Ex Parte Shive et al

Board of Patent Appeals and Interferences

Jul 19, 2012

11616485 (B.P.A.I. Jul. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LARRY W. SHIVE and BRIAN L. GILMORE
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Appeal 2011-003254
Application 11/616,485
Technology Center 1700
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Before TERRY J. OWENS, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 9-12 and 14-22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

BACKGROUND

Claim 9 is illustrative of the invention:
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9. A wafer support platform comprising:

a main body having a surface, the main body including a first
material,

contaminants embedded in the surface of the body, wherein the
contaminants include metal particles different than the first material, and
wherein the metal particles protrude from the surface of the body, and

a layer of material overlying the contaminants on said surface of the
body to prevent the contaminants from diffusing into the supported wafer
during treatment, wherein the layer of material separates the supported wafer
from the metal particles embedded in the surface of the body, and wherein
the layer of material has a thickness such that the metal particles embedded
in the surface of the body are entirely between the main body and the layer
of material.

The Examiner has maintained, and Appellants seek review of, the
following rejections:
A. Claims 9, 11, 12, 14, 15, and 18 under 35 U.S.C. § 102(b) as
anticipated by Van Den Berg (US 2006/0065634 A1, pub. Mar. 30,
2006);
B. Claims 10, 16, and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Van Den Berg;
C. Claims 19, 20, and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Van Den Berg in view of Parkhe (US
2005/0183669 A1, pub. Aug. 25, 2005); and
D. Claim 21 under 35 U.S.C. § 103(a) as being unpatentable over Van
Den Berg in view of Parkhe further in view of Corrigan (US
4,289,503, issued Sep. 15, 1981).
Appellants argue all of the claims rejected over Van Der Berg in
rejection A as a group (App. Br. 4-6). Thus, in accordance with 37 C.F.R. §
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41.37(c)(1)(vii), we select independent claim 9 as the representative claim
on which our discussion will focus.
MAIN ISSUE ON APPEAL
Has the Examiner erred in his determination that the claimed
invention is anticipated because the Examiner has not provided a basis for
concluding that the metal particle contaminants in Van Der Berg are both
embedded in and protrude from the surface of the main body (see, App. Br.
5; Reply Br. 2)?
We answer this question in the negative.
ANALYSIS with FACTUAL FINDINGS
We rely upon the factual findings of the Examiner as set out in the
Final Office Action and the Answer with respect to Van Der Berg, including
the Response to Argument section (Final Office Action pp. 2-4; Ans. pp. 3-
8), unless expressly overturned or set aside herein.
Appellants’ main contention that a prima facie case of anticipation
cannot be made since Van Der Berg does not expressly state that its metal
particle contaminants are embedded in and protrude from the surface (Reply
Br. 2), is unavailing. As pointed out by the Examiner, Van der Berg is de
facto directed to solving the same problem as Appellants with substantially
the same solution as Appellants (e.g., Ans. 3). Furthermore, the methods of
Van Der Berg that produce the undesirable metal particle contaminants are
similar to those disclosed herein (e.g., sandblasting (Van der Berg abstract;
Appellants’ Spec. para. [0003])). Accordingly, the Examiner’s position that
Van Der Berg “clearly teaches metal particles embedded in the surface . . .
and protrude[ing] from the surface of the body” (Ans. 7) is reasonable (see,
e.g. Van der Berg, paras. [0008], [0017], [0018]).
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Furthermore, where patentability rests upon a property of the claimed
material not expressly disclosed within the art, the PTO has no reasonable
method of determining whether there is, in fact, a patentable difference
between the prior art materials and the claimed material. Therefore, where
the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily
possess the characteristics of his claimed product. In re Best, 562 F.2d 1252,
1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Appellants have not provided any evidence or persuasive technical reasoning
to refute the Examiner’s finding that Van Der Berg’s particles have the
required features recited in claim 9.
We therefore affirm the Examiner’s rejection of claims 9, 11, 12, 14,
15, and 18 under 35 U.S.C. § 102.
We also rely upon the Examiner’s findings of facts and determination
of obviousness for the subject matter encompassed in the § 103 rejections B
to D (Ans. 4-6, 8).
Appellants do not provide any additional arguments for rejection B.
With respect to claim 19 in rejection C, Appellants’ argument that the
conformal coating of Parkhe does not suggest a coating “having
substantially the same topography” as that of the main body (App. Br. 9;
Reply Br. 3) is unavailing as it fails to consider the prior art as a whole (see
Ans. 5, 8). It is well established that ordinary creativity is presumed on the
part of one of ordinary skill in the art. See KSR, 550 U.S. at 421 (“[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
Appellants have not provided any persuasive technical reasoning or evidence
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that an artisan would not have, using no more than ordinary creativity, used
a coating having substantially the same topography as recited in claim 19 in
order to match (or conform) to the surface that was originally intended to
function as the support but for being contaminated.
An improvement in the art is obvious if “it is likely the product not of
innovation but of ordinary skill and common sense.” KSR, 550 U.S. at 421
(2007). See also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009) (“hold[ing] that while an analysis of obviousness
always depends on evidence that supports the required Graham factual
findings, it also may include recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion”).
Appellants do not provide any additional arguments for rejection D.
Accordingly, we also affirm all of the § 103 rejections on appeal.

ORDER
The Primary Examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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