Ex Parte Taylor

Board of Patent Appeals and Interferences

May 30, 2008

10310256 (B.P.A.I. May. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte THEODRE M. TAYLOR 8
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10
Appeal 2008-0895 11
Application 10/310,256 12
Technology Center 3700 13
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Decided: May 30, 2008 16
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Before WILLIAM F. PATE, III, MURRIEL E. CRAWFORD and HUBERT 19
C. LORIN, Administrative Patent Judges. 20
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PATE, III, Administrative Patent Judge. 22
23
DECISION ON APPEAL 24
25
STATEMENT OF CASE 26
The Appellant appeals under 35 U.S.C. § 134 (2002) from a Final 27
Rejection of claims 18-21, 24-31, 33-37 and 39-48. Claims 23, 32 and 38 28
have been indicated to be allowable if rewritten in independent form. 29
Claims 1-17 and 22 have been previously canceled. We have jurisdiction 30
under 35 U.S.C. § 6(b) (2002).31
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The Appellant claims various methods for securing a subpad to a 1
subpad support in a device that polishes semiconductor structures. 2
Representative independent claims 18, 27 and 34 read as follows: 3
18. A method for securing a subpad to a subpad 4
support of an apparatus for polishing one or more layers 5
of a semiconductor device structure, comprising: 6
obtaining access to the subpad support; 7
assembling the subpad with the subpad support; 8
and 9
nonadhesively securing the subpad to the subpad 10
support. 11
12
27. A method for securing a subpad to a subpad 13
support of an apparatus for polishing one or more layers 14
of a semiconductor device structure, comprising: 15
obtaining access to the subpad support; 16
positioning at least a portion of a periphery of the 17
subpad within a lip protruding from the subpad support, 18
the lip engaging at least the portion of the periphery of 19
the subpad; and 20
nonadhesively securing the subpad to the subpad 21
support. 22
23
34. A method for securing a subpad to a subpad support of an 24
apparatus for polishing one or more layers of a semiconductor 25
device structure, comprising: 26
obtaining access to the subpad support; 27
assembling the subpad with the subpad support; and 28
mechanically engaging a structure on a backing of the 29
subpad. 30
31
Independent claim 40 recites a method for securing a subpad to a 32
subpad support including applying a negative pressure to a backing of the 33
subpad through the subpad support. 34
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The prior art relied upon by the Examiner in rejecting the claims is: 1
Elledge 6,244,944 B1 Jun. 12, 2001 2
Tietz 6,135,859 Oct. 24, 2000 3
4
The Examiner rejected claims 27-31, 33, 40-42 and 44 under 5
35 U.S.C. § 102(e) as lacking novelty over Elledge. 6
The Examiner also rejected claims 18-21, 24-26, 34-37, 39-43 and 45-7
48 under 35 U.S.C. § 102(e) as lacking novelty over Tietz. 8
We AFFIRM-IN-PART and enter a NEW GROUND OF 9
REJECTION with respect to claims 27-31 and 33. 10
11
ISSUES 12
The following issues have been raised in the present appeal. 13
1. Whether the Appellant has shown that the Examiner erred in 14
rejecting claims 27-31, 33, 40-42 and 44 as lacking novelty over Elledge. 15
2. Whether the Appellant has shown that the Examiner erred in 16
rejecting claims 18-21, 24-26, 34-37, 39-43 and 45-48 under 35 U.S.C. 17
§ 102(e) as lacking novelty over Tietz. 18
19
FINDINGS OF FACT 20
The record supports the following findings of fact (FF) by a 21
preponderance of the evidence. 22
1. Elledge discloses a method and apparatus for polishing one or 23
more layers of a semiconductor device structure where at least a portion of a 24
periphery of the subpad 511 is positioned within a lip protruding from the 25
subpad support 520 (Fig. 6; Col. 3, ll. 59-62; Col. 8, ll. 53-57). While 26
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contact between the subpad and the lip is shown in the cross-section of 1
Figure 6, Elledge does not specifically disclose that the lip engages the 2
periphery of the subpad. 3
2. Elledge also discloses application of a negative pressure 4
