Ex Parte Hagiwara

Board of Patent Appeals and Interferences

Jun 12, 2007

10204997 (B.P.A.I. Jun. 12, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HIRONORI HAGIWARA
(3M INNOVATIVE PROPERTIES CO.)
____________________

Appeal 2007-1017
Application 10/204,997
Technology Center 3700
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Decided: June 12, 2007
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Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL 1
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STATEMENT OF THE CASE
Applicant appeals under 35 U.S.C. § 134(a) (2006) from a final
rejection of all pending claims (claims 1-16). (Final Office Action entered
January 26, 2006.) We have jurisdiction under 35 U.S.C. § 6(b) (2006).
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Applicant’s Specification states that the “invention relates to a method
and an apparatus for shaping an edge (i.e., providing a surface of edge being
free of pits) of a rigid, brittle material such as ceramic (i.e., glass, crystalline
ceramic, and combinations thereof) plates and rigid composite plates
(including rigid printed circuit boards).” (Specification 3:9-12.) Applicant
asserts that “[b]y using a resin-bonded wheel, having the properties recited,
the amount of material abraded and the surface finish of the plate edge can
be better controlled.” (Appeal Brief entered November 9, 2005, hereinafter
“Br.,” 3.) According to Applicant, “[t]he amount of material abraded can be
regulated by the load between the wheel and the brittle plate material.” (Id.)
Representative claim 12 reads as follows:
12. An apparatus for abrading an edge of a ceramic plate
or a rigid composite plate in a predetermined abrasion amount
using a resin-bonded abrasive wheel under a load, and in
contact with, the edge to be abraded, the apparatus comprising a
resin-bonded abrasive wheel, a mechanism for rotating the
abrasive wheel, and a system for contacting and controlling,
during abrading, the load of the abrasive wheel on the ceramic
plate or the rigid composite plate, wherein the resin-bonded
abrasive wheel has an elastic modulus in the range from 100 to
10,000 kg/cm2 and has a Shore D hardness in the range from 10
to 95, wherein an outer peripheral surface of the wheel contacts
with the edge during abrading, and further wherein the resin-
bonded abrasive wheel includes abrasive grains.

The Examiner rejected claims 1-16 under 35 U.S.C. § 103(a) (2006).
(Answer 3-4.)
The prior art references relied upon by the Examiner to reject the
claims on appeal are:
Hasegawa et al. (Hasegawa) US 5,727,990 Mar. 17, 1998
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Roberts et al. (Roberts) US 6,217,434 B1 Apr. 17, 20011

Hasegawa is available as prior art under 35 U.S.C. § 102(b); Roberts
is prior art under 35 U.S.C. § 102(e).
The Examiner found that Hasegawa describes each and every element
of appealed claim 12, “except for disclosing the properties of the polishing
device.” (Answer 3.) The Examiner further found that Roberts teaches
resin-bonded abrasive polishing pads, which have elastic modulus and Shore
D hardness values that significantly overlap those recited in appealed claim
12, provide “advantageous hydrophilic polishing materials and innovative
surface topography and texture.” (Id., citing Roberts, abstract.) Based on
these findings, the Examiner held that one of ordinary skill in the art would
have found it obvious to modify the apparatus described in Hasegawa to
include Roberts’s resin-bonded abrasive polishing pad, thus arriving at an
apparatus encompassed by appealed claim 12. (Answer 4.)
Applicant, on the other hand, contends: (i) Hasegawa teaches a
“buffing pad, not intended to abrade the edge of wafer W [workpiece]”; (ii)
Hasegawa does not teach “a generally perpendicular relative motion” of the
wheel relative to the edge to be abraded, as shown in Figure 2 of the
application; (iii) Roberts “does not teach a resin-bonded abrasive wheel
abrading the edge of a rigid brittle plate”; and (iv) the references “do not

1 Roberts issued from Application 09/465,566 filed on December 17,
1999, which is a continuation of Application 09/054,948 filed on April 3,
1998 (now United States Patent 6,022,268). It also claims priority to
provisional applications 60/043,404 and 60/049,440, filed on April 4, 1997
and June 12, 1997, respectively.
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teach, disclose or suggest that the abrasion amount can be determined by
controlling the load placed upon the wheel to the plate.” (Br. 4-5.)2
We affirm.
ISSUE
Has Applicant shown error on the part of the Examiner’s holding that
the combined disclosures of Hasegawa and Roberts would have led one of
ordinary skill in the art to arrive at an apparatus within the scope of appealed
claim 12?
FINDINGS OF FACT3
1. The subject application was filed on August 26, 2002 under 35
U.S.C. § 371 (2002) based on PCT Application
PCT/US01/06940 filed on March 6, 2001, which claims priority
to Japanese Application JP 2000-61915 filed on March 7, 2000.
(Application filed August 26, 2002.)
2. The real party in interest is said to be 3M INNOVATIVE
PROPERTIES CO.
3. Applicant’s Specification states that the invention includes a
plurality of aspects or embodiments. (Specification 3-4.)

