Ex Parte Oh et al

Patent Trial and Appeal BoardOct 15, 2012

11614940 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEONGHOON OH, TSZ-SIN SIU, HUNG CHIH CHEN, ANDREW J. NAGENGAST, STEVEN M. ZUNIGA, and THOMAS B. BREZOCZKY Appeal 2010-009517 Application 11/614,940 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009517 Application 11/614,940 - 2 - STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-4, 6-13, 15-17 and 21-23 as unpatentable under 35 U.S.C. § 103(a) over Chen ‘387 (US 6,764,387 B1, issued Jul. 20, 2004) and Chen ‘951 (US 2004/0175951 A1, published Sep. 9, 2004). Claims 5, 14, and 20 have been cancelled. Claims 18 and 19 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellants’ invention is a flexible membrane for a chemical mechanical polishing carrier head. Spec. 1, para. [0002]. Claims 1, 2, 11, 17, and 18 are independent and claim 1, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 1. An article for use in a carrier head, comprising: a flexible membrane having a generally circular main portion with a lower surface, an annular outer portion for connection to a base assembly, and an annular flap extending from the main portion on a side opposite the lower surface for connection to the base assembly, wherein both surfaces of the flap have a surface texture to prevent adhesion and the surface texture comprises a plurality of protrusions. ANALYSIS Appellants initially argue claims 1-4, 6-13, 15-17 and 21-23 as a group and then, present further arguments for the patentability of claims 6-9 and 22 as a separate subgroup. App. Br. 3, 7. We select claim 1 as representative of claims 1-4, 10-13, 15-17, 21 and 23 and claim 8 as representative of claims 6-9 and 22. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2010-009517 Application 11/614,940 - 3 - Claims 1-4, 10-13, 15-17, 21, and 23 The Examiner finds that Chen ‘387 discloses all of the elements of claim 1, except that Chen ‘387 does not disclose a texture, comprising a plurality of protrusions, on the surfaces of a flap. Ans. 3. However, the Examiner finds that Chen ‘951 discloses a prior art carrier head that uses surface texture comprising protrusions to separate a flexible membrane and a substrate. Id. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to apply the known technique of separating two components by providing a surface texture to a flexible membrane as taught by Chen ‘951 to the flaps of the flexible membrane of Chen ‘387’s carrier head. Ans. 3-4. The Examiner asserts that preventing adhesion between portions of the same membrane is merely a predictable result of applying the teaching of Chen ‘951 to the membrane of Chen ‘387. Ans. 4. The Examiner also asserts that: it would have been recognized by [one of] ordinary skill in the art to provide bumps on different surfaces of the membrane for redistributing trapped air between the substrate and membrane to lift the membrane from the substrate or prevent adhesion between the membrane and the substrate or different surfaces of the carrier head. Ans. 5. Appellants argue that Chen ‘951 merely teaches the use of protrusions to redistribute trapped air between the membrane and the substrate, but does not otherwise describe the bumps as affecting adhesion. App. Br. 3. Appellants also argue that Chen ‘951 does not indicate that there is an adhesion problem between the substrate and the membrane. App. Br. 4-5.1 Appellants also argue that redistribution of air to prevent bubbles that 1 “. . . Chen ‘951 indicates that adhesion is not a problem.” App. Br. 5. Appeal 2010-009517 Application 11/614,940 - 4 - cause polishing non-uniformity does not provide a reason to modify flaps on a membrane to prevent adhesion. App. Br. 6. Appellants also argue that the Examiner failed to provide evidence that adhesion of flaps on the carrier head membrane was known to be a problem in the art. Reply Br. 1. Chen ‘951 employs surface texturing of a flexible membrane to solve a particular problem that was plaguing the art of chemical mechanical polishing. Chen ‘951 discusses the problem, as follows: One undesirable phenomenon that can occur during the substrate loading process (when the substrate is loaded into the carrier head) is for air bubbles to become trapped between the substrate and membrane. During polishing, these bubbles create an uneven distribution of pressure on the substrate, resulting in an unintended non-uniform polishing. Moreover, the location and shape of these bubbles can change each time a new substrate is loaded into the carrier head, resulting in non- uniform polishing from substrate to substrate. Chen ‘951, para. [0025]. Chen ‘951 solves this problem by texturing the surface of the