In Re Applied Materials, Inc. ( 2012 )

United States Court of Appeals
for the Federal Circuit
__________________________
IN RE APPLIED MATERIALS, INC.
__________________________
2011-1461, -1462, -1463, -1464
__________________________
Appeals from the United States Patent and Trade-
mark Office, Board of Patent Appeals and Interferences in
Reexamination Nos. 90/010,106; 90/010,107; 90/010,108;
90/010,109.
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Decided: August 29, 2012
__________________________
JOHN A. DRAGSETH, Fish & Richardson P.C., of Min-
neapolis, Minnesota, argued for appellant. With him on
the brief was RICHARD J. ANDERSON.
ROBERT J. MCMANUS, Associate Solicitor, Office of the
Solicitor, United States Patent and Trademark Office, of
Alexandria, Virginia, argued for appellee. With him on
the brief were RAYMOND T. CHEN, Solicitor, and FRANCES
M. LYNCH, Associate Solicitor.
__________________________
2 IN RE APPLIED MATERIALS
Before NEWMAN, CLEVENGER, and LINN, Circuit Judges.
Opinion for the court filed by Circuit Judge LINN.
Dissenting opinion filed by Circuit Judge NEWMAN.
LINN, Circuit Judge.
Applied Materials, Inc. (“Applied”) appeals from four
decisions of the Board of Patent Appeals and Interfer-
ences (“Board”). The Board affirmed the examiner’s
rejections under 35 U.S.C. § 103 in separate ex parte
reexaminations of the claims of Applied’s U.S. Patents No.
5,921,855 (“’855 Patent”); No. 6,520,847 (“’847 Patent”);
No. 6,699,115 (“’115 Patent”); and No. 6,824,455 (“’455
Patent”) (collectively, “Applied’s Patents”) covering polish-
ing pads for chemical mechanical polishing (“CMP”). Ex
parte Applied Materials, Inc., Reexamination No.
90/010,106, 2010 WL 3454259, at *10 (B.P.A.I. Aug. 31,
2010) (“Applied I”); Ex parte Applied Materials, Inc.,
Reexamination No. 90/010,107, 2010 WL 3454261, at *10
(B.P.A.I. Aug. 31, 2010) (“Applied II”); Ex parte Applied
Materials, Inc., Reexamination No. 90/010,108, 2010 WL
3448884, at *10 (B.P.A.I. Aug. 31, 2010) (“Applied III”);
Ex parte Applied Materials, Inc., Reexamination No.
90/010,109, 2010 WL 3448885, at *10 (B.P.A.I. Aug. 31,
2010) (“Applied IV”). The Board denied rehearing in each
case. Ex parte Applied Materials, Inc., Reexamination No.
90/010,106, 2011 WL 938723, at *3 (B.P.A.I. Mar. 17,
2011); Ex parte Applied Materials, Inc., Reexamination
No. 90/010,107, 2011 WL 938725, at *3 (B.P.A.I. Mar. 17,
2011); Ex parte Applied Materials, Inc., Reexamination
No. 90/010,108, 2011 WL 938733, at *3 (B.P.A.I. Mar. 17,
2011); Ex parte Applied Materials, Inc., Reexamination
No. 90/010,109, 2011 WL 938726, at *3 (B.P.A.I. Mar. 17,
2011). The four appeals are consolidated before this
court. Because the Board’s decisions are supported by
substantial evidence, this court affirms.
