Ex Parte Dudovicz

Board of Patent Appeals and Interferences

Jul 8, 2010

10315261 (B.P.A.I. Jul. 8, 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.
10/315,261 12/10/2002 Walter Dudovicz 21274-C2 7168
27182 7590 07/09/2010
PRAXAIR, INC.
LAW DEPARTMENT - M1 557
39 OLD RIDGEBURY ROAD
DANBURY, CT 06810-5113
EXAMINER
ROSE, ROBERT A
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
07/09/2010 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 PRAXAIR S.T. TECHNOLOGY, INC.
____________________

Appeal 2009-006523
Application 10/315,261
Technology Center 3700
____________________

Before SALLY GARDNER LANE, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Praxair S.T.
Technology, Inc. (“Praxair”), under 35 U.S.C. § 134(a) from a final rejection

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.
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Application 10/315,261

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of claims 29-32, 34-37, 39, 41-45, and 47. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

References Relied on by the Examiner
Benedict et al. (“Benedict”) 5,573,619 Nov. 12, 1996

The Rejections on Appeal
The Examiner rejected claims 39, 41-45, and 47 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
The Examiner rejected claims 29-32, 34-37, 39, 41-45, and 47 under
35 U.S.C. § 102(b) as anticipated by Benedict.

The Invention
The invention relates to an apparatus for polishing silicon wafers.
(Spec. 1:1.)
Claim 29 is reproduced below (Br. 18 Claims App’x.):
29. An integrated pad and belt for polishing a surface of a
semiconductor substrate, comprising:

a belt for use on a polishing tool in which said belt is intended
for movement across the surface of the semiconductor substrate, said
belt comprising a tensile material of sufficient strength to support a
force exerted by the semiconductor substrate;

a polishing pad adhesively bonded with said belt to form a
unitary integrated piece when fabricated onto said belt so that
irregularities or unevenness between said polishing pad and said belt
are removed, said polishing pad comprising a polishing material for
engaging the semiconductor substrate to perform chemical mechanical
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polishing on the surface of the semiconductor substrate when
subjected to a slurry.
B. ISSUES
1. Has Praxair shown that the Examiner was incorrect in rejecting
claims 39, 41-45, and 47 as lacking written description in the specification?
2. Has Praxair shown that the Examiner was incorrect in finding
that Benedict discloses a “polishing pad” as required by the claims?
3. Has Praxair shown that the Examiner was incorrect in finding
that Benedict discloses that its polishing pad is adhesively bonded to its belt?
4. Has Praxair shown that the Examiner was incorrect in finding
that Benedict’s belt would be capable of polishing a semiconductor
substrate?
5. Has Praxair shown that the Examiner was incorrect in finding
that Benedict discloses a polishing pad that is seamless?
6. Has Praxair shown that the Examiner was incorrect in finding
that Benedict discloses the following limitation of claims 32 and 37:
wherein said tensile material comprises an aramid fiber weaved
in a direction of intended movement and said belt further
comprises a reinforcing material of cotton fiber weaved at an
angle from the direction of the intended movement[?]
C. FINDINGS OF FACT
1. Benedict describes a belt 1 that is formed of a backing 5 onto
which a series of adhesive layers 12, 13, 15, and 16 are coated or applied.
(Benedict 6:5-20.)
2. Benedict also describes that examples of suitable adhesive
layers include “urethane resins.” (Id. at 15:65-16:1.)
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3. Benedict further discloses that its coated adhesive belt can be
used for “polishing various surfaces of, for example, steel and other metals,
wood, wood-like laminates, plastic fiberglass, leather or ceramics.” (Id. at
1:15-32.)
4. Benedict also describes that the abrasive coating of its belt may
be attached to the underlying backing by “adhesive or mechanical fastening
means.” (Id. at 3:47-48.)
5. Benedict states that while its backing is seamless, embodiments
of its invention “typically have a seam” in the coated abrasive layer. (Id. at
3:58-59.)
6. Benedict generally lists examples of fibrous materials that
include cotton and aramid (id. at 11:39-42), but does not describe how those
particular fibrous materials might be arranged together in forming a belt.
D. PRINCIPLES OF LAW
To satisfy the written description requirement of 35 U.S.C. § 112, an
applicant must convey with reasonable clarity to those skilled in the art that
he or she was in possession of the claimed invention. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). It is not necessary that
the exact terms that appear in the claim must also appear in the description.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990).
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E. ANALYSIS
Written Description
The Examiner rejected claims 39, 41-45, and 47 under 35 U.S.C.
§ 112, first paragraph as lacking written description. Claims 39, 41, and 47
are each independent claims and include recitation of an integrated pad and
belt assembly. As the basis for the written description rejection, the
Examiner states the following (Ans. 3:2-15):
With regard to claims 39, 41, and 47 the requirement of one the
materials specifically being a tensile material and the other material a
specifically being a reinforcing material, is not found in Appellant’s
disclosure as originally filed, nor is the specific limitation of the
reinforcing material being weaved at an angle from the direction of
the intended movement. There is no specificity as to the orientation
of the fibers with respect to the synthetic yarn chosen, except to
mention that any of the synthetic yarns disclosed may be blended with
organic yarns, such as cotton. Such “blending” can entail twisting
together of fibers of different materials in single strand, or alternate
application of strands of two different materials in the longitudinal
direction of the belt. The limitations of two specific types of fibers,
each chosen for its respective property, assemblage of those fibers,
and their orientation with respect to each other and to the direction of
belt travel, are not specifically set forth in Appellant’s original
disclosure, and are considered to constitute new matter in the claims
as amended.

