Cabot Microelectronics Corporation

Patent Trials and Appeals Board

Dec 2, 2021

2021002443 (P.T.A.B. Dec. 2, 2021)

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.
15/875,773 01/19/2018 Diane SCOTT 100658DIV 5342
29050 7590 12/02/2021
Thomas Omholt
Patent Prosecution Agent
CMC MATERIALS, INC.
870 NORTH COMMONS DRIVE
AURORA, IL 60504
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
Thomas.Omholt@cmcmaterials.com
cmc.prosecution@cmcmaterials.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIANE SCOTT and PAUL ANDRE LEFEVRE
Appeal 2021-002443
Application 15/875,773
Technology Center 3700
Before DANIEL S. SONG, STEFAN STAICOVICI, and
BRETT C. MARTIN, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision to reject claims 12–17 and 19–22.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies Cabot Microelectronics
Corporation as the real party in interest. Appeal Br. 1.
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Application 15/875,773

2
CLAIMED SUBJECT MATTER
The claims are directed to a coated compressive subpad for chemical
mechanical polishing. Claim 12, reproduced below, is illustrative of the
claimed subject matter:
12. A subpad for a polishing pad stack, the subpad
comprising:
a compressive subpad material having a first surface and
a second, opposite, surface;
a first pressure sensitive adhesive layer coated on the first
surface of the compressive subpad material, and a first release
liner disposed on the first pressure sensitive adhesive layer; and
a second pressure sensitive adhesive layer coated on the
second surface of the compressive subpad material, wherein the
compressive subpad material is a compressive foam subpad
material, and wherein the first and second surfaces of the
compressive foam subpad material each have a surface energy
approximately in the range of 30-40 dyne/cm2, and the first
pressure sensitive adhesive layer is in direct contact with at
least 90% of the total surface area of the first surface of the
compressive subpad material.
Appeal Br. 7–8 (Claims App.).
OPINION
The Examiner rejects claims 12–17 and 19–22 under 35 U.S.C. § 103
as being unpatentable over Boldizar (US 2005/0189065 A1, pub. Sept. 1,
2005) in view of Jensen (US 7,645,186 B1, iss. Jan. 12, 2010). Final Act. 2.
As to independent claim 12, the Examiner finds that Boldizar discloses a
polyurethane subpad 10 for a polishing pad stack substantially as claimed,
including “a first pressure sensitive adhesive layer 20 coated on the first
surface of the compressive subpad material,” and “a second pressure
sensitive adhesive layer 30 coated on the second surface of the compressive
Appeal 2021-002443
Application 15/875,773

3
subpad material.” Final Act. 2. The Examiner concedes that Boldizar fails
to disclose that “the polyurethane pad to be closed cell foam pad with a
surface energy of 30-40 dyne/cm2 or the thickness of subpad,” but relies on
Jensen for these teachings to conclude that it would have been obvious to
one of ordinary skill in the art to use the well-known subpad material of
Jensen “in order to precisely cushion the polishing pad to enhance polishing
uniformity.” Final Act. 3.
The Appellant, inter alia, disputes the Examiner’s finding that
Boldizar discloses the recited pressure sensitive adhesive layers that coat the
subpad material. Appeal Br. 3. In that regard, the Appellant points out that
the Specification “describes how the lamination process using two-sided
tape of the prior art, such as described by Boldizar, fails to create enough
surface area contact as compared to the coating process,” and “Boldizar
makes no teaching of the surface coverage on the subpad.” Appeal Br. 3
(citing Spec. ¶¶ 36, 37). The Appellant also argues that “[i]n the present
invention, the pressure sensitive adhesive is coated as a liquid and allowed to
dry on the surface of the compressive subpad.” Appeal Br. 3.
The Examiner responds that claims “are drawn to a product and not a
process of making the product. These arguments of Appellant are clearly
drawn to the method of making the subpad with a coated liquid of [pressure
sensitive adhesive] that is allowed to dry. This, however, is not the claimed
invention.” Ans. 6. The Examiner further explains that “the plain meaning
of ‘coated’ in claim 12 means ‘covered, spread, applied.’ Therefore,
Boldizar, as detailed in rejection, ‘covers or applies’ a [pressure sensitive
adhesive] (20,30) to a subpad.” Ans. 7. The Examiner asserts that “[t]he
product claims do not give a special definition of ‘coating,’ and that the
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Application 15/875,773

