Ex Parte NewellDownload PDFPatent Trial and Appeal BoardJan 12, 201612673057 (P.T.A.B. Jan. 12, 2016) Copy Citation 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). 2 Appeal2013-010438 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. 3 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. 4 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). 5 Appeal2013-010438 Application 12/673,057 cda AFFIRMED 6 Copy with citationCopy as parenthetical citation