Thus, according to the Examiner, each of independent claims 39, 41,
and 47 allegedly lack written description in the specification for a
requirement that the pad and belt assembly includes each of a tensile
material and a reinforcing material and also that the reinforcing material is
weaved at an angle with respect to the direction of movement of the pad and
belt assembly.
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At the outset, we note that claim 39 does not require either a
reinforcing material or any weaving angle for such a material. The
Examiner’s basis for rejecting claim 39 as lacking written description does
not have a connection to the actual content of that claim. Claim 39 does call
for a tensile material having machine direction yarns and cross-machine
direction yarns and includes a group of materials that may be selected for
those yarns. Praxair’s specification as originally filed describes that an
embodiment of its belt assembly includes a fabric of woven yarns having
“high tensile strength” and lists numerous available materials for the yarns
that correspond to those materials recited in the claim. (Spec. 3:24-4:16.)
The specification also describes that the yarns of its woven fabric include
“machine direction yarns” and “cross-machine direction yarns.” (Id. at 7:10-
11.)
To satisfy the written description requirement of 35 U.S.C. § 112, an
applicant must convey with reasonable clarity to those skilled in the art that
he or she was in possession of the claimed invention. Vas-Cath Inc., 935
F.2d at 1563-64. Here, Praxair’s specification reasonably conveys that it
was in possession of the tensile material set forth in its claim 39. We reject
the Examiner’s position that the claim lacks written description in the
specification.
Claims 41 and 47 each include the features of “a tensile yarn material
weaved in the machine direction and a reinforcing material weaved in the
cross-machine direction[.]” As discussed above, Praxair’s specification
describes yarn materials that are weaved in the machine direction and in the
cross-machine direction and illustrates such a configuration in Figure 3. The
specification also states that the belts woven from its disclosed yarns “are
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strong in the machine direction and sufficiently rigid in the cross machine
direction.” (Spec. 4:15-16.) Praxair contends that its specification conveys
that the disclosed yarn is both tensile and reinforcing material and is
arranged in the machine and cross machine directions. (Br. 12:7-10.)
Praxair concludes that its claims comply with the written description
requirement.
We agree with Praxair. To satisfy the written description requirement,
it is not necessary that the exact terms appearing in the claim must also
appear in the description. Lockwood, 107 F.3d at 1572. The Examiner does
not explain why the specification’s description of yarn that is woven in the
machine and cross machine directions and which produces a fabric that is
strong and sufficiently rigid in those respective directions does not
adequately describe the tensile material and reinforcing material of the
claims. We find that Praxair’s specification reasonably conveys to a person
of ordinary skill in the art that the disclosed yarns which are of high tensile
strength and provide sufficient rigidity operate as both tensile materials and
reinforcing materials. Praxair’s specification demonstrates that it had
possession of the subject matter that is set forth in the claims.
We do not sustain the rejection of claims 39, 41-45, and 47 under 35
U.S.C. § 112, first paragraph as lacking written description.
The Prior Art Rejection
The Examiner rejected claims 29-32, 34-37, 39, 41-45, and 47 as
anticipated by Benedict. Praxair argues the claims in three claim groupings:
(1) claims 29, 31, 34, and 36; (2) claims 30 and 35; and (3) claims 32 and
37. Praxair does not advance any argument as to the patentability of claims
39, 41-45, and 47 over Benedict.
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Claims 29, 31, 34, and 36
Claims 29, 31, 34, and 36 are argued collectively. We select claim 29
as representative. See 37 C.F.R. § 41.37(c)(1)(vii). That claim is drawn to
an integrated pad and belt for polishing a surface of a semiconductor
substrate. We focus on the disputed limitations. Claim 29 calls for the
elements of a belt and a “polishing pad” that is adhesively bonded with the
belt. Praxair first contends that Benedict does not disclose a polishing pad.
In particular, according to Praxair, Benedict only discloses a series of
adhesive layers that hold an abrasive material, which allegedly does not
form the claimed “polishing pad.” (Br. 13:11-23.)
We do not agree with Praxair. Praxair’s specification does not
specially define the term “polishing pad.” Indeed, that term does not appear
in the specification. However, in the “Summary of the Invention” section of
the Appeal Brief, Praxair cites to page 3, lines 4-6, page 6, lines 9-23, and
page 7, line 1 et seq. of the specification for description of the belt and
polishing pad that correspond to the features of claim 29.2 Those portions
describe a belt that is coated with a layer of “suitable polymer” or “suitable
resin,” and, in particular, describe a layer of “polyurethane.” Thus,
according to Praxair, a “polishing pad” that is integrated with a belt is
understood as including a layer of resin such as polyurethane that is applied
to the belt.
Benedict describes a belt 1 that is formed of a backing 5 onto which a
series of adhesive layers 12, 13, 15, and 16 are coated or applied. (Benedict

