Ex Parte Goela et al

Patent Trial and Appeal BoardMar 29, 2016

12384015 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/384,015 03/31/2009 Jitendra S. Goela 53884 7590 03/31/2016 ROHM AND HAAS ELECTRONIC MATERIALS LLC c/o The Dow Chemical Company P.O. BOX 1967 2040 Dow Center Midland, MI 48641 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 52478-2 DIV 4519 EXAMINER ROSE, ROBERT A ART UNIT PAPER NUMBER 3727 NOTIFICATION DATE DELIVERY MODE 03/31/2016 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): FFUIMPC@dow.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JITENDRA S. GOELA, MICHAEL A. PICKERING, JAMES T. F AREY, and MELINDA S. STRICKLAND Appeal2014-001615 Application 12/384,015 Technology Center 3700 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jitendra S. Goela et al. (Appellants) seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 7 and 9-14, which are all of the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2014-001615 Application 12/384,015 CLAIMED SUBJECT MATTER Appellants' claimed subject matter relates to semiconductor "wafer holding articles with reduced surface roughness." Spec. 1. Claim 7 is the sole independent claim on appeal and is reproduced below. 7. A wafer holding article comprising a surface roughness of Ra less than or equal to 3 microns and an Rz( din) of less than or equal to 15 microns, wherein the wafer holding article has an edge radius of 0. I mm to I mm. EVIDENCE The Examiner relied upon the following evidence: Zide US 6,595,506 B 1 July 22, 2003 Waldhauer US 2004/0060512 Al Apr. 1, 2004 Bosch US 6,890,861 B 1 May 10, 2005 REJECTIONS Appellants appeal from the Final Action, dated December 19, 2012, which includes the following rejections: 1. Claims 7 and 10-14 under 35 U.S.C. Â§ 103(a) as unpatentable over Waldhauer and Zide. 2. Claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Waldhauer, Zide, and Bosch. ANALYSIS First Ground of Rejection Independent claim 7 calls for "a wafer holding article ha[ ving] an edge radius of O. lmm to Imm." Appeal Br. 11 (Claims App.). For the reasons that follow, we agree with Appellants that the Examiner's proposed combination of Waldhauer and Zide does not render obvious this limitation. See id. at 8-9; see Reply Br. 1-2. 2 Appeal2014-001615 Application 12/384,015 We initially note that the Examiner's rejection in the Final Office Action, from which this appeal is taken, does not include any finding with regard to an edge radius, let alone the particular range of the edge radius recited in claim 7. See Final Act. 2-3. In the Response to Arguments section of the Answer, the Examiner finds that Zide discloses a wafer holding article having a rounded edge 608 and that "[t]he exact acceptable range of such radius of curvature is regarded as an obvious matter of design choice, which would readily be arrived at by mere routine experimentation on the part of those of ordinary skill in the art." Ans. 6 (citing Zide, Fig. 5). The Examiner, however, does not support this assertion with any evidence in the prior art or explanation to establish that one of ordinary skill in the art would arrive at the claimed edge radius range by routine experimentation. We find persuasive Appellants' argument that Zide and Waldhauer are silent as to an edge radius parameter and advantages of a particular edge radius. Reply Br. 1. Here, the Examiner fails to provide adequate reasoning as to what would have led one having ordinary skill in the art to use an edge radius falling within the claimed range in view of the prior art. In essence, the Examiner attempts to apply what amounts to a per se rule that any range of values for an edge radius would have been obvious. Such a mechanical application of a per se rule of obviousness that eliminates the need for fact- specific analysis of claims and prior art "flouts section 103" and "is legally incorrect." In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995). For these reasons, we do not sustain the Examiner's rejection of independent claim 7, and of claims 10-14 depending therefrom, under 35 U.S.C. Â§ 103(a) as unpatentable over Waldhauer and Zide. 3 Appeal2014-001615 Application 12/384,015 Second Ground of Re} ection The rejection of dependent claim 9 relies on the same proposed combination of W aldhauer and Zide that we find deficient for the reasons stated above. See Final Act. 3. The Examiner's reliance on Bosch does not cure the deficiency in the underlying combination of Waldhauer and Zide. Accordingly, we do not sustain the Examiner's rejection of claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Waldhauer, Zide, and Bosch. DECISION The decision of the Examiner to reject claims 7 and 9-14 is REVERSED. REVERSED 4