2 Rather than comply with 37 CFR § 41.47(b), which requires that a
request for oral arguments must be made in a separate paper with a
prominent caption (for administrative efficiency), Applicant inserted a
sentence requesting oral arguments in the body of the Brief. (Br. 1)
Because this request does not comply with our rule, we decide this appeal on
the Brief of record.

3 Hereinafter “FF__.”
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4. Applicant’s Specification provides further notice that the
“invention is not to be unduly limited to the illustrative
embodiments...” (Specification 10.)
5. Figure 2, which consists of three views, is said to be one such
illustrative embodiment. (Specification 4:2 and 4:14-16.)
6. Figure 2B is reproduced as follows:

7. Figure 2B is said to depict a side view of the Figure 2
embodiment in which relevant reference numerals 200, 201,
and 206 denote the apparatus, the abrasive wheel, and a
material to be abraded, respectively. (Specification 4:2-7.)
8. Relying on the Figure 2B embodiment, Applicant attempted to
amend claims 1 and 12 (post final rejection) to recite that the
rotation of the wheel is “generally perpendicular to the edge” of
the plate (claim 1) and “in a direction perpendicular to the edge
to be abraded” (claim 12). (37 CFR § 1.116 Amendment
submitted on November 8, 2005.)
9. The November 8, 2005 Amendment was denied entry because,
inter alia, it raised new issues requiring further consideration
and/or search. (Advisory Action entered November 17, 2005;
Answer 2.)
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10. Thus, appealed claim 12 does not contain any limitation as to
the orientation of the rotation of the wheel relative to the edge
of the plate to be abraded.
11. Applicant did not identify any part of the disclosure that would
indicate to one of ordinary skill in the art, or any evidence of
record (e.g., an exhibit or sworn expert testimony) that would
sufficiently demonstrate, that the term “abrading” as recited in
appealed claim 12 should be construed to exclude polishing.
12. Applicant failed to present any supporting evidence (e.g., sworn
declaration testimony or other documents) that the type of
“relative motion [of polishing device 11 and wafer W described
in Hasegawa] is well-known in the abrading and polishing art
for buffing, which is surface refinement, not abrading.” (Br. 4.)
13. Hasegawa describes an apparatus for mirror-polishing a
peripheral chamfered portion of a semiconductor wafer (the
wafer including a peripheral side surface, beveled surfaces
formed on front and back surfaces along the periphery of the
wafer, and rounded edges formed between the peripheral side
surface and each of the beveled surfaces). (Hasegawa 2:56-62.)
14. Thus, Hasegawa describes an apparatus for polishing an edge of
a semiconductor wafer (i.e., a semiconductor plate).
15. That Hasegawa’s semiconductor wafer is a “ceramic plate” or
“rigid composite plate” is not contested.
16. Hasegawa’s apparatus comprises a cylindrical rotary polishing
device comprising a first polishing portion having a first buff
that can be in contact with the peripheral side surface, a second
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polishing portion having a second buff that can be in contact
with the beveled surfaces, and a third polishing portion having a
third buff that can be in contact with the rounded edges formed
between the peripheral side surface and each of the beveled
surfaces, wherein the first, second, and third polishing portions
are provided on the peripheral surface of the apparatus
independently of one another. (Hasegawa 2:62-3:5.)
17. Hasegawa’s Figure 2 is reproduced below.
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18. Hasegawa’s Figure 2 shows an apparatus 10 for mirror-
polishing a semiconductor wafer, wherein relevant reference
characters 11, 13, 14, W, and M denote a polishing device, a
polishing member, a rotary shaft, a semiconductor wafer, and a
motor for rotating polishing member 13 through rotary shaft 14.
(Hasegawa 4:1-43.)
19. Hasegawa explains that prior art polishing methods are time
consuming because variations in the thickness of the wafer or
the shape of the peripheral chamfered portion of the wafer
prevent all the surfaces to be polished from being in contact
with the surface of the polishing device from the start, thus
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requiring initial contact portions of the wafer to be “worn out to
a certain extent by the mirror-polishing” (i.e., abraded) until all
the surfaces to be polished come into contact with the polishing