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Specification “does not specifically disclaim the scope shown in Boldizar,
and does not specifically and unmistakably redefine the term ‘coated’ which
would be required to import the limitations from the specification.” Ans. 6–
7. Thus, according to the Examiner, “given the broadest reasonable
interpretation, Boldizar discloses this limitation by applying or covering a
[pressure sensitive adhesive] on both surfaces of the subpad.” Ans. 7.
We do not agree with the Examiner. Although the Examiner is
correct that the arguments of the Appellant are related to the manner or
method in which the subpad is made, under the proper interpretation of
claim 12, the Appellant’s arguments are persuasive. The words of a claim
are generally given their ordinary and customary meaning as understood by
a person of ordinary skill in the art when read in the context of the
specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) (en banc). There are only two exceptions to this
general rule: 1) when a patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full scope of a claim
term either in the specification or during prosecution. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996). Moreover, “words
of limitation that can connote with equal force a structural characteristic of
the product or a process of manufacture are commonly and by default
interpreted in their structural sense.” See, 3M Innovative Props. Co. v. Avery
Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003).
Contrary to the Examiner’s assertion, the Specification defines the
coated adhesive layer as “a ‘wet’ layer” that is applied to the subpad surface,
and then dried so as to coat the subpad. Spec. ¶ 36. The Specification
explicitly discloses that the term “coated” excludes pressure sensitive
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Application 15/875,773

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adhesive that are two-sided tapes, thereby disavowing the scope of the claim
applied by the Examiner, which encompasses laminate pressure sensitive
adhesive, such as that disclosed in Boldizar. Id. Moreover, the limitation
requiring the pressure sensitive adhesive layers to be “coated on” the surface
of the subpad material connote a structural characteristic of the product or a
process of manufacture. In that regard, the structural result of the product-
by-process limitation “coated on” is also explained and illustrated in the
Specification and the drawings, i.e., “the surface area contact between the
pressure sensitive adhesive layer and the surface of the subpad is greater
than approximately 90%.” Spec. ¶ 37; Figs 4A, 4B. Likewise, this result is
recited in claim 12.
Therefore, under the broadest reasonable interpretation of claim 12, as
understood by a skilled artisan in view of the Specification, the Appellant is
correct that Boldizar fails to disclose the recited limitation requiring the
pressure sensitive adhesive layers be “coated on” the surface of the subpad
material. The Examiner’s application of Jensen does not address the
deficiency of Boldizar.2 Accordingly, we reverse the rejection of
independent claim 12, and claims 13–17 and 19–22, which ultimately

2 The Examiner notes that “Jensen teaches that coating a subpad with an
unset hot melt adhesive is well-known (col. 4, lines 57–60) such as to coat
entire surface of subpad ‘not devoid of adhesive’ (col. 5, lines 19–20).”
Ans. 8. However, the Examiner “did not rely on this teaching of ‘coated
subpad’ since these specific limitations of making the sub pad were not
claimed,” and as such, this teaching is not material to the disposition of the
present appeal. Id. Regardless, we further note that the Appellant also
disavowed application of glue and heat in its recitation of “[a] pressure
sensitive adhesive layer.” Spec. ¶ 31.
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depend from claim 12. The remaining disputes between the Appellant and
the Examiner are moot.
CONCLUSION
The Examiner’s rejection is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12–17, 19–
22
103 Boldizar, Jensen 12–17, 19–
22

REVERSED