Ex Parte Paik et al

Patent Trials and Appeals Board

Jul 9, 2019

12409371 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/409,371 03/23/2009 Young J. Paik
26185 7590 07/11/2019
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.
012203/USA/AGS/SPARES/DP 1263
EXAMINER
MACARTHUR, SYLVIA
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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 YOUNG J. PAIK, MEL VIN BARRENTINE, ABHIJIT Y. DESAI,
HAI NGUYEN, ASHISH BHATNAGAR and RAJKUMAR
ALAGARSAMY
Appeal2018-007023
Application 12/409,371
Technology Center 1700
Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from a final
rejection of claims 5, 7-12, 24 and 25. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
1 Applied Materials, Inc. is identified as the real party in interest. App. Br.
1.
Appeal2018-007023
Application 12/409,371
The invention is generally directed to a membrane for a substrate
carrier head comprising a membrane body that is partially coated with a non-
stick coating. Spec. ,r,r 13, 16 and 46. Claim 5 is illustrative of the subject
matter claimed and is reproduced below:
5. A membrane for a substrate carrier head, comprising:
a membrane body including
a central portion having a mounting surface for
engaging a substrate;
a peripheral portion that extends vertically away
from the central portion, the peripheral portion connected
to the central portion at an outer edge of the mounting
surface;
a bead at an edge of the peripheral portion to
engage a receiving structure on the carrier head, the bead
being thicker than the peripheral portion; and
a non-stick coating of different composition than
the membrane body covering a portion of the membrane
body to form a coated portion and an uncoated portion,
wherein the uncoated portion includes the bead, wherein
the non-stick coating extends across the central portion
including a perimeter region of the mounting surface that
is adjacent the outer edge at which the peripheral portion
is connected to the central portion, and wherein the non-
stick coating extends around a comer at the outer edge
and on the peripheral portion up to the bead but does not
cover the bead.
Independent claim 9 is directed to a method of making essentially the
membrane of claim 5.
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Application 12/409,371
Appellants request review of the following rejections from the
Examiner's Final Office Action:
I. Claims 5, 7, 8, 24 and 25 rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Fukaya (US 2005/0028931 Al, published Feb.
10, 2005), Homma (US 6,719,618 B2, published Apr. 13, 2004), and Oh
(US 2007 /0202785 Al, published Aug. 30, 2007). Final Act. 3; App. Br. 2.
II. Claims 5, 7, 8, 24 and 25 rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Bozokezec2 (CN 200951520 Y, published
Sept. 26, 2007, and relying on provisional application US 60-625274,
entered into the record by the Examiner on February 8, 2017, as the English
equivalent) and Homma. Final Act. 7; App. Br. 6.
III. Claims 9-12 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Fukaya, Homma, Oh, and Marquardt (US 6,758,939 B2,
published July 6, 2004). Final Act. 6; App. Br. 7.
IV. Claims 9-12 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Bozokezec, Homma, and Marquardt. Final Act. 1 O; App.
Br. 7
Appellants present arguments only for independent claims 5 and 9.
See generally App. Br. Therefore, consistent with Appellants' statement (id.
at 2), we select claims 5 and 9 as representative of the subject matter claimed
and decide the appeal as to all grounds of rejections based on Appellants'
arguments made in support of the patentability of claims 5 and 9.
2 Appellants refer to the Examiner's Bozokezec reference as Brezoczky in
the arguments due to the cited provisional application. We treat Appellants'
arguments as directed to Bozokezec for the purposes of this opinion.
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Application 12/409,371
OPINION
After review of the respective positions Appellants provide in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we AFFIRM the Examiner's prior art rejection of claims 5, 7-
12, 24, and 25 under 35 U.S.C. § 103(a) for essentially the reasons the
Examiner presents in the Final Office Action and the Answer. We add the
following for emphasis.
Claim 5
Claim 5 is generally directed to a membrane for a substrate carrier
head comprising a membrane body with a non-stick coating extending
across a central portion and including a perimeter region of the mounting
surface of the membrane up to the bead portion but not covering the bead.
Spec. ,r,r 13, 16, 46.
