Ex Parte Newell

Patent Trials and Appeals Board

May 1, 2019

12673057 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/673,057 02/11/2010
29050 7590 05/03/2019
Thomas Omholt
Patent Prosecution Agent
CABOT MICROELECTRONICS CORPORATION
870 NORTH COMMONS DRIVE
AURORA, IL 60504
Kelly Newell
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
100404 5206
EXAMINER
ROSE, ROBERT A
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
05/03/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CMC_PROSECUTION@CABOTCMP.COM
thomas_omholt@cabotcmp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELLY NEWELL
Appeal2017-007970
Application 12/673,0571,2
Technology Center 3700
Before BENJAMIN D. M. WOOD, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kelly Newell ("Appellant") seeks review under 35 U.S.C. § 134(a) of
the Examiner's decision, as set forth in the Final Office Action dated March
28, 2016, and as further explained in the Advisory Action dated August 30,
2016, rejecting claims 1-4, 7-15, and 18-20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 Appellant identifies Cabot Microelectronics Corporation as the real
party in interest. Appeal Br. 1.
2 The Board rendered a prior decision on appeal in this Application on
January 14, 2016 (in Appeal 2013-010438) ("Prior Decision"). We have
reviewed that decision and, to the extent relevant to the issues in this appeal,
have taken that decision into account in the analysis below.
Appeal2017-007970
Application 12/673,057
BACKGROUND
The disclosed subject matter "is directed to a chemical-mechanical
polishing pad comprising a polishing layer and a transparent window."
Spec. ,i 11. Claim 1, the sole independent claim on appeal 3, is reproduced
below, reformatted from the version provided by Appellant, and with
bracketed letters added to identify certain language in clause (b ):
1. A polishing pad comprising:
(a) a polishing layer having a polishing
surface, wherein the polishing surface comprises:
(1) a plurality of grooves disposed into
the polishing layer a measurable depth from
the polishing surface, and
(2) a barrier region free of grooves, and
(b )[(l )] a transparent window disposed in and
surrounded by the barrier region,
[(2)] wherein the transparent window
comprises optically transmissive material
that is different from the material in the
remainder of the polishing pad, and
[(3)] wherein one or more of the
concentric grooves are discontinuous and
have a first end and a second end, and
3 Appellant takes the position that both claim 1 and claim 10 are
independent claims. See Appeal Br. 2. Although we stated a similar
position in our Prior Decision (in the context of which claim 10 recited the
same limitations as current claim 10) (Prior Dec. 2), we now view that
characterization as having been incorrect. Claim 10 is "presented in
dependent form" because it "refer[ s] back to and further limit[ s] another
claim ... in the same application" (37 C.F.R. § l.75(c))-here, claim 1. See
Appeal Br. 5 (Claims App.) (claim 10, reciting, among other limitations,
"contacting the workpiece with the polishing pad of claim l "). This does
not affect the analysis in our Prior Decision.
2
Appeal2017-007970
Application 12/673,057
[( 4)] wherein the barrier region is
disposed between the first and second ends,
and
[(5)] wherein the transparent window
has an upper most window surface
substantially co-planar with the polishing
surface.
REJECTION
Claims 1-4, 7-15, and 18-20 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Swedek (US 7,118,457 B2, issued October 10,
2006) and Turner (US 2005/0060943 Al, published March 24, 2005).
DISCUSSION
A. Claims 1, 3, 4, 7-15 and 18-20
Appellant presents certain arguments addressing all rejected claims as
a group. See Appeal Br. 3-4; Reply Br. 4-5. Because Appellant also
appears to provide additional arguments addressing solely dependent claim 2
(see, e.g., Appeal Br. 4), the analysis of the arguments directed at all rejected
claims determines the outcome for claims 1, 3, 4, 7-15 and 18-20. For this
group, we select claim 1 as representative, with claims 3, 4, 7-15 and 18-20
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
For claim 1, the Examiner relied on Swedek for certain limitations but
now relies on Turner for aspects of limitation 1 (b )(2) ( as identified above).
See Final Act. 2-3; Ans. 2 ("Turner et al disclose a polishing pad having a
window of different composition than the pad (see page 3, para 0026 of
Turner et al)."), 4 ("With regard to Turner et al, a polishing pad having a
window is shown, which is disclosed as having a different composition than
3
Appeal2017-007970
Application 12/673,057
that of the surrounding pad(page 3, para 0026)."). According to the
Examiner, "[t]o make the window in Swedek et al of a different composition
than that of the surrounding pad, to impart different desirable properties to
the window conducive to optical endpoint detection would have been
obvious in view of Turner et al." Ans. 4.
