Vladimir Dutschke et al.

Patent Trials and Appeals Board

May 1, 2020

14994202 - (D) (P.T.A.B. May. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/994,202 01/13/2016 Vladimir Dutschke 815076 1021
95683 7590 05/01/2020
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
ELEY, TIMOTHY V
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VLADIMIR DUTSCHKE, TORSTEN OLBRICH,
LESZEK MISTUR, and MARKUS SCHNAPPAUF
____________

Appeal 2019-002730
Application 14/994,202
Technology Center 3700
____________

Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4, and 8–18.2 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Siltronic AG.
Appeal Br. 1.
2 Claims 3 and 5–7 are cancelled. Appeal Br. 10–11 (Claims App.).
Appeal 2019-002730
Application 14/994,202

2
We AFFIRM and designate our affirmance of the rejections of
claims 1, 2, 4, and 8–18 as NEW GROUNDS OF REJECTION pursuant to
our authority under 37 C.F.R. § 41.50(b).

THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A method for dressing a polishing cloth applied to a
polishing plate using at least one dresser including a dressing
element disposed on a first side of the at least one dresser, the
method comprising:
disposing the polishing cloth on the first side of the
dresser;
rotating the polishing plate in a first direction with a first
relative rotational speed;
rotating the at least one dresser in a second direction with
a second relative rotational speed, wherein the second direction
is opposite the first direction and where the second relative
rotational speed differs from the first relative rotational speed;
contacting the polishing cloth with the dressing element;
and
disposing at least one pin wheel at a periphery of the
polishing plate to allow different relative rotation directions of
the dresser and polishing plate.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:

Name Reference Date
Caspers US 3,662,498 May 16, 1972
Yasui US 6,221,773 B1 Apr. 24, 2001
Horiguchi US 7,648,409 B1 Jan. 19, 2010
Ono US 2011/0189505 A1 Aug. 4, 2011

Appeal 2019-002730
Application 14/994,202

3
REJECTIONS
I. Claims 1, 2, 4, 8–11, 14, 15, and 18 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Caspers and Horiguchi. Non-Final Act. 3–
6.
II. Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Caspers, Horiguchi, and Yasui. Id. at 6–7.
III. Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Caspers, Horiguchi, and Ono. Id. at 7–8.

OPINION
Rejection I
Appellant argues claims 1, 2, 4, 8–11, 14, 15, and 18 as a group.
Appeal Br. 2–8. We select claim 1 as representative of the issues that
Appellant presents in the appeal, and claims 2, 4, 8–11, 14, 15, and 18 stand
or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Caspers teaches “a method for dressing a
polishing plate (1, 11) using at least one dresser (30) including a dressing
element disposed on a first side of the at least one dresser.” Non-Final
Act. 3 (emphasis added). The Examiner further finds that Caspers teaches
the steps of “rotating the polishing plate in a first direction with a first
relative rotational speed,” “rotating the at least one dresser in a second
direction with a second relative rotational speed, wherein the second
direction is opposite the first direction and where the second relative
rotational speed differs from the first relative rotational speed,” “contacting
the polishing plate with the dressing element,” and “disposing at least one
pin wheel at a periphery of the polishing plate to allow different relative
rotation directions of the dresser and polishing plate.” Id. (emphasis added).
Appeal 2019-002730
Application 14/994,202

4
In other words, the Examiner acknowledges that Caspers is not directed to a
method of dressing a polishing cloth, but rather to a method of dressing a
polishing plate, and thus, Caspers lacks the steps of “disposing [a] polishing
cloth on the first side of the dresser” and “contacting the polishing cloth with
the dressing element.” Id. (emphasis added).
With respect to dressing of a polishing cloth, the Examiner turns to
Horiguchi as teaching “that it is old and well known in the art to provide
polishing plates (830, 840), each having a polishing cloth disposed thereon
for lapping workpieces, such as semiconductors, the polishing cloths being
dressed.” Non-Final Act. 4 (citing Horiguchi Fig. 12, Abstract, 19:24–53).
The Examiner concludes that:
it would have been an obvious matter of choice and structural
design to one having ordinary skill in the art before the
effective filing date of the claimed invention to have modified
the method of Caspers, by replacing the polishing plate therein
with a polishing plate having a cloth disposed thereon, as taught
by Horiguchi et al, in order to provide polishing for delicate
workpieces, such as semiconductors. As modified, the method
would therefore include the steps of disposing the polishing
cloth on the first side of the dresser, and contacting the
polishing cloth with the dressing element. Such a combination
is achieved with a reasonable expectation of success.
Id.
Appellant argues that “Caspers does not disclose a ‘method for
dressing a polishing plate,’” and instead “discloses redressing the working
surfaces of a lapping machine.” Appeal Br. 4 (citing Caspers 1:38–41). In
response to the Examiner asserting that “lapping plates may be used to
polish a workpiece” and that the definition of “lap” encompasses a
“polishing tool” (Ans. 4–5 (citing Merriam-Webster Dictionary)), Appellant
further argues that it is improper to consider Caspers’ lap to be a polishing
Appeal 2019-002730
Application 14/994,202