device. (Hasegawa 1:40-2:4.)
20. Thus, Hasegawa expressly teaches one of ordinary skill in the
art that polishing causes the semiconductor wafer to be “worn
out” (i.e., abraded).
21. Hasegawa improves upon the prior art by providing three
separate polishing portions so that “the beveled surfaces and the
rounded edges [of the edge of the wafer] can be securely
pressed against respective polishing portions from the
beginning...” (Hasegawa 2:7-41.)
22. Thus, Hasegawa’s mirror-polishing process necessarily abrades
a predetermined amount of wafer material from the start of the
polishing operation.
23. Because the wafer surfaces are “pressed against the respective
polishing portions” of Hasegawa’s polishing wheel,
Hasegawa’s polishing wheel would necessarily be “under a
load” by action of the pressing force.
24. Hasegawa controls the pressing force (i.e., “the load of the
abrasive wheel” on the wafer) by a pushing device that pushes
the wafer against the polishing wheel 11, 13. (Hasegawa 4:44-
58.)
25. Hasegawa’s Figure 3, for example, shows that the orientation of
an edge of wafer W, 1a, is actually perpendicular to the
polishing device 11.
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26. Hasegawa describes every limitation of appealed claim 12
except it does not describe its polishing wheel as a “resin-
bonded abrasive wheel” having the elastic modulus and Shore
D hardness characteristics specified in appealed claim 12.
27. Applicant’s Specification states that “[t]he resin binder for the
resin-bonded abrasive wheel is preferably polyurethane.”
(Specification 6:11-12.)
28. Applicant’s Specification acknowledges that “[s]uitable resin-
bonded abrasive wheel [sic, wheels] are commercially
available, and/or can be made by techniques known in the art...”
(Specification 6:18-19.)
29. In support of this acknowledgement, incorporates by reference
two prior art references (Japanese Patent Laid-Open Publication
No. 294336/1990 and United States Patent 4,933,373 issued to
Moren on June 12, 1990) and also refers to “DLO WHEEL”
manufactured by Sumitomo Chemical 3M Co., Ltd.
(Specification 6:19-24.)
30. Roberts describes “polishing pads useful in the manufacture of
semiconductor devices or the like.” (Roberts 1:12-14.)
31. Roberts’s polishing pad is said to “comprise an advantageous
hydrophilic material having an innovative surface topography
and texture which generally improves polishing performance
(as well as the predictability of polishing performance).”
(Roberts 1:14-19.)
32. Roberts teaches that the polishing pad is useful for
“planarizing” (i.e., abrading) substrates, “particularly substrates
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for the manufacture of semiconductor devices or the like.”
(Roberts 2:66-3:2.)
33. In one embodiment, Roberts teaches that the pad may be made
by placing a solid or semi-solid insert in an enclosure and then
forcing a flowable material into the enclosure, thereby causing
the insert to be bonded to or within the flowable material after
solidification. (Roberts 3:62-65.)
34. Roberts teaches that the pad may be made from polyurethane.
(Roberts 5:10-61.)
35. Roberts further teaches that the pad may include abrasive
particles. (Roberts 5:34-36; 9:57-59.)
36. The Examiner found that Roberts’s pad has elastic modulus and
Shore D hardness values that significantly overlap those recited
in appealed claim 12. (Answer 3.)
37. That Roberts describes, with sufficient specificity, a pad having
an elastic modulus and a Shore D hardness within the claimed
ranges is not contested.
38. Nor does the Applicant contest that when Roberts’s pad is used
on Hasegawa’s wheel, the resulting wheel would not have the
specified elastic modulus and Shore D hardness.
39. Appealed claim 12 does not recite any limitation as to the
degree of abrasion or the manner in which “the load of the
abrasive wheel on the ceramic plate or the rigid composite
plate” is created.
40. According to well known scientific principles, the force or load
placed upon Hasegawa’s wheel by contact with the wafer
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would be exactly the same whether the wheel exerts a pushing
force on a stationary wafer or the wafer exerts the same
magnitude of pushing force against a stationary wheel.
41. Applicant has not presented any evidence (e.g., sworn expert
testimony) contrary to these well known scientific principles.
42. Applicant has not presented evidence (e.g., sworn expert
testimony) to show that varying the pushing force in Hasegawa
would not control the amount of abrasion.

