Ex Parte Schwandner

Patent Trial and Appeal Board

May 19, 2016

12774163 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121774, 163 05/05/2010
22045 7590 05/23/2016
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Juergen Schwandner
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.
WSAG0267PUS 7399
EXAMINER
CRANDALL, JOEL DILLON
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
05/23/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUERGEN SCHW ANDNER
Appeal2014-004124
Application 12/774,163
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
16. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-004124
Application 12/774,163
CLAIMED SUBJECT MATTER
The claims are directed to a method for the local polishing of a
semiconductor wafer. Claim 1, reproduced below, with emphasis added, is
illustrative of the claimed subject matter:
1 A method for locally polishing one side of a semiconductor
wafer, comprising pressing the semiconductor wafer by means
of a rotatable polishing head against a polishing pad lying on a
rotating polishing plate and containing firmly bound abrasive,
wherein the polishing head is provided with a resilient membrane
concentrically subdivided into a plurality of chambers
individually pressurizable by means of gas or liquid cushions,
and the exerted polishing pressure is independently selectable for
each chamber, wherein the semiconductor wafer is held in
position during polishing by a retainer ring which is also pressed
against the polishing pad with an application pressure,
introducing a polishing agent between the semiconductor wafer
and the polishing pad, and selecting the polishing pressure
exerted on the semiconductor wafer in a chamber lying in the
edge region of the semiconductor wafer of the polishing head,
and selecting the application pressure of the retainer ring, such
that material is essentially removed only at the edge of the
semiconductor wafer.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kajiwara
Gorantla
Wang
Balij epalli
Sheydayi
Chiou
Kamimura
Dupont
US 6,506,105 Bl
US 2004/0127045 Al
US 6,857 ,94 7 B2
US 6,910,951 B2
US 2006/0135047 Al
US 7,232,362 B2
US 2007/0181534 Al
US 7 ,531,428 B2
2
Jan. 14,2003
July 1, 2004
Feb.22,2005
June 28, 2005
June 22, 2006
June 19, 2007
Aug.9,2007
May 12, 2009
Appeal2014-004124
Application 12/774,163
REJECTIONS
Claims 1, 2, and 4--10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kajiwara and Balijepalli.
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kajiwara, Balijepalli and Kamimura.
Claims 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kajiwara, Balijepalli and Chiou.
Claims 1 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang.
Claims 11-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang and Gorantla.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wang and Dupont.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wang and Sheydayi.
OPINION
Method claim 1, the sole independent claim before us, requires, inter
alia, selecting pressure "such that material is essentially removed only at the
edge of the semiconductor wafer." The Examiner relies on Kajiwara (Final
Act. 3 (citing Kajiwara, col. 19, 11. 33-51)) or, in the alternative, Wang
(Final Act. 9 (citing Wang, col. 21, 11. 21-33)) to meet this limitation. A
careful review of the cited portions of each reference reveals only a structure
that is, perhaps, capable of performing this step of the claimed method.
Differing pressures, and thus material removal rates, between the central and
edge regions may be generally suggested by each reference. Kajiwara, col.
17, 11. 45---67; Wang, col. 21, 11. 20-33. However, both references appear to
3
Appeal2014-004124
Application 12/774,163
be more concerned with removing more material from the center than the
edges to compensate for prior fabrication steps. Kajiwara, col. 2, 11. 51-59;
Wang, col. 21, 11. 28-33. The Examiner has not identified any express or
implicit teaching of material being "essentially removed only at the edge of
the semiconductor wafer."
If a prior art device, in its normal and usual operation, would
necessarily perform the method claimed, then the method claimed will be
considered to be unpatentable over the prior art device. In re King, 801 F.2d
1324, 1326-7 (Fed. Cir. 1986). However, the steps of a process patent are
not necessarily taught or suggested by an apparatus which might have been
adapted to carry out those steps. While an apparatus claim may be
unpatentable over a prior device of like construction that is capable of
performing the same function; it is otherwise with a process patent. The
mere possession of an apparatus does not teach or suggest all the possible
processes to which it may be adapted. See Carnegie Steel Co v. Cambria
Iron Co 185 U.S. 403, 424--5 (1902).
The Examiner has not demonstrated that the claimed method,
including the step emphasized above, is performed in the normal and usual
operation of either the Kajiwara or Wang device. Thus, there appears to be a
distinction between the claimed subject matter and the cited prior art. This
distinction is not accounted for by the Examiner with further evidence or
reasoning (Reply Br. 2) to demonstrate why, even in light of this distinction,
the claimed subject matter would have been obvious. We therefore conclude
that the Examiner has not established the unpatentability of the subject
matter claimed. Accordingly, the Examiner's rejections cannot be sustained
on the grounds set forth by the Examiner.
4
Appeal2014-004124
Application 12/774,163
DECISION
The Examiner's rejections are reversed.
REVERSED
5