5
plate based on a generic definition of “lap” as “a ‘smoothing and polishing
tool usually consisting of a piece of wood, leather, felt, or soft metal.’”
Reply Br. 3–4 (citing Merriam Webster Dictionary). Appellant argues that
such an interpretation “completely ignore[s] the context of the specification”
and “fails to account for[] the broadest reasonable interpretation that a
person skilled in the art of producing semiconductors would have given to
lapping that it is akin to grinding and different from polishing.” Id.
Even if we were to agree with Appellant that one of ordinary skill in
the art would not understand Caspers’ laps to be “polishing plates” (see, e.g.,
Reply Br. 3–4), and, thus, one of ordinary skill in the art would not consider
Caspers to teach dressing of a polishing plate, we do not agree with
Appellant’s logic that “the Examiner’s obviousness analysis falls apart
entirely” if “a skilled artisan would not have considered Caspers[’] dressing
of a lapping plate to disclose dressing a polishing plate.” Reply Br. 2. That
is, we are not persuaded that an insufficiently supported finding by the
Examiner that Caspers’ laps are polishing plates would compel a reversal of
the rejection based on Caspers and Horiguchi.
Appellant argues that “[b]y using loose terminology [i.e., considering
Caspers’ laps to be polishing plates], the Examiner has thus improperly side-
stepped the differences between Caspers’ redressing cast-iron laps with tools
like diamonds, and both the claimed dressing of a polishing cloth and
Horiguchi’s dressing [of] polishing cloths.” Reply Br. 4. Appellant also
argues that “the Examiner has not set forth any factual evidence” that would
support that “there would have been a reasonable expectation that Caspers’
method for dressing cast-iron lapping plates would succeed in dressing
Horiguchi’s polishing cloth on its polishing plate at the time of invention.”
Appeal 2019-002730
Application 14/994,202

6
Id. at 8. Appellant points to “the facial difference between dressing cast-iron
plates and dressing a cloth.” Id. at 9 (citing Caspers 1:38–41; Horiguchi
3:27–36). According to Appellant, the Examiner’s “mere allegations that
the elements of the claimed invention were separately known in the prior art
and that a skilled artisan could have combined them is not sufficient to
support a prima facie case of obviousness.” Id. at 7 (citing MPEP
§ 2141.01). In sum, Appellant argues that “the Examiner has yet to provide
a legally sufficient explanation why a skilled artisan would have modified
Caspers’ method for dressing cast-iron lapping plates to dress polishing
cloths by replacing Caspers’ cast-iron lapping plates with Horiguchi's
polishing plate having a cloth disposed thereon.” Id. at 5, 7.
Caspers states that “the invention relates to improvements in devices
which can be utilized for redressing of flat, concave, convex and/or
otherwise configurated working surfaces of laps consisting of cast-iron or
the like and serving for forming lapping or equalizing lapping of flat,
rounded and/or other surfaces of workpieces.” Caspers 1:8–13. Caspers
explains that its machine “is capable of completing the [redressing]
operation within a short period of time and in such a way that the laps are
ready for renewed use without any additional treatment of their working
surfaces.” Id. at 1:39–45. In particular, the background of Caspers explains
that in known redressing methods, “subsequent to material removal by
means of a bit or diamond, the thus treated working surfaces must be
subjected to a further treatment (such as superfinishing) in order to remove
tool marks which develop during turning.” Id. at 1:22–25.
Caspers describes workpieces 24 which can be treated by the working
surfaces of laps 1, 11, wherein workpieces 24 are inserted into workholders
Appeal 2019-002730
Application 14/994,202