through the subpad support (Fig. 6; Col. 6, ll. 53-62). However, Elledge 5
does not disclose applying the negative pressure to a backing of the subpad. 6
3. Tietz discloses a polishing apparatus for polishing one or more 7
layers of a semiconductor device structure where a subpad 100 is 8
nonadhesively secured to a subpad support 198 (Fig. 6; Col. 4, ll. 11-13; 9
Col. 5, ll. 33-38; Col. 7, ll. 42-61). A structure 170 on a backing of the 10
subpad is mechanically engaged via screws 174 (Fig. 6; Col. 7, ll. 42-48). 11
Obtaining access to the subpad support, as well as assembling the subpad 12
with the subpad support, are inherently required in order to secure the 13
subpad to the subpad support (Fig. 6). 14
4. Tietz also discloses application of a negative pressure through 15
the subpad support (Figs. 3B, 3C and 6; Col. 6, ll. 53-62). However, Tietz 16
does not disclose applying the negative pressure to a backing of subpad. 17
18
PRINCIPLES OF LAW 19
“A claim is anticipated only if each and every element as set forth in 20
the claim is found, either expressly or inherently described, in a single prior 21
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 22
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over 23
the prior art under 35 U.S.C. § 102 begins with a determination of the scope 24
of the claim. We determine the scope of the claims in patent applications 25
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not solely on the basis of the claim language, but upon giving claims their 1
broadest reasonable construction in light of the specification as it would be 2
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. 3
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim 4
must then be compared with the prior art. In addition, “[i]t is well settled 5
that a prior art reference may anticipate when the claim limitations not 6
expressly found in that reference are nonetheless inherent in it.” In re 7
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations 8
and internal quotation marks omitted). 9
Furthermore, 35 U.S.C. § 112, first paragraph, states that “[t]he 10
specification shall contain a written description of the invention . . ..” All 11
that is necessary to satisfy the description requirement is to show that one is 12
“in possession” of the invention by describing the invention, with all its 13
claimed limitations. See Lockwood v. American Airlines, Inc., 107 F.3d 14
1565, 1572 (Fed. Cir. 1997). 15
16
ANALYSIS 17
Rejection of claims 27-31, 33, 40-42 and 44 as lacking novelty over Elledge 18
and 19
New Ground of Rejection of claims 27-31 and 33 20
The Examiner rejected these claims as lacking novelty over Elledge 21
(Ans. 3-5). We discuss the Examiner’s rejection of claims 27-31 and 33 22
separately from the rejection of claims 40-42 and 44 for clarity. 23
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Claims 27-31 and 33 1
With respect to independent claim 27, the Appellant acknowledges 2
that the platens described in Elledge include receptacles for receiving 3
support pads, but argues that Elledge does not expressly or inherently 4
describe that the support pads contact the walls of the receptacles (App. Br. 5
8). We find this argument without merit, because, as the Examiner notes, 6
the cross-sectional views of Figures 5 and 6 clearly show contact of the 7
subpad with the subpad support (Ans. 3, 8 and 9). The argument that 8
drawings of patents should not be relied upon is without merit, because the 9
authority cited by the Appellant in support of the Appellant’s position 10
actually holds that drawings can anticipate claims if the drawings clearly 11
show the claimed structure. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 12
1972). We also disagree with the Appellant that provision of the plenum 13
precludes the lip of Elledge from contacting the periphery of the subpad 14
(Reply Br. 4). Figures 5 and 6 show that the plenum is formed in the interior 15
of the subpad support and that an upper inside edge of the subpad support 16
contacts the periphery of the support pad (Ans. 8 and 9). 17
The Appellant further argues that because Elledge does not expressly 18
or inherently disclose that the walls of the receptacle (i.e., lips) contact the 19