IN RE APPLIED MATERIALS 3
I. BACKGROUND
A. The Patents
Integrated circuits are formed on a substrate “by the
sequential deposition of conductive, semiconductive or
insulative layers” that are “etched [after deposition] to
create circuitry features.” ’855 Patent col.1 ll.10-14; ’847
Patent col.1 ll.22-26; ’115 Patent col.1 ll.23-27; ’455 Patent
col.1 ll.25-29. Because the substrate surface becomes
increasingly non-planar through this process, the sub-
strate must be periodically planarized, i.e. flattened. ’855
Patent col.1 ll.14-30; ’847 Patent col.1 ll.26-32; ’115 Patent
col.1 ll.27-33; ’455 Patent col.1 ll.29-35. CMP is one
method of planarizing in which the substrate to be pla-
narized is placed against a rotating polishing pad, and a
polishing slurry is applied. ’855 Patent col.1 ll.31-48; ’847
Patent col.1 ll.33-52; ’115 Patent col.1 ll.34-52; ’455 Patent
col.1 ll.36-54. Problems in the art—particularly for pads
with perforations—included the uneven distribution of
slurry, the accumulation of waste material during pad
conditioning, and a polishing problem associated with pad
flexibility. ’855 Patent col.1 l.62-col.2 l.48; ’847 Patent
col.2 ll.10-61; ’115 Patent col.2 ll.10-61; ’455 Patent col.2
ll.12-65. The claimed inventions are “sufficiently rigid”
pads with grooves that advantageously distribute the
slurry, remove waste material, and increase pad life. ’855
Patent col.3 ll.16-24; ’847 Patent col.4 ll.4-12; ’115 Patent
col.4 ll.4-12; ’455 Patent col.4 ll.7-15.
Applied’s Patents were amended during the reexami-
nation. The amended claims cover pads (or an apparatus
with a pad) for CMP with grooves having a depth “be-
tween about 0.02 inches and 0.05 inches,” a width “be-
tween about 0.015 inches and 0.04 inches,” a pitch
“between about 0.09 inches and 0.24 inches,” and “side-
walls that are substantially perpendicular to the polishing
surface.” Applied I at *1 (emphasis removed); see also
4 IN RE APPLIED MATERIALS
Applied II at *1-2; Applied III at *1-2; Applied IV at *1-2.
The pitch refers to “the radial distance between adjacent
grooves.” ’855 Patent col.5 ll.28-29; ’847 Patent col.6 ll.42-
44; ’115 Patent col.6 ll.42-44; ’455 Patent col.6 ll.39-41.
B. Proceedings Below
The Board’s decision in each of the consolidated ap-
peals is essentially identical. The Board affirmed the
examiner’s obviousness rejections under 35 U.S.C.
§ 103(a) 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 transla-
tion of a Japanese Patent Application, publication number
H5-146969, published June 15, 1993 (“Breivogel”); and (3)
a European Patent Application, publication number 0 674
972 A1, published April 10, 1995 (“Talieh”).
Weling discloses U-shaped grooves but also discloses a
groove depth and pitch smaller than that claimed in
Applied’s Patents. Nevertheless, the Board found that
Weling’s disclosure of a width of 0.01 inches met the claim
limitation requiring widths between “about 0.015 inches
and 0.04 inches.”
Talieh and Breivogel disclose grooves with larger di-
mensions than the grooves in Weling. Breivogel’s calcu-
lated width and pitch overlap with those claimed in
Applied’s Patents. While the width and pitch disclosed in
Talieh are larger than those in Applied’s Patents, Talieh
discloses that the grooves can have a larger or smaller
pitch. The depth disclosed by Talieh and Breivogel over-
lap the depths claimed in Applied’s Patents. The overlap
between the ranges in Applied’s claims and the dimen-
sions disclosed in the prior art was accurately depicted by
the United States Patent and Trademark Office (“PTO”)
in the following table.
IN RE APPLIED MATERIALS 5
Appellee’s Br. 22.
The Board found Applied’s claims obvious because the
prior art discloses values overlapping the claimed ranges
and the dimensions were result-effective variables. The
Board treated the identification of an optimal range of a
result-effective variable as being within the ordinary skill
in the art. See In re Boesch, 617 F.2d 272, 276 (CCPA
1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
The Board found that Applied failed to provide evi-
dence that the claimed groove dimensions produced
unexpected results. Additionally, the Board found that
Weling did not teach away from the invention claimed in
Applied’s Patents and that there was insufficient evidence
of commercial success to outweigh the evidence of obvi-
ousness.
