Ex Parte BAJAJ et al

Patent Trial and Appeal Board

Jul 31, 2018

13801127 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/801, 127 03/13/2013 Rajeev BAJAJ
44257 7590 08/02/2018
PATTERSON & SHERIDAN, LLP- -Applied Materials
24 Greenway Plaza, Suite 1600
HOUSTON, TX 77046
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.
Ol 7501USA/CMP/CMP/BOHNC 1079
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
Pair_Eofficeaction@pattersonsheridan.com
psdocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJEEV BAJAJ and HUNG CHIH CHEN1
Appeal2017-001249
Application 13/801,127
Technology Center 3700
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and JILL D.
HILL, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rajeev Bajaj et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-21. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify the Real Party in Interest as Applied Materials, Inc.
Appeal Br. 3.
Appeal2017-001249
Application 13/801,127
BACKGROUND
Independent claims 1, 11, and 18 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention, with key limitations
italicized.
1. A pad conditioning device for a substrate polishing
process, the pad conditioning device comprising:
an optical device coupled to a portion of a polishing
station adjacent a polishing pad, the optical device comprising a
laser emitter adapted to emit a beam toward a polishing surface
of the polishing pad, the beam having a wavelength range that
is substantially non-reactive with a polishing fluid utilized in
the polishing process, but is reactive with the polishing pad.
REJECTIONS
I. Claims 1, 11, and 18-21 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Doi (JP 2001-0712156 A, pub. Mar. 21, 2001) 1.
Final Act. 2.
II. Claims 2-10 and 12-17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Doi and Tolles (US 5,738,574, iss. Apr. 14, 1998). Id.
at 3.
ANALYSIS
Rejection I-Anticipation
The Examiner determines that the only limitations of claim 1 given
weight are "an optical device coupled to a ... polishing station," and "the
optical device comprising a laser emitter." Ans. 4, 6. According to the
Examiner, Doi's laser 50 is coupled to a polishing station and emits a beam
1 Our determinations made herein are based upon a machine translation of
Doi that was entered into the record by the Examiner on March 12, 2015,
accompanying a form PT0-892 (Notice of References Cited).
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Application 13/801,127
toward polishing pad 12, the beam being in the IR, visible, or UV spectrum,
which spectrums are not "affected by a fluid (water)" if introduced. Id. at 4
( citing Doi ,r,r 10, 18); see also id. at 6. The Examiner further argues that the
claims only require that the beam have a wavelength range that is
substantially non-reactive, not that the beam be operated within a non-
reactive range. Id. at 5.
Appellants argue, inter alia, that Doi does not disclose "a laser emitter
adapted to emit a beam ... having a wavelength range that is substantially
non-reactive with a polishing fluid," contending that Doi discloses using
water during laser processing, and that steam is dispersed during laser
processing, which supports a contention that the wavelength ofDoi's laser
"is reacting with water (typically the precursor ... [to] steam)," and,
therefore, "does not meet the recitation of the interaction between fluid and
the wavelength range of a beam as claimed, in light of the specification."
Appeal Br. 8-9 (citing Doi ,r,r 10, 11); Reply Br. 2-3.
The Examiner responds that water is "transparent at the disclosed
wavelength in [Doi's paragraph 38]," because water "is nearly
(substantially) transparent to a beam in the visible range with a relative
absorption of less than 10-3 e V. This is an inherent quality of water as it is a
physical fact." Ans. 5. The Examiner further contends that "[i]t could be
argued that any laser would meet the limitations of the claim." Ans. 6.
In response to Appellants' assertion that the Examiner fails to provide
evidence to support the finding that water is transparent to, and therefore
non-reactive with, Doi's beam (Appeal Br. 10), the Examiner responds that
the evidence is supplied by Doi itself. Id. at 6.
Appellants have the better argument. To anticipate a claim, a
reference must disclose, expressly or inherently, every element of the claim.
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Application 13/801,127
See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,631 (Fed.
Cir. 1987). Independent claim 1 recites, inter alia, "a laser emitter adapted
to emit a beam ... having a wavelength range that is substantially non-
reactive with a polishing fluid utilized in the polishing process."
Independent claim 11 recites "a laser emitter adapted to emit a beam having
a wavelength range that is not absorbed by a polishing fluid utilized on the
polishing pad." Independent claim 18 recites a method of conditioning a
polishing pad with a laser beam having "a wavelength that is substantially
transparent to the polishing fluid." Despite being recited in an "adapted to"
limitation in independent claims 1 and 11, these limitations cannot simply be
read out of the claims. See In re Giannelli, 739 F.3d 1375, 1378 (Fed. Cir.
2014).
While Doi discloses using water during laser beam machining, such
that steam is dispersed during laser processing (Doi ,r,r 10-11 ), the water is
not disclosed to be a polishing fluid in Doi, and is not disclosed to be non-
reactive with the laser. To the extent that the Examiner is finding such
disclosure inherent in Doi, the Examiner has not provided sufficient
evidence to establish inherency. See In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) ("To establish inherency, the extrinsic evidence 'must make
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill"' (quoting Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268 (Fed. Cir. 1991) (emphasis added)).
Lacking evidence to establish that Doi discloses, expressly or
inherently, a laser emitter adapted to emit ( or capable of emitting) a beam
having a wavelength range that is not absorbed by, not reactive with, and/or
substantially transparent to a polishing fluid utilized on the polishing pad,
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Application 13/801,127
anticipation has not been established. Further, we are not persuaded by the
Examiner's unsupported reasoning that the claim does not require the laser
to be operated with a beam in the claimed range (Ans. 5), or that a proper
beam range could be determined by one skilled in the art. We do not sustain
Rejection I for these reasons.
Rejection II- Obviousness
Claims 2-10 depend directly or indirectly from claim 1, and claims
12-17 depend directly or indirectly from claim 11. The Examiner does not
find or conclude that Tolles cures the deficiency of Doi by disclosing the
claimed beam wavelength. We, therefore, do not sustain Rejection II for
reasons set forth above.
DECISION
We REVERSE the rejection of claims 1, 11, and 18-21 under 35
U.S.C. § 102(b) as anticipated by Doi.
We REVERSE the rejection of claims 2-10 and 12-17 under 35
U.S.C. § 103(a) as unpatentable over Doi and Tolles.
REVERSED
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