peripheral edges of the support pads (i.e., subpad), Elledge cannot disclose 20
engagement of these components (App. Br. 8; Reply Br. 2). Implicit in the 21
Appellant’s argument is that contact between two components is not the 22
same as engagement between the two components because engagement 23
requires more than mere contact. Thus, the Appellant contends that Elledge 24
does not disclose the limitation “the lip engaging at least the portion of the 25
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periphery of the subpad” recited in independent claim 27 (App. Br. 8; Reply 1
Br. 3). 2
We agree with the Appellant that mere contact between components is 3
not an engagement between the components, and we construe the limitation 4
“the lip engaging at least the portion of the periphery of the subpad” as 5
requiring more than simple contact between the lip and the subpad. Thus, 6
we agree with the Appellant that the lip protruding from the subpad support 7
of Elledge does not “engage” the periphery of the subpad (FF 1). Therefore, 8
the Appellant has shown that the Examiner erred in rejecting independent 9
claim 27 as lacking novelty over Elledge. Likewise, the Appellant has also 10
shown that the Examiner erred in rejecting claims 28-31 and 33 that 11
ultimately depend from independent claim 27 as also lacking novelty over 12
Elledge. 13
However, we also note that the Appellant has failed to provide a 14
written description of the invention of independent claim 27 within the 15
Specification. Thus, we enter a New Ground of Rejection for claims 16
27-31 and 33 under 35 U.S.C. § 112, first paragraph. In particular, in 17
describing the invention of claim 27 in the SUMMARY OF CLAIMED 18
SUBJECT MATTER section of the Appeal Brief, the Appellant states that: 19
[t]he subpad may be nonadhesively secured to the 20
subpad support by at least partially engaging a 21
periphery of the subpad (e.g., with a subpad retention 22
element, such as a lip of the subpad support). See, 23
e.g., page 4, lines 5-11 (paragraph [0009]), page 7, 24
lines 12-16 (paragraph [0027]), page 7, lines 17-23 25
(paragraph [0028]), page 8, lines 4-11 (paragraph 26
[0030]); FIG. 2, reference charactrers [sic] 10', 14', 27
20'. 28
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(App. Br. 4). 1
2
In contrast to the Appellant’s assertion in the Appeal Brief, the cited 3
portions of the Specification do not describe the claimed invention. In 4
particular, paragraph [0009] describes the subpad as being secured by a 5
“subpad retention element” which engages the periphery of a subpad. 6
Paragraphs [0010] and [0024] states that the subpad support may also 7
include one or more lips which prevent lateral movement of the subpad. 8
Thus, the subpad retention element and the lip are treated as different 9
elements in the Specification. The Specification and the drawings indicate 10
that the relationship between the lip and the subpad is that of mere contact, 11
and is not that of engagement as recited in claim 27 and argued by the 12
Appellant. 13
Paragraphs [0027] and [0028] disclose a retention element with a 14
clamping member that secures the subpad, but do not mention a lip. 15
Paragraph [0030] likewise discloses a retention element that clamps onto 16
receptacles on the periphery of the subpad. While paragraph [0030] does 17
mention a lip 27’’, it is clear from the description and the drawings that the 18
described “lip” is a different element than the recited lip of claim 27 in that 19
lip 27’’ is formed by the receptacles of the subpad and extends from the 20
periphery of the subpad itself instead of protruding from the subpad support 21
as specifically recited in claim 27 (Fig. 3; ¶ [0030]). We further note that 22
paragraph [0031] also mentions that the subpad support can include lips. 23
However, the described function of the lips is to prevent the subpad from 24
moving laterally as described in paragraphs [0010] and [0024], and no 25
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engagement between the subpad and the lip is described as argued by the 1
Appellant. 2
Therefore, the Appellant has failed to provide a written description of 3
