Ex Parte Chang et alDownload PDFBoard of Patent Appeals and InterferencesJan 25, 201111688457 (B.P.A.I. Jan. 25, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte YUNG-CHUNG CHANG, SHEN-YU CHANG, and WEN- CHANG SHIH ____________________ Appeal 2009-008644 Application 11/688,457 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN STAICOVICI, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE" (paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008644 Application 11/688,457 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-4, 6-12, and 28 as unpatentable over Sevilla (US 6,623,331 B2, iss. Sep. 23, 2003). Claim 5 has been withdrawn; claims 13- 27 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1, reproduced below with added emphasis, is illustrative of the claimed subject matter: 1. A polishing pad, comprising: a single layer polishing pad body having at least one solid body compressibility-aiding stripe buried therein, wherein the at least one solid body compressibility-aiding stripe comprises a solid pillar of material having a compressibility larger than a compressibility of the polishing pad body. SUMMARY OF DECISION We REVERSE. OPINION The Examiner found that Sevilla describes a polishing pad having a stripe in the form of hollow member 22, which can be characterized as a pillar or a tube. Ans. 3. Appellants argue that the Specification distinguishes between a pillar and a tube, such that the hollow member in Sevilla is not a solid pillar as claimed. Appeal Br. 5-6. At page 5, the Specification states: "stripe 104 may be a solid body, such as a solid pillar or a hollow tube, or be an empty space." Thus, the dispositive issue in this appeal is whether Sevilla׳s hollow member (tube 22) satisfies the "solid pillar" limitation of claim 1, in light of the Specification. Appeal 2009-008644 Application 11/688,457 3 Claim limitations must be read "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "[C]laims yet unpatented are to be given the broadest reasonable interpretation consistent with the specification." In re Prater, 415 F.2d 1393, 1404 (CCPA 1969). The Examiner states that Appellants' lack of a special definition for "solid," in claim 1, means that "solid" is to be interpreted as "distinguished from a liquid, gas, or plasma," according to the "ordinary and customary meaning." Ans. 4-5. The Examiner's analysis improperly focuses on the term "solid" in isolation, rather than on the terminologies "solid body" and "solid pillar," which are explicitly used differently in the Specification. The Specification contrasts "solid body" with "empty space containing air." Spec. 5. The Specification next provides two examples of "solid bod[ies]": "a solid pillar or a hollow tube." Thus, as used in Appellants' Specification, a "solid body" is sufficiently broad to encompass, inter alia, a hollow tube. On the other hand, the Specification uses the terminology "solid pillar" in a narrower context, which does not encompass a "hollow tube." In other words, as used in the Specification, a "solid pillar" is a solid structure which does not contain any substantial hollow portion. While Appellants have not described the "solid pillar" or "hollow tube" to the extent of a special definition2, it is clear that reading a "solid pillar" on a "hollow tube" is inconsistent with the Specification. 2 See In re Paulson, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (an inventor must define specific terms with "reasonable clarity, deliberateness, and precision" in order to be his own lexicographer, as opposed to merely describing "in a general fashion certain features"). Appeal 2009-008644 Application 11/688,457 4 Consequently, reading "solid pillar" in light of the Specification, as we must, we conclude that Sevilla's hollow member (tube 22) is not a "solid pillar" as required by claim 1. We do not sustain the Examiner's rejection of claims 1-4, 6-12, and 28, which relies on a finding that Sevilla's tube 22 is a "solid pillar." DECISION For the above reasons, we reverse the Examiner's decision. REVERSED hh DITTHAVONG MORI & STEINER, P.C. 918 Prince Street Alexandria, VA 22314 Copy with citationCopy as parenthetical citation