Ex parte Miyazawa et al.

Board of Patent Appeals and Interferences

Mar 26, 2002

09025551 (B.P.A.I. Mar. 26, 2002)

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today was not written for publication and is not
binding precedent of the Board

Paper No. 19

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte YOSHIHIRO MIYAZAWA
and SHUZO SATO
___________

Appeal No. 2000-1713
Application No. 09/025,551
__________

HEARD: March 19, 2002
__________

Before PAK, LIEBERMAN and PAWLIKOWSKI, Administrative Patent
Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal from the examiner’s
refusal to allow claims 1-8, which are the claims pending in
this application.
Claims 1, 7 and 8 are representative of the subject
matter on appeal and are set forth below:
1. A surface processing method for a workpiece,
comprising the steps of:

setting a reference plane in the workpiece;

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Application 09/025,551

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controlling a shape of said reference plane to a planar
shape by deforming the workpiece; and then

removing material constituting the workpiece from the
surface of the workpiece toward said reference plane.
[emphasis added]

7. A workpiece surface processing method as claimed in
claim 1, wherein said workpiece comprises two semiconductor
wafers which are bonded to each other.

8. A semiconductor thin layer forming method comprising
the steps of:

bonding the surface of a first semiconductor wafer and
the surface of a second semiconductor wafer to each other to
form a composite;

controlling a shape of a reference plane which is set in
one of said first semiconductor wafer and said second
semiconductor wafer to have a planar shape by deforming the
composite; and then

removing said first semiconductor wafer from the back
surface of said first semiconductor wafer toward said
reference plane to form a semiconductor thin layer from the
residual first semiconductor wafer. [emphasis added]

In support of the rejections, the examiner relies upon
the following prior art:
Yamaki et al. (Yamaki) 4,962,056 Oct. 9, 1990
Miller 5,529,051 June 25, 1996
Claims 1-7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Miller.
Claim 8 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Miller in view of Yamaki.

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Application 09/025,551

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We have carefully reviewed the claims, specification and
applied art, including all of the arguments advanced by both
the examiner and appellants in support of their respective
positions. This review leads us to conclude that the
examiner’s § 103 rejection is not well founded. Accordingly,
we reverse the examiner’s §103 rejection for essentially those
reasons set forth in the Brief and Reply Brief. We add the
following primarily for emphasis and completeness.
It is well settled that application claims, in
proceedings before the USPTO, are to be given their broadest
reasonable interpretation consistent with the specification.
In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983). Thus, we look to appellants’ specification for guidance
in interpreting the claimed language regarding the recitation
of "by deforming" the workpiece or composite.
We observe that on page 42, first paragraph, of the
specification, appellants disclose that the chuck 40 is
deformed in accordance with the height of the vertically-
removable member 44 by suction force (shown in Figure 12). As
a result, the shape of the reference plane of the workpiece 10
fixed on the workpiece holding face 22 of chuck 40 can be
controlled. In the paragraph bridging pages 42-43 of the
specification, the appellants disclose that workpiece 10 is
attracted to chuck 40 under vacuum suction with sufficient
suction force. Further, chuck 40 is strongly attracted to
holder 43 comprising the pre-load shaft under vacuum suction.
In this way, the workpiece 10 is deformed along the shape of

Appeal No. 2000-1713
Application 09/025,551

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the workpiece holding face 22 of chuck 40 which is deformed by
the operation of the surface straightening portion 42, thereby
straightening the reference plane.
On page 43 of the specification, beginning at line 13,
appellants disclose that in the grinding/polishing process of
workpiece 10, even when any force is applied to the surface of
the workpiece 10, the elastic deformation amount of the
workpiece due to such force is very small. That is, the
elastic deformation amount of the workpiece due to the force
which is applied to the surface of the workpiece from the
grinding/polishing process is extremely smaller than the
deformation amount of the workpiece due to the control of the
reference plane of the workpiece.
Thus, appellants’ disclosure indicates that there is a
distinction between deformation due to the control of the
reference plane of the workpiece versus elastic deformation
due to the force from the grinding/polishing process.
In view of the disclosure as set forth in the
specification as discussed above, it therefore is clear that
the phrase "by deforming" a workpiece or composite means
deformation due to the control of the reference plane of the
workpiece caused by forces from the workpiece holding face 22
of chuck 40 which is deformed by the operation of surface
straightening portion 42, and that therefore the phrase does
not mean elastic deformation due to the force applied at the
surface of the workpiece during grinding/polishing processing.

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Application 09/025,551

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In view of the above claim interpretation, we now analyze
the examiner’s rejections.
As indicated by appellants on page 3 and page 4 of the
brief, neither Miller nor Yamaki teach or suggest controlling
the shape of the reference plane to a planar shape by
deforming the workpiece (deforming as used here means
deforming caused when the workpiece 10 is deformed along the
shape of the workpiece holding face 22 of chuck 40 which is
deformed by the operation of the surface straightening portion
42, thereby straightening the reference plane; deforming as
used here does not mean elastic deforming caused by grinding
or polishing).
The examiner interprets the Miller reference as
controlling the shape of the reference plane during the
grinding operation. (answer, page 3). Hence, the examiner is
misinterpreting the claims with respect to the phrase "by
deforming". Additionally, on page 5 of the answer, the
examiner clearly is interpreting Miller as deforming due to
grinding (and therefore not due to the control of the
reference plane of the workpiece as discussed above).
We observe that Miller does not suggest deforming in the
manner as interpreted above. That is, Miller does not control
the shape of the reference plane by utilizing forces caused
when a workpiece 10 is deformed along the shape of a workpiece
holding face 22 of chuck 40 which is deformed by the operation
of a surface straightening portion 42. The examiner has not
shown that Miller provides such control by such forces.

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Furthermore, the examiner has not explained whether the forces
in Miller cause elastic deformation or deformation as defined
in appellants' specification. We note that the secondary
reference of Yamaki does not cure these deficiencies of
Miller.
Therefore, we determine that the examiner has not set
forth a prima facie case.

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Application 09/025,551

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In view of the above, we reverse the rejections of
record.

REVERSED

Chung K. Pak )
Administrative Patent Judge )
)
)
)
Paul Lieberman ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )

BAP/cam

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Application 09/025,551

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