Ex Parte Lombardo et alDownload PDFPatent Trial and Appeal BoardAug 27, 201310457316 (P.T.A.B. Aug. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/457,316 06/09/2003 Brian Scott Lombardo 21284-1 6958 27182 7590 08/27/2013 PRAXAIR, INC. LAW DEPARTMENT - M1-04 39 OLD RIDGEBURY ROAD DANBURY, CT 06810-5113 EXAMINER MCDONALD, SHANTESE L ART UNIT PAPER NUMBER 3723 MAIL DATE DELIVERY MODE 08/27/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRIAN SCOTT LOMBARDO and JOSEPH CIANCIOLO ____________________ Appeal 2011-009297 Application 10/457,316 Technology Center 3700 ____________________ Before: MICHAEL C. ASTORINO, JOHN W. MORRISON, and HYUN J. JUNG, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009297 Application 10/457,316 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 6-8, and 14-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED INVENTION Claim 1, reproduced below, is illustrative of the appealed subject matter: 1. A seamless polishing pad, comprising: a porous subpad layer having a seamless polishing layer thereon, wherein said polishing layer is a hardenable fluid cast onto said subpad layer which penetrates said subpad layer to a substantially consistent uniform depth, and wherein the within belt non-uniformity of a pad compressibility as measured by durometer is less than 10 percent. REFERENCES Ibrahim Jensen Xu US 4,396,657 US 6,261,168 B1 US 6,572,463 B1 Aug. 2, 1983 Jul. 17, 2001 Jun. 3, 2003 REJECTIONS Claims 1, 6-8, 14-21, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Xu and Jensen. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Xu, Jensen, and Ibrahim. Appeal 2011-009297 Application 10/457,316 3 ANALYSIS Obviousness over Xu and Jensen Addressing claim 1, the Examiner finds that Xu discloses substantially all of the limitations of claim 1 but does not disclose that “the within belt nonuniformity of a pad compressibility as measured by durometer is less than 10 percent.” Ans. 4. The Examiner then determines Jensen et al. teaches measuring the compressibility of a polishing pad using a durometer, (col. 4, lines 21-24). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have measured the compressibility of the pad of Xu by a durometer as taught by Jensen et al. since Jensen teaches that polishing pad materials can have different hardnesses or densities, and one chooses a desired pad based upon the desired compressibility as measured by durometer. It would have been further obvious to make the pad of Xu with a compressibility being less than 10% Id. at 4-5. It should be noted that this 10% is related to “pad compressibility” not the “within belt non-uniformity of the pad compressibility” recited in claim 1. Appellants attack the deficiency of this finding by arguing [t]he Official Action acknowledges that in addition, Xu et al. does not disclose the [belt non-]uniformity of a pad compressibility as measured by durometer as being less than 10[percent]. Jensen et al. however, does not cure the deficiencies in Xu et al. nor does it add the feature purported to supplement. Br. 10. The Examiner clarifies his position by stating “[t]he Examiner notes that [Appellants] have not defined uniform compressibility and if one does not have a definitive measurement of uniform, then the limitation of the non- uniformity being less than 10% is also not defined and therefore it would be obvious in the design process to provide a pad with a non-uniformity of less Appeal 2011-009297 Application 10/457,316 4 than 10%.” Ans. 6-7. This statement is incorrect as Appellants have defined the “within belt non-uniformity (WIBNU).” See Br. 10, fn. 1 and Spec. para [0060] (stating “within belt non-uniformity (WIBNU) is calculated by dividing the standard deviation by the mean and multiplying by 100%”). The Examiner provides no further reasoning or findings that the combination of Xu and Jenson teaches a “within belt non-uniformity of pad compressibility measured by durometer is less than 10 percent” as required by claim 1. Therefore, we agree with the Appellants that the Examiner has erred by failing to make adequate findings that the prior art teaches “within belt non-uniformity of pad compressibility measured by durometer is less than 10 percent.” Br. 10, 12. As such, we do not sustain the rejection of claim 1, and claims 6-8 which depend therefrom, as unpatentable over Xu and Jenson. Claim 14 contains the same limitation of “wherein the within belt non-uniformity of a pad compressibility as measured by durometer is less than 10 percent” that is recited in claim 1. Br., Claims App’x. For the reasons discussed supra, we do not sustain the rejection of claim 14, and claims 15-18 which depend therefrom, as unpatentable over Xu and Jenson. Claim 19 does not contain the limitation of “wherein the within belt non-uniformity of the pad compressibility as measured by durometer is less than 10 percent”, and therefore, we address Appellants’ other arguments. Appellants argue that because Xu teaches that “the liquefied polymer may penetrate to any depth in the cushioning layer 184” (Br. 9, citing Xu, col. 10. ll. 49-54), the polymer cannot penetrate to the “substantially consistent uniform level, as presently claimed.” Id. The Examiner responds that “Xu shows in fig. 2C that the hardenable layer is applied to a substantially consistent uniform level” and that “the teaching of Xu of ‘any’ depth Appeal 2011-009297 Application 10/457,316 5 definitely encompasses a substantially consistent uniform depth depending on the desired outcome of the manufactured pad.” Ans. 6. We agree with the Examiner. The preponderance of the evidence, particularly Figure 2C, supports the Examiner’s finding of Xu disclosing that the liquid polymer may penetrate to a “substantially uniform depth” as recited by claim 19. Appellants next attempt to argue that the Examiner has improperly combined different embodiments from Column 13 and Column 11 of Xu. See Br. 10. However, the Examiner cites columns 9, 10, 13, 15, and 16 of Xu, not column 11. See Ans. 4. Also, this argument lacks specificity. Even if Appellants meant to cite column 10, Appellants’ arguments does not explain why the description of a polishing section 180 in column 10 cannot be combined with the description of a method for generating a polishing pad in column 13. As such, this argument, if any, is not persuasive. Appellants further argue that Jensen “does not appear to disclose either a hardenable fluid cast onto the subpad so that it penetrates said subpad to a substantially consistent uniform depth, nor the claimed compressibililty” and thus “one of ordinary skill in the art would not arrive at the claimed invention.” Br. 10-11. The argument is not persuasive because the Examiner finds that Xu teaches a hardenable layer that penetrates the subpad to a uniform depth and because claim 19 does not recite a particular compressibility. See Ans. 5 and Br., Claims App’x. For the above reasons, we sustain the rejection of claim 19, and claims 20-23 which depend therefrom and are not separately argued, as unpatentable over Xu and Jenson. Appeal 2011-009297 Application 10/457,316 6 Obviousness over Xu, Jensen, and Ibrahim Addressing claim 22, which depends from claim 20, which in turn depends from claim 19, the Examiner introduces Ibrahim for the teaching of “applying the barrier layer by a knife-over-roll technique.” Ans. 5. The Appellants do not challenge this finding and only argue that “Ibrahim does not cure the above-described deficiencies in Xu et al and/or Jensen et al.” Br. 11. As there is no deficiency in Xu and Jenson to render the underlying claims 19 and 20 unpatentable, we sustain the rejection of claim 22 as unpatentable over Xu, Jensen, and Ibrahim. DECISION For the above reasons, the Examiner’s decision to reject claims 1, 6-8, and 14-18 is reversed, and the Examiner’s decision to reject claims 19-23 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). . AFFIRMED-IN-PART rvb Copy with citationCopy as parenthetical citation