In each case, Applied requested rehearing, which the
Board denied. Applied appeals all four decisions of the
Board. This court has jurisdiction under 28 U.S.C.
§ 1295(a)(4).
II. DISCUSSION
A. Standard of Review
Obviousness is a question of law with several underly-
ing factual inquiries, including what a reference teaches,
6 IN RE APPLIED MATERIALS
whether a reference teaches away, and whether there is
commercial success. Graham v. John Deere Co. of Kan.
City, 383 U.S. 1, 17-18 (1966); Para-Ordnance Mfg., Inc. v.
SGS Imps. Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995).
This court reviews the Board’s determination of obvious-
ness de novo and the Board’s factual findings for substan-
tial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed.
Cir. 2000). Substantial evidence is “such relevant evi-
dence as a reasonable mind might accept as adequate to
support a conclusion.” Consol. Edison Co. v. NLRB, 305
U.S. 197, 229 (1938). “[T]he possibility of drawing two
inconsistent conclusions from the evidence does not
prevent an administrative agency’s finding from being
supported by substantial evidence.” Consolo v. Fed. Mar.
Comm’n, 383 U.S. 607, 620 (1966).
The Board’s judgment must be reviewed on the
grounds upon which the Board actually relied. See Sec. &
Exch. Comm’n v. Chenery Corp., 332 U.S. 194, 196 (1947);
In re Lee, 277 F.3d 1338, 1345-46 (Fed. Cir. 2002). Alter-
native grounds supporting the Board’s decision generally
are not considered. See Lee, 277 F.3d at 1346. “The
[Board] must set forth its findings and the grounds
thereof, as supported by the agency record, and explain its
application of the law to the found facts.” Id. at 1342.
However, “[w]hile we may not supply a reasoned basis
for the agency’s action that the agency itself has not
given, SEC v. Chenery Corp., 332 U.S. 194, 196 (1947), we
will uphold a decision of less than ideal clarity if the
agency’s path may reasonably be discerned.” Bowman
Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 419 U.S.
281, 285-86 (1974); see also In re Huston, 308 F.3d 1267,
1280-81 (Fed. Cir. 2002) (affirming the Board’s “cryptic”
conclusions because the Board’s path could be discerned
and the Board’s decision was supported by substantial
evidence (quoting Bowman, 419 U.S. at 285-86)).
IN RE APPLIED MATERIALS 7
B. Evidence of Obviousness
Applied argues that the Board’s analysis was conclu-
sory and lacked sufficient evidentiary support. Applied
specifically argues that the examiner’s conclusion that it
would have been obvious to one of ordinary skill in the art
to select a groove depth, width, and pitch double those
disclosed in Weling was not supported by the prior art.
Applied further argues that because the prior art did not
address the impact of altering each dimension on pad
performance, the prior art did not specify the result of
each purported result-effective variable, and so the prior
art could not lead one of ordinary skill to the claimed
invention. Furthermore, Applied observes that there
were multiple dimensional variables selected based on
multiple criteria, with “trade-offs among the several
results obtained based on the selection of those variables
(such as selecting pitch and width to balance pad flexibil-
ity, difficulty in removing waste material, and slurry
transport) . . . .” Appellant’s Br. 36-37, 39. Finally,
Applied argues that Breivogel and Talieh teach, in addi-
tion to larger grooves, grooves with a different profile and
spiral or offset grooves, respectively.
The PTO defends the Board’s decisions by arguing
that the prior art contains dimensions overlapping the
ranges in Applied’s claims. The PTO contends that the
examiner’s doubling of the dimensions was not necessary
to the finding of obviousness and that any adjustment of
the dimensions was based properly on the premise that
the prior art taught that the groove dimensions could be
adjusted upward. The PTO also identifies parts of the
record showing that the prior art recognizes that the
dimensions are result-effective variables and that the
advantages of Applied’s ranges were not unexpected.
