Appeal 2006-2351
Application 10/645,493
Moreover, during use, Appellant’s method, like Molnar I’s method,
includes contacting the polishing pad with abrasive particles from the slurry
(Specification 8 and Molnar I, col. 23, ll. 5-7). As such, it appears that
Molnar’s abrasive particles would not materially affect the basic and novel
characteristic of the claimed invention (i.e., friction reduction). Therefore,
Appellant has not satisfied her burden to prove that abrasive particles
“materially affect” the “basic and novel characteristics” of the claimed
invention. De Lajarte, 337 F.2d at 874, 143 USPQ 258. Accordingly, we
construe “consists essentially of” in Appellant’s claims as not excluding
abrasive particles from the polishing pad.
We are also unpersuaded by Appellant’s argument that Molnar I’s
disclosure at column 29, lines 8-11 to separate the abrasive particles from
the lubricant is relevant only to the situation where both the abrasive and
lubricant are in the finishing composition (e.g.. slurry) (Br. 6). Molnar I
begins the paragraph containing the disputed disclosure by stating that the
“lubricant can be contained in the finishing element finishing surface [i.e.,
polishing pad] and then supplied to the interface between the workpiece
being finished and the finishing element [i.e., polishing pad] finishing
surface by the operative finishing motion” (Molnar I, col. 28, ll. 50-53).
Molnar I further states that “[w]hen the lubricant is contained in the
finishing element surface the need for lubricants in the finishing composition
is reduced or eliminated” (Molnar I, col. 28, ll. 60-62). Molnar I
additionally gives an example where, if the lubricants are provided in a first
finishing composition free of abrasives and abrasives are supplied in the
finishing element (i.e., polishing pad) finishing surface, then the lubricants
can be separately and independently controlled from the abrasive (Molnar I,
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