2 See the replacement “Summary of Invention” section that was filed
October 31, 2007 in response to the Notification of Non-Compliant Appeal
Brief that was mailed October 3, 2007.
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6:5-20.) Benedict also describes that examples of suitable adhesive layers
include “urethane resins.” (Id. at 15:65-16:1.) Benedict further discloses
that its coated adhesive belt can be used for “polishing various surfaces of,
for example, steel and other metals, wood, wood-like laminates, plastic
fiberglass, leather or ceramics.” (Id. at 1:15-32.) Thus, Benedict discloses a
belt that may be coated with layers of urethane resin and is used for
polishing surfaces. Praxair does not meaningfully explain why Benedict’s
urethane resin layers do not form a polishing pad that is bonded to its belt in
the same fashion that a layer of polyurethane in Praxair’s invention forms a
“polishing pad.” We reject Praxair’s contention that Benedict does not
disclose the polishing pad that is required by the claims.
Praxair also argues that Benedict does not disclose that its layers are
“adhesively bonded” to its backing 5, i.e., belt, as is set forth in the claims.
(Br. 13:18-20.) In addressing the “adhesively bonded” requirement, the
Examiner pointed to a portion of Benedict describing that the abrasive
coating of its invention may be attached to the underlying backing by
“adhesive or mechanical fastening means.” (Benedict 3:47-48.) Praxair
does not address that disclosure in Benedict, much less explain why the
attachment of a layer by an “adhesive” does not meet the feature of a
component that is “adhesively bonded” with the belt. We reject Praxair’s
argument.
Lastly, Praxair contends that its claims require a device that is capable
of polishing semiconductor wafers. Praxair submits that Benedict’s coated
belt is incapable of being used to polish semiconductor wafers. Evidently,
Praxair reaches that conclusion because the term “semiconductor” does not
appear in Benedict’s disclosure. (Br. 13:24-14:15.)
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Praxair’s contention is not persuasive. As noted above, Benedict
describes that abrasive articles, such as its inventive belt, may be used to
polish a variety of surfaces, and lists as examples, “steel and other metals,
wood, wood-like laminates, plastic, fiberglass, leather or ceramics.”
(Benedict 1:29-32.) Praxair does not adequately explain why one skilled in
the art would have considered a belt that is used for polishing a wide variety
of different types of surfaces is unable to polish a semiconductor substrate.
Praxair’s assertion is simply argument of counsel, unsupported by objective
evidence such as expert testimony. Argument of counsel, however, cannot
take the place of evidence lacking in the record. Estee Lauder Inc. v.
L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). On this record, we reject
Praxair’s argument that Benedict’s belt is incapable of being used for
polishing a surface of a semiconductor substrate.
For all the foregoing reasons, we sustain the Examiner’s rejection of
claims 29, 31, 34, and 36.
Claims 30 and 35
Claims 30 and 35 are dependent, respectively, on claims 29 and 34
and add the limitation that the “polishing pad comprises a seamless polishing
surface.” (Br. 18, 19 Claims App’x.) The Examiner generally contends that
Benedict discloses a seamless integrated pad and belt assembly but does not
point to any support in the record for that contention.
Praxair argues that while Benedict discloses that its backing is
“seamless,” it does not disclose that any portion forming a polishing pad is
also seamless. Praxair concludes that Benedict does not anticipate claims 30
and 35. (Br. 14:17-23.)
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We agree with Praxair. We do not see any portion of Benedict that
