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Prior Art Need Not Provide the Exact Method of Optimization for Variable to Be “Result-Effective”

August 29, 2012

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Last Month at the Federal Circuit - September 2012

Judges: Newman (dissenting), Clevenger, Linn (author)

[Appealed from: Board]

In In re Applied Materials, Inc., Nos. 11-1461, -1462, -1463, -1464 (Fed. Cir. Aug. 29, 2012), the Federal Circuit affirmed the Board’s rejections under 35 U.S.C. § 103 in four separate ex parte reexaminations.

Applied Materials, Inc. (“Applied”) owns U.S. Patent Nos. 5,921,855 (“the ’855 patent”); 6,520,847 (“the ’847 patent”); 6,699,115 (“the ’115 patent”); and 6,824,455 (“the ’455 patent”), which are directed to polishing pads with grooved patterns for chemical mechanical polishing systems. Claims to the pads include dimensional measurements: grooves having a depth “between about 0.02 inches and 0.05 inches,” a width “between about 0.015 inches and 0.04 inches,” a pitch “between about 0.09 inches and 0.24 inches,” and “sidewalls that are substantially perpendicular to the polishing surface.” Slip op. at 3 (citation omitted).

Applied appealed the examiner’s obviousness rejections of the four patents based on the following prior art: (1) “Improving CMP Performance Using Grooved Polishing Pads” from the CMP-MIC Conference on February 22-23, 1996, by Milind Weling et al. (“Weling”); (2) the English translation of a Japanese Patent Application, publication number H5-146969, published June 15, 1993; and (3) a European Patent Application, publication number 0 674 972 A1, published April 10, 1995. The Board affirmed, finding that Applied’s patent claims were obvious because the cited art discloses values overlapping the claimed dimensional ranges and that the dimensions were result-effective variables where the optional range could be identified by one of ordinary skill in the art. The Board further concluded that Applied failed to provide any evidence of unexpected results relating to the claimed dimensions, rejecting Applied’s argument that Weling taught away from the claimed invention, and finding insufficient evidence of commercial success to outweigh the evidence of obviousness.

On appeal, the Federal Circuit rejected Applied’s arguments that the Board’s analysis was conclusory and lacked sufficient evidentiary support. In particular, Applied contended that the cited prior art did not address the impact of altering the dimensions on pad performance and did not specify the result of each of the claimed dimensions as result-effective variables. The Court agreed with the Board that the prior art explicitly discloses dimensional values overlapping the claimed ranges, thus providing sufficient motivation to optimize the ranges.

The Court analyzed the Board’s second conclusion—that the dimensional values were result-effective, rendering their optimization within the grasp of one of ordinary skill in the art—and found that, contrary to Applied’s argument, the cited art provided evidence that each of the claimed groove dimensions is a result-effective variable. In so concluding, the Court reminded that, “[w]hile the absence of any disclosure regarding the relationship between the variable and the affected property may preclude a finding that the variable is result-effective, the prior art need not provide the exact method of optimization for the variable to be result-effective.” Slip op. at 12. In the Court’s view, the prior art recognized a relationship between each of the claimed variables and an effect on the pad’s properties, even if it disclosed how the groove properties affect pad properties with less specificity than Applied’s four patents. Moreover, because Applied failed to provide evidence of unexpected results of the claimed dimension on the pad’s properties, independently or in combination, the Court agreed with the Board that there was no indication that obtaining the claimed dimensions was beyond the skill of one of ordinary skill in the art.

The Court also rejected Applied’s argument that Weling taught away from the claimed invention by preferring shallow grooves as opposed to the claimed deeper grooves. The Court found this argument unpersuasive because Weling did not actually criticize or teach away from deeper grooves; it merely preferred shallow grooves.

Applied further argued that its pads gained market share in competition with the Weling pad, which also practiced the best known methods published by Applied. The Court, however, agreed with the Board’s conclusion that there was insufficient evidence of a nexus between the features of the claimed invention and its success. In particular, the Court agreed with the Board that the best known methods of using pads are a factor unrelated to the quality of the claimed invention. Thus, the Court agreed with the Board that Applied failed to provide evidence of commercial success that could overcome the prima facie findings of obviousness.

Judge Newman dissented, finding that the prior art failed to disclose a product with the combination of claimed dimensions. Judge Newman concluded that it would not have been obvious to change the combination of claimed parameters with a reasonable expectation that the changed product would have the advantages obtained with Applied’s invention. Judge Newman noted that the Examiner failed to offer any evidence that such an expectation of improved properties existed based on the prior art considered.

Summary authored by Kimberly D. Braslow, Ph.D., student associate at Finnegan.