First, Appellant contends that "Swedek does not teach a barrier
region." Appeal Br. 4. The phrase "barrier region" is recited three times in
claim 1: ( 1) in limitation 1 ( a )(2 ), which recites a "barrier region free of
grooves"; (2) in limitation 1 (b )( 1 ), which recites "a transparent window
disposed in and surrounded by the barrier region"; and (3) in limitation
l(b)(4), which recites "wherein the barrier region is disposed between the
first and second ends" of the discontinuous concentric grooves ( referenced
in limitation l(b)(3)). The Examiner relies on Swedek for all of these
limitations, stating, for example, that Figure 2 shows "a window (52)
surrounded on all sides by a barrier region free of grooves" and shows
"[t]hree of the grooves ... as discontinuous with ends which terminate at the
barrier region adjacent to the window." Ans. 2; see also Final Act. 2
(stating, "Note figure 2 [ of Swedek ], showing polishing pad with window
surrounded by a barrier region free of grooves, and having a pattern of
concentric grooves therein.").
Here, Appellant identifies language recited numerous times in claim
1-"barrier region"-and contends that the prior art does not disclose that
limitation, but Appellant does not adequately identify error by the Examiner
with respect to the findings summarized in the prior paragraph. See
3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv) ("The arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant."). Moreover, we
4
Appeal2017-007970
Application 12/673,057
addressed this argument in our Prior Decision. Prior Dec. 3-4. For the same
reasons discussed in that Decision, Appellant has not identified error in the
Examiner's continued reliance on Figure 2 of Swedek as disclosing a
"barrier region" that is "free of grooves."
In the Reply Brief, Appellant focuses on the second of the three
recitations of "barrier region" noted above-limitation 1 (b )( 1 )-with
Appellant stating that "Swedek describes figure 2 as including 'one or more
recesses or indentations 52 formed in the bottom surface of the covering
layer,"' and arguing that "[t]his is not a transparent window disposed in the
barrier region that is shown in figure 2."4 Reply Br. 4 (quoting Swedek,
5:20-21); see also id. (arguing that "the combined references fail to teach a
transparent window disposed in and surrounded by a barrier region").
We understand Appellant to argue that indentations 52 in Swedek is
not a "transparent window." Although the Examiner does at times identify
indentations 52 themselves as the "window,"5 the Examiner also identifies
additional features in Swedek as the "window":
Swedek et al clearly indicate that the thinned portion (54), shown
as a discrete insert [ 62] in figures 2 and 5-7, may comprise an
optically transparent element(see column 2, lines 30-35). This
is interpreted as the pad having a window, at least for some
embodiments of Swedek et al.
Ans. 3.
4 Throughout this Decision, we omit any bolding of reference
numerals in quotations from the references and the briefing.
5 See Ans. 2 (stating that Swedek Figure 2 shows "a window (52)").
5
Appeal2017-007970
Application 12/673,057
FIG._2
Figure 2 shows "a schematic top view illustrating the polishing pad"
shown in Figure 1 and Figure 5 ( one of the Figures cited by the Examiner in
the block quotation above) shows a "schematic cross-sectional side view
illustrating a polishing pad in which a grooveless insert is secured to a
grooved polishing pad." Swedek, 3:64-65, 4:4-6. As an initial matter, we
explain our understanding of the relationship between the figures in Swedek.
Figure 2 (shown above) includes a line 3-3, and Figure 3 (not shown above)
shows a cross sectional view along that line. See Swedek 3:64-67. Figures
6
Appeal2017-007970
Application 12/673,057
4 through 8 (including Figure 5 reproduced above) show similar cross
sectional views along line 3-3, but in the context of different embodiments
of the polishing pad in Figure 2. See id. at 3:66-4:14 (describing each of
Figures 3-6, 7 A, 7B, and 8 as a "schematic cross-sectional side view").
When describing Figures 2 and 3, Swedek states that indentations 52
"create one or more thin sections 54 in the covering layer [22] of the
polishing pad [18]." Id. at 5:22-23. As shown above, Figure 5 identifies
indentations 52 (as also identified in Figure 2) and Swedek discloses that
"[l]ike reference symbols in the various drawings indicate like elements."
