Ex Parte Wang

Patent Trial and Appeal Board

Nov 27, 2013

11960451 (P.T.A.B. Nov. 27, 2013)

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
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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

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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42-47 have been withdrawn from consideration.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.

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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
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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
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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]).
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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
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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).
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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

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