the claimed invention in that the Specification does not describe “a lip 4
protruding from the subpad support, the lip engaging at least the portion of 5
the periphery of the subpad” as recited in independent claim 27 and in 6
dependent claims 28-31 and 33 depending therefrom1. In view of the above, 7
we enter a NEW GROUND OF REJECTION for claims 27-31 and 33 under 8
35 U.S.C. § 112, first paragraph, based on the provisions of 37 C.F.R. 9
§ 41.50(b) (2007). 10
11
Claim 40-42 and 44 12
With respect to independent claim 40, the Appellant argues that 13
Elledge fails to disclose negative pressure being applied to a backing of the 14
subpad through the subpad support as recited, but instead, discloses negative 15
pressure being applied to a polishing pad at locations around the support 16
pad, or through numerous holes in the support pad (App. Br. 9; Reply Br. 4). 17
We agree with the Appellant. While Elledge discloses application of 18
negative pressure through the subpad support and the subpad, it does not 19
apply negative pressure “to a backing of the subpad” as specifically recited 20

1 Dependent claim 32 is not appealed because it has been indicated to be
allowable by the Examiner (Final Office Action 4). However, claim
32 ultimately depends from independent claim 27, and thus, also fails to
satisfy the written description requirement. The Examiner should update the
status of claim 32 in any further prosecution of the present application in
view of the New Grounds of Rejection of independent claim 27 entered
herein.
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in claim 40 (FF 2). Therefore, the Appellant has shown that the Examiner 1
erred in rejecting independent claim 40, as well as claims 41, 42 and 44 2
depending therefrom. 3
4
Rejection of claims 18-21, 24-26, 34-37, 39-43 and 45-48 as lacking 5
novelty over Tietz 6
The Examiner also rejected claims 18-21, 24-26, 34-37, 39-43 and 45-7
48 as lacking novelty over Tietz. 8
The Appellant initially argues that the Examiner’s rejection is 9
inappropriate because the platen of Tietz (which has been interpreted to be a 10
subpad by the Examiner) is not a subpad that is recited in independent 11
claims 18, 34 and 40 (App. Br. 10). Hence, the Appellant argues that Tietz 12
does not disclose nonadhesively securing a subpad to a subpad support as 13
recited in independent claim 18 (App. Br. 10). The Appellant also argues 14
that Tietz does not disclose obtaining access to the subpad support or 15
assembling a subpad with a subpad support as recited in independent claims 16
18, 34 and 40 (App. Br. 10). 17
The Examiner contends that platen of Tietz can be considered a 18
subpad because it lies underneath the polishing pad and supports the 19
polishing pad (Ans. 9). We agree. The Examiner is required to interpret the 20
claim terms broadly, absent a specific limitation in the claim that further 21
limits the claim term, or a definition in the Specification that clearly disclaim 22
the broader definition. See In re Bigio, 381 F.3d 1320, 1325 (Fed Cir. 23
2004); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364 (stating 24
giving broad construction to claim terms is not unreasonable during 25
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examination because the applicant can amend the claims). The Appellant’s 1
arguments based on paragraph [0002] of the Specification is not persuasive 2
because the noted portion does not set forth a definition of a subpad and the 3
rejected claims do not recite the features of the subpad noted in the 4
Specification (Reply Br. 5). In view of the above, we find that the 5
Examiner’s broad interpretation of “subpad” to be reasonable and agree that 6
the platen of Tietz satisfies the recited “subpad” limitation because it is 7
positioned underneath the polishing pad and supports the polishing pad 8
(Ans. 9). 9
With respect to the limitations reciting obtaining access to the subpad 10
and assembling the subpad with the subpad support, we note that the cross-11
sectional view of the device of Tietz inherently discloses these steps in that 12
they are required for securing the subpad to the subpad support in the 13
manner shown (FF3; Fig. 6). 14
