Shih-Ming Wang et al.

Patent Trials and Appeals Board

Jan 2, 2020

13914871 - (D) (P.T.A.B. Jan. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/914,871 06/11/2013 Shih-Ming Wang TSM10-1122D1 2940
43859 7590 01/02/2020
SLATER MATSIL, LLP/TSMC
17950 PRESTON ROAD, SUITE 1000
DALLAS, TX 75252
EXAMINER
ZALASKY MCDONALD, KATHERINE MARIE
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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@slatermatsil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIH-MING WANG and WEN-CHENG CHOU
Appeal 2019–002409
Application 13/914,871
Technology Center 1700
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final decision to reject claims 1, 2, and 5–22.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Taiwan
Semiconductor Manufacturing Company. Appeal Br. 2
Appeal 2019–002409
Application 13/914,871

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A chemical mechanical polishing (CMP) slurry concentration
unit comprising:

a filter with a filter inlet, a concentrated outlet, and a permeate
outlet, the filter having a first flow of operation from the filter
inlet to the permeate outlet, the filter configured to
receive dilute CMP slurry or CMP slurry concentrate through
the filter inlet, discharge CMP slurry concentrate from the
concentrated outlet, and discharge waste permeate from the
permeate outlet in the first flow of operation; a waste tank
consisting of:

a housing;

a waste tank inlet in the housing;

a first waste tank outlet in the housing, the first waste tank
outlet different than the waste tank inlet; and

a second waste tank outlet in the housing, the second waste tank
outlet being different than the waste tank inlet, and the second
waste tank outlet being different than the first waste tank outlet;

a first line connected to the waste tank inlet, wherein the first
line is configured to provide waste permeate from the filter
through the permeate outlet to the waste tank through the waste
tank inlet;

a second line connected to the first waste tank outlet, wherein
the second line is configured to provide waste permeate from
the waste tank through the first waste tank outlet to the filter
through the permeate outlet, the second line different than the
first line, the second line connected to the first line; and

Appeal 2019–002409
Application 13/914,871

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a third line connected to the second waste tank outlet, the third
line different than the first line and different than the second
line;

wherein the waste tank is configured to:

in the first flow of operation, discharge waste permeate from
the filter through the first line into the waster tank;

in a second flow of operation, discharge waste permeate from
the waste tank through the second line into the filter; and

in a third flow of operation, discharge waste permeate through
the third line to a waste water treatment facility;

a valve on the first line interposed between the waste tank and
the permeate outlet, the valve configured to be open in the first
flow of operation, the valve configured to be closed in
the second flow of operation, wherein the second line is
connected to the first line between the valve and the permeate
outlet; and

a pressure differential switch connected to both the permeate
outlet and the filter inlet, the pressure differential switch
operative to switch from the first flow of operation to the
second flow operation when a differential pressure is greater
than 0.8 bar.

Appeal 2019–002409
Application 13/914,871

4
REFERENCES
The prior art relied upon by the Examiner pertinent to the issues in
this instant appeal is:

Name Reference(s)/Basis Date
Knibbs US 4,219,421 August 26, 1980
Russ US 6,165,048 December 26, 2000
Osuda US 2004/0069878 April 15, 2004
Umezawa US 2004/0262209 A1 December 30, 2004
Hammer US 6,436,281 B2 August 20, 2002
Smith US 2007/0138092 A1 June 21, 2007
Bonnelye US 2007/0187326 A1 August 16, 2007
Suty US 2009/0066316 A1 March 12, 2009

SDWF Safe Drinking Water Formulation, ULTRAFILTRATION,
NANOFILTRATION AND REVERSE OSMOSIS, www.safewater.org, last
visited December 2019 (hereinafter “SDWF”).
REJECTIONS
1. Claims 1, 2, and 6 are rejected under pre-AIA 35 U.S.C.
§103(a) as being unpatentable over Osuda in view of Russ, Hammer, Smith,
and Bonnelye. Final Act. 2–7.
2. Claim 5 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Osuda, Russ, Hammer, Smith, and Bonnelye, and by
SDWF. Final Act. 7–8.
3. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Osuda, Russ, Hammer, Smith, and Bonnelye, as applied to
the claims above, and further in view of Suty. Final Act. 8–9.
4. Claims 8–11, 13, 15–18, and 20 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Osuda in view of Russ,
Hammer, Knibbs, Smith, and Bonnelye. Final Act. 9–20.
Appeal 2019–002409
Application 13/914,871

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5. Claims 12, 19, 21, and 22 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Osuda, Russ, Hammer, Knibbs, Smith,
and Bonnelye, as applied to the claims above, and further as evidenced by
SDWF. Final Act. 20–21.
6. Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Osuda, Russ, Hammer, Knibbs, Smith, and Bonnelye, as
applied to the claims above, and further in view of Umezawa. Final Act. 21.
OPINION
Our Decision addresses the claims separately to the extent they are
argued by Appellant. See 37 C.F.R. § 41.37(c)(1)(iv). We select claims 1, 8
and 15 as representative.
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact finding and reasoning set forth in the Answer
(mailed Nov. 27, 2018, hereinafter “Ans.”) and the Final Office Action
(mailed February 21, 2018, hereinafter “Final Act.”), which we adopt as our
own. We highlight and address specific findings and arguments below.
Rejection 1 involves the combination of Osuda in view of Russ,
Hammer, Smith, and Bonnelye. The other rejections also involve this
combination of references (in addition to other references applied).
Appellant does not specifically mention the additional references applied in
the other rejections. Hence, our determination made with regard to
Rejection 1 is dispositive for the other rejections.