7
or adaptors 26. Id. at 2:61–64; Fig. 2. Caspers further describes that when
redressing laps 1, 11, workholders 26 are replaced by several redressing
units having rings or gears 28, and “[e]ach of these rings [28] accommodates
a redressing or abrading wheel or ring 30.” Id. at 3:7–15; Figs. 3–4.
Caspers further describes that “[t]he two material removing surfaces of each
abrading ring 30 abut against the adjacent working surfaces of the laps 1 and
11” and “[t]he rotational speed and/or the direction of rotation of the
abrading rings 30 are preferably variable . . . to thereby regulate the removal
of material from the working surfaces of the laps 1 and 11.” Id. at 3:28–32.
Caspers additionally describes that “[t]he rate at which the abrading rings 30
remove material from the working surfaces depends on such relative speed
which, in turn, can be readily varied and maintained by changing the
direction of rotation and/or the speed of the motor.” Id. at 3:55–59. Caspers
continues that “[i]n this way, the operator can treat the working surfaces to a
desired finish in a continuous operation without necessitating any additional
treatment which is essential when the laps are redressed in accordance with
certain presently known procedures.” Id. at 3:59–4:4. Caspers also states
that “[t]he just described mode of redressing can be used to provide the laps
1, 11 with flat, concave or convex working surfaces.” Id. at 4:4–6.
Horiguchi describes “a double side polishing method and apparatus
for use in, for example, double side polishing of a silicon wafer.” Horiguchi
1:6–8. Horiguchi describes that “[a] silicon wafer . . . is cut out from a
silicon single crystal, lapped, and then polished so as to have a mirror
surface.” Id. at 1:12–14. Horiguchi further describes that the polishing
apparatus comprises “a vertical pair of rotary surface plates 1 and 2 [and] a
plurality of carriers 3, 3 . . . arranged . . . between the rotary surface plates 1
Appeal 2019-002730
Application 14/994,202

8
and 2 as planetary gears.” Id. at 1:27–30. Horiguchi describes that “[i]n . . .
a double side polishing operation for silicon wafers, . . . polishing cloth[]s
[are] installed on the opposite surfaces of the rotary surface plates.” Id. at
2:65–67. Horiguchi also describes that “dressing is used as mechanical
processing for the polishing cloths” and “[t]his processing is conventionally
carried out to level the surfaces after the polishing cloths have been
changed.” Id. at 3:27–30. Horiguchi describes that its “processing bodies
include . . . dressers for leveling surfaces” of the polishing cloths. Id. at
6:27–28; see also id. at 19:43–44. Horiguchi describes that “[e]ach dresser
700 is an external gear shaped to correspond to the carrier 500” and “has
grinding sections . . . attached to each of the top and bottom surfaces of an
outer circumferential portion of the dresser 700 in order to level the surfaces
of the polishing cloth[]s installed on the opposite surfaces of the rotary
surface plates 111 and 112, the grinding sections . . . comprising a large
number of diamond pallets or the like.” Id. at 16:7–14.
Both Caspers and Horiguchi describe material-removing machines
that have abrading rings or gears having grinding sections that are part of
dressers, which are used to provide flat working surfaces or level the
working surfaces of laps or polishing plates. Caspers 3:7–15, 4:4–6, Figs.
3–4; Horiguchi 3:27–30, 16:7–14. Although Caspers uses dressers to
provide a flat working surface of a cast-iron lap, and Horiguchi uses dressers
to level the surface of a polishing cloth on a polishing plate, the similarity in
structure and function of the dressers of both Caspers and Horiguchi, as
described above, support the Examiner’s conclusion that one of ordinary
skill in the art would have been led to replace Caspers’ lap with a polishing
plate having a polishing cloth as taught by Horiguchi. More particularly,
Appeal 2019-002730
Application 14/994,202

9
one of ordinary skill in the art would have been led to replace Caspers’ lap
with Horiguchi’s polishing plate (with polishing cloth disposed thereon) in
order to dress the polishing cloth in a manner that would achieve a desired
finish by readily allowing for varying of the direction of rotation and/or
speed of the motor as taught by Caspers.
Furthermore, as explained by the Examiner, Caspers’ “novel
redressing or preparing device . . . can impart to the working surfaces of the
laps a desirable flat, concave or convex configuration and . . . is capable of
completing the operation within a short period of time” and Horiguchi
“requires one dressing process (to level or flatten the polishing cloths) to be
executed at least every several polishing process[es] in order to obtain
sufficient quality and that this dressing process also significantly obstruct[s]
the automation for double side polishing apparatuses that pursue high
quality.” Ans. 11 (citing Caspers 1:38–45). The need to be able to dress
polishing plates having polishing cloths that are used to allow polishing of
workpieces, such as semiconductors, coupled with the benefits of Caspers’
redressing device, adequately explains why one of ordinary skill in the art
would have been led to replace Caspers’ laps with Horiguchi’s polishing
plates having polishing cloths thereon. See id. at 12 (“Horiguchi requires
frequent dressing when polishing delicate workpieces, and Caspers reduces
dressing time even if performed frequently.”).
As to Appellant’s argument that “the Office is calling for combining
features of a lapping device and a polishing device, which would require
substantial changes to be made, and the lack of discussion on the impact of
those changes highlights yet another failure of the obviousness rejection:
failure to demonstrate a reasonable likelihood of success” (Appeal Br. 8), we
Appeal 2019-002730
Application 14/994,202