PRINCIPLES OF LAW
“[T]he PTO gives a disputed claim term its broadest reasonable
interpretation during patent prosecution.” In re Bigio, 381 F.3d 1320, 1324,
72 USPQ2d 1209, 1211 (Fed. Cir. 2004).
The factual inquiry into whether claimed subject matter would have
been obvious includes a determination of: (1) the scope and content of the
prior art; (2) the differences between the claimed subject matter and the prior
art; (3) the level of ordinary skill in the art; and (4) secondary considerations
(e.g., the problem solved) that may be indicia of (non)obviousness. Graham
v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).

ANALYSIS
Applicant has argued the appealed claims as a single group. (Br. 4-6.)
Accordingly, we select claim 12 as representative and confine our discussion
to this single claim. 37 CFR § 41.37(c)(vii).
Hasegawa describes an apparatus for mirror-polishing a
semiconductor wafer, wherein the apparatus includes a polishing device 11
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comprising (1) a rotating cylindrical polishing member 13 (i.e., a wheel) that
contacts and polishes the edge of the wafer W under a pressing force (i.e., a
load) and (2) a motor M for rotating the polishing member 13 through rotary
shaft 14. (FF13, 14, 16-20.) Hasegawa’s apparatus also includes (3) a
pushing device for pushing the wafer W against the polishing member (i.e.,
a system for contacting and controlling, during polishing, the load of the
polishing wheel against the wafer). (FF21-24.) That Hasegawa’s
semiconductor wafer is a “ceramic plate” or “rigid composite plate” as
recited in appealed claim 12 is not contested. (FF15.)
Thus, Hasegawa’s apparatus differs from the invention recited in
appealed claim 12 only in that the prior art apparatus does not include a
“resin-bonded abrasive wheel” having the specified elastic modulus and
Shore D hardness. (FF26.) Nevertheless, Applicant acknowledges that the
specified “resin-bonded abrasive wheel” is commercially available and
known in the prior art. (FF28-29.)
To account for the limitation with respect to the “resin-bonded
abrasive wheel,” the Examiner relied on the teachings of Roberts.
Complementary to Hasegawa’s disclosure, Roberts describes “polishing
pads useful in the manufacture of semiconductor devices or the like.”
(FF30.) Roberts’s polishing pad is said to “comprise an advantageous
hydrophilic material having an innovative surface topography and texture
which generally improves polishing performance (as well as the
predictability of polishing performance).” (FF31.) According to Roberts,
the polishing pad is useful for “planarizing” (i.e., abrading) substrates,
“particularly substrates for the manufacture of semiconductor devices or the
like.” (FF32.)
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In one embodiment, Roberts teaches that the pad may be made by
placing a solid or semi-solid insert in an enclosure and then forcing a
flowable material into the enclosure, thereby causing the insert to be bonded
to or within the flowable material after solidification. (FF33.) Roberts
further teaches that the pad may be made from polyurethane, the same
material disclosed as preferred for Applicant’s wheel, and that the pad may
include abrasive particles. (FF27, 34-35.) Additionally, the Examiner found
that Roberts’s pad has elastic modulus and Shore D hardness values that
significantly overlap those recited in appealed claim 12. (FF36.) That
Roberts describes, with sufficient specificity, a pad having an elastic
modulus and a Shore D hardness within the claimed ranges is not contested.
(FF37.) Nor does Applicant dispute that, when Roberts’s pad is used on
Hasegawa’s wheel, the resulting wheel would not have the elastic modulus
and Shore D hardness recited in appealed claim 12. (FF38.)
On this record, we agree with the Examiner that the subject matter of
appealed claim 12 would have been obvious to a person having ordinary
skill in the art over the prior art within the meaning of 35 U.S.C. § 103(a).
Even under a rigid application of the teaching, suggestion, or motivation
test, the Examiner’s rejection passes muster. Specifically, the teachings of
Roberts would have led one of ordinary skill in the art to use Roberts’s
polishing pad material to fabricate Hasegawa’s polishing member 13 with
the reasonable expectation that polishing performance and predictability of
polishing performance would be improved as disclosed in Roberts, thus
arriving at an apparatus encompassed by appealed claim 12. Here,
Applicant did not show that the modification of Hasegawa for the purpose of
achieving the benefits disclosed for Roberts polishing material would be
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beyond the ordinary skill in the art. KSR Int’l v.. Teleflex, Inc., 127 S. Ct.
1727, ___, 82 USPQ2d 1385, 1396 (2007)( “[I]f a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill.”).
Applicant argues that Hasegawa’s polishing device 11 “is a buffing
pad, not intended to abrade the edge of wafer W.” (Br. 4.) According to
Applicant, the relative motion between Hasegawa’s polishing device 11 and
wafer W is parallel and that “[s]uch relative motion is well-known in the
abrading and polishing art for buffing, which is surface refinement, not