The Examiner finds that the combined teachings of Fukaya and
Homma suggest a membrane for a substrate holding and polishing apparatus
where the membrane comprises a non-stick coating or surface texture that
prevents adhesion between the membrane and the substrate being polished.
Final Act. 3--4; Fukaya ,r,r 12, 67-71; Homma Abst., col. 5, 11. 19-30. The
Examiner finds that the membrane from the combined teachings differs from
the subject matter of claim 5 in that the combined teachings do not disclose a
non-stick coating or surface texture that extends over the membrane as
claimed. Final Act. 4. The Examiner finds Oh teaches as known to provide
a membrane for a chemical mechanical polishing (CMP) carrier head with a
non-stick surface texture that extends across the central, peripheral, and flat
lip portions of the membrane while not providing such surface texture to the
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Application 12/409,371
lip portion used to clamp the membrane to the carrier head. Final Act. 5---6;
Oh Figure 2, ,r,r 23, 26, 27. The Examiner finds that Oh discloses the
member is textured to reduce adhesion between the membrane and the
substrate. Final Act. 5; Oh ,r 26. The Examiner determines that it would
have been obvious to one having ordinary skill in the art to modify Fukaya's
non-stick coating by extending the coating to the peripheral portion up to the
bead but not including the bead in view of Oh's teachings. Final Act 6.
In an alternative rejection, the Examiner finds Bozokezec teaches a
membrane for a substrate holding and polishing apparatus where the
membrane includes central, peripheral and flat lip portions textured to
reduce adhesion between the membrane and the substrate being polished and
having a smooth (i.e., not textured) bead. Final Act. 7; Bozokezec 5-6 and
Figure IA. The Examiner finds Bozokezec does not teach the use of a non-
stick coating to texture the surface of a CMP membrane. Final Act. 8. The
Examiner finds that Homma teaches the use of surface textures and non-
stick coatings as suitable alternatives to overcome the sticking force between
a retainer or substrate and the membrane. Final Act. 8; Homma col. 4, 1. 18-
col. 5, 1. 44. The Examiner determines that it would have been obvious for
one of ordinary skill to modify Bozokezec' s CMP membrane by replacing
the surface texture with a non-stick coating in view of Homma's teachings.
Final Act. 8-9.
Arguments for Rejection I
Appellants argue that Fukaya explicitly teaches away from applying a
coating to the region of the membrane that transmits torque. App. Br. 3.
Appellants contend that the outermost part of the membrane serves to
perform the torque transmission and, thus, it is desirable that a coating
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Application 12/409,371
should not be applied to such part. App. Br. 4 (citing to Fukaya ,r 66).
These arguments do not persuade us of reversible error in the
Examiner's determination of obviousness.
It is well settled that a reference may be relied upon for all that it
discloses and not merely the preferred embodiments as suggested by
Appellants. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) ("'[A]ll disclosures of the prior art, including unpreferred
embodiments, must be considered.'" ( Quoting In re Lamberti, 545 F .2d 7 4 7,
750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982)
( explaining that a prior art reference's disclosure is not limited to its
examples). The disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442,446 n.3 (CCPA 1971).
As the Examiner notes (Ans. 12), Fukaya discloses that the coating to
a main part of the membrane which performs the torque transmission is
optional (Fukaya ,r,r 66-67). Appellants have not adequately explained why
this embodiment limits the broader disclosure of the reference or teaches
away from the claimed invention.
Appellants further argue that Homma' s description of coating and
texturing does not make these approaches equivalent to each other because
even trivial consideration of the mechanical principles involved by a person
of ordinary skill in the art would indicate that coating and texturing do not
have the same effect on the torque transmission properties of the membrane.
App. Br. 5. Appellants also argue that Oh does not describe the use of a
non-stick coating and that, even in view of Oh and Homma, a person of
ordinary skill, following Fukaya's disclosure, would use texturing on the
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portion performing the torque transmission rather than a non-stick coating.
Id. at 5-6.
The premise of these arguments is that Fukaya teaches away from
applying a coating to the region of the membrane that transmits torque. As
we note above, Appellants have not adequately explained why Fukaya
teaches away from such an embodiment.
