Ex Parte Naik

Patent Trial and Appeal Board

Feb 11, 2013

11639659 (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SUJIT NAIK
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Appeal 2010-011393
Application 11/639,659
Technology Center 3700
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Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
JAMES A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011393
Application 11/639,659

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STATEMENT OF THE CASE1
Sujit Naik (Appellant) seeks our review under 35 U.S.C § 134 of the
Examiner’s final decision rejecting claims 1-20 and 61-63. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Appellant’s claimed invention relates to polishing liquids for
activating and/or conditioning fixed abrasive pads, and associated systems
and methods. Spec. [0001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for using a polishing pad, comprising:
disposing a polishing liquid on a polishing surface of a
polishing pad, the polishing pad including a matrix material and
a plurality of abrasive elements fixedly distributed in the matrix
material, the polishing liquid including a plurality of particles
that are suspended in the polishing liquid and at least
approximately chemically inert with respect to the abrasive
elements;
contacting the polishing surface of the polishing pad with a
semiconductor wafer in the presence of the polishing liquid to
remove material from the semiconductor wafer, at least a part
of the removed material forming deposits on the abrasive
elements of the polishing pad; and
moving at least one of the polishing pad and the plurality of
particles relative to the other to remove the deposits from the
abrasive elements of the polishing pad.
The Examiner relies upon the following evidence:
James US 6,337,281 Jan. 8, 2002

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jan. 4, 2010) and Reply Brief (“Reply Br.,” filed Jun. 1, 2010),
and the Examiner’s Answer (“Ans.,” mailed Apr. 2, 2010).
Appeal 2010-011393
Application 11/639,659

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Claims 1-20 and 61-63 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by James.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
ANALYSIS
Claims 1-13 and 61-63
Independent claim 1 requires “moving at least one of the polishing
pad and the plurality of particles [suspended in the polishing liquid] relative
to the other to remove the deposits from the abrasive elements of the
polishing pad.” Independent claim 61 requires “scrubbing the abrasive
elements with the particles in the polishing liquid to remove the deposited
material from the abrasive elements of the polishing pad.”
We find that the Examiner has not established that James expressly or
inherently describes the use of particles in the polishing liquid to remove
deposits or deposited material from the abrasive elements of the polishing
pad as required by claims 1 and 61. We disagree with the Examiner’s
assertion that Examples 2 and 3 of James disclose the limitations. Ans. 3.
Example 2 of James does not address a polishing liquid and Example 3
expressly states that “particle-free polishing slurry” was used. James Col.
14, ll. 65 – Col. 15, ll. 38. Accordingly, neither Example 2 nor Example 3 of
James discloses the use of particles in the polishing liquid for the purpose of
removing deposits from the abrasive elements of the polishing pad.
Appeal 2010-011393
Application 11/639,659

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We further find unsupported the Examiner’s conclusory assertion that
claimed features related to the removal of deposits from the abrasive
elements in the polishing pad “inherently occur in the art.” Ans. 4. The
Examiner has not shown that the missing descriptive material is “necessarily
present,” as opposed to merely probably or possibly present in the prior art,
and therefore has not established inherent anticipation of the claimed feature.
See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). We therefore
reverse the Examiners rejection of claims 1 and 61, as well as the respective
associated dependent claims 2-13 and 62 and 63.
Claims 14-20
Independent claim 14 requires “moving at least one of the polishing
pad and the semiconductor wafer relative to the other to remove material
from the semiconductor wafer while simultaneously removing the deposited
material from the abrasive elements of the polishing liquid.” Appellant
argues that James does not disclose the simultaneous removal of material
from the semiconductor wafer and of deposited material from the abrasive
elements. App. Br. 14. The Examiner does not directly respond to this
argument in the Examiner’s Answer. To the extent the Examiner suggests
that such a limitation inherently occurs in the prior art, we again find as
discussed above that the Examiner has not demonstrated that the claimed
feature is “necessarily present,” and therefore has not established inherent
anticipation of the claimed feature. Accordingly, we reverse the Examiners
rejection of claim 14, as well as the associated dependent claims 15-20.
Appeal 2010-011393
Application 11/639,659

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CONCLUSIONS OF LAW
We conclude that Appellant has overcome the Examiner’s rejection of
claims 1-20 and 61-63 under 35 U.S.C. § 102(b) as being anticipated by
James.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-20 and
61-63.
REVERSED

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