Ex Parte Swedek et al

Board of Patent Appeals and Interferences

Aug 20, 2012

10444921 (B.P.A.I. Aug. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BOGUSLAW A. SWEDEK and MANOOCHER BIRANG
____________________

Appeal 2010-008529
Application 10/444,921
Technology Center 3700
____________________

Before LINDA E. HORNER, LYNNE H. BROWNE, and MICHELLE R.
OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008529
Application 10/444,921

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 6, 9, 10, 14-19, 25, 35, 38, 42-45, and 49-51. Claims 3-5, 7, 8,
13, 21-24, 26-34, 36, 37, 39-41, and 46-48 have been cancelled. Claims 11,
12, and 20 have been withdrawn. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

The claimed subject matter relates to “polishing pads used in during
[sic] chemical mechanical polishing and methods and apparatus for
monitoring a polishing process.” See Spec. p. 1, ll. 11-12. Claims 1, 25, and
35 are the independent claims on appeal. Claim 1 is illustrative of the
claimed subject matter and is reproduced below with the key disputed
limitations emphasized:

1. A polishing pad, comprising:
a polishing piece having a polishing surface and a back
surface, the polishing piece surrounding an insert having a
bottom surface and a recess in the bottom surface; and
a plurality of grooves formed in the polishing surface of
the polishing piece;
wherein the insert is opaque to visible light and lacks
grooves, and wherein the polishing piece and the insert consist
of the same material.

1 Appellants identify the real party in interest as Applied Materials, Inc.
App. Br. 2.
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REJECTIONS
Appellants seek review of the following rejections:
(1) Claims 1, 2, 6, 9, 14-19, 25, 35, 38, 42-45, and 49-51 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
(2) Claims 1, 2, 6, 9, 10, 14-19, 35, 42-45, and 49-51 under 35 U.S.C.
§ 103(a) as unpatentable over Bajaj (US 6,254,459 B1, iss. Jul. 3, 2001).
(3) Claims 1, 2, 6, 9, 10, 14-19, 25, 35, 38, 42-45, and 49-51 under § 103(a)
as unpatentable over Bajaj and Lehman (US 6,621,264 B1, iss. Sep. 16,
2003).2

ISSUES
Only issues and findings of fact contested by Appellants will be
addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010).
Appellants argue the patentability of the claims subject to ground of
rejection (2) as a group, except for claim 9. App. Br. 8-9. We select claim 1
as representative. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue the
patentability of the claims subject to ground of rejection (3) as a group,
except for claim 9. App. Br. 9-10. Again, we select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii). The issues presented by
this appeal are:

2 The Examiner also includes a separate rejection of claims 25, 35, and 38
under 35 U.S.C. § 103(a) as unpatentable over Bajaj and Lehman based on
different reasoning. Ans. 5. Because our affirmance of ground of rejection
(3) is dispositive as to claims 25, 35, and 38, we do not reach this rejection.
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Does the disclosure reasonably convey to a person of skill in the art
that Appellants possessed the claimed subject matter that calls for (1) the
insert to be opaque to visible light and (2) the polishing piece and the insert
to consist of the same material?
Does Bajaj render obvious a polishing pad comprising an insert that is
opaque to visible light?
Would one of ordinary skill in the art have been led to modify the
polishing pad of Bajaj with the teachings of Lehman by replacing the
transparent insert with an opaque insert?
Do Bajaj and Lehman render obvious a polishing pad insert that has a
top surface that is substantially fixed relative to a polishing surface of the
polishing pad?