Id. at 4:15-16. Thus, the Figure 5 embodiment (as an example) includes
indentations 52, but also includes thin sections 54 created by indentations
52. In addition, the passage cited by the Examiner ( column 2, lines 30-35),
located in the Summary section, discloses that "[t]he region on the polishing
surface corresponding to the indentation may be substantially flat, e.g., it
may [be] free of grooves" and that the "region may be opaque or
transparent." Id. at 2:29-31 (emphasis added), 2:33-34. We understand the
disclosed "region" in this passage to include (in the context of the relied-
upon Figure 5 embodiment, for example) thin section 54 identified by the
Examiner as the recited "transparent window." For these reasons, although
Appellant appears correct that indentations 52 are not themselves
"transparent window[s]," based on the disclosures above, we agree with the
Examiner that Swedek discloses a "transparent window disposed in and
surrounded by a barrier region" as recited in limitation l(b)(l).
In the Reply Brief, Appellant also states that "figures 5 through 7 [ of
Swedek] show a grooveless insert 62" and Appellant argues that "Swedek
does not describe this embodiment, as shown in figures 5 through 7, as
7
Appeal2017-007970
Application 12/673,057
having a barrier region." Reply Br. 4. We disagree. For the reasons above,
Swedek makes clear that the embodiment shown in Figure 5 (for example)
includes the feature in Figure 2 identified by the Examiner as the "barrier
region."
Second, Appellant argues that Swedek "does not teach the transparent
window comprises optically transmissive material that is different from the
material in the remainder of the polishing pad," as recited in limitation
l(b)(2). Appeal Br. 4; see also Reply Br. 4 (stating that "figures 5 through 7
[in Swedek] show a grooveless insert 62, which Swedek describes as being
formed from the same material as the main portion").
This argument does not apprise us of error. In response to Appellant's
argument, the Examiner clarified in the Answer that it would have been
obvious to modify Swedek in view of Turner's teaching of a window having
a different composition than the rest of the pad. Ans. 2, 4. Nonobviousness
cannot be established by attacking prior art references individually when the
rejection is based on the teachings of a combination of references. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). By arguing that
Swedek alone does not disclose all aspects of limitation 1 (b )(2), Appellant
does not address the rejection as articulated in the Answer, in which the
Examiner relies on the combined teachings of Swedek as modified by
Turner. See Ans. 2, 4; see also In re Keller, 642 F.2d 413,426 (CCPA
1981) ("[O]ne cannot show nonobviousness by attacking references
individually.").
Third, Appellant argues that "Turner discloses a polishing pad having
a window and grooves that gradually transition from a maximum depth to
zero proximate the window" and that "Turner thus describes the window
8
Appeal2017-007970
Application 12/673,057
being immediately next to the grooves, and does not describe a barrier
region." Appeal Br. 4. According to Appellant, "Turner does not teach a
barrier region, and does not teach [ that the] barrier region is disposed
between the first and second ends of the grooves" as in limitation l(b)(4).
This argument does not apprise us of error because, as discussed
above, the Examiner relies on Swedek-not Turner-for both the "barrier
region" and the requirement that "the barrier region is disposed between the
first and second ends" as recited in limitation l(b)(4). See Ans. 2-4; Keller,
642 F.2d at 426. Moreover, we addressed part of this argument in our Prior
Decision, noting that "the Examiner does not rely on Turner for ... the
recited 'barrier region."' Prior Dec. 4.
Fourth, Appellant argues that "Turner does not teach wherein the
transparent window has an upper most window surface substantially co-
planar with the polishing surface," as recited in limitation l(b)(5). Appeal
Br. 4; see also Reply Br. 4 ("The claims on appeal require that the
transparent window has an upper most window surface substantially co-
planar with the polishing surface (see Figure 3 of the present application).
This is clearly not described or suggested by Turner.").
This argument does not apprise us of error because the Examiner does
not rely on Turner alone for limitation l(b)(5). Keller, 642 F.2d at 426.
Instead, the Examiner relies on Swedek in combination with Turner for that
limitation. See Ans. 2 ("The window in Swedek et al is disclosed as
substantially co-planar with the pad upper surface (col. 2, line 40).").
