15459192 (P.T.A.B. Feb. 12, 2019)

Ex Parte Lin et al

Patent Trial and Appeal BoardFeb 12, 2019

15459192 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/459, 192 03/15/2017 107476 7590 02/14/2019 Eschweiler & Potashnik, LLC Rosetta Center 629 Euclid Ave., Suite 1000 Cleveland, OH 44114 FIRST NAMED INVENTOR Chang-Sheng Lin 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. TSMCP655USA 1332 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 02/14/2019 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): docketing@eschweilerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHANG-SHENG LIN and HSIN-HSIEN LU Appeal2018-004743 Application 15/459, 192 Technology Center 3700 Before LINDA E. HORNER, WILLIAM A. CAPP, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's Decision rejecting claims 1--4 and 6-11 as unpatentable over Masuta (US 6,277,008 Bl, issued Aug. 21, 2001). We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. Appeal2018-004743 Application 15/459,192 CLAIMED SUBJECT MATTER Claims 1 and 10 are the independent. Claims 2--4 and 6-9 depend from claim 1, and claim 11 depends from claim 10. Claim 1 is reproduced below: 1. A method of using a polishing system, the method compnsmg: securing a wafer in a carrier head, the carrier head compnsmg: a housing enclosing the wafer, wherein the housing includes a retaining ring recess; and a retaining ring positioned in the retaining ring recess, the retaining ring surrounding the wafer and comprising: a top pad portion configured to contact the polishing pad; and a sub pad portion positioned between the top pad portion and the housing, wherein a hardness of the sub pad portion is less than a hardness of the top pad portion; pressing the wafer against a polishing pad; and moving at least one of the carrier head or the polishing pad relative to the other. OPINION Claims 1 and 10 each recite "securing a wafer in a carrier head," and specify that "the carrier head compris[ es] ... a retaining ring." Claim 1 recites that the "retaining ring" includes "a top pad portion ... and a sub pad portion" and claim 10 recites that the "retaining ring" includes "a first ring- shaped layer and a second ring-shaped layer." Claim 1 further specifies that "a hardness of the sub pad portion is less than a hardness of the top pad portion." Claim 10 similarly specifies that "a hardness of the second ring- shaped layer is less than a hardness of the first ring-shaped layer." 2 Appeal2018-004743 Application 15/459,192 The Examiner finds that Masuta teaches "a retaining ring 101" with resin portion 101a "made of PET" 1 corresponding to the top pad portion (claim 1) and the first ring-shaped layer (claim 10). Final Act. 2. The Examiner finds that metal portion 101 b "made of metal which could be a metal of less hardness than PET" corresponds to the sub pad portion ( claim 1) and the second ring-shaped layer ( claim 10). Id. The Examiner explains that "Masuta clearly says the metal ring 101 b is NOT limited to stainless steel but is a metal of corrosion resistance and high strength" and, therefore, "[i]t is inherent that any metal matching this description can be used, and can have a hardness less than PET." Id. at 3. Appellant responds that "Masuta is silent as to whether its metal portion 101 b ( alleged sub pad portion of claim 1) has a hardness that is less than a hardness of its resin portion 101 a ( alleged top pad portion of claim 1 ). " Appeal Br. 4 ( emphasis omitted). Appellant further explains that "[s]tainless steel is harder than PET, and therefore, the hardness of the stacked retaining ring layers in Masuta is opposite of what is recited in amended claim 1." Id. at 5 ( emphasis omitted). Appellant presents similar arguments directed to the related features in claim 10. See id. at 8-11. The Examiner does not dispute that Masuta' s metal portion 101 b is harder than resin portion 101a. See Ans. 4. Rather, the Examiner explains that "Masuta is not limited to ring 101 b being stainless steel" and "[i]t is inherent that any metal matching this description can be used, and can have a hardness less than PET." Id. The Examiner's reference to inherency is not that the relationship between the hardness requirements of the claims is 1 Although Masuta does not use the term "PET," Appellant's Specification states that PET is polyethylene terephthalate. Spec. ,r 16. 3 Appeal2018-004743 Application 15/459,192 necessarily present in Masuta. Rather, the Examiner uses the term "inherent" as some sort of substitute for the rationale required to modify to the hardness of Masuta's components. That is, the Examiner's position is that it is inherent that different materials could be used. See id. ("Although the specific hardness of 101 a [versus] 101 b is not disclosed, it is inherent that any metal with high strength and corrosion resistance can be used."). Notably, the Examiner provides no reason to modify Masuta's teachings, and simply concludes that because different materials could be used, "using any metal with these properties for the sub pad portion would be obvious to one of ordinary skill." Id. at 5. Moreover, contrary to the Examiner's proposed modification, as Appellant notes (Appeal Br. 6), Masuta explains that its retainer ring is an improvement over conventional retainer rings where the entire retainer ring is formed from hard plastic (Masuta, 4:5-8). Masuta explains that by having metal portion 101b, "the mechanical strength of the retainer ring 101 increases considerably." Id. at 4:7-9. The Examiner's proposed modification would be counter to this objective by reducing the strength of metal portion 101 b. For at least these reasons, the Examiner has failed to establish sufficiently that one skilled in the art would have modified the hardness of Masuta's metal portion 101b to be less than that of resin portion 101a. We additionally note that, in the Answer, the Examiner states that "the sub pad portion 107 is an air cushion that has a hardness less than PET." Ans. 4. That is the extent of the discussion of sub pad portion 107 in the Answer. In the Final Action, the Examiner states that "there is a retaining ring cushion 107 made of a flexible element enclosing a volume of fluid." Final Act. 2. It is unclear, at best, what the Examiner attempts to convey 4 Appeal2018-004743 Application 15/459,192 with those statements. Based on the explanation in the Final Action and the Answer, the brief reference to Masuta's retaining ring cushion 107 does not cure the deficiency in the rejection noted above. For at least this reason, we do not sustain the Examiner's decision to reject claims 1--4 and 6-11. DECISION We REVERSE the Examiner's decision to reject claims 1--4 and 6-11. REVERSED 5