describes that any component of its belt other than its backing is seamless.
Indeed, Benedict states that while its backing is seamless, embodiments of
its invention “typically have a seam” in the coated abrasive layer that forms
the claimed polishing pad. (Benedict 3:58-59.) The Examiner has not
sufficiently explained why Benedict anticipates claims 30 and 35 which
require that the polishing pad is seamless.
We do not sustain the rejection of claims 30 and 35 as anticipated by
Benedict.
Claims 32 and 37
Claims 32 and 37 are dependent, respectively, on claims 29 and 34,
and add the limitation that the “tensile material comprises an aramid fiber
weaved in a direction of intended movement and said belt further comprises
a reinforcing material of cotton fiber weaved at an angle from the direction
of the intended movement.” (Br. 18, 19 Claims App’x.)
In accounting for the features of claims 32 and 37, the Examiner
pointed to a portion of Benedict listing examples of fibrous materials that
include cotton and aramid. (Benedict 11:39-42.) But the claims require
more. Anticipation is established only when a single prior art reference
discloses all elements of the claimed invention. In re Spada, 911 F.2d at
708.
Here, the claims each specify the type of material and its positioning
relative to another type of material. In particular, the claims require a belt
with one type of a fiber material, i.e., aramid, woven in a direction of
movement of the belt and a second type of fiber material, i.e., cotton, woven
at an angle to the direction of movement. The Examiner does not direct us
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to any portion of Benedict describing a belt in which fibers formed from
those two materials are arranged in the manner called for by the claims.
We do not sustain the rejection of claims 32 and 37 as anticipated by
Benedict.
Claims 39, 41-45, and 47
Because Praxair has not presented any argument in connection with
the patentability of claims 39, 41-45, and 47 over Benedict, we are not
persuaded of any error in that rejection.
We sustain the rejection of claims 39, 41-45, and 47 as anticipated by
Benedict.
F. CONCLUSION
1. Praxair has shown that the Examiner was incorrect in rejecting
claims 39, 41-45, and 47 as lacking written description in the specification.
2. Praxair has not shown that the Examiner was incorrect in
finding that Benedict discloses a “polishing pad” as required by the claims.
3. Praxair has not shown that the Examiner was incorrect in
finding that Benedict discloses that its polishing pad is adhesively bonded to
its belt.
4. Praxair has not shown that the Examiner was incorrect in
finding that Benedict’s belt would be capable of polishing a semiconductor
substrate.
5. Praxair has shown that the Examiner was incorrect in finding
that Benedict discloses a polishing pad that is seamless.
6. Praxair has shown that the Examiner was incorrect in finding
that Benedict discloses the following limitation of claims 32 and 37:
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wherein said tensile material comprises an aramid fiber weaved
in a direction of intended movement and said belt further
comprises a reinforcing material of cotton fiber weaved at an
angle from the direction of the intended movement.

G. ORDER
The rejection of claims 39, 41-45, and 47 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The rejection of claims 29, 31, 34, 36, 39, 41-45, and 47 under 35
U.S.C. § 102(b) as anticipated by Benedict is affirmed.
The rejection of claims 30 and 35 under 35 U.S.C. § 102(b) as
anticipated by Benedict is reversed.
The rejection of claims 32 and 37 under 35 U.S.C. § 102(b) as
anticipated by Benedict is reversed.

AFFIRMED-IN-PART

PRAXAIR, INC.
LAW DEPARTMENT – MI 557
39 OLD RIDGEBURY ROAD
DANBURY, CT 06810-5113