Moreover, Appellants' arguments are unavailing because they do not
address the rejection the Examiner presents. It is well settled that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 425-26 (CCPA 1981) (citations omitted) ("The test
[ for obviousness] is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.").
As the Examiner finds, the combined teachings of Fukaya and
Homma suggest a membrane comprising a non-stick coating or surface
texture that prevents adhesion between the membrane and the substrate but
do not explicitly teach extending the non-stick coating or surface texture
over the regions of the membrane as claimed. Final Act. 3--4. The
Examiner finds Oh teaches as known to provide a membrane for a chemical
mechanical polishing (CMP) carrier head with a non-stick surface texture
that extends over claimed regions of the membrane. Id. at 5---6. The
Examiner determines that it would have been obvious to one having ordinary
skill in the art to modify Fukaya' s non-stick coating to cover the peripheral
portion up to the bead but not including the bead in view of Oh's teachings.
Id. at 6. Thus, the Examiner provides a reasonable basis for one skilled in
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the art to coat Fukaya's membrane, as claimed, and reasonably expect such a
membrane to be suitable for Fukaya's CMP device. In re O'Farrell, 853
F.2d 894, 904 (Fed. Cir. 1988) ("For obviousness under§ 103, all that is
required is a reasonable expectation of success."). Appellants have not
argued adequately to the contrary.
Arguments for Rejection II
Appellants argue that Bozokezec does not disclose a non-stick coating
and, even given Homma' s disclosure, Fukaya still teaches a person of
ordinary skill to avoid placing the non-stick coating on the edge portion.
App. Br. 6. Therefore, Appellants contend that a person of ordinary skill
would not provide a non-stick coating to the membrane regions as claimed.
We are unpersuaded of reversible error in the Examiner's
determination of obviousness in the Bozokezec based rejection. By the
reference to Fukaya, it is clear that the premise of Appellants' arguments is
again that one skilled in the art would not apply a non-stick coating to the
region of the membrane that transmits torque. We have addressed this issue
above and remain unpersuaded by these arguments for the same reasons.
Accordingly, we affirm the Examiner's prior art rejections of claims
5, 7, 8, 24 and 25 under pre-AIA 35 U.S.C. § 103(a) based on Fukaya
(Rejection I) and Bozokezec (Rejection II) for the reasons the Examiner
presents and we give above.
Claim 9
Claim 9 recites a method of forming a membrane for a planarizing
apparatus comprising a step of masking a portion of a flexible article
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(membrane) to block the non-stick coating from coating this portion. That
is, the claimed invention masked the portions of the membrane to remain
uncoated.
We refer to the Examiner's Final Office Action for a statement of the
rejections (Rejections III and IV) of this claim. Final Act. 6-7, 10.
"To mask" is defined as "to cover or shield a part of (a design, picture,
etc.) in order to prevent reproduction or to protect the surface from the
colors used, as in working with an air brush or in painting. "3 Marquardt
discloses as known to protect surfaces from exposure to undesirable
compositions by masking these surfaces using portions of a plastic sheet.
Marquardt col. 6, 11. 20-58 (discussing the benefit of using portion 272 of a
plastic sheet 246 as a mask to protect an inner cylindrical surface of
component 230 as well as an adhesive that binds the component 230 to the
plastic sheet 246 from chemical attack by components of the CMP slurry).
Thus, the concept of covering (masking) a portion of an article so it is not
coated or undesirably exposed to unwanted compositions is known in the art.
We have considered Appellants' arguments for these rejections (App.
Br. 7-8) but are unpersuaded of reversible error by the Examiner. Given
that both Fukaya and Bozokezec disclose coated membranes having portions
that remain uncoated (Fukaya ,r 16; Bozokezec 5), there is a reasonable basis
for one skilled in the art to have used a process of making a membrane with
uncoated portions that includes the known use of a mask, as discussed
above, to prevent portions desired to remain uncoated from being exposed to
the coating material.
3 "mask." Dictionary.com, 2019.
https://www.dictionary.com/browse/masking ( accessed July 1, 2019).
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Accordingly, we AFFIRM the Examiner's prior art rejections of
claims 9-12 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 5, 7-12, 24, and25 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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