The Board affirmed the examiner’s rejection “because
one of ordinary skill in the art would have recognized
8 IN RE APPLIED MATERIALS
after reading the prior art that the dimensions recited in
the claims are result-effective variables, and because the
prior art further discloses values including those recited
in the claims.” Applied I at *7; see also Applied II at *7;
Applied III at *7; Applied IV at *7. This court must
affirm or reverse the Board’s decisions on these grounds
alone. See Chenery, 332 U.S. at 196; Lee, 277 F.3d at
1345-46. The Board’s opinions in the present appeals are
not a model of clarity, but the Board’s “path may reasona-
bly be discerned.” See Bowman, 419 U.S. at 285-86.
First, the Board’s conclusion that the prior art dis-
closes dimensional values overlapping the ranges claimed
in Applied’s Patents is supported by substantial evidence.
While the Board failed to cite the relevant cases, this
“path” to obviousness is consistent with this court’s prece-
dent. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
(“A prima facie case of obviousness typically exists when
the ranges of a claimed composition overlap the ranges
disclosed in the prior art.”); see In re Geisler, 116 F.3d
1465, 1469 (Fed. Cir. 1997); In re Malagari, 499 F.2d
1297, 1303 (CCPA 1974). Such overlap itself provides
sufficient motivation to optimize the ranges. See Peter-
son, 315 F.3d at 1330 (“The normal desire of scientists or
artisans to improve upon what is already generally known
provides the motivation to determine where in a disclosed
set of . . . ranges is the optimum combination . . . .”).
Second, the Board’s finding that the dimensional
variables were result-effective, rendering their optimiza-
tion within the grasp of one of ordinary skill in the art,
was supported by substantial evidence. See Boesch, 617
F.2d at 276. “[W]here the general conditions of a claim
are disclosed in the prior art, it is not inventive to dis-
cover the optimum or workable ranges by routine experi-
mentation.” Aller, 220 F.2d at 456. This rule is limited to
cases in which the optimized variable is a “result-effective
variable.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977);
IN RE APPLIED MATERIALS 9
see Boesch, 617 F.2d at 276 (“[D]iscovery of an optimum
value of a result effective variable . . . is ordinarily within
the skill of the art.”). In the present case, because the
prior art disclosed values overlapping the claimed ranges,
the “general conditions” of the claim are disclosed. See
Aller, 220 F.2d at 456; see also Boesch, 617 F.2d at 276.
The question is whether the dimensions were known to be
result-effective variables.
Contrary to Applied’s argument, there is evidence
that the claimed groove dimensions are result-effective
variables—rendering their optimization within the ordi-
nary skill in the art. See Boesch, 617 F.2d at 276. The
Board cited the Examiner’s Answers, which observed that
Breivogel teaches that “[t]he number of grooves per area
and the groove pitch are optimized for the type of pad and
the slurry that is used to achieve a high polishing rate
and polishing uniformity.” Examiner’s Answer at 4-5
Applied I (“Examiner’s Answer I”); Examiner’s Answer at
5 Applied II (“Examiner’s Answer II”); Examiner’s Answer
at 5 Applied III (“Examiner’s Answer III”); Examiner’s
Answer at 5 Applied IV (“Examiner’s Answer IV”).
Breivogel clearly discloses that pitch affects the polishing
rate and uniformity, and further indicates that one of
ordinary skill in the art can alter the pitch to achieve the
desired polishing properties. The Board also found that a
person of ordinary skill in the art would have recognized
that changing the groove width would affect the polishing
rate and uniformity. This is a reasonable conclusion
because the number of grooves per area—which is dis-
closed in Breivogel as affecting the polishing rate and
uniformity—is related to the groove width: the Board
used the number of grooves per area disclosed in Breivo-
gel to calculate the width of the grooves that Breivogel
disclosed. Because of the close relationship between the
number of grooves per area and the width, the Board’s
finding that the width also affected the desired polishing
pad properties was supported by substantial evidence.