ANALYSIS
§ 112, first paragraph (written description)
Claims 1, 25, and 35 recite an “insert [that] is opaque to visible
light.” The Specification discloses that “[a]ssuming that the polishing pad is
not being used with an optical endpoint monitoring system, then the entire
polishing layer, including the portion over the recess, can be opaque.” Spec,
p. 8, ll. 16-18. The Specification does not explicitly state that the portion of
the polishing layer over the recess is opaque to visible light. However, the
claimed invention need not be recited in haec verba in the original
specification to satisfy the written description requirement. Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1335, 1352 (Fed. Cir. 2010) (en banc).
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Appellants contend that “opaque” has at least one meaning which
“simply refers to something that cannot be seen through by human vision.”
Reply Br. 3. However, Appellants’ Specification does not assign or suggest
a particular definition of the term “opaque” or otherwise indicate that this
term is used in a manner other than its ordinary and customary meaning.
Therefore, in determining the ordinary and customary meaning of the claim
term “opaque” as viewed by a person of ordinary skill in the art, it is
appropriate to consult a general dictionary definition of the word “opaque”
for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir.
2010). Extrinsic evidence supports that “opaque” can mean “[n]ot
transmitting light, not transparent or translucent; impenetrable to sight,”
which is commensurate in scope with the definition in the Cambridge
International Dictionary referenced by the Examiner. See Ans. 7-8; see also
OXFORD ENGLISH DICTIONARY, http://www.oed.com/view/Entry/131685?
rskey=gp6lGS&result=1&isAdvanced=false#eid (last visited Aug. 14,
2012).
“[T]he test for sufficiency [with respect to the written description
requirement] is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad, 598
F.3d at 1351 (citations omitted). Because “opaque” means not transmitting
light and impenetrable to sight, it necessarily means not transmitting visible
light. The reference to “opaque” in the originally filed disclosure reasonably
conveyed to one skilled in the art that the inventors had possession of an
insert that was opaque to visible light
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Claims 1, 25, and 35 also recite that “the polishing piece and the insert
consist of the same material.” The Specification discloses that
“[a]lternatively, as shown in FIG. 5, the polishing pad can be manufactured
in two parts. . . . The main portion 60 and the insert 62 can be formed from
the same material.” Spec., p. 9, ll. 1-5. The Specification does not explicitly
state that the main portion of the polishing pad and the insert consist of the
same material. Ans. 4. However, disclosure of any other material in the
formation of the main portion 60 and the insert 62 is conspicuously absent.
See Ex parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993). Moreover,
reference is first made in the Specification to a pad being “a single unitary
opaque body” (Spec., p. 8, ll. 16-18, 21) and then alternatively to the single
unitary opaque body being manufactured in two parts (Spec., p. 9, ll. 1-2).
The reference to the main portion 60 and the insert 62 formed from the same
material reasonably conveyed to one skilled in the art that the inventors had
possession of a polishing pad wherein the polishing piece and the insert
consist of the same material.
For the foregoing reasons, we do not sustain the rejection of claims 1,
25, and 35 and their dependent claims 2, 6, 9, 14-19, 38, 42-45, and 49-51
under 35 U.S.C. § 112, first paragraph.

§ 103(a) over Bajaj
The Examiner acknowledges that modification to Bajaj is necessary to
meet the limitation that the insert be opaque to visible light. Ans. 4. The
Examiner concludes that it would have been obvious to one of ordinary skill
to use a material that is transparent to light within a selected range of
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wavelengths, and thus opaque to another selected range of wavelengths, for
the window of the device of Bajaj “depending on the application, and/or to
save cost, which would only require routine experimentations with
predictable results.” Ans. 5. Appellants contend that Bajaj discloses a
window insert having “high optical transmission for light in the range of 300
to 800 nm (col. 3, lines 51-65)” and that “[r]eplacing Bajaj’s window with a
piece that is opaque to visible light would prevent the polishing device from
being used with an optical monitoring system . . . [and] destroy[] the purpose
of Bajaj’s polishing pad.” App. Br. 9.
The Examiner’s reasoning is not persuasive to explain why one of
ordinary skill in the art would have been led to use a material that is
transparent to light within a selected range of wavelengths, but opaque to
light within another selected range of wavelengths corresponding to visible
light. The first reason proffered by the Examiner is that a particular
application may require such material. However, the material of the window
of Bajaj is already configured to be transparent for a spectrum of light from
about 200 to 1200 nm (Bajaj, col. 3, ll. 56-62), which corresponds to a range
between ultraviolet light and infrared light that includes visible light. Since
Bajaj’s window already accomplishes its intended function of being
transparent at wavelengths corresponding to ultraviolet and infrared light,
there is no persuasive reason to modify Bajaj’s window to be formed of a
different material that would remain transparent to ultraviolet and infrared
light, but be opaque to visible light, for a particular application. App. Br. 4.
The second reason proffered by the Examiner is that one of ordinary
skill in the art would have been led to use a material that is transparent to
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light within a selected range of wavelengths, but opaque to light within
another selected range of wavelengths corresponding to visible light, for use
with an optical monitoring system in order to save cost. Ans. 5. However,
the Examiner does not provide adequate reasoning or evidence to support the
theory that cost could be saved by using such a material, and the Examiner
has not identified a material that would be configured to transmit light at the
ultraviolet and infrared wavelengths, but be opaque to visible wavelengths.
App. Br. 4.
The Examiner has failed to articulate adequate reasoning based on
rational underpinnings to explain why a person of ordinary skill in the art
would have been led to modify Bajaj to provide an insert that is opaque to
visible light as called for in independent claims 1 and 35. Ans. 4-5, 9. As
such, we do not sustain the rejection of independent claims 1 and 35 and
their dependent claims 2, 6, 9, 10, 14-19, 42-45, and 49-51 over Bajaj alone.

