Ex Parte Newell

Patent Trial and Appeal Board

Jan 12, 2016

12673057 (P.T.A.B. Jan. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/673,057 02/11/2010
29050 7590 01/14/2016
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
3727
NOTIFICATION DATE DELIVERY MODE
01114/2016 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
Appeal2013-010438
Application 12/673,057
Technology Center 3700
Before THOMAS F. SMEGAL, ERIC C. JESCHKE, and
MARK A. GEIER, 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 to reject claims 1--4, 7-15, and 18-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2013-010438
Application 12/673,057
The disclosed subject matter "is directed to a chemical-mechanical
polishing pad comprising a polishing layer and a transparent window."
Spec. i-f 11. Claims 1 and 10 are independent claims. Claim 1 is reproduced
below with emphasis added:
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) a transparent window disposed in and
surrounded by the barrier region,
wherein one or more of the concentric
grooves are discontinuous and have a first end and
a second end, and wherein the barrier region is
disposed between the first and second ends, and
wherein the transparent window has an upper most
window surface substantially co-planar with the
polishing surface.
REJECTION ON APPEAL
Claims 1--4, 7-15, and 18-20 are 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).
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Application 12/673,057
DISCUSSION
Appellant argues the patentability of all the claims together. Appeal
Br. 3-5. We select claim 1 as representative, with the remaining claims
standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2012).
Claim 1 recites a "polishing pad" comprising, inter alia, "a
transparent window disposed in and surrounded by [a] barrier region" that is
"free of grooves." Appeal Br. 6 (Claims App.). For these limitations, the
Examiner relies on Swedek, stating: "Note figure 2, showing polishing pad
with window surrounded by a barrier region free of grooves, and having a
pattern of concentric grooves therein." Final Act. 2 (mailed Sept. 18. 2012).
Appellant argues that the "optically transparent element of the
Swedek reference is not 'disposed in and surrounded by a barrier region"' as
recited in claim 1. Appeal Br. 4. Appellant states that "Swedek teaches that
the region on the polishing surface defined by the indentation represents the
transparent region" and that "[t]his is presumably what the Examiner has
defined as the window." Id. at 3--4 (discussing Swedek, col. 2, 11. 24--27,
29-33; Non-Final Act. 3 (mailed Mar. 22, 2012)). According to Appellant,
"Swedek teaches that the[] 'region on the polishing surface corresponding to
the indentation in the back surface is either free of grooves or has a second
plurality of grooves that are shallower than the first plurality of grooves"'
and "[ t ]herefore, Swedek is only addressing that region on the polishing
surface, corresponding to the indentation in the back surface, as being free of
grooves." Id. at 4 (quoting Swedek, col. 2, 11. 24--27). "In other words, the
area defined as the window may be free of grooves" but "[ t ]here is no
description of a barrier region, or that the barrier region is free of grooves."
Id.
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Appeal2013-010438
Application 12/673,057
In response, the Examiner essentially repeats the finding (set forth
above) regarding Figure 2 of Swedek, and states, "[t ]hose concentric
grooves which would otherwise intersect with the window terminate at a
location spaced from the window to define a barrier region free of grooves."
Ans. 2. 1
Although the text highlighted by Appellant does not appear to
describe any region outside of the "region on the polishing surface
corresponding to the indentation in the back surface" as "free of grooves"
(see Swedek, col. 2, 11. 24--34), we see no error in the Examiner's findings
that Figure 2 of Swedek discloses the limitations at issue (Final Act. 2; Ans.
2). See In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) ("[A] drawing in a
utility patent can be cited against the claims of a utility patent application
even though the feature shown in the drawing was unintended or
unexplained in the specification of the reference patent.").
Appellant also contends that Turner "teaches a polishing pad with a
window, but the window is recessed from the polishing surface and also
does not describe a barrier region." Appeal Br. 4. We are not apprised of
error based on these arguments because the Examiner does not rely on
Turner for either the recited "barrier region" or the "substantially co-planar"
limitation in claim 1. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) ("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.").
1 To the finding regarding Figure 2, the Examiner adds that the
"window compris[es] a thinned region (54)." Ans. 2.
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Appeal2013-010438
Application 12/673,057
Finally, for procedural reasons, we will not address the discussion in
the Reply Brief in which Appellant presents new arguments as to the
reasoning provided in support of the conclusion of obviousness. See Reply
Br. 5 (paragraph beginning "The Examiner's argument"); see also 37 C.F.R.
§ 41.41 (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."). These arguments address the Rejection as originally
set forth in the Final Office Action, rather than positions first provided in the
Answer. Compare Final Act. 2, with Ans. 2 (both stating, "To make the
grooves in Swedek et al gradually transition to zero depth as they terminate
["near" or "proximate"] the window in order to avoid buildup of slurry on
the window surface would have been obvious in view of Turner et al.").
Appellant has not shown good cause for failing to provide these arguments
in the Appeal Brief.
For the reasons set forth above, we sustain the decision to reject claim
1 as unpatentable over the combined teachings relied upon by the Examiner.
Claims 2--4, 7-15, and 18-20 fall with claim I.
CONCLUSION
For the reasons set forth above, 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. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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Appeal2013-010438
Application 12/673,057
cda
AFFIRMED
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