10 IN RE APPLIED MATERIALS
Thus, the Breivogel disclosure demonstrates that both the
width and pitch were known to be result-effective vari-
ables.
The “Examiner’s rationale,” which was referenced
with approval by the Board for a related reason discussed
below, also supports the finding that the depth is a result-
effective variable. Applied I at *7; Applied II at *7; Ap-
plied III at *7; Applied IV at *7. The examiner’s Answer
stated that increasing the dimensions was advantageous
because the pad could be used for a longer time without
being worn down to the point of being “too shallow.”
Examiner’s Answer I at 5; Examiner’s Answer II at 5;
Examiner’s Answer III at 5; Examiner’s Answer IV at 5.
The examiner further explained elsewhere in the Answer
that “one of ordinary skill in the art would certainly
expect that increasing the thickness of the pad and the
size of the grooves would result in a pad having a longer
service life since it would take longer for such a pad to
wear down/out; this expectation is based on the basic
engineering principle that a frictional element that is
worn over time by friction will last longer if its thickness
is increased.” Examiner’s Answer I at 14; Examiner’s
Answer II at 14-15; Examiner’s Answer III at 14; Exam-
iner’s Answer IV at 14-15. Thus, the Board’s finding that
the depth would also have been recognized by one of
ordinary skill to affect a particular result, making it too a
result-effective variable, was supported by substantial
evidence.
The Board found that the “Examiner’s rationale” sup-
ported the doubling of the groove dimensions in Weling to
achieve the claimed dimensions. Applied I at *7; Applied
II at *7; Applied III at *7; Applied IV at *7. Applied
correctly argues that the Board and the examiner lacked
substantial evidence to exactly double all of the groove
dimensions in Weling to achieve the claimed dimensions.
Nevertheless, because the prior art teaches larger grooves
IN RE APPLIED MATERIALS 11
and a person having ordinary skill in the art would have
known that the dimensions were result-effective vari-
ables, the exact doubling of the dimensions was unneces-
sary to the Board’s finding of obviousness. The
underlying correct premises were sufficient to support the
Board’s finding of obviousness.
The Board primarily rested its finding that the di-
mensions were result-effective variables on Applied’s
admission: “A person having ordinary skill in the art after
reviewing the teachings of Weling, Talieh and Breivogel
would have understood that polishing pads with grooves
can be formed where at least the groove dimensions . . .
could have been modified. Such modification would have
changed the polishing rate and pad characteristics . . . .”
Applied I at *6 (quoting Applied’s brief to the Board);
Applied II at *6 (same); Applied III at *6 (same); Applied
IV at *6 (same). The Board did not err in relying on
Applied’s admission because the admission indicates that
the prior art taught that the dimensions could be modified
and that modification would affect pad performance,
which was sufficient to find the dimensions to be result-
effective variables. While Applied also stated that the
prior art “is silent as to the impact of the groove pitch and
width on performance,” the prior art did not need to
disclose the result with any greater specificity than it
already did. Applied I at *6 (quoting Applied’s brief to the
Board); Applied II at *6 (same); Applied III at *6 (same);
Applied IV at *6 (same).
In cases in which the disclosure in the prior art was
insufficient to find a variable result-effective, there was
essentially no disclosure of the relationship between the
variable and the result in the prior art. In Antonie, the
court found the variable not result-effective because the
prior art did not disclose the claimed ratio, or even recog-
nize that one of the variables in the ratio was relevant to
the desired property. 559 F.2d at 619-20. In In re Yates,
12 IN RE APPLIED MATERIALS
663 F.2d 1054 (CCPA 1981), the court found the variable
not result-effective because there was no teaching of the
claimed relationship and also “no evidence of this rela-
tionship in the prior art.” 663 F.2d at 1056-57 (emphasis
omitted). While 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. A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable
result-effective.