§ 103(a) over Bajaj and Lehman
In the alternative, the Examiner rejected claims 1, 2, 6, 9, 10, 14-19,
25, 35, 38, 42-45, and 49-51 under § 103(a) over Bajaj and Lehman. The
Examiner found that:
Bajaj et al. as modified in view of Lehman et al. for an
eddy current monitoring system as applied above [e.g., to avoid
problems associated with optical measurement systems such as
loss of transparency due to slurry and/or film residue] meets all
of the limitations of the above claims, except in the alternative,
for disclosing an opaque window as best understood, i.e., fully
opaque to UV and IR light (in expediting the prosecution).
Ans. 6; see also Ans. 5. The Examiner concluded that:
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modified references intended for an eddy current monitoring
system do[] not require a window fully transparent to UV and
IR light, and therefore making the window fully opaque to said
light in saving manufacturing cost and/or for ease of
manufacturing, in view of disclosure of Bajaj (09:12-24) would
have been obvious to one of ordinary skill in the art.

Ans. 6. The Examiner’s rationales for replacing the optical measurement
system with an eddy current monitoring system and for making the window
opaque have a rational underpinning. First, the Examiner correctly finds that
one of ordinary skill in the art would have been motivated to replace the
optical measurement system with an eddy current monitoring system to
avoid problems such as loss of transparency due to residue. See, e.g.,
Lehman, col. 2, ll. 8-10; 52-53. Second, the Examiner correctly finds that
one of ordinary skill in the art would have been motivated to replace the
transparent window insert with a fully opaque insert to save cost or simplify
manufacturing by using the same material to form both the main body and
the insert (once the device was first modified to include an eddy current
monitoring system in place of an optical monitoring system). The teaching,
suggestion, or motivation test “not only permits, but requires, consideration
of common knowledge and common sense.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (quoting DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (2006)). “[A]n
implicit motivation to combine exists not only when a suggestion may be
gleaned from the prior art as a whole, but when the ‘improvement’ is
technology-independent and the combination of references [or modification
of a reference] results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter, smaller,
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more durable, or more efficient.” DyStar, 464 F.3d at 1360. For the
foregoing reasons, we sustain the rejection of independent claims 1, 25, and
35 and their dependent claims 2, 6, 10, 14-19, 38, 42-45, and 49-51 over
Bajaj and Lehman.
Claim 9 recites that “the insert has a top surface that is substantially
fixed relative to the polishing surface.” The Examiner found that “Bajaj
discloses insert[s] that are substantially fixed relative to the polishing pad,
e.g., embodiment of Figs. 3-5.” Ans. 9. This finding is not supported by the
reference. The embodiments of Figs. 3-5 are disclosed as single-piece
window 300, flat-sheet window 400, and sliding window 500, respectively,
that are moved away from the measurement location (close to the polishing
surface) to a position farther away from the polishing surface. Reply Br. 5;
see also Bajaj, col. 4, ll. 26-34; 41-48; 50-59. The Examiner erred in finding
that Bajaj discloses all of the limitations recited in claim 9 and failed to
adequately articulate a rationale based on a rational underpinning as to why
one of ordinary skill would have been led to modify Bajaj in the manner
claimed. Ans. 9. For the foregoing reasons, the Examiner erred in
concluding that the subject matter of claim 9 would have been obvious from
the combination of Bajaj and Lehman; and we do not sustain the rejection of
claim 9 under § 103(a).

CONCLUSIONS
The disclosure reasonably conveys to a person of skill in the art that
Appellants possessed the claimed subject matter that calls for (1) the insert
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to be opaque to visible light and (2) the polishing piece and the insert to
consist of the same material.
Bajaj does not render obvious a polishing pad comprising an insert
that is opaque to visible light.
One of ordinary skill in the art would have been led to modify the
polishing pad of Bajaj with the teaching of Lehman by replacing the
transparent insert with an opaque insert.
As articulated by the Examiner, Bajaj and Lehman do not render
obvious a polishing pad insert that has a top surface that is substantially
fixed relative to the polishing surface of the polishing pad.

DECISION
The Examiner’s rejection of claims 1, 2, 6, 9, 14-19, 25, 35, 38, 42-45,
and 49-51 under § 112, first paragraph, is REVERSED.
The Examiner’s rejection of claims 1, 2, 6, 9, 10, 14-19, 35, 42-45,
and 49-51 under § 103(a) as unpatentable over Bajaj is REVERSED.
The Examiner’s rejection of claims 1, 2, 6, 10, 14-19, 25, 35, 38, 42-
45, and 49-51 under § 103(a) as unpatentable over Bajaj and Lehman is
AFFIRMED.
The Examiner’s rejection of claim 9 under § 103(a) as unpatentable
over Bajaj and Lehman is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
Appeal 2010-008529
Application 10/444,921

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mls