flexible membrane at certain places where the flexible membrane comes in contact with the substrate. Indeed, Chen ‘951 states that “[o]ne way to release the air trapped between the membrane and the substrate is to provide texture on the outer surface of the membrane,” because in this way, “[a]ir can flow between the features of the texture to escape from between the membrane and substrate.” Chen ‘951, para. [0026]. Thus, texturing the surface allows air, that otherwise would have been trapped, to escape from between the membrane and substrate. Id. The Examiner interpreted Chen ‘951 as solving a problem of undesired adhesion between the flexible membrane and the substrate. Ans. 3-4. As we understand the Examiner’s reasoning, a person of ordinary skill in the art would understand that the formation of trapped air bubbles is Appeal 2010-009517 Application 11/614,940 - 5 - attributable to adhesion between the flexible membrane and substrate around the periphery of the trapped air bubble. By alleviating the adhesion problem through texturing, Chen ‘951 allows the air to escape. Appellants’ argument that Chen ‘951 addresses “trapped air,” but not adhesion per se is not persuasive. App. Br. 3. In their own Specification, Appellants recognize that texturing the outside substrate-mounting surface of the membrane (as in Chen ‘951) results in a membrane that “does not adhere to the surface of the substrate.” Spec. 8, para. [0038]. Emphasis added. “It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). In applying the teaching of Chen ‘951 to the flaps of Cheng ‘387, the Examiner resorted to the logic, judgment, and common sense available to the person of ordinary skill, which are matters that do not necessarily require explication in any reference. Perfect Web Techs., Inc. v. Infousa, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). Chen ‘951 teaches the use of texturing to reduce adhesion between two contact surfaces, namely a flexible membrane and a substrate. Appellants’ own Specification acknowledges that having texture on the outer substrate-mounting surface provides a membrane that does not adhere to the surface of the substrate. Spec. 8, para. [0038]. Armed with the teaching of Chen ‘951, it would have been obvious to a person of ordinary skill in the art to use texturing to inhibit adhesion between contact surfaces other than just a membrane and a substrate. Thus, we conclude that Chen ‘951 contains Appeal 2010-009517 Application 11/614,940 - 6 - sufficient disclosure so that it would have been obvious to a person of ordinary skill in the art to modify Chen ‘387 by placing surface texture as taught by Cheng ‘951 on a flap. Accordingly, we sustain the Examiner’s rejection of claims 1-4, 10-13, 15-17, 21, and 23. Claims 6-9 and 22 Claim 6 depends from claim 1 and recites “wherein the protrusions are at least 30 microinches in height.” App. Br., Clms. App’x. Claims 7 and 8 depend from claim 6. Id. Additionally, claim 22 depends from claim 2 and recites “wherein the protrusions are between about 60 and 80 micro inches in height.” Id. The Examiner finds that “Chen '387, modified by Chen '951, discloses the claimed invention except for a protrusion is at least 30 microinches in height, or about 0.2 inches long.” Ans. 4. The Examiner concludes: It would have been obvious to one having ordinary skill in the art at the time the invention was made to select a protrusion are [sic] at least 30 microinches in height, or about 0.2 inches long, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Id. After finding that Chen ‘387 and Chen ‘951 disclose the claimed invention except for the size limitations on the protrusions, the Examiner offers no further explanation to demonstrate that it would be obvious to satisfy the size limitations. As such, the Examiner’s reliance on Aller is tantamount to a per se rule of obviousness. Reliance solely on a per se rule of obviousness is improper as it eliminates the need for fact-specific analysis of claims and prior art, which is legally incorrect. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). As for the Examiner’s note that “in the instant Appeal 2010-009517 Application 11/614,940 - 7 - application, page 7, paragraph [0031] . . . [Appellants have] not disclosed any criticality for the claimed limitations” (Ans. 4), the Examiner has not explained how this finding supports a legal conclusion of obviousness. Accordingly, we do not sustain the Examiner’s rejection of claims 6-9 and 22. DECISION We AFFIRM the Examiner’s rejection of claims 1-4, 10-13, 15-17, 21, and 23. We REVERSE the Examiner’s rejection of claims 6-9 and 22. 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-IN-PART mls