The Appellant also separately argues that dependent claim 24 is 15
allowable because Tietz does not disclose the limitation “at least partially 16
engaging a periphery of [a] subpad” (App. Br. 11). We agree. While Tietz 17
discloses securing the platen (i.e., subpad) using fasteners, the fasteners 18
engage the back face of the subpad instead of the periphery of the subpad as 19
recited in claim 24. Thus, the Appellant has shown that the Examiner erred 20
in rejecting dependent claim 24 as lacking novelty over Tietz. 21
The Appellant further separately argues that dependent claims 26 and 22
39, as well as independent claim 40 and dependent claims 41-43 and 45-48 23
depending therefrom, are allowable because Tietz does not disclose the 24
limitation “applying a negative pressure to a backing of [a] subpad through 25
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[a] subpad support” (App. Br. 10 and 11; Reply Br. 6). We agree with the 1
Appellant in that while Tietz discloses applying a negative pressure through 2
the subpad and the subpad support, Tietz does not disclose applying a 3
negative pressure “to a backing of the subpad” as specifically recited in 4
these claims (FF 4). The Appellant’s argument relative to dependent claim 5
46 is noted but is moot in view of its ultimate dependency on claim 40. 6
Thus, the Appellant has also shown that the Examiner erred in rejecting 7
claims 26 and 39-43 and 45-48 as lacking novelty over Tietz. 8
With respect to the remaining dependent claims, the Appellant does 9
not present specific arguments directed to these claims, and instead, relies 10
upon ultimate dependency on corresponding independent claims 18, 34 or 40 11
for patentability (App. Br. 10 and 11). Thus, these dependent claims for 12
which separate arguments are not made, stand or fall with their 13
corresponding independent claims. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). 14
Therefore, in view of the above, the Appellant has not shown that the 15
Examiner erred in rejecting claims 18-21, 25 and 34-37 as lacking novelty 16
over Tietz. However, the Appellant has shown that the Examiner erred in 17
rejecting claims 24, 26, 39-43 and 45-48 as lacking novelty over Tietz. 18
19
CONCLUSIONS 20
1. The Appellant has shown that the Examiner erred in rejecting 21
claims 27-31, 33, 40-42 and 44 as lacking novelty over Elledge. 22
2. Claims 27-31 and 33 fail to satisfy the written description 23
requirement of 35 U.S.C. § 112, first paragraph. 24
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3. The Appellant has not shown that the Examiner erred in 1
rejecting claims 18-21, 25 and 34-37 as lacking novelty over Tietz. 2
4. The Appellant has shown that the Examiner erred in rejecting 3
claims 24, 26 39-43 and 45-48 as lacking novelty over Tietz. 4
5
ORDER 6
1. The Examiner’s rejections of claims 18-21, 25 and 34-37 are 7
AFFIRMED. 8
2. The Examiner’s rejections of claims 24, 26-31, 33 and 39-48 9
are REVERSED. 10
3. A new ground of rejection under 35 U.S.C. § 112, first 11
paragraph, is entered by the Board for claims 27-31 and 33 pursuant to 12
37 C.F.R. § 41.50(b). 13
This decision contains a new ground of rejection pursuant to 14
37 C.F.R. § 41.50(b) which provides “[a] new ground of rejection pursuant 15
to this paragraph shall not be considered final for judicial review.” 37 16
C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO 17
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 18
the following two options with respect to the new ground of rejection to 19
avoid termination of the appeal as to the rejected claims: 20
(1) Reopen prosecution. Submit an appropriate amendment of the 21
claims so rejected or new evidence relating to the claims so rejected, or both, 22
and have the matter reconsidered by the examiner, in which event the 23
proceeding will be remanded to the examiner…. 24
(2) Request rehearing. Request that the proceeding be reheard under 25
§ 41.52 by the Board upon the same record…. 26
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 2
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 3
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SALT LAKE CITY, UT 84110 18
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