Ex Parte BennerDownload PDFPatent Trial and Appeal BoardMay 28, 201311800257 (P.T.A.B. May. 28, 2013) Copy Citation 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. 11/800,257 05/03/2007 Stephen J. Benner 4DIV 8646 7590 05/28/2013 Wendy W. Koba, Esq. PO Box 556 Springtown, PA 18081 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 MAIL DATE DELIVERY MODE 05/28/2013 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 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte STEPHEN F. BENNER 7 ___________ 8 9 Appeal 2011-003838 10 Application 11/800,257 11 Technology Center 3700 12 ___________ 13 14 15 Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and 16 THOMAS F. SMEGAL, Administrative Patent Judges. 17 18 SMEGAL, Administrative Patent Judge. 19 20 DECISION ON APPEAL 21 22 STATEMENT OF THE CASE1 23 Stephen F. Benner (Appellant) seeks review under 35 U.S.C. § 134 of a 24 final rejection of claims 5-8, the only claims pending in the application on 25 appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 26 The Appellant invented an improved end effector arm configuration 27 for use in chemical mechanical planarization (Specification, para. [0002]). 28 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed March 17, 2010) and the Examiner’s Answer (“Ans.,” mailed June 9, 2010). Appeal 2011-003838 Application 11/800,257 2 An understanding of the invention can be derived from a reading of 1 exemplary claim 5, which is reproduced below. 2 3 5. A method for controlling the 4 application of an abrasive conditioning disk to a 5 polishing pad in a CMP conditioning system such 6 that variable and controllable downforce, including 7 zero downforce, is applied to the conditioning 8 disk, the method comprising the steps of: 9 engaging a pressure-controlled actuator 10 mechanism to control movement of an end effector 11 arm, wherein said actuator mechanism further 12 comprises a piston and a cylinder for housing the 13 piston, the positioning defining an upper actuator 14 chamber above the piston and a lower actuator 15 chamber below the piston; 16 adjusting the atmospheric pressure within 17 the upper and lower actuator chambers to 18 effectuate the movement of the piston within the 19 cylinder; and 20 forming the piston of a graphite material and 21 the cylinder of a glass material to overcome an 22 initial static friction force as the piston is moved 23 within the cylinder. 24 25 The Examiner relies upon the following prior art: 26 Friedline US 3,725,949 Apr. 3. 1973 Tobin US 6,517,414 B1 Feb. 11, 2003 27 REJECTION ON APPEAL 28 29 Claims 5-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 30 Tobin in view of Friedline. 31 Appeal 2011-003838 Application 11/800,257 3 ISSUE 1 The issue on appeal is whether the Examiner failed to substantiate that 2 claims 5-8 are unpatentable over the combination of Tobin in view of 3 Friedline. 4 5 FINDINGS OF FACT 6 We find that the findings of fact, which appear in the Analysis below, 7 are supported by at least a preponderance of the evidence. Ethicon, Inc. v. 8 Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 9 evidentiary standard for proceedings before the Office). 10 11 ANALYSIS 12 The rejection of claims 5-8 under 35 U.S.C. § 103(a) as being unpatentable 13 over Tobin in view of Friedline. 14 Appellant argues claims 5-8 as a group (App. Br. 4). We select claim 5 15 as the representative claim for this group and the remaining claims stand or 16 fall with claim 5. 37 C.F.R. § 41.37 (c) (1) (vii) (2011). 17 We are not persuaded by Appellant’s arguments (App. Br. 4-6) that the 18 Examiner failed to establish a prima facie showing of obviousness in 19 rejecting claims 5-8 over the combination of Tobin and Friedline. In 20 particular, Appellant argues that claim 5 recites a pneumatic actuator to 21 control the movement of the conditioner head in a CMP system while Tobin 22 teaches a mechanical actuator to control the same movement. Appellant 23 concedes that Friedline discloses a pneumatic actuator formed of a graphite 24 piston and a glass cylinder. However, Appellant contends that “[w]ithout the 25 presence of ‘friction’ in Tobin et al., there is no need to include the 26 pneumatic actuator mechanism of Friedline et al.” (App. Br. 5). 27 Appeal 2011-003838 Application 11/800,257 4 We agree with the Examiner that “just because Tobin uses bearings 1 within the piston/cylinder arrangement, this does not mean that there is no 2 friction problem” (Ans. 4). Furthermore, as the Examiner further points out 3 at pages 4-5 of the Answer, “[b]ecause bearings are used to reduce friction 4 does not mean it is the most frictionless design available or reduces friction 5 altogether.” Still further, the Examiner correctly observes that “Friedline 6 teaches that a glass cylinder and graphite piston improve tolerances and 7 reduces friction to a minimum, increasing response time to the changes in 8 pressure” (Ans. 5). 9 While Appellant acknowledges that Tobin “explicitly refers to a ‘load 10 sensor 310’ which is formed of a glass cylinder with a graphite shaft,” Tobin 11 also teaches that the “[u]se of a glass cylinder with a graphite shaft provides 12 a frictionless movement so that the force sensed by the load sensor 310 will 13 accurately reflect the down force exerted by the arm 132. Effects, such as 14 stiction, may therefore be avoided.” Column 11, ll. 58-62. 15 Appellant also argues that their use “of the specific glass and graphite 16 combination of piston and cylinder elements of the arrangement of the 17 present invention eliminates the possibility of a created moment impacting 18 the movement of the piston” (App. Br. 5). We agree with the Examiner that 19 the argument is “moot” as it is not germane to any limitation recited by 20 claim 5 (Ans. Br. 5). 21 “Section 103 forbids issuance of a patent when ‘the differences between 22 the subject matter sought to be patented and the prior art are such that the 23 subject matter as a whole would have been obvious at the time the invention 24 was made to a person having ordinary skill in the art to which said subject 25 matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 26 Appeal 2011-003838 Application 11/800,257 5 The question before us is whether the substitution of one well known 1 actuator-the pneumatic actuator of Friedline-for another well known 2 actuator-the mechanical actuator of Tobin-is a sufficient difference from the 3 prior art to render the Appellant’s claims nonobvious. 4 We agree with the Examiner that the combined teachings of Tobin and 5 Friedline render claim 5 obvious to one of ordinary skill in the art. We 6 affirm the Examiner’s rejection of claims 5-8 as being unpatentable over 7 Tobin and Friedline. 8 9 DECISION 10 The decision of the Examiner to reject claims 5-8 is affirmed. 11 No time period for taking any subsequent action in connection with 12 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13 § 1.136(a)(1)(iv)(2011). 14 15 AFFIRMED 16 17 18 19 Klh 20 Copy with citationCopy as parenthetical citation