Ex Parte Chang et al

Board of Patent Appeals and Interferences

Jan 25, 2011

11688457 (B.P.A.I. Jan. 25, 2011)

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 Claim 5 has been withdrawn; claims 13-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

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