Ex parte WEI

Board of Patent Appeals and Interferences

Aug 30, 2001

08730385 (B.P.A.I. Aug. 30, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ZIN-CHEIN WEI
____________
Appeal No. 2000-2093
Application No. 08/730,385
____________
ON BRIEF
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Before ABRAMS, FRANKFORT and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 5, 9 and
13-16, which are all of the claims pending in this application.
We AFFIRM-IN-PART.
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Application No. 08/730,385
In the final rejection (Paper No. 17) claim 9 was not included in this rejection, and1
claim 13 was not listed as being rejected under Section 102 although such was the case in
the preceding office action (Paper No. 10). Since the appellant has not disputed the
rejections as set forth in the Answer and has provided arguments directed to them, we
shall act in accordance with that listing of the claims.
BACKGROUND
The appellant's invention relates to a method and machine for chemical-mechanical
polishing a silicon wafer. An understanding of the invention can be derived from a reading
of exemplary claims 5 and 13, which appear in the appendix to the appellant's Brief.
The prior art reference of record relied upon by the examiner in rejecting the
appealed claims is:
Shendon 5,899,800 May 4, 1999
Claims 5, 9 and 13-16 stand rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor, at the time the
application was filed, had possession of the claimed invention.
Claim 13 stands rejected under 35 U.S.C. § 102(e) as being anticipated by
Shendon.
Claims 5, 9 and 14-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shendon.1
Appeal No. 2000-2093 Page 3
Application No. 08/730,385
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 22) and the final rejection (Paper No. 17) for the examiner's complete
reasoning in support of the rejections, and to the Brief (Paper No. 21) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
The appellant’s invention is directed to a method and apparatus for polishing a
silicon wafer. In the course of the invention, three motions act on the wafer, which is held
on a wafer holder. The first motion is provided by a platen that has a polishing pad on its
surface and which rotates with respect to the wafer as polishing slurry is deposited on the
pad. The second motion is provided by rotating the wafer holder while pressing the wafer
mounted thereon against the pad on the rotating platen. The third motion results from
mounting the rotatable wafer holder on a crank and then rotating the crank to cause the
wafer holder to orbit with respect to the rotating platen.
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Application No. 08/730,385
The Rejection Under Section 112, First Paragraph
Independent claims 5 and 13 each contain the limitation that in addition to rotating
the platen and orbiting the wafer holder, the wafer is “independently” rotated. It is the
examiner’s view that the specification and drawings fail to describe a structure for
accomplishing this independent rotation of the wafer, and therefore do not represent that
the appellant had possession of this feature of the invention at the time the application was
filed.
On page 7 of the specification it is stated that “independent rotational means 32
may be provided so as to cause its [the platen’s] rotation to be fully independent.” Element
32 is shown in the drawings schematically as being disposed about the axis of rotation of
the wafer holder with an arrow indicating that it rotates. In our opinion, one of ordinary skill
in the art would have recognized that, at the very least, this was intended to indicate an
electric motor or equivalent means for rotating the wafer holder about its axis. This
conclusion is supported by the fact that the appellant indicates it was known in the prior art
to utilize an electric motor or the like for just such a task, for he describes the wafer rotation
means in the prior art system shown in Figure 1 as “rotation causing means 3 (such as an
in-situ motor), held in position by support arm 17, [which] causes wafer holder 2 to rotate in
the direction symbolized by arrow 19” (specification, page 3). Thus, while the appellant did
not repeat such a detailed description of the like structure when describing his invention, it
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Application No. 08/730,385
is our view that he had possession of this feature, that is, a manner of rotating the wafer
holder, at the time the application was filed.
In view of the above, it is our conclusion that the examiner’s position is not well
taken, and we will not sustain this rejection.
The Rejection Under Section 102(e)
Independent claim 13 stands rejected as being anticipated by Shendon.
Anticipation is established only when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every element of the claimed
invention. See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed.
Cir. 1994). Anticipation by a prior art reference does not require either the inventive
concept of the claimed subject matter or recognition of inherent properties that may be
possessed by the reference. See Verdegaal Brothers Inc. v. Union Oil Co. of California,
814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987). Nor does it require that the
reference teach what the applicant is claiming, but only that the claim on appeal "read on"
something disclosed in the reference, i.e., all limitations of the claim are found in the
reference. See Kalman v. Kimberly-Clark Corp, 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983).
The only argument raised by the appellant with regard to this rejection is that
Shendon fails to disclose or teach “independently” rotating the wafer holder, as is required
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Application No. 08/730,385
by the claim. According to the appellant, Shendon provides a rotational compensation
assembly which is intended to stop rotation of the wafer during the polishing process, thus
limiting the movements to rotation of the platen and orbiting of the wafer. We do not agree
with the appellant on this point.
Using Figure 2 as an illustration, Shendon discloses a polishing pad 22 mounted on
a rotatable platen 16. Mounted on the bottom of a rotatable shaft 56 positioned above the
platen is a cross arm 60 from which extends a drive shaft 64 upon the end of which the
substrate (wafer) carrier 24 is mounted. Rotation of shaft 56 by a first drive belt 52 causes
carrier 24 to orbit about shaft 56. Also attached to drive shaft 64 is a pinion gear 74 that
has teeth on its outer periphery that mesh with teeth on the inside of the outer hub 59 of
transfer case housing 58. Outer hub 59 is rotated by a second drive belt 90. Shendon
teaches that “[t]he carrier may be controlled to orbit the substrate without rotation or to
rotate the substrate at a desired velocity as it is orbited” (column 3, lines 19-21). To
accomplish this, as is explained in column 7, beginning at line 49, the orbiting substrate
may be rotated, or may orbit without rotation, by selectively rotating the
housing 58 with the motor 90. By rotating the orbiting substrate 12 at the
same speed as the polishing pad 22, the cumulative motion between the
polishing pad 22 and every point on the substrate 12 may be uniformly
maintained. Therefore, over-polishing attributable to differential cumulative
motions on different areas of the substrate is eliminate [sic]. Additionally, the
rotational speed of the substrate may be varied from the rotational speed of
the polishing pad 22 to increase the relative motion between the edge of the
substrate and the polishing pad 22, as compared to the center of the
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Application No. 08/730,385
substrate. The substrate 12 may even be moved in a rotational direction
opposite to the direction of the polishing pad 22 if desired.
From this recitation it is clear that Shendon utilizes the rotational compensation assembly
not only to insure that the substrate doesn’t rotate with respect to the polishing pad when
such is desired, but also to cause such relative rotation to occur, when that is action
deemed necessary. It also is clear that this rotation of the substrate meets the claim
requirement of being independent, in that it is caused to occur by a mechanism that is
controllable independently of the rotation of the polishing pad and the orbiting mechanism.
This conclusion appears to be supported by the appellant’s statement on page 7 of the
Brief that in the Shendon system “the wafer could, perhaps unintentionally, be given some
independent rotational motion” (emphasis added). The appellant’s argument that, with
regard to the rotational motion of the wafer produced by Shendon, “it is reasonable to
assume that it is very limited (i.e. not fully independent) since its principal purpose is to
prevent rotation in the first place” is not persuasive since the language of claim 13 does
not preclude “limited” rotation and does not recite the rotation as being “fully independent,”
whatever that might mean as compared to “independent.”
It is our conclusion that all of the subject matter recited in claim 13 is disclosed or
taught by Shendon, and therefore we will sustain the rejection.
The Rejection Under Section 103
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Application No. 08/730,385
Method claims 5 and 9 and apparatus claims 14-16 stand rejected as being
unpatentable over Shendon.
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
While we concluded above with regard to apparatus claim 13 that all of the subject
matter therein recited is disclosed or taught by Shendon, there is no evidence upon which
to base a conclusion that the same is true with regard to the method of claim 5, or that this
method would have been obvious in view of Shendon. Claim 5 recites a number of
operating parameters which the examiner apparently has concluded are not disclosed or
taught by Shendon, for he has taken the position that they are merely matters of design
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Application No. 08/730,385
choice for one of ordinary skill in the art. We do not agree. The claimed values for platen
rotation, independent rotation of the wafer, and speed of the wafer along a closed path of
rotation were set forth in the appellant’s original disclosure. They all are recited together in
claim 5, with the appellant arguing that they thus produce desirable results (Brief, pages 7
and 8). We note that Shendon teaches setting the speed of the orbiting substrate and the
rotating platen so that the nominal speed at the surface of the substrate is 1800-4800
centimeters per second, and that the speed of the rotating platen is less than 10 rpm.
However, not only does this platen speed fall outside of the range claimed by the appellant,
but there appears to be no information which would suggest to the artisan the ranges
recited in the claim.
It is our conclusion that Shendon fails to establish a prima facie case of
obviousness with regard to the subject matter recited in independent method claim 5, and
we therefore will not sustain the rejection of claim 5 or of claim 9, which depends from
claim 5.
Apparatus claims 14-16 depend from claim 13. We determined above that the
subject matter recited in claim 13 was anticipated by Shendon. Anticipation being the
epitome of obviousness (see In re Fracalossi, 681 F.2d 792, 215 USPQ 569 (CCPA
1982)), considering claim 13 in the light of Section 103 does not change this conclusion.
In the absence of argument by the appellant of the separate patentability of claims 14-16,
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Application No. 08/730,385
and appellant’s grouping of the claims (Brief, page 3) we shall, sustain this rejection. In
this regard, to the extent that the intent of the appellant’s argument on pages 7 and 8 of the
Brief regarding operating parameters is intended to apply to dependent claim 15, the
appellant has pointed out to us no reason from which to conclude that Shendon’s
apparatus is not capable of causing the wafer to complete “between 10 and 30 rotations
for each revolution of the handle about the shaft.”
SUMMARY
The rejection of claims 5, 9 and 13-16 under 35 U.S.C. § 112, first paragraph, is not
sustained.
The rejection of claim 13 under 35 U.S.C. § 102(e) as being anticipated by
Shendon is sustained.
The rejection of claims 5 and 9 under 35 U.S.C. § 103(a) as being unpatentable
over Shendon is not sustained.
The rejection of claims 14-16 under 35 U.S.C. § 103(a) as being unpatentable over
Shendon is sustained.
The decision of the examiner is affirmed-in-part.
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Application No. 08/730,385
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NA/RWK
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Application No. 08/730,385
GEORGE O. SAILE
20 MCINTOSH DRIVE
POUGHKEEPSIE, NY 12603