Ex Parte Oh et alDownload PDFPatent Trials and Appeals BoardJun 26, 201914078019 - (D) (P.T.A.B. Jun. 26, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/078,019 11/12/2013 Jeonghoon Oh 26185 7590 06/28/2019 FISH & RICHARDSON P.C. (APPLIED MATERIALS) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 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. Ol 7721USA;22558-063001 9581 EXAMINER JAVED, MIRZA ISRAR ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 06/28/2019 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): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEONGHOON OH and JAMIE LEIGHTON1 Appeal 2018-008492 Application 14/078,019 Technology Center 1700 Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and LILAN REN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as Applied Materials, Inc. App. Br. 1. Appeal 2018-008492 Application 14/078,019 Appellants request our review under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1-14, 21, and 22. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A flexible membrane for a carrier head of a chemical mechanical polisher, comprising: a main portion with a lower surface to provide a substrate- mounting surface, the substrate mounting surface having a radius R; an annular outer portion extending upwardly from an outer edge of the main portion, the annular outer portion having a lower edge connected to the main portion and an upper edge; and exactly three annular flaps to divide a volume above the main portion into a plurality of chambers when the flexible membrane is secured to a carrier head, the three annular flaps including a first annular flap joined to an inner surface of the main portion at a radial position between 75% and 95% ofR, a second annular flap joined to the annular outer portion at a position between the lower edge and the upper edge, the second annular flap extending inwardly from the annular outer portion, and a third annular flap joined to the upper edge of the annular outer portion, the third annular flap extending inwardly from the annular outer portion. App. Br. 8 (Claims Appendix). The Examiner relies on the following prior art references as evidence of unpatentability: Perlov Oh Zuniga US 2001/0041526 Al US 2007 /0202785 Al US 2010/0240287 Al 2 Nov. 15, 2001 Aug. 30, 2007 Sept. 23, 2010 Appeal 2018-008492 Application 14/078,019 THE REJECTIONS 1. Claims 1, 5-14, 21, and 22 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Zuniga in view of Oh. 2. Claims 2-4 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Zuniga in view of Oh as applied to claim 1, 5-14, 21, and 22 above, and further in view of Perlov. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). After considering the evidence presented in this Appeal (including the Examiner's Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellant identifies reversible error. Thus, we reverse the Examiner's rejections and add the following primarily for emphasis. Claim interpretation is in dispute and is dispositive in this appeal. On the one hand, it is Appellants' position that claim 1 requires that the flexible membrane has "exactly 3 annular flaps" as recited in the claim, and cannot have any other amount of flaps. Appeal Br. 6. Reply Br. 2. It is the Examiner's position that because of the word "comprising", claim 1 is open-ended, and therefore the amount of flaps is not so limited. Ans. 7. We agree with Appellants' claim interpretation for the following reasons. The transitional term "comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). We note 3 Appeal 2018-008492 Application 14/078,019 also that "comprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997). Therefore, a claim having the word "comprising" in its preamble is open-ended as to having additional elements, but the named elements are essential. In claim 1, a named element is "exactly 3 annular flaps" which is not an open-ended phrase because of the word "exactly". 2 Hence, we interpret claim 1 as requiring that the flexible membrane has "exactly 3 annular flaps" and no more and no less. Because the Examiner's claim interpretation is flawed in this regard, elements of the claim have not been properly addressed, and therefore we reverse the rejections on this basis for the reasons stated by Appellants on page 3 of the Reply Brief. Each rejection is reversed. DECISION ORDER REVERSED 2 Compare Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73 (Fed. Cir. 2005)(the court held that a claim to "a safety razor blade unit comprising a guard, a cap, and a group of first, second, and third blades" encompasses razors with more than three blades because the transitional phrase "comprising" in the preamble and the phrase "group of' are presumptively open-ended). The important distinction in the instant case as compared to the case in Gillette Co. is the fact that the word "exactly" is not open-ended (it's a restrictive term), unlike the word "group of'. 4 Copy with citationCopy as parenthetical citation