10922778 (B.P.A.I. Jan. 13, 2009)

Ex Parte Park et al

Board of Patent Appeals and InterferencesJan 13, 2009

10922778 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MOO-YONG PARK, JONG-WON LEE, SANG-ROK HA, AND HONG-SEONG SON ____________________ Appeal 2008-4660 Application 10/922,778 Technology Center 3700 ____________________ Decided: January 13, 2009 ____________________ Before WILLIAM F. PATE, III, LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Moo-Yong Park et al. (Appellants) seek our review under 35 U.S.C. § 134 from the final rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2008-4660 Application 10/922,778 2 SUMMARY OF THE DECISION We REVERSE. THE INVENTION Appellants’ claimed invention pertains to a polishing pad and the related method for fabricating such pads. (Spec. 1, ll. 13-15.) Appellants explain that polishing pads are used to prepare wafers during the fabrication of integrated circuit devices. (Spec. 1, ll. 18-24.) Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A polishing pad used during a chemical mechanical polishing process to planarize a surface of a wafer, the polishing pad comprising: a stiff substrate adapted to allow a chemically etched product to be removed from the surface of the wafer; and a plurality of spaced apart members on the substrate and protruding from the substrate, each of the plurality of members comprising at least one abrasive layer and at least one chemical additive layer, the abrasive and additive layers being stacked vertically. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Johnson US 2005/0272335 A1 Dec. 8, 2005 The Examiner rejected claims 1 to 27 under 35 U.S.C. § 102(e) as anticipated by Johnson. Appeal 2008-4660 Application 10/922,778 3 ISSUE The Appellants contend, inter alia, that the Examiner erred in rejecting the claims because Johnson does not disclose the recited protruding members each having “abrasive and additive layers being stacked vertically.” (App. Br. 6-7; Reply Br. 2.) The Examiner found this structure disclosed in the protrusions on Johnson’s substrate. (See Ans. 6.) The issue presented is: Have Appellants shown that the Examiner erred in finding that Johnson discloses members each having vertically stacked abrasive and additive layers? FINDINGS OF FACT We find that the following enumerated findings are supported by at least a preponderance of the evidence. 1. The customary meaning of “layer” is a single thickness of a material covering a surface or forming an overlying part or segment. See THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000). 2. Johnson discloses a consumer scrubbing wipe article and a method of manufacturing the same. (Johnson, ¶¶ [0008], [0009].) Johnson’s article includes a nonwoven substrate 12 and a texture layer 14. (Id., ¶ [0015].) 3. Johnson’s texture layer 14 contains sections, 20a and 20b, which are spaced apart from each other on the substrate and protrude from the substrate 12. (Johnson, ¶ [0017]; Figs. 1-3; Ans. 6.) Appeal 2008-4660 Application 10/922,778 4 4. Figure 3 from Johnson is reproduced below: Figure 3 is a cross-sectional view of Johnson’s article being applied to a surface 30. (Johnson, ¶¶ [0012], [0017].) Johnson’s Figure 3 depicts the individual protrusions 20a and 20b as constituting a single texture layer. 5. Johnson states: The texture layer 14 is … an abrasive, non-crosslinked resin-based material. … [T]he exact composition of the texture layer 14 can vary depending upon desired end performance characteristics. To this end, a texture layer matrix is initially formulated and then printed onto the substrate 12. This matrix will consist of the selected resin and may include additional constituents such as mineral(s), filler(s), colorant, thickeners, etc. (Johnson, ¶ [0022], ll. 1-9.) Johnson indicates that, in the cleaning pad art, a single “layer” may include multiple constituents. (See Johnson, ¶¶ [0022]- [0026].) PRINCIPLES OF LAW During examination of a patent application, pending claims are interpreted broadly, see In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), but the construction cannot be “beyond that which was reasonable in light of the totality of the written description,” In re Baker Hughes Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000). Appeal 2008-4660 Application 10/922,778 5 “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (citations omitted). ANALYSIS Independent apparatus claim 1 recites “each of the plurality of members comprising at least one abrasive layer and at least one chemical additive layer, the abrasive and additive layers being stacked vertically.” Independent method claim 15 recites similar language. The remaining claims at issue depend, directly or indirectly, from claim 1 or claim 15. Thus, every claim at issue requires the recited member composition and configuration. The Examiner concluded that neither Appellants’ claims nor the Specification adequately distinguishes between chemicals and abrasives (see Ans. 3, 7), and held that the claims do not require the abrasive layer to be of a different composition than the chemical layer (see Ans. 3). The Examiner also stated that the term “layer” is broadly recited by the Appellants. (Ans. 4, 6.) Based on this understanding of the claims, the Examiner found that Johnson’s protrusions 20a and 20b correspond to the claimed members. (See Ans. 6.) The Examiner found that “since each independent protrusion (20a, 20b) is made from numerous materials … such materials will constitute numerous layers which alternate as abrasive and/or chemical additive layers and are ‘stacked vertically[.]’” (Ans. 6 (citing Johnson, ¶ [0022], ll. 1-9).) We disagree. Appeal 2008-4660 Application 10/922,778 6 The claim’s recitation of “at least one abrasive layer and at least one chemical additive layer” along with the use of the plural term “layers” in the context of “being stacked vertically” indicates that each individual member on the substrate contains at least two stacked layers. This understanding is consistent with the Specification. (See Spec. 6, ll. 11-16 (as amended May 25, 2006); id. at 6, ll. 26-29; Figs. 3, 4.) Thus, the claims require that the protruding members include more than one layer and that the layers are located vertically with respect to each other. The customary meaning of “layer” connotes a single thickness of a material, regardless of the number of constituents in the material. (See Fact 1.) Also, the Johnson reference indicates that, in the cleaning pad art, a single “layer” may include multiple constituents. (Fact 5.) Therefore, even if the claimed layers may be of the same composition – as the Examiner held – the claims nonetheless require that there be more than one such layer stacked vertically. In other words, each protruding member must contain at least two discernable thicknesses of material. Johnson’s Figure 3 depicts the individual protrusions 20a and 20b as constituting a single texture layer. (Fact 4.) The Examiner does not point to any disclosure in Johnson that suggests that the texture layer is anything other than a single thickness of material. Thus, the Appellants have shown that the Examiner erred in rejecting claims 1 and 15 as anticipated by Johnson. The remaining claims at issue – claims 2 through 14 and 16 through 27 – depend from either claim 1 or 15, and, thus, also require the vertically stacked layers. We reverse the rejection of the dependent claims for the same reasons set forth above for the independent claims. Appeal 2008-4660 Application 10/922,778 7 CONCLUSION We conclude that the Appellants have shown that the Examiner erred in finding that Johnson discloses members each having vertically stacked abrasive and additive layers. Appellants have thereby shown that the Examiner erred in rejecting claims 1-27 under 35 U.S.C. § 102(e) as anticipated by Johnson. DECISION The decision of the Examiner to reject claims 1 through 27 is reversed. REVERSED Appeal 2008-4660 Application 10/922,778 8 LV: MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627