For the reasons above, we sustain the rejection of independent claim
1. Claims 3, 4, 7-15 and 18-20 fall with claim 1.
9
Appeal2017-007970
Application 12/673,057
B. Claim 2
Claim 2 recites: "The polishing pad of claim 1, wherein the depth
transitions from a maximum value to zero proximate to the barrier region."
Appeal Br. 5 (Claims App.). The Examiner states that:
Turner et al disclose a polishing pad having a window of
different composition than the pad (see page 3, para 0026 of
Turner et al), the window being surrounded by a pattern of
grooves, at least some of which have depths which gradually
transition from maximum depth to zero proximate the
window(see Figure 5 of Turner et al), for facilitating slurry
transport from the window(see page 3, para 0025).
Ans. 2 ( emphasis added); see also Final Act. 2 ("Turner et al disclose a
polishing pad having a window surrounded by a pattern of grooves, at least
some of which have depths which gradually transition from maximum depth
to zero proximate the window (Figure 5).").
According to the Examiner, "[t]o make the grooves in Swedek et al
gradually transition to zero depth as they terminate proximate the window in
order to allow slurry to be transported away from the window surface and
avoid buildup of slurry on the window surface would have been obvious in
view of Turner et al." Ans. 2-3; see also Final Act. 2 ("To make the
grooves in Swedek et al gradually transition to zero depth as they terminate
proximate the window in order to avoid buildup of slurry on the window
surface would have been obvious in view of Turner et al.").
First, Appellant states that "claim 2 requires of the grooves, 'the depth
transitions from a maximum value to zero proximate to the barrier region"'
whereas "the grooves of Turner, gradually transition from a maximum depth
to zero proximate the window." Appeal Br. 4.
10
Appeal2017-007970
Application 12/673,057
By arguing that Turner alone does not teach all aspects of the
limitation at issue, Appellant does not address the rejection as articulated, in
which the Examiner relies on the combined teachings of Swedek and Turner.
As discussed above, the Examiner relies on Swedek as to the "barrier
region" and provides a reason to modify Swedek in view of the relied-upon
feature of Turner as recited in claim 2.
Second, Appellant asserts error in the reason provided by the
Examiner to modify Swedek in view of Turner in the context of claim 2.
Appellant states, "the Examiner argues that it would have been obvious to
make the grooves in Swedek gradually 'transition to zero depth as they
terminate proximate the window in order to provide a pathway for slurry to
avoid buildup of slurry on the window surface.'" Reply Br. 5 ( quoting Ans.
4). According to Appellant, because "the grooves of Turner are beveled into
an angled perimeter 16, thus creating a pool area for the slurry above the
upper surface of the window," "the motivation used by the Examiner to
modify Swedek with Turner, is not valid" in that "the grooves of Turner
would create slurry buildup, not avoid it." Id.
As an initial matter, we question the timeliness of Appellant's
argument. Although Appellant quotes a reasoning statement provided in the
Answer, a similar reasoning statement was provided in the Final Office
Action. Compare Ans. 4 ("To further make the grooves in Swedek et al
gradually transition to zero depth as they terminate proximate the window in
order to provide a pathway for slurry to avoid buildup of slurry on the
window surface, which would otherwise interfere with either optical or eddy
current measurement, would have been obvious in view of Turner et al."),
with Final Act. 3 ("To further make the grooves in Swedek et al gradually
11
Appeal2017-007970
Application 12/673,057
transition to zero depth as they terminate proximate the window in order to
avoid buildup of slurry on the window surface, to avoid interference with
optical measurement, would have been obvious in view of Turner et al.");
see also 37 C.F.R. § 41.4l(b)(2) ("Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.").
Regardless, addressing the merits of the argument, we are not apprised
of error. Even assuming that angled perimeter 16 may "creat[ e] a pool area
for the slurry above the upper surface of the window" in the context of
Turner (see Turner, Fig. 5), the Examiner does not incorporate angled
perimeter 16 into the modified device of Swedek. Instead, the Examiner
relies on the "depth transitions from a maximum value to zero" (see claim 2)
of grooves 50 as shown in Figure 5 of Turner to modify grooves 28 as
disclosed in Swedek. See Ans. 2-4.
For these reasons, we sustain the rejection of dependent claim 2.
DECISION
We affirm the decision to reject claims 1-4, 7-15, and 18-20 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R.
§ l.136(a)(l)(iv); 37 C.F.R. § 41.50(f).
AFFIRMED
12