Ex Parte Wang et al

Board of Patent Appeals and Interferences

Mar 20, 2012

11542270 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YU-PIAO WANG and YUN-LIANG OUYANG
____________________

Appeal 2010-003125
Application 11/542,270
Technology Center 3700
____________________

Before: KEN B. BARRETT, CHARLES N. GREENHUT, and
WILLIAM V. SAINDON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003125
Application 11/542,270
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, 6, 8, 19-26, 28, and 29. App. Br. 31. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

The claims are directed to polishing pad and method of fabrication.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of fabricating a polishing pad, the method
comprising sequentially:
providing a polishing layer having a polishing surface
and a back surface opposing the polishing surface;
adhering a first adhesive layer to the back surface; and
forming a polishing pattern having at least one aperture
and at least one projection on the polishing surface,
wherein the first adhesive layer comprises a pressure
sensitive adhesive.

REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Takahashi
Ito
Chang
US 6,824,447 B2
US 7,090,572 B2
US 7,137,868 B2
Nov. 30, 2004
Aug. 15, 2006
Nov. 21, 2006
Petroski US 2004/0142638 A1 Jul. 22, 2004

REJECTIONS
Claims 1, 2, 4, 6, 8 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Petroski, Chang and Takahashi. Ans. 3.
Claims 19-25, 28 and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ito. Ans. 4.

1 Claim 16 has not been rejected by the Examiner.
Appeal 2010-003125
Application 11/542,270
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OPINION
Regarding claim 1, we agree with Appellants’ proposed claim
construction that the term “sequentially” requires the recited steps to be
performed in the order written. App. Br. 7 citing Altiris, Inc. v. Symantec
Corp., 318 F.3d 1363, 1369-70 (Fed. Cir. 2003). In Petroski, the only
application of adhesive that occurs prior to grooving is the application of the
hot melt adhesive, not the pressure sensitive adhesive as required by claim 1.
Petroski, 6 para. [0038]. Petroski applies the pressure sensitive adhesive
after grooving. Id. Thus, Petroski does not teach the steps which the
Examiner contends it does—adhering a pressure sensitive adhesive then
forming a polishing pattern. Accordingly, the rejection of claim 1, along
with that of the claims depending therefrom, cannot be sustained.
Regarding independent claims 19 and 292, initially the Examiner
appears to argue that Ito teaches the step of applying greater pressure to
portion B than to A. Ans. 5:2-4. The Examiner then appears to indicate that
Ito did not teach this step. Ans. 5:4-7. The Examiner seems to advance the
position that Ito teaches application of different pressures, albeit not to Ito’s
grooves and projections, i.e., “concave” and “convex” portions, respectively.
While Ito recognizes the problem addressed by Appellants—poor
bondability of the polishing pad under grooves 102a (col. 1, ll. 53-57)—Ito
addresses the problem by disclosing a device 11-15 and method for applying
pressure to a peripheral portion 4 of a polish member 2 separately from the

2 The Board’s authority to group claims under 37 C.F.R. § 41.37(c)(1)(vii) is
dependent upon the arguments presented in the Appeal Brief and not
necessarily a statement of the grouping desired by Appellants (see, e.g.,
App. Br. 6). For purposes of this appeal, since claims 19 and 29 present
similar issues, we presume Appellants intended to argue the rejection of
claim 29 for the same reasons as claim 19.
Appeal 2010-003125
Application 11/542,270
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step of applying pressure to the polishing portion 3 thereof. Ito, col. 3, ll. 36-
56. Ito is silent regarding the amount of pressure applied to the polishing 3
or peripheral 4 portions. Separate application of pressure does not require
different pressures. Contra Ans. 8. Ito is also silent regarding application of
pressure to the grooves 2a—the “concave surface portion[s] (‘B’) between
adjacent convex surface portions.” Contra Ans. 5. To arrive at the claimed
subject matter, Ito’s device would need to be modified to apply pressure to
the grooves 2a and that pressure would need to be greater than the pressure
applied to the projections 2b of the polishing portion 3 of Ito’s pad. The
Examiner appears to argue that these differences are merely a matter of
“design choice.” While small changes in a device or method may be a matter
of design choice, the Examiner’s proposed modification would require a
significant modification to both Ito’s device and its manner of use. The
Examiner failed to articulate reasoning with a rational underpinnings to
support the conclusion that, despite the differences between Ito’s device and
the claimed subject matter, the claimed subject matter would have been
obvious to one having ordinary skill in the art in view of Ito. Accordingly,
we cannot sustain the rejection of claims 19 and 29 or dependent claim 28.
Claims 20, 22 and 24 involve the relative adhesive strength of the
portions of the polishing pad underlying the concave and convex portions.
While Ito recognizes poor bonding under the grooves 102a or concave
portions is a problem, Ito does not solve it by teaching a different device or
method for adhering under the grooves. Rather, Ito’s solution is to separately
bond the periphery of the pad. Thus, one would expect Ito to exhibit poor
bonding under grooves 2a. That poor bonding would present less of a
problem because better bonding around the periphery 4 would function to
keep slurry out from under the pad to thereby improve the overall bonding of
Appeal 2010-003125
Application 11/542,270
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the pad. While the bonding under the grooves appears to be recognized by
Ito and Appellants as both critical and a variable affecting the overall bond
quality of the pad, Ito makes no provision for altering it in any way. Since
Ito does not provide the general conditions to be optimized, we cannot agree
with the Examiner that a routine optimization of the device and/or method
described by Ito would result in the subject matter of claims 20, 22, and 24.
Contra Ans. 5. Accordingly, the rejection of claims 20, 22 and 24, and of the
claims depending therefrom, cannot be sustained.

DECISION
The Examiner’s rejections of claims 1, 2, 4, 6, 8, 19-26, 28, and 29 are
reversed.

REVERSED

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