Appeal 2019–002409
Application 13/914,871

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Rejection 1
We refer to pages 3–8 of the Answer regarding the Examiner’s
statement of Rejection 1.
Appellant first argues that the applied art does not suggest the claimed
pressure threshold of 0.8 bar (this limitation is found in each of independent
claims 1, 8, and 15). We refer to Appellant’s arguments on this issue made
on pages 11–12 of the Appeal Brief (filed Aug. 20, 2018, hereinafter
“Appeal Br.”) and on pages 1–2 of the Reply Brief (filed Jan. 28, 2019,
hereinafter “Reply Br.”).
We refer to the Examiner’s response made on pages 22–24 of the
Answer. Therein, the Examiner makes the point that:
[b]ecause the structure and programming of the automated
controller of the prior art combination is capable of
automatically altering valve configurations to adjust the flow
through the CMP filtration system in response to a measured
differential pressure value, the structure of the prior
art combination is capable of “switch[ing] from the first flow of
operation to the second flow of operation when a differential
pressure is greater than 0.8 bar.” Likewise, the structure of the
prior art combination is capable of having a defined threshold
differential pressure value. Therefore, the prior art meets
the claim limitations. One in the art can set the threshold
differential pressure for the sensors of modified Osuda to any
desired value to trigger a switch in the flow of operation. The
actual structure of the pressure differential switch necessary to
be capable of the recited functional language is not
dependent on the particular differential pressure value.

Ans. 24.
It is noted that in the Reply Brief, Appellant does not dispute the
Examiner’s position that one can set the threshold differential pressure of a
sensor to a desired value to trigger a switch in the flow operation. Ans. 24;
Appeal 2019–002409
Application 13/914,871

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see also Reply Br. 1–2. Appellant argues that the claims do no recite a
pressure differential that “is capable of” having a threshold value of greater
than 0.8 bar, but recite a switch that has such a threshold value. Reply Br. 2.
This argument overlooks the position taken by the Examiner that setting a
desired threshold value in a switch that is capable of doing so is within the
purview of the skilled artisan and therefore obvious.2 Appellant has not
convincingly argued how the switch in the applied art cannot be set at a
pressure differential greater than 0.8 bars. We thus are unpersuaded by this
line of argument by Appellant.
Appellant next argues that the proposed modification to Osuda would
result in an impermissible change in function. Appeal Br. 12–14. Appellant
argues that the modification would remove Osuda’s function of a “strong
rejection” of permeate achieved by a high-pressure gas purge. We are
unpersuaded by this line of argument for the reasons provided by the
Examiner on pages 24–25 of the Answer, which we adopt as our own, and
note that Appellant does not dispute the position taken therein, in the Reply
Brief (we note that a factual finding not shown by the Appellant to be
erroneous may be accepted as fact. See In re Kunzmann, 326 F.2d 424, 425
n.3 (CCPA 1964)).
Next, Appellant argues that that the Examiner's interpretation of the
recycle output that is “operationally connected” to the first input is
unreasonably broad as it is an interpretation that is inconsistent with

2 The Examiner does not ignore the limitation of a pressure differential
greater than 0.8 bars by taking the position that it is capable of doing so.
Rather, the Examiner’s position is that it is within the purview of the artisan
to select a desired value in a switch capable of doing so to trigger a switch in
the flow operation. Ans. 24.
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Appellant's Specification. Appeal Br. 14–18; see also Reply Br. 4–9. We
are unpersuaded by this line of argument for the reasons provided by the
Examiner on pages 25–29 of the Answer. Appellant desires an
interpretation of this phrase such that its meaning is limited to “during
an operation, the material output of the recycle output flows to and is the
same as the material that flows into the first input.” Reply Br. 6. However,
as the Examiner points out, the only place in the Specification that this
phrase is mentioned is in paragraph 52. Appellant refers to Figure 2 of the
Specification in an effort to define the meaning of this term, but as the
Examiner explains on page 26 of the Answer, that Appellant does not
explain how the embodiment in paragraph 52 relates to Figure 2. We thus
are unpersuaded by this line of argument.
In view of the above, we affirm Rejections 1–6.
CONCLUSION
We affirm the Examiner’s decision.

Appeal 2019–002409
Application 13/914,871

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 6 103(a) Osuda Russ,
Hammer, Smith,
and Bonnelye

1, 2, 6
5 103(a) Osuda Russ,
Hammer, Smith,
Bonnelye, SDWF

5
7 103(a) Osuda Russ,
Hammer, Smith,
and Bonnelye,
Suty

7
8–11, 13,
15–18, 20
103(a) Osuda Russ,
Hammer, Smith,
Bonnelye, Knibbs

8–11, 13,
15–18, 20

12, 19, 21,
22
103(a) Osuda Russ,
Hammer, Smith,
Bonnelye, Knibbs,
SDWF

12, 19, 21,
22

14 103(a) Osuda, Russ,
Hammer, Smith,
Bonnelye, Knibbs,
Umezawa
14
Overall
Outcome
103(a) 1, 2, 5–22

Appeal 2019–002409
Application 13/914,871

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED