Ex Parte WangDownload PDFPatent Trial and Appeal BoardNov 27, 201311960451 (P.T.A.B. Nov. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YU-PIAO WANG ___________ Appeal 2011-011246 Application 11/960,451 Technology Center 3700 ____________ Before EDWARD A. BROWN, ANNETTE R. REIMERS and FRANCES L. IPPOLITO, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011246 Application 11/960,451 2 STATEMENT OF THE CASE Yu-Piao Wang (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 102(b) claims 16-21, 23, 24, 26, 27, 30-35, 37, 38, 40, 41, 53-55 and 57-59 as anticipated by Sakurai (US 2004/0224622 A1; pub. Nov. 11, 2004) and also under 35 U.S.C. § 103, as follows: (1) claims 52, 56 and 60 as unpatentable over Sakurai and Kim (US 6,165,904; iss. Dec. 26, 2000); and (2) claims 1-5, 7-9, 11-13 and 48-51 as unpatentable over Sakurai. Claims 6, 10, 14, 15, 22, 25, 28, 29, 36, 39 and 42-47 have been withdrawn from consideration. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter “relates to a polishing pad and a polishing method.” Spec. 1, para. [0001]; fig. 2A. Claims 1, 16, 30, 48, 53 and 57 are independent. Claim 16 is illustrative of the claimed subject matter and recites: 16. A polishing pad, suitable for polishing a substrate, comprising: a polishing layer, having an even tracking zone; and at least two grooves, disposed in the even tracking zone, wherein each of the grooves forms one polishing track, and the polishing tracks are adjoining one another. Appeal 2011-011246 Application 11/960,451 3 ANALYSIS Anticipation by Sakurai - Claims 16-21, 23, 24, 26, 27, 30-35, 37, 38, 40, 41, 53-55 and 57-59 Each of independent claims 16, 30, 53 and 57 recites a polishing pad including “an even tracking zone.” App. Br., Clms. App’x. The Examiner takes the position that “[a]s [A]ppellant has not defined the structure of an ‘even tracking zone’ in the claims . . . the [E]xaminer refers to the [S]pecification for the definition.” Ans. 4. The Examiner acknowledges that Appellant’s Specification explicitly defines the term “even tracking zone” as “an area formed by uniformly distributed trajectories along which the grooves relatively pass when the polishing pad rotates.” Id.; see also Spec. 7, para. [0029], fig. 2A. Based on Appellant’s disclosure, the Examiner finds that Sakurai discloses a circular polishing pad. The polishing pad rotates. The pad has at least two grooves. . . Sakurai discloses that the grooves may be a circle, a polygon such as a triangle, a rectangle, or a pentagon, or an oval ([para. [0088] lines 1-4]). Points on each groove will form a trajectory as the pad rotates. Each circular trajectory will border a polishing track, and each track will adjoin one another, the plurality of tracks forming the even tracking zone, as defined by [A]ppellant. Id. at 4. The Examiner further finds that (1) “[e]ach of the grooves, when the pad rotates, will form a uniformly distributed trajectory. Each oval groove has a long (major) diameter and a short (minor) diameter. A point at the end of a major diameter will form a circular trajectory as the pad is rotated” (Id. at 11); and (2) “Sakurai, [at para. [0094]], teaches that there is a Appeal 2011-011246 Application 11/960,451 4 distance between grooves. As such, the trajectories would be uniformly distributed. There is no disclosure by Sakurai that the distances vary or are different between different sets of grooves. As such, the trajectories would be uniformly distributed” (Id. at 12). Appellant contends that [a]t best, [based on Sakurai’s disclosure at paragraph [0088]], Sakurai may be said to disclose a polishing pad with a polishing layer having 2 or more oval grooves, but Sakurai does not disclose the claim features of “the even tracking zone” . . . . Rather, in accordance with the disclosure of Sakurai, the polishing pad with oval grooves is not represented as having an even tracking zone and may very likely have an uneven tracking zone. App. Br. 9. Appellant further contends that [e]ven assuming, arguendo, that Sakurai must have a “tracking zone,” defined by rotating oval grooves, . . . it is not “inherent” that such a tracking zone would be an “even” tracking zone. As defined, for example, at paragraph [0029] of the originally-filed [S]pecification, the “even tracking zone” 212 “is an area formed by uniformly distributed trajectories along which the grooves 220 relatively pass when the polishing pad 200 rotates.” In Sakurai, to whatever extent the rotating polishing pad forms anything corresponding to a “tracking zone,” it clearly is not an “even” tracking zone because Sakurai offers no disclosure or even a suggestion of any “area formed by uniformly distributed trajectories along which the grooves relatively pass when the polishing pad rotates.” There simply are no such “uniformly distributed trajectories” disclosed, suggested, or “inherent” in Sakurai. To whatever extent oval-shaped grooves in Sakurai may pass Appeal 2011-011246 Application 11/960,451 5 through some arbitrarily selected point or area when the polishing pad rotates, there is clearly nothing “inherent” about this arbitrarily selected point or area being an “even tracking zone,” as claimed, i.e., an “area formed by uniformly distributed trajectories along which the grooves relatively pass when the polishing pad rotates.” Moreover, to whatever extent the grooves of Sakurai could be so shaped and spaced so as to result in the grooves passing through an even tracking zone, it is clearly not “inherent” that the grooves must be so-dimensioned. Thus, there is no clear disclosure in Sakurai of the claimed “even tracking zone” and, as previously argued, this feature is not “inherent” in Sakurai since other arrangements are possible [see e.g., App. Br. 13- 16; Reply Br. 3-7]. Id. at 11; Spec. 7, para. [0029]; fig. 2A. Appellant’s arguments are persuasive. At the outset, we agree with Appellant that “[s]ince Sakurai offers no visual depiction of the patented polishing pad, it is difficult to compare Sakurai’s polishing pad with the polishing pad of the claimed invention. Instead, the person of ordinary skill must rely on Sakurai’s written description of the polishing pad.” App. Br. 10. Nonetheless, Sakurai provides written description that appears to support Appellant’s and not the Examiner’s position. Sakurai teaches (1) “the number of grooves formed on the polishing pad is not particularly limited as long as it is 2 or more” (para. [0088]); (2) “the positions of these grooves are also not particularly limited” (para. [0088]); (3) the size (i.e., width, depth and pitch) of the grooves and the distance between the grooves “is not particularly limited” (para. [0094]); and (4) “[t]he [disclosed size and distance] ranges may be combined” (para. [0095]). Appeal 2011-011246 Application 11/960,451 6 While Sakurai teaches a polishing pad having at least two grooves, as claimed, Sakurai does not teach that “[e]ach of the grooves, when the pad rotates, will form a uniformly distributed trajectory [i.e., an even tracking zone],” as proposed by the Examiner. See Ans. 11. We agree with Appellant that “Sakurai is completely devoid of any description or suggestion of . . . an ‘even’ tracking zone [i.e., an area formed by uniformly distributed trajectories],” as required by the claims. App. Br. 10. Further, the Examiner has not set forth any technical reasoning explaining why Sakurai’s grooves necessarily must form a uniformly distributed trajectory (i.e., an even tracking zone), so as to establish anticipation under the principles of inherency. Quite to the contrary, the Examiner takes the position that Sakurai does structurally disclose the broadly claimed invention. Appellant argues that the [E]xaminer is speculating or relying on inherency to provide the claimed invention from Sakurai. Again, it is the [E]xaminer’s position that Sakurai discloses the structure that corresponds to the broadly claimed structures, regardless of how named. It is the [E]xaminer’s position that as Sakurai discloses the structure that forms the polishing tracks, and therefore the even tracking zones, that it is not inherency, but basic structural dynamics, that support the [E]xaminer’s position. Ans. 11. We find no explicit or inherent disclosure of an “even tracking zone” in Sakurai. As noted above, other than requiring at least two grooves, Sakurai provides that the positions of the grooves, the size (i.e., width, depth and pitch) of the grooves and the distance between the grooves are “not particularly limited.” Sakurai also provides that the disclosed size (i.e., width, depth and pitch) and distance ranges may be combined. In other Appeal 2011-011246 Application 11/960,451 7 words, based on Sakurai’s disclosure, the at least two grooves of Sakurai may or may not be so-dimensioned to have the same size (i.e., the same width, depth, pitch) and/or the same distance between them. As such, we disagree with the Examiner’s position that “[t]here is no disclosure by Sakurai that the distances vary or are different between different sets of grooves.” Id. at 12. Moreover, while we acknowledge that it is possible that a particular combination of the grooves disclosed in Sakurai might result in the claimed subject matter, a mere possibility of picking and choosing grooves from the wide variety of groove combinations disclosed in Sakurai to result in the claimed subject matter is not sufficient to establish a prima facie case of inherent anticipation.1 Hence, we agree with Appellant that “the Examiner’s determination of anticipation can only be arrived at through improper speculation.” App. Br. 11. An anticipation rejection cannot be predicated on an ambiguous reference. Rather, disclosures in a reference relied on to prove anticipation must be so clear and explicit that those skilled in the art will have no difficulty in ascertaining their meaning. In re Turlay, 304 F.2d 893, 899 (CCPA 1962). Accordingly, for the foregoing reasons, the Examiner’s rejection of claims 16-21, 23, 24, 26, 27, 30-35, 37, 38, 40, 41, 53-55 and 57-59 as anticipated by Sakurai cannot be sustained. Obviousness over Sakurai and Kim - Claims 52, 56 and 60 As discussed above, Sakurai fails to teach an even tracking zone. The Examiner’s application of Kim as a separate additional reference in 1 “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). Appeal 2011-011246 Application 11/960,451 8 conjunction with Sakurai (see Ans. 8-9) does not remedy the deficiencies of Sakurai. Accordingly, for the reasons discussed above, the Examiner’s rejection of dependent claims 52, 56 and 60 as unpatentable over Sakurai and Kim cannot be sustained. Obviousness over Sakurai - Claims 1-5, 7-9, 11-13 and 48-51 The Examiner’s rejection of claims 1-5, 7-9, 11-13 and 48-51 as unpatentable over Sakurai (see Ans. 7-8) is based on the same unsupported findings discussed above with respect to independent claims 16, 30, 53 and 57 (i.e., Sakurai teaches an even tracking zone). Accordingly, for the reasons discussed above, the Examiner’s rejection of claims 1-5, 7-9, 11-13 and 48-51 as unpatentable over Sakurai cannot be sustained. DECISION We REVERSE the decision of the Examiner to reject claims 1-5, 7-9, 11-13, 16-21, 23, 24, 26, 27, 30-35, 37, 38, 40, 41 and 48-60. REVERSED hh Copy with citationCopy as parenthetical citation