass cylinder with a graphite shaft provides 12
a frictionless movement so that the force sensed by the load sensor 310 will 13
accurately reflect the down force exerted by the arm 132. Effects, such as 14
stiction, may therefore be avoided.” Column 11, ll. 58-62. 15
Appellant also argues that their use “of the specific glass and graphite 16
combination of piston and cylinder elements of the arrangement of the 17
present invention eliminates the possibility of a created moment impacting 18
the movement of the piston” (App. Br. 5). We agree with the Examiner that 19
the argument is “moot” as it is not germane to any limitation recited by 20
claim 5 (Ans. Br. 5). 21
“Section 103 forbids issuance of a patent when ‘the differences between 22
the subject matter sought to be patented and the prior art are such that the 23
subject matter as a whole would have been obvious at the time the invention 24
was made to a person having ordinary skill in the art to which said subject 25
matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 26
Appeal 2011-003838
Application 11/800,257

5

The question before us is whether the substitution of one well known 1
actuator-the pneumatic actuator of Friedline-for another well known 2
actuator-the mechanical actuator of Tobin-is a sufficient difference from the 3
prior art to render the Appellant’s claims nonobvious. 4
We agree with the Examiner that the combined teachings of Tobin and 5
Friedline render claim 5 obvious to one of ordinary skill in the art. We 6
affirm the Examiner’s rejection of claims 5-8 as being unpatentable over 7
Tobin and Friedline. 8
9
DECISION 10
The decision of the Examiner to reject claims 5-8 is affirmed. 11
No time period for taking any subsequent action in connection with 12
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13
§ 1.136(a)(1)(iv)(2011). 14
15
AFFIRMED 16
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Klh 20