Applied’s Patents do articulate how the groove dimen-
sions affect pad properties with greater specificity than
the prior art. ’855 Patent col.5 ll.34-65; ’847 Patent col.6
l.50-col.7 l.14; ’115 Patent col.6 l.50-col.7 l.14; ’455 Patent
col.6 l.47-col.7 l.11. But, generally, a claim to a product
does not become nonobvious simply because the patent
specification provides a more comprehensive explication of
the known relationships between the variables and the
affected properties.
The outcome of optimizing a result-effective variable
may still be patentable if the claimed ranges are “critical”
and “produce a new and unexpected result which is differ-
ent in kind and not merely in degree from the results of
the prior art.” Aller, 220 F.2d at 456; see Antonie, 559
F.2d at 620. Similarly, a prima facie case of obviousness
established by the overlap of prior art values with the
claimed range can be rebutted by evidence that the
claimed range is “critical” because it “achieves unexpected
results.” Peterson, 315 F.3d at 1330 (quoting Geisler, 116
F.3d at 1469-70). But Applied provided no such evidence.
The Board correctly found that there was no indication
that obtaining the claimed dimensions was beyond the
capabilities of one of ordinary skill in the art or produced
any unexpectedly beneficial properties, further supporting
IN RE APPLIED MATERIALS 13
the Board’s finding that the optimization of the dimen-
sions was obvious.
Nothing indicates that the optimization of the vari-
ables was anything other than the exercise of ordinary
skill in the art. Likewise, the combination of the various
dimensions from the different pieces of prior art was also
obvious. The mere fact that multiple result-effective
variables were combined does not necessarily render their
combination beyond the capability of a person having
ordinary skill in the art. Evidence that the variables
interacted in an unpredictable or unexpected way could
render the combination nonobvious, see KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007), but Applied failed
to show anything unpredictable or unexpected in the
interaction of the variables.
In addition to the width, depth, and pitch, Applied ar-
gues there are two other variables relating to the shape of
the grooves, but nothing renders the combination of these
five variables nonobvious. Some of Applied’s claims cover
“a plurality of substantially circular concentrically ar-
ranged grooves.” Applied I at *1 (emphasis omitted); see
also Applied II at *1; ’115 Patent col.12 ll.38-39; ’455
Patent col.12 ll.36-37, col.12 ll.61-62. Weling and Breivo-
gel both disclose concentrically arranged grooves. Appel-
lant’s Br. 10, 12; Applied I at *2; Applied II at *2; Applied
III at *2; Applied IV at *2. Applied’s Patents also claim
grooves with “sidewalls that are substantially perpendicu-
lar to the polishing surface.” Applied I at *1; Applied II at
*1; Applied III at *1; Applied IV at *1. Weling discloses
similar U-shaped grooves, and Breivogel expressly indi-
cates that one of ordinary skill could modify the cross-
sectional shape of the grooves: The “grooves themselves
can have many different configurations. For example,
grooves may have a flat bottom or semicircular cross
section.” Applied I at *2, *4, *8 (quoting Breivogel);
Applied II at *2, *4, *8 (same); Applied III at *2, *4, *8
14 IN RE APPLIED MATERIALS
(same); Applied IV at *2, *4, *8 (same). Thus, there is no
indication that it would have been nonobvious to combine
these two groove features with the other Breivogel dimen-
sions (depth, width, and pitch), particularly because
Breivogel includes the circular groove arrangement and
recognizes that the cross-sectional groove shape was a
variable that could be altered by one of ordinary skill in
the art.
Applied argues that the triangular cross-section of the
grooves in Breivogel renders that reference inadequate.
One of ordinary skill in the art is not foreclosed from
combining the Breivogel dimensions with the Weling
cross-sectional shape merely because Breivogel discloses
triangular grooves. A reference must be considered for
everything that it teaches, not simply the described
invention or a preferred embodiment. See EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir.
1985); In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Even though Breivogel describes grooves with a particular
cross-sectional shape, this does not preclude one of ordi-
nary skill in the art from utilizing Breivogel’s other teach-
ings on the width, depth, and pitch in combination with
other features of the Weling pad. One of ordinary skill in
the art is not an “automaton.” KSR, 550 U.S. at 421. For
the same reasons, Talieh’s teachings on the dimensions
can be combined with the Weling pad, despite the fact
that Talieh teaches grooves with a centered spiral or
offset circular arrangement.
C. Teaching Away
The Board found that Weling does not criticize or
teach away from pads with deeper grooves; Weling simply
discloses that shallow grooves are preferred over a perfo-
rated pad. Applied argues that Weling teaches away from
the claimed invention and that the Board misinterpreted
Weling as preferring grooves generally over perforations.
IN RE APPLIED MATERIALS 15
Applied argues that Weling teaches the advantages of
shallow grooves. The PTO argues that Weling noted the
“several critical ways” in which perforations and grooves
differ, suggesting the focus of Weling was on the general
differences between grooves and perforations. Appellee’s
Br. 32-33 (quoting Weling).
“A reference may be said to teach away when a person
of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the refer-
ence, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). While Applied’s alterna-
tive interpretation of Weling is plausible, the mere fact
that alternative conclusions can be drawn from the evi-
dence is not relevant to determining whether substantial
evidence supports the Board’s conclusion. See Consolo,
383 U.S. at 620. The substantial evidence inquiry re-
quires this court to determine whether the evidence
reasonably supports the Board’s conclusion, which in this
case it does. See Consol. Edison, 305 U. S. at 229.
D. Commercial Success
The guaranteed performance of Applied’s CMP ma-
chines depends on following the best known methods
published by Applied. The best known methods allow for
the use of either a pad embodying the structures de-
scribed in the Weling reference (the “Weling pad”) or
recited in the claims of Applied’s Patents (the “Applied
pad”). Applied alleged that the Applied pad gained mar-
ket share in competition with the Weling pad also covered
by the best known methods. Nevertheless, the Board
found that there was insufficient evidence of a nexus
between the features of the claimed invention and its
success because the best known methods are a factor
unrelated to the quality of the claimed invention. See In
re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
16 IN RE APPLIED MATERIALS
The Board also found that Applied’s evidence of al-
leged market share was insufficient to overcome the
prima facie case of obviousness because Applied failed to
provide sales data. Applied defined the market as Ap-
plied’s CMP machines and provided 20% ranges for the
market share. Applied did not have exact sales data
because it did not historically sell the pads and had no
way to gauge market share with greater accuracy.
Applied argues that there is a nexus between the fea-
tures of the invention and its market share because the
Applied pad successfully competed against the Weling pad
under the best known methods. Applied also argues that
the ranges were the best evidence it had available.
The PTO argues that the best known methods are a
factor unrelated to the quality of the claimed invention.
The PTO also argues that the absence of actual sales data
calls into question the accuracy of the market shares
Applied asserted, rendering Applied’s evidence of the
market share insufficient.
The Board’s finding that the evidence of commercial
success did not overcome the prima facie case of obvious-
ness is supported by substantial evidence. The party
seeking the patent bears the burden to overcome the
prima facie case of obviousness with evidence of secondary
considerations, such as commercial success. Id. at 139.
Commercial success is relevant to obviousness only if
there is a “nexus . . . between the sales and the merits of
the claimed invention.” Id. at 140. There must be “proof
that the sales were a direct result of the unique character-
istics of the claimed invention—as opposed to other eco-
nomic and commercial factors unrelated to the quality of
the patented subject matter.” Id.
