Ex Parte Oba et alDownload PDFPatent Trial and Appeal BoardApr 26, 201714236858 (P.T.A.B. Apr. 26, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/236,858 02/03/2014 Shigeru Oba 160381 7592 25944 7590 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER KLUNK, MARGARET D ART UNIT PAPER NUMBER 1716 NOTIFICATION DATE DELIVERY MODE 04/28/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): OfficeAction25944@oliff.com j armstrong @ oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHIGERU OBA and TAKAO KAWAMATA Appeal 2016-004369 Application 14/23 6,85 s1 Technology Center 1700 Before KAREN M. HASTINGS, MONTE T. SQUIRE, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL2 1 Appellants identify Shin-Etsu Handotai Co., Ltd. as the real party in interest. Br. 1. 2 In our Opinion, we refer to the Specification filed February 3, 2014 (“Spec.”); the Non-Final Action delivered electronically on June 8, 2015 (“Non-Final Act.”); the Appeal Brief filed August 13, 2015 (“Br.”); and the Examiner’s Answer delivered electronically on January 13, 2016 (“Ans.”). Appellants did not file a Reply Brief. Appeal 2016-004369 Application 14/236,858 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 7, 11, 14, and 17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to a method for polishing a silicon wafer. Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. A method for polishing a silicon wafer, the method comprising: polishing the silicon wafer by bringing the silicon wafer into sliding contact with a polishing pad attached to a turn table while supplying a polishing agent stored in a tank to the polishing pad; circulating the polishing agent to recover the supplied polishing agent in the tank; and adding a new polishing agent to the tank in the same amount as that of a part of the supplied polishing agent that is not recovered in the tank, wherein the silicon wafer is polished while adjusting a concentration of silicate ions contained in the polishing agent circulating to be recovered in the tank to be within a range of 1.0 to 4.6 g/L, and the concentration of silicate ions that is reduced because of the part of the polishing agent not being recovered in the tank is adjusted to be within the range of 1.0 to 4.6 g/L by adding alkali to the polishing agent in the tank during polishing of the silicon wafer to generate the silicate ions by a reaction between the alkali and the silicon wafer. Claims Appendix A-l. 2 Appeal 2016-004369 Application 14/236,858 REFERENCES The Examiner relies upon the following prior art in rejecting the claims on appeal: Kurataetal. US 2005/0181609 A1 Aug. 18,2005 (“Kurata”) Iida et al. JP 11-010540 Jan. 19, 1999 (“Iida”)3 Miyazaki JP 2004—186350 July 2,2004 REJECTIONS The claims stand rejected under 35 U.S.C. § 103(a) as follows: (1) claims 7 and 11 over Miyazaki in view of Iida; and (2) claims 14 and 17 over Miyazaki in view of Iida and further in view of Kurata. Non-Final Act. 2, 4; Ans. 2, 4. OPINION Appellants do not argue claim 11 separately from claim 7. See generally Appeal Br. In addition, Appellants rely on the same arguments presented for claim 7 in addressing the rejection of claims 14 and 17. Id. at 8. Accordingly, we select independent claim 7 as representative of the subject matter before us on appeal in our discussion of the rejections. Claims 11, 14, and 17 will stand or fall with claim 7. Appellants dispute that either Miyazaki or Iida teach or disclose the following four elements of claim 7: (1) circulating the polishing agent to recover the supplied polishing agent in the tank; (2) adding a new polishing agent to the tank in the same amount as that of a part of the supplied 3 We rely on the English machine translations of Iida and Miyazaki in the record, to which Appellants have not objected. 3 Appeal 2016-004369 Application 14/236,858 polishing agent that is not recovered in the tank, (3) the silicon wafer being polished while adjusting a concentration of silicate ions contained in the polishing agent circulating to be recovered in the tank to be within a range of 1.0 to 4.6 g/L, and (4) the concentration of silicate ions that is reduced because of the part of the polishing agent not being recovered in the tank being adjusted to be within the range of 1.0 to 4.6 g/L by adding alkali to the polishing agent in the tank during polishing of the silicon wafer to generate the silicate ions by a reaction between the alkali and the silicon wafer. See Br. 4-5. With respect to (1) and (2), the Examiner finds that Iida teaches these elements. Non-Final Act. 3. The Examiner applies Iida for the teaching that the components of the slurry can be recycled and restored to an early concentration value. Ans. 5. The Examiner finds that, regarding (3), Miyazaki teaches that the silicon wafer is polished while adjusting a concentration of silicate ions contained in the polishing agent in the tank to be within a predetermined range, pointing to Miyazaki’s teaching of maintaining silicate ion concentration at a predetermined amount. Non-Final Act. 2; Ans. 3. The Examiner also finds that Miyazaki teaches the concentration of silicate ions is adjusted to be within a range of 1.0 to 5.0 g/L, which covers the claimed range. Non-Final Act. 3; Ans. 4. Regarding (4), the Examiner finds that Iida teaches adjusting the concentration of silicate ions to be within a predetermined range by adding alkali to the polishing agent in the tank during polishing of the silicon wafer to generate the silicate ions by a reaction between the alkali and the silicon wafer. Non-Final Act. 3; Ans. 3. The Examiner finds that generation of 4 Appeal 2016-004369 Application 14/236,858 silicate ions is an inherent result of the chemical reaction of an alkali and silicon. Non-Final Act. 3; Ans. 4. The Examiner determines that one of ordinary skill in the art at the time of the invention would have found it obvious to modify Miyazaki to include the circulation of polishing liquid as taught by Iida because Iida teaches that this allows for the slurry to be recycled without reducing the quality of polishing to result in lower cost. Non-Final Act. 3; Ans. 3. The Examiner further determines that it would have been obvious to a person having ordinary skill in the art at the time of the invention to add additional silicate to maintain the concentration because Miyazaki teaches this is the concentration that should be maintained, and Iida teaches values can be maintained by adding back what was lost. Id. Appellants merely contend that neither Miyazaki nor Iida “describes or suggests that a silicon wafer is polished while adjusting a concentration of silicate ions contained in the polishing agent circulating to be recovered in the tank to be within a range of 1.0 to 4.6 g/L as required in claim 7.” Br. 5. However, Appellants’ conclusory statement is unpersuasive, given the Examiner’s findings that Iida teaches recycling of the polishing slurry, and Miyazaki teaches the silicon wafer is polished while adjusting a concentration of silicate ions contained in the polishing agent in the tank to be within a predetermined range of 1.0 to 5.0 g/L. The Examiner’s explanation of the reasons a person of ordinary skill in the art would have had to combine the prior art teachings is sufficient in light of “the inferences and creative steps that a person of ordinary skill in the art would employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 5 Appeal 2016-004369 Application 14/236,858 Appellants argue that “Miyazaki does not describe or suggest ‘maintaining’ a silicate ion concentration, but