Ex Parte Kondo et al

Board of Patent Appeals and Interferences

Mar 10, 2010

10772429 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOMOHIRO KONDO, MASAHIKO IIZUMI, MASAHIRO
OMATA, KIYOSHI HASEGAWA, TAKASHI OGINO, TAKAFUMI
WATANABE, YOSHIYUKI CHIDA, YASUSHI MATSUSHITA, and
KAZUO TAKEDA
____________

Appeal 2009-005350
Application 10/772,429
Technology Center 3700
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Decided: March 10, 2010
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Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Tomohiro Kondo et al. (Appellants) appeal under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1, 3, 4, 6, 7, 9, 10, 26,
and 27. Claims 2, 5, 8, 21, 22, and 25 have been canceled and claims 11-20,
23, and 24 have been withdrawn by the Examiner. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention relates to a method and device for surface
finishing a workpiece W including a workpiece support WS, a pressure
applying mechanism 10 for applying a pressure force to lapping film 11, a
drive mechanism 40 for driving the workpiece W, and an oscillating
mechanism 50 for laterally shifting at least one of the workpiece W or the
lapping film 11. Spec. 10, ll. 11-26 and fig. 1. The pressure applying
mechanism 10 includes an upper shoe case 28A carrying a plurality of shoes
21A and a lower shoe case 28B carrying a plurality of shoes 21B. Spec. 12,
ll. 19-22 and fig. 2. The upper and lower shoes 21A and 21B, respectively,
are positioned mutually offset by an offset displacement δ such that they
overlap in a central region C and do not overlap in the terminal regions D of
the workpiece periphery W1. Spec. 16, ll. 6-14 and fig. 3. The offset
displacement δ is smaller than the oscillating stroke provided by oscillating
mechanism 50. Spec. 18, ll. 19-24.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A surface finishing apparatus for
surface finishing a target shaped periphery of a
workpiece into a mid-concave profile, comprising:
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a workpiece supporting mechanism for
supporting the workpiece having the target shaped
periphery to be surface finished;

a surface finish tool including a lapping film
adapted to be in abutting contact with the target
shaped periphery of the workpiece;

a pressure applying mechanism including a
plurality of shoes disposed on a rear side of the
lapping film to be operative to apply a pressure
force to the lapping film to cause the lapping film
to be held in pressured contact with the target
shaped periphery of the workpiece;

a drive mechanism for rotating the
workpiece about an axial direction during
operation of the pressure applying mechanism to
allow the surface finish tool to surface finish the
target shaped periphery of the workpiece into the
mid-concave profile, while exhibiting a
distribution pattern of the pressure force of the
surface finish tool; and

an oscillating mechanism for oscillating at
least one of the workpiece and the lapping film in
the axial direction of the workpiece in a given
oscillation stroke such that a working position of
the lapping film is cyclically shifted in the given
oscillation stroke with respect to the target shaped
periphery of the workpiece to allow the workpiece
to be surface finished in the mid-concave profile,

wherein the pressure applying mechanism is
adapted to operatively hold the plurality of shoes
on the rear side of the lapping film in different
contact areas in a partially overlapping relationship
at a central region of the target shaped periphery of
the workpiece and in non-overlapping relationship
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in both terminal regions of the target shaped
periphery such that the plurality of shoes are held
in opposing offset positions with offset
displacement of each of the plurality of shoes set
to be less than the given oscillation stroke provided
by the oscillating mechanism to allow the central
region of the target shaped periphery to be lapped
at a greater rate than those at which other regions
of the target shaped periphery are lapped, resulting
in the target shaped periphery having a surface
profile formed in the mid-concave profile having a
depth equal to or greater than 5 µm and equal to or
less than 20 µm.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Judge US 4,682,444 Jul. 28, 1987
Hirayama (translation)1 JP 10-217090 Aug. 18, 1998

Appellants seek review of the Examiner’s rejection of claims 1, 3, 4,
6, 7, 9, 10, 26, and 27 under 35 U.S.C. § 103(a) as unpatentable over Judge
and Hirayama.2

1 Both Appellants and the Examiner refer to Hirayama as “JP ‘090.”
See, e.g., Ans. 4 and App. Br. 13.
2 On Page 3 of the Examiner’s Answer, in the heading of this rejection,
the Examiner states that claims 1-3, 9, 10, 26 and 27 are rejected under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of Judge and
Hirayama. However, claim 2 was canceled in Appellants’ Amendment filed
May 25, 2006. In addition, the Examiner has omitted claims 4, 6, and 7
from the heading, although they are under final rejection. See Final
Rejection, mailed Dec. 7, 2007, at 2. For the purpose of this appeal, we shall
consider the insertion of claim 2 and the omission of claims 4, 6, and 7 as
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OPINION
Appellants argue that:
Neither Judge nor JP '090 teach or suggest the
feature of shoes held as recited. Specifically, the
shoes of JP '090 are not held in opposing offset
positions such that their respective offset
displacements are set to be less than the given
oscillating stroke provided by the oscillating
mechanism.

App. Br. 20.
In response, the Examiner takes the position that:
[T]he pressure applying mechanism [of Judge] is
modified in view of JP'090 or "adapted to"
operatively hold the shoes on the rear side of the
lapping film in different contact areas in a partially
overlapping relationship in a center region (e.g.,
Fig. 2, JP'090) of the target shaped periphery of the
workpiece with an offset displacement of
each of the plurality of shoes set to be less than the
given oscillating stroke, i.e., setting the parameters
of the apparatus, e.g., offset less than the
oscillation is considered by the examiner to be
obvious to one of ordinary skill in the art is
optimizing the operation based on intended results,
as such modification would only require routine
experimentations which yield predictable results.
Ans. 5.
At the outset, we agree with the Examiner that Judge discloses all the
features of independent claims 1, 26, and 27 with the exception of partially
overlapping shoes at the central region and non-overlapping shoes at the
terminal regions of the surface of a workpiece. Ans. 3. We further agree

typographical errors. The correct numbering of the claims on appeal is
shown above.
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with the Examiner that Hirayama shows such an arrangement of shoes in a
paper lapping device. Ans. 4. See also, Hirayama, para. (0013) and fig. 2.
However, like Appellants, we find that neither Judge nor Hirayama discloses
any relationship between the oscillation stroke provided by the oscillating
mechanism of Judge and the offset displacement of the shoes of Hirayama.
Although we appreciate the Examiner’s position that Judge discloses the
“importance of the rate of lateral oscillation of [the] upper and lower shoes”
(Ans. 6-7), nonetheless, the combined teachings of Judge and Hirayama do
not disclose a relationship between the oscillation stroke provided by the
oscillating mechanism of Judge and the offset displacement. At most, we
find that Judge discloses only the importance of the oscillation rate in
producing a desired machining action. See Judge, col. 6, ll. 10-14. We
could not find any teaching in either Judge or Hirayama that would have led
a person of ordinary skill in the art to a relationship between the oscillation
stroke and the offset displacement of the shoes, moreover, to a specific
relationship where the offset displacement is “set to be less than the given
oscillation stroke” of the oscillating mechanism, as called for by each of
claims 1, 26, and 27. Emphasis added. Although we appreciate the
Examiner’s position that setting the offset displacement of the shoes to be
less than the oscillation stroke would require a person of ordinary skill in the
art to use mere routine experimentation; nonetheless, that same person of
ordinary skill in the art would have had to first recognize the benefits of a
relationship between the offset displacement of the shoes and the oscillation
stroke of the oscillating mechanism before using routine experimentation to
set an optimum value. Hence, we do not find that the Examiner has shown
that the combined teachings of Judge and Hirayama disclose a relationship
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between the oscillation stroke and the offset displacement of the shoes, and
moreover, a specific relationship where the offset displacement is “set to be
less than the given oscillation stroke” of the oscillating mechanism, as called
for by each of claims 1, 26, and 27.
In conclusion, we agree with Appellants that the combined teachings
of Judge and Hirayama do not disclose all the limitations of independent
claims 1, 26, and 27. Therefore, the Examiner’s conclusion of obviousness
based on the teachings of Judge and Hirayama is flawed. Accordingly, the
rejection of independent claims 1, 26, and 27 or dependent claims 3, 4, 6, 7,
9, and 10 cannot be sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed.
Cir. 1988) (If an independent claim is nonobvious under 35 U.S.C. § 103,
then any claim dependent therefrom is nonobvious).

DECISION
The Examiner’s decision to reject claims 1, 3, 4, 6, 7, 9, 10, 26, and
27 is reversed.

REVERSED

Klh

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