DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim(s) (1 and 12 respectively) recite(s):
“wherein the chemical mechanical polishing pad dresser has an imaginary surface, which is a plane calculated on the basis of the average of each of the tip heights of the plurality of abrasive particles, and wherein the distance between the tip height of each of the abrasive particles and the imaginary surface is a value of the tip variation, which is less than 50 μm; and 80% or more of the abrasive particles have a value of the tip variation between the tip height of each of the abrasive particles and the imaginary surface which is less than 30 μm.” Which is claiming and occupying the idea of having low variation of tip height, in whatever form—it is the idea of measuring some subset of particle sizes and knowing they achieve a relationship to an imaginary line. This is an abstract idea as a whole, and is not a particularly embodied machine pad dressing.
Similarly, claim 12 requires “(c) measuring a tip height of each of the abrasive particles, and obtaining a plane calculated on the basis of the average of each of the tip heights of the plurality of abrasive particles as an imaginary surface; and (d) adjusting the tip heights of the plurality of abrasive particles according to the imaginary surface such that the abrasive particles have a value of the tip variation between the tip height of each of the abrasive particles and the imaginary surface which is less than 50 μm, thereby obtaining the chemical mechanical polishing pad dresser with a leveling surface.” Which is claiming and occupying the idea of having a relatively level set of abrasive tip particles, without specifying (a) what the particles are – (high generality) or (b) how they can be leveled (see 112(a) infra).
This judicial exception is not integrated into a practical application because it is not a particular set of machine pad elements or a particular method with real worl implications—it is the whole idea of having some measured uniformity—not a particular set of circumstances and is not constrained in technical detail or reality—as it embodies far more than the disclosure presents (See also 112(a) below). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because tip particles, bonding layers and substrates are all ubiquitously known, and are also specified at such a high level (non-specificity) that they do not add anything to the alleged idea of maintaining some relative planarity.
Each dependent claim contains only old elements, or else non-specific elements, which do not modify the judicially excepted abstract idea into a concrete, real, specific “substantially more” type of machine or composition of matter.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The test for compliance with § 112 has always required sufficient information in the original disclosure to show that the inventor possessed the invention at the time of the original filing. See Vas-Cath, 935 F.2d at 1561 ("Adequate description of the invention guards against the inventor's overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation").
Claims 1 and 12 both require the result of a pad with specific abstract measurement ideas embodied in the result—but the achievement of them in physical reality is not disclosed. The step (in claim 12) of “adjusting the tip heights” is not discussed or disclosed in a reality based embodiment of the specification—so this encompasses all manner of adjustment, including those not known, and including those not clearly in the possession of the applicant at the time of filing. Likewise, the claim 1 required specific abstract measurements, but the creation of such pad dresser is not shown or disclosed beyond the effective result of having the specified conditions. Without more, the applicant has not demonstrated possession of all the ways the full scope of abrasive particles (all) can be held in bonding layers (all) and achieve a compared variance with an abstract imaginary line.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed1 , a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved…. (MPEP 2163.03 V).
The possession test requires assessment from the viewpoint of one of skill in the art. Id. at 1563-64 ("the applicant must ... convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention") (emphasis in original); Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232 (Fed.Cir.2000) ("The written description requirement does not require the applicant `to describe exactly the subject matter claimed, [instead] the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed'") (citation omitted). Moba B.V. v. Diamond Automation Inc. (325 F3d 1306)
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-20 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by TW M482839 U.
Regarding claims 1-20, as noted above, the particular alleged invention is in having the projection of particles in a dressing pad be a certain narrow range around the average (not having too much variance in a pad). Figure 1 of TW M482839 U shows this same identical lack of variance, marked with 0, 10, 20, 30 micrometers shown, as well as all conventional aspects of the claim (base, binder, etc. )
Regarding claim 8, an “array” is shown in figure 1.
Regarding claim 10, “and the composition of the bonding layer may be a ceramic material. , brazing materials, plating materials, metal materials, or polymer materials,” is clearly anticipatory.
Regarding claim 11, the translation of this document describes “In the highly distributed chemical mechanical polishing dresser of the present invention, the abrasive particles may be synthetic diamonds, natural diamonds, polycrystalline diamonds, or cubic boron nitride; in a preferred aspect of the present invention, Abrasive particles can be artificial diamond” anticipatory of claim 11.
All the features of the other claims are clearly and easily observed in the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN M MICHALSKI whose telephone number is (571)272-6752. The examiner can normally be reached Typically M-F 6a-3:30p East Coast Time.
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SEAN M. MICHALSKI
Primary Examiner
Art Unit 3724
/SEAN M MICHALSKI/Primary Examiner, Art Unit 3724
1 (In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976))
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