Ex Parte Bunch et al

Patent Trial and Appeal Board

Feb 27, 2014

11413401 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD D. BUNCH,
JUAN FRANCISCO CORONADO NUNO,
SERGIO RAUL ELIZALDE ROJO, and
ERNESTO ARTURO WALDTHAUSEN
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Appeal 2011-011018
Application 11/413,401
Technology Center 3700
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Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI and
MICHAEL L. HOELTER, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 appeal under 35 U.S.C. § 134 (2010) from the 1
Examiner’s decision rejecting claims 1-7, 9-16 and 18 under 35 U.S.C. 2
§ 103(a) (2010) as being unpatentable over Griffin (US 6,602,108 B2, issued 3
Aug. 5, 2003), Kim (US 6,287,192 B1, issued Sep. 11, 2001) and 4

1 The Appellants identify the real party in interest as Hitachi Global
Storage Technologies Netherlands B.V.
Appeal 2011-011018
Application 11/413,401

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Trampuz (US 2005/0241668 A1, publ. Nov. 3, 2005). Claims 8, 17, 19 and 20 1
are cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2010). 2
We REVERSE. 3
Claims 1 and 9 are independent. Claim 1 recites, with italics added for 4
emphasis: 5
1. A method of reducing agglomeration of 6
particles while manufacturing a lapping plate using an 7
oil-based slurry, the method comprising: 8
providing a slurry tank comprising an oil-based 9
slurry disposed within an ultrasonic tank, said oil-10
based slurry not in direct contact with the ultrasonic 11
tank; 12
generating an ultrasonic wave inside said 13
ultrasonic tank and outside said slurry tank; 14
applying the oil-based slurry with particles of a 15
known size to the lapping plate; and 16
using ultrasonic mixing to mix the oil-based 17
slurry while applying the oil-based slurry to the 18
lapping plate to reduce agglomeration of the particles, 19
wherein the ultrasonic mixing device works with a 20
conventional charging station. 21
22
Claim 9 recites an ultrasonic mixing device including: 23
. . . 24
a slurry tank disposed within an ultrasonic tank, 25
said slurry tank containing an oil-based slurry and 26
said oil-based slurry not in direct contact with the 27
ultrasonic tank; 28
said ultrasonic tank comprising an ultrasonic 29
wave generation device coupled to the interior of said 30
tank for generating an ultrasonic wave outside said 31
slurry tank . . . 32
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Application 11/413,401

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The Appellants argue that the Examiner “fails to provide a reason for the 1
combination [of the teachings of Griffin, Kim and Trampuz] other than 2
providing ‘it would be obvious.’” (See Reply Br. 2). While the Appellants’ 3
argument exaggerates the Examiner’s reasoning, the argument is sufficiently 4
clear to identify a reason not to sustain the rejection of the claims on appeal. 5
Griffin describes a lapping plate preparation system 100 including a 6
slurry dispensing system 138 for dispensing abrasive slurry onto a lapping 7
surface 116 of a platen 114 seated on a rotating platter 112. (Griffin, col. 4, ll. 8
2-11; col. 4, l. 66 – col. 5, l. 11; col 7, ll. 26-29; and figs. 1 and 2). In other 9
words, Griffin teaches “manufacturing a lapping plate using an oil-based slurry” 10
as well as “applying the oil-based slurry with particles of a known size to the 11
lapping plate.” Griffin does not provide any meaningful structural details 12
regarding the slurry dispensing system 138 other than the depiction of a nozzle 13
overhanging the lapping surface 116 of a platen 114 as depicted schematically 14
in Figure 1.2 Figure 3 of Kim depicts a slurry supply system which dispenses 15
slurry 12 from a secondary tank 13 onto a pad table 17 through a nozzle 29 for 16
use in a chemical mechanical polishing process for planarizing a wafer 14 17
positioned on the pad table 17. (Kim, col. 4, ll. 26-30; col. 4, l. 66 – col. 5, l. 8; 18
and fig. 3). Kim’s secondary tank 13 contains a sonic wave generator 26 for 19
propagating ultrasonic waves through the slurry 12 to break apart 20
agglomerations 15 of abrasive particles within the slurry. (Kim, col. 4, ll. 43-46; 21

2 In other words, Griffin does not describe a mode of operation of the
slurry dispensing system 138 except for the few details appearing in column 4,
line 66 though column 5, line 11. These details bear little direct relationship to
the subject matter of claim 1 or claim 9. For this reason, this opinion does not
rely on the Appellants’ argument that “modifying Griffin with the teachings of
Kim and Trampuz significantly changes the principal mode of operation of
Griffin.” (App. Br. 10; Reply Br. 3).
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col. 5, ll. 28-33; and fig. 3). Trampuz teaches creating microbubbles in a liquid 1
cavitation medium by placing a sealed container 14 containing the cavitation 2
medium in an ultrasound bath 16 and generating ultrasonic waves in the bath so 3
as to induce similar waves within the cavitation medium. (Trampuz, paras. 4
[0032], [0033] and [0035]). 5
The Examiner concludes that it would have been obvious “to replace the 6
inside tank, 160, of Trampuz et al. with the slurry tank, 13, of Kim and then 7
replace the slurry dispensing unit, 138, of Griffin with the combination in order 8
to reduce agglomeration of the particles in the slurry during the charging 9
method.” (Ans. 5). Trampuz describes a method using cavitation to dislodge a 10
viable sample of a microbially-generated biofilm from a surface of an 11
implantable medical device. (Trampuz, paras. [0010] and [0024]). The 12
Examiner’s reasoning does not explain adequately how one of ordinary skill in 13
the art would have recognized that the placement of Kim’s secondary tank 13 in 14
an ultrasonic bath such as the bath 16 described by Trampuz would have better 15
broken apart agglomerations of particles in an abrasive slurry. 16
The Examiner also concludes that: 17
One could [have] modifie[d] the tool of [Griffin] by 18
replacing the slurry dispensing unit, 138, of [Griffin] 19
with the ultrasonic slurry dispenser of Kim, since both 20
inventions teach treating an object by applying a 21
slurry during a polishing method. One [also] could 22
[have] replace[d] the slurry tank with the transducer 23
of Kim, with the slurry tank, 130, and ultrasonic tank, 24
160, of Trampuz, as an alternate method of applying 25
ultrasonic waves to a treating solution/polishing 26
slurry. 27
(Ans. 6). This reasoning derives from an underlying factual error: Trampuz 28
does not describe an “alternate method of applying ultrasonic waves to a 29
treating solution/polishing slurry.” This is not an instance of merely 30
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substituting one known method of treating slurry for another known method. 1
As noted earlier, the Examiner has not adequately explained how one of 2
ordinary skill in the art would have recognized that placement of a slurry tank 3
in an ultrasound bath would have better broken apart agglomerations of 4
particles in the slurry. 5
The Examiner has not articulated persuasive reasoning with some 6
rational underpinning to explain why the subject matter of claims 1 and 9 would 7
have been obvious. We do not sustain the rejection of claims 1-7, 9-16 and 18 8
under § 103(a) (2010) as being unpatentable over Griffin, Kim and Trampuz. 9
10
DECISION 11
We REVERSE the Examiner’s decision rejecting claims 1-7, 9-16 and 12
18. 13
14
REVERSED 15
16
17
18
19
Klh 20