The Board correctly found that the best known meth-
ods were a commercial factor unrelated to the quality of
IN RE APPLIED MATERIALS 17
the claimed invention, significantly weakening the evi-
dence of commercial success. Applied provided some
evidence that its claimed invention was more successful
than the Weling pad. However, the more probative evi-
dence of commercial success relates to whether the sales
represent “a substantial quantity in th[e] market.” Id. at
140 (“This court has noted in the past that evidence
related solely to the number of units sold provides a very
weak showing of commercial success, if any.”). The Board
observed that “customers may have had a choice of polish-
ing pads” other than those covered by the best known
methods, although the record does not clearly indicate
whether this is true. Applied I at *10; Applied II at *9;
Applied III at *9; Applied IV at *9. Nevertheless, this
observation by the Board indicates an appropriate con-
cern with the nature of the evidence presented by Ap-
plied. An important component of the commercial success
inquiry in the present case is determining whether Ap-
plied had a significant market share relative to all com-
peting pads based on the merits of the claimed invention,
which Applied did not show.
With respect to the sufficiency of the evidence, the
Board was also correct to find that Applied did not pro-
vide adequate proof of the asserted market share. Ap-
plied is not relieved of the burden of proving commercial
success simply because it lacks the capability to marshal
probative evidence. Just as the number of units sold
without evidence of the market share is only weak evi-
dence of commercial success, see Huang, 100 F.3d at 140,
so too is an assertion of market share lacking in sales
data.
Thus, the Board correctly found the limited evidence
Applied provided of commercial success could not over-
come the prima facie finding of obviousness both based on
the lack of nexus and the insufficiency of the evidence.
18 IN RE APPLIED MATERIALS
III. CONCLUSION
For the foregoing reasons, this court concludes that
the decisions of the Board are supported by substantial
evidence. The decisions of the Board are, thus, affirmed.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
__________________________
IN RE APPLIED MATERIALS, INC.
__________________________
2011-1461,-1462,-1463,-1464
__________________________
Appeals from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences in Reex-
amination Nos. 90/010,106; 90/010,107; 90/010,108;
90/010,109.
__________________________
NEWMAN, Circuit Judge, dissenting.
In this crowded art of polishing pads, there is no product
with the combination of width, depth, and pitch of the
product here patented. The patented product has achieved
significant commercial success, displacing pads having the
parameters that are here said to render the claimed pad
obvious.
The question is not whether the differences from the
prior art are large or small; the question is whether it would
have been obvious to change the combination of width,
depth, and pitch in the manner of the patentee, with a
reasonable expectation that the changed product would
have the advantages here obtained. As stated in In re Dow
Chemical Co., 837 F.2d 469, 474 (Fed. Cir. 1988), “the
expectation of success must be founded in the prior art, not
in the applicant’s disclosure.”
IN RE APPLIED MATERIALS 2
The PTO offered no support in the prior art, or in com-
mon sense, for such an expectation of improved properties.
All that the PTO offers is prior art having variations in
width, depth, and pitch; there is no suggestion of changing
the parameters in the manner done by this patentee. Noth-
ing in the record shows that the patentee’s concurrent
changes in width, depth, and pitch were simply “knowledge
so basic that it certainly lies within the skill set of an ordi-
nary artisan.” Mintz v. Dietz & Watson, Inc., 679 F.3d 1372,
1377 (Fed. Cir. 2012). Yet the evidence is that the consumer
has shown a clear preference for the patentee’s product as
compared with the prior art products. This is highly rele-
vant to the question of obviousness, for the purchasing
consumer is in the best position to evaluate technological
changes that appear to judges to be minor, yet that are of
significance to the product’s properties, as measured in the
marketplace. See Ashland Oil, Inc. v. Delta Resins & Re-
fractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985) (“Secon-
dary considerations may be the most pertinent, probabitve,
and revealing evidence available to the decision maker in
reaching a conclusion on the obviousness/nonobviousness
issue.”).
The Court observed in Dickinson v. Zurko, 527 U.S. 150,
162 (1999), that “[t]he APA requires meaningful review,”
“not simply rubber-stamping agency factfinding.” On the
correct law, the polishing pad with the claimed parameters
has not been shown to be obvious. From my colleagues’
contrary holding, I respectfully dissent.