11494050 (B.P.A.I. Jul. 17, 2012)

Ex Parte Saikin

Board of Patent Appeals and InterferencesJul 17, 2012

11494050 (B.P.A.I. Jul. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ALAN H. SAIKIN ____________ Appeal 2010-0007759 Application 11/494,050 Technology Center 3700 ____________ Before STEFAN STAICOVICI, GAY ANN SPAHN, and LYNNE H. BROWNE, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Alan H. Saikin (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-4 and 11-14 under 35 U.S.C. § 103(a) as unpatentable over Miller (US 5,876,266, iss. Mar. 2, 1999) and Huh (US 2004/0053007 A1, pub. Mar. 18, 2004). Claims 5-10 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-007759 Application 11/494,050 2 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of manufacturing a polishing pad useful for polishing substrates in a chemical mechanical polishing process using an aqueous- based polishing composition, the method comprising the steps of: feeding polymeric capsules into a liquid polymeric matrix material, the polymeric capsules having a diameter and comprising a polymeric shell having a liquid core consisting essentially of water and incidental impurities contained within the polymeric shell and the liquid polymeric matrix material being a polyurethane prepolymer blend; mixing the polymeric capsules into the liquid polymeric matrix material to distribute the polymeric capsules within the liquid polymeric matrix material, and wherein the liquid polymeric matrix material has a first density measured before the mixing and the polymeric capsules have a second density measured before the mixing within 30 percent of the first density; curing the liquid polymeric matrix material with the polymeric capsules distributed in a cured polymeric matrix material and the diameter of the polymeric capsules expanding less than 20 percent, the polymeric shell holding the liquid core to prevent contact with the liquid polymeric matrix material during forming and to prevent foaming from water reacting with the liquid polymer matrix material, and the polymeric shell having a polishing surface that ruptures to release the liquid core and to create surface asperities for polishing the substrates and the polymeric shell being less Appeal 2010-007759 Application 11/494,050 3 wear-resistant than the cured polymeric matrix material; and cutting grooves into the cured polymeric matrix material with the liquid core conducting heat to cool the polymeric matrix material and to form a polishing pad consisting essentially of polymeric capsules in the cured polyurethane matrix; and the liquid core not reacting with the aqueous-based polishing composition or altering the polishing characteristics of the aqueous-based polishing composition during polishing. OPINION Appellant contends that Miller fails to disclose “use of a water liquid core” and thus, Miller does not to satisfy claim 1’s limitation of “feeding polymeric capsules . . . comprising a polymeric shell having a liquid core consisting essentially of water and incidental impurities.” App. Br. 3.1 Specifically, Appellant argues that Miller discloses “micro-spheroid encapsulants contain[ing] appropriate doses of desired CMP agents,” and therefore, Miller’s polymeric capsules (micro-spheroid encapsulants) do not disclose a liquid core consisting essentially of water and incidental impurities. Id. The Examiner responds to Appellant’s argument by stating that Appellant’s limitation of the polymeric shell “consisting essentially of water and incidental impurities” is deemed to be suggested by Miller et al[.], if not anticipated with respect to this 1 Appellant failed to insert page numbers in his Appeal Brief. Therefore, we are numbering the pages, with page 1 being the page starting with the caption “IN THE UNITED STATES PATENT AND TRADEMARK OFFICE” and the remaining six non-appendix pages being numbered pages 2-7 consecutively therefrom. Appeal 2010-007759 Application 11/494,050 4 limitation. Note that the polymeric capsules in Miller al[.] are expressly characterized as “water balloons” (column 4, line 29) and the microsphere core liquid disclosed in Miller et al[.] may be selected from common polar or non-polar fluids... diluents...or any other fluid phase material” (column 4, lines 36-45). It is the examiner’s position that water would qualify as such a polar fluid, as well as a conventional “diluent”, and certainly as “any other fluid phase material” for the purposes of meeting the language of claim 1. The microcapsules of Miller et al[.] may also encompass conventional lubricants (column 7, lines 7-11), water being certainly regarded as such by those of ordinary skill in the polishing art. Ans. 5-6. We disagree with the Examiner. Although Miller discloses “a method and apparatus for chemical mechanical polishing of a semiconductor wafer with a polishing pad having controlled release of desired micro-encapsulated polishing agents” (Miller, col. 1, ll. 8-12), the Examiner has read Miller’s statement relating to “water balloons” out of context. Miller discusses that micro-spheroid encapsulants, in general, “are known in various industries” e.g., carbonless paper production, and “a basic description of encapsulants would be to describe them as miniature “water balloons.” Miller, col. 4, ll. 25-29. However, Miller specifically discloses micro-spheroid encapsulants that include a two part spheroidal particle which includes a fluid center and contains a desired agent to be delivered to the surface of the polished substrate. Miller, col. 4, ll. 34-38. Miller describes that “[t]he fluid center can include an acid or base, surfactant, polar or nonpolar fluid, chemical reactant, titrant, diluent, buffering agent, solvent, chemical solution or any other fluid phase material,” but never states that the fluid center is water. Appeal 2010-007759 Application 11/494,050 5 See Miller, col. 4, ll. 38-41. Miller further describes the desired agent as an agent selected for its special properties important to a particular silicon semiconductor water polishing process. Miller, col. 7, ll. 62-65. Thus, although Miller discloses a liquid core comprising a fluid and a desired agent, there is no express or implied teaching that the fluid is water and that the desired agent constitutes incidental impurities in order to meet claim 1’s limitation of “a liquid core consisting essentially of water and incidental impurities.” It appears that the Examiner’s conclusion of obviousness is based on the claim interpretation that “a liquid core consisting essentially of water and incidental impurities” is equivalent to “a liquid core comprising water and incidental impurities.” We cannot agree with this claim construction. As claim 1 calls for a liquid core “consisting essentially of water and incidental impurities,” the actual makeup of the liquid core is limited to water, incidental impurities and those additional elements that “do not materially affect the basic and novel properties of the invention.” PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998). In the instant case, the desired agent is chosen because of its effects on the properties of the polishing pad. Thus, Miller’s desired agent cannot fairly be said to be an additional element that would not materially affect the basic and novel properties of the invention. Consequently, Miller does not disclose or suggest a liquid core consisting essentially of water and incidental impurities. Finally, the Examiner does not rely upon Huh to teach a liquid core consisting essentially of water and incidental impurities and Huh does not Appeal 2010-007759 Application 11/494,050 6 teach a liquid core consisting essentially of water and incidental impurities in order to cure Miller’s deficiency. Accordingly, we cannot sustain the Examiner’s rejection of independent claim 1, and claims 2-4 and 11-14 which depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over Miller and Huh. DECISION We reverse the Examiner’s decision to reject claims 1-4 and 11-14. REVERSED hh