Ex Parte Dong et alDownload PDFPatent Trial and Appeal BoardOct 12, 201613587916 (P.T.A.B. Oct. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/587,916 08/16/2012 96610 7590 10/13/2016 Ostrolenk Faber LLP 1180 A venue of the Americas New York, NY 10036-2714 FIRST NAMED INVENTOR Hua DONG UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 066847-10531 (C-1058 US) 4072 EXAMINER DUCLAIR, STEPHANIE P. ART UNIT PAPER NUMBER 1713 MAILDATE DELIVERY MODE 10/13/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HUA DONG and ROBERT K. BARR1 Appeal2015-005002 Application 13/587,916 Technology Center 1700 Before CATHERINE Q. TIMM, WLIA HEANEY, and JEFFREY R. SNAY, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 2 Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision to reject claims 1--4 under 35 U.S.C. § 103(a) as obvious over Caiger3 in 1 Appellants identify the real party in interest as Rohm and Haas Electronics Materials, LLC. Appeal Br. 2. 2 In our opinion below, we reference the Specification filed August 16, 2012, the Final Office Action mailed May 23, 2014 (Final), the Appeal Brief filed October 27, 2014 (Appeal Br.), the Examiner's Answer mailed February 2, 2015 (Ans.), and the Reply Brief filed April 1, 2015 (Reply Br.). 3 Caiger, US 2009/0304835 Al, published Dec. 17, 2009. Appeal2015-005002 Application 13/587,916 view of Carlini,4 and claims 6 and 7 under 35 U.S.C. § 103(a) as obvious over those references further in view of Cheetam. 5 We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. The claims are directed to a method including a step of selectively applying a resist composition to the front side of a semiconductor wafer. See, e.g., claim 1. According to the Specification, the resist is inkjet printable and has superior adhesion for forming current tracks on semiconductors. Spec. 1: 3-4. The composition of the resist is central to the dispute on appeal. Compare Final 2-5, Ans. 5-7 with Appeal Br. 8-11; Reply Br. 1-2. The claims require the resist composition contain three components: (1) one or more hydrogenated rosin resins that are solid at room temperature, (2) one or more hydrogenated rosin resin esters that are liquid at room temperature, and (3) one or more fatty acids. The claims require the hydrogenated rosin resins and hydrogenated rosin resin esters be present in a concentration within a particular ratio range. Claim 1, which we reproduce from the Claims Appendix of the Appeal Brief, is illustrative: 1. A method comprising: a) providing a doped semiconductor wafer comprising a front side, a back side, and a pn junction; b) selectively applying a resist composition on top of the front side of the semiconductor wafer, the resist composition comprises one or more hydrogenated rosin resins, the hydrogenated rosin resins are solids at room temperature, one or more hydrogenated rosin resin esters, the hydrogenated rosin resin esters are liquids at room temperature, wherein a weight 4 Carlini et al., US 2010/0104963 Al, published Apr. 29, 2010. 5 Cheetham et al., US 2010/0129754 Al, published May 27, 2010. 2 Appeal2015-005002 Application 13/587,916 ratio of the one or more hydrogenated rosin resins to the one or more hydrogenated rosin resin esters is 2: 1 to 4: 1 and one or more fatty acids; and c) applying an etch composition to the semiconductor to etch away exposed sections of the front side of the semiconductor to form current tracks. Appeal Br. 13. The issue arising from the arguments of Appellants is: Have Appellants identified a reversible error in the Examiner's finding that Caiger and Carlini would have suggested to one of ordinary skill in the art to include solid hydrogenated rosin resins and liquid hydrogenated rosin resin esters in the composition of Caiger in a concentration ratio within that required by claim 1? Appellants have identified such an error. The Examiner acknowledges that "Caiger is silent as to a resist composition comprising one or more hydrogenated rosin resin esters that are liquid at room temperature wherein a weight ratio of the one or more hydrogenated rosin resins to the one or more hydrogenated rosin resin esters is 2: 1 to 4: 1." Final 3. The Examiner turns to Carlini to support the conclusion that it would have been obvious to include the hydrogenated rosin resin and hydrogenated rosin resin esters of Carlini in the resin composition of Caiger "because the reference of Carlini teaches that such resins are suitable to prevent or limit particle aggregation of an inkjet composition." Final 4, citing Carlini, i-fi-13, 5, 55. The Examiner further determines that the ordinary artisan would have optimized the concentration, including the weight ratio of the solid resin and liquid resin ester, "to control the melt viscosity of the ink (Caiger: Paragraph [0028]) and in order to 3 Appeal2015-005002 Application 13/587,916 prevent or limit the degree of pigment particle aggregation in the ink composition (Carlini: Paragraph [0055])." Final 4. The Examiner's rejection is grounded on a faulty finding of fact. As pointed out by Appellants, Carlini discloses using the rosin products cited by the Examiner as surfactants in a process of preparing nanoscale pigment particles. Appeal Br. 10; Carlini i-f 55. Carlini, contrary to the finding of the Examiner, does not teach "that such resins are suitable to prevent or limit particle aggregation of an in~et composition." Final 4 (emphasis added). Carlini teaches synthesizing nanoparticles using a solution including sterically bulky stabilizer compounds and surfactant and precipitating the pigment particles in an aqueous slurry. Carlini i-f 60. During the process of forming the pigment particles, Carlini includes a sterically bulky stabilizer compound that limits the extent of particle growth and aggregation so that the resulting particles are nanosized. Carlini i-f 30. Carlini uses hydrogenated rosin resins and hydrogenated rosin resin esters as "other stabilizer compounds" that may be used in addition to the sterically bulky stabilizer compounds for preventing or limiting aggregation. Carlini i-f 55. Carlini is concerned with the effect of the concentration of the surfactant within the synthesis solution on the quality and characteristics of the pigment particles being synthesized. Carlini i-f 60. Carlini does not disclose that the surfactant stabilizers are useful in an ink formulation, such as that taught by Caiger, for beneficially affecting melt viscosity, and the Examiner provides no persuasive technical reasoning indicating that the ordinarily skilled artisan would understand Caiger' s stabilizers as having that benefit. 4 Appeal2015-005002 Application 13/587,916 Although, as pointed out by the Examiner, Caiger may use pigments, 6 Caiger is formulating a resist ink composition that is melted and jetted hot onto the substrate by an inkjet printer. Caiger i-f 19. Caiger is not concerned with aggregation that occurs during the synthesis of nanoparticle pigment particles. Caiger uses already formed pigments in an inkjet formulation. Contrary to the findings of the Examiner, Carlini is not concerned with the concentration of surfactant (hydrogenated rosin resins or hydrogenated rosin resin esters) within an ink composition. Nor is there any suggestion within either reference for including a particular ratio of solid hydrogenated resin to liquid hydrogenated rosin resin ester. Thus, we agree with Appellants that the Examiner has failed to provide a preponderance of evidence supporting the articulated reason for including the two required components in a concentration ratio required by claim 1, the only independent claim. The Examiner does not rely upon Cheetam in a manner that overcomes the deficiency discussed above. CONCLUSION We do not sustain the Examiner's rejections. DECISION The Examiner's decision is reversed. REVERSED 6 Ans. 5-6, citing Caiger i-f 29. 5 Copy with citationCopy as parenthetical citation