abrading.” (Id.) Applicant urges that, by contrast, Figure 2B of the
Specification shows that “[t]he wheel rotates perpendicular [sic,
perpendicularly] against the edge to be abraded.” (Br. 5.)
This contention is without merit. First, Applicant failed to present any
supporting evidence (e.g., sworn declaration testimony or other documents)
that “[s]uch relative motion is well-known in the abrading and polishing art
for buffing, which is surface refinement, not abrading.” The absence of
evidence is significant here because both Hasegawa and Roberts indicate
that the opposite is true. Specifically, Hasegawa expressly states that mirror-
polishing causes the uneven portions of the surface being polished to be
“worn out” (i.e., abraded). Also, Roberts teaches that the polishing pad is
useful for “planarizing” the substrates, which suggests that abrading occurs.
Mere attorney arguments or conclusory statements do not take the place of
evidence. See, e.g., In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
1365 (Fed. Cir. 1997).
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Second, appealed claim 12 lacks any discernible limitation that would
exclude the type of relative motion disclosed for Hasegawa’s polishing
device 11 and wafer W. On this issue, we note that Applicant belatedly
attempted to amend claim 12 to recite that the abrasive wheel rotates “in a
direction perpendicular to the edge to be abraded,” but this amendment was
denied entry. (FF8-10.) While Applicant refers to Figure 2B of the
Specification, this is merely one embodiment of an invention that is claimed
to the broadest possible extent possible, as evidenced by Applicant’s own
notice that the claim should not be “unduly limited to the illustrative
embodiments.” (FF3-4.) In any event, Applicant is wrong that the relative
motion between Hasegawa’s polishing device 11 and wafer W is “parallel.”
Hasegawa’s Figure 3, for example, shows that the orientation of an edge of
wafer W, 1a, is actually perpendicular to the polishing device 11. (FF25.)
Moreover, appealed claim 12 is directed to an apparatus. The relative
motion of the wheel to a workpiece merely defines an intended use that has
not been shown to further limit the claimed apparatus.
Applicant argues that Roberts does not remedy the “deficiency” of
Hasegawa because “[i]t is the major surface of the pad of Roberts...and not
an outer peripheral edge, that is in contact with the plate being abraded.”
(Br. 5.) We are not persuaded by this argument because the Examiner is
relying on the combined teachings of Hasegawa and Roberts. Upon
modification of Hasegawa in view of Roberts, an apparatus within the scope
of appealed claim 12 would have resulted because Hasegawa’s apparatus
polishes an edge of the wafer. (FF14, 21, 25). In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
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into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
Applicant further contends that the prior art references “do not teach,
disclose or suggest that the abrasion amount can be determined by
controlling the load placed upon the wheel to the plate.” (Br. 5.) According
to Applicant, Hasegawa “controls the abrasion amount by controlling the
position of the polishing wheel with respect to the surface being abraded”
and “merely pushes the wafer W against the polishing member 13.” (Id.)
Furthermore, Applicant argues that “there is no disclosure or suggestion of
varying the pressure or load, based on the desired removal amount.” (Br. 6.)
These contentions are also unavailing. Appealed claim 12 does not
recite any degree of predetermined abrasion. (FF39.) Also, appealed claim
12 has been drafted broadly to read on an apparatus in which the load placed
upon the wheel is caused by a pushing force of the wafer against a stationary
wheel, as described in Hasegawa. (FF39.) The force or load placed upon
the wheel by contact with the wafer would be exactly the same regardless of
whether the wheel exerts a pushing force on a stationary wafer or the wafer
exerts the same magnitude of pushing force against a stationary wheel.
(FF40.) Applicant has not presented any evidence (e.g., sworn expert
testimony) to the contrary. (FF41.) As to varying the load, the claim
language “system for contacting and controlling, during abrading...” does
not distinguish the apparatus of claim 12 over the prior art. Hasegawa’s
pushing device appears to be fully capable of exerting varying forces.
Applicant has not presented evidence (e.g., sworn expert testimony) to the
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contrary. (FF42.) Lastly, Applicant’s arguments regarding the amount of
force, varying the force, and determining the degree of abrasion all relate to
the manner of using the claimed apparatus and have not been shown to
impart any structural difference over the prior art apparatus.

CONCLUSION OF LAW
On this appeal record, Applicant has failed to show that the Examiner
erred in concluding that one of ordinary skill in the art would have found the
subject matter of the appealed claims obvious over the prior art.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR.1.136(a).

AFFIRMED

lp

3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL MN 55133-3427
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