10
are not persuaded of error. The Examiner is combining (i) Caspers’
redressing or preparing device for laps in which the rate at which abrading
rings remove material can be varied and maintained by changing the
direction of rotation and/or speed of the motor and (ii) Horiguchi’s polishing
plate having a polishing cloth disposed thereon that is already described as
being dressed by a double side polishing apparatus that includes dressers
having grinding section in order to level the surface of the polishing cloth.
The Examiner’s articulated rejection merely requires Caspers’ laps to be
replaced with Horiguchi’s polishing plates with polishing cloths thereon,
which does not appear to require substantial reconstruction based on the
similarity of structure of Caspers’ and Horiguchi’s dressing apparatuses.
We have also considered Appellant’s argument that “the Examiner’s
reliance on the ‘design choice’ rationale is not applicable” where “the
combination is explicitly not performing the same function in the prior art as
the now claimed structure.” Reply Br. 7. We do not find such an argument
persuasive in that we do not view the rejection as relying on a so-called
“design choice” rationale, but rather on an explanation that one of ordinary
skill in the art would have been led to replace Caspers’ laps with Horiguchi’s
polishing plates in order to dress such polishing plates using a machine that
readily allows for variation of the direction of rotation and/or speed of the
motor in order to vary the rate at which material is removed from the
polishing cloth and achieve a desired finish.
We have also considered Appellant’s argument that “by failing to
articulate a rational basis to combine the references, it is clear that [the]
Office is . . . merely impermissibly using ‘hindsight reconstruction to pick
and choose among isolated disclosures in the prior art to deprecate the
Appeal 2019-002730
Application 14/994,202

11
claimed invention.’” Appeal Br. 7–8. Appellant's argument is unavailing
because it does not identify adequately any flaw in the articulated reasoning
for combining Caspers and Horiguchi, nor point to any knowledge relied on
by the Office that was gleaned only from Appellant’s disclosure and that
was not otherwise within the level of ordinary skill in the art at the time of
the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)
(“Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant's disclosure, such a reconstruction is proper.”).
For the foregoing reasons, we sustain the rejection of claim 1, and
claims 2, 4, 8–11, 14, 15, and 18 falling therewith, under 35 U.S.C. § 103 as
unpatentable over Caspers and Horiguchi. We, however, designate the
affirmance of the rejection of these claims as including a NEW GROUND
OF REJECTION pursuant to 37 C.F.R. § 41.50(b) because our analysis
expands upon the facts and reasoning used by the Examiner.
Rejections II and III
Appellant’s arguments in support of the patentability of claims 12, 13,
16, and 17 solely relate to the perceived deficiencies in the combination of
Caspers and Horiguchi. Appeal Br. 8. Because we have found no such
deficiencies in the combination of Caspers and Horiguchi, we also sustain
the rejections, under 35 U.S.C. § 103, of claims 12 and 13 as unpatentable
over Caspers, Horiguchi, and Yasui; and claims 16 and 17 as unpatentable
over Caspers, Horiguchi, and Ono. For the same reasons discussed above in
Appeal 2019-002730
Application 14/994,202

12
the context of Rejection I, we likewise designate our affirmance of the
rejections of these claims as NEW GROUNDS OF REJECTION.

CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1, 2, 4,
8–11, 14,
15, 18
103 Caspers, Horiguchi 1, 2, 4,
8–11, 14,
15, 18
1, 2, 4,
8–11, 14,
15, 18
12, 13 103 Caspers,
Horiguchi, Yasui
12, 13 12, 13
16, 17 103 Caspers,
Horiguchi, Ono
16, 17 16, 17
Overall
Outcome
1, 2, 4,
8–18
1, 2, 4,
8–18

The Examiner’s decision to reject claims 1, 2, 4, and 8–18 is
AFFIRMED, and we designate our affirmance of the rejections of these
claims as NEW GROUNDS OF REJECTION.
This decision contains NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
Appeal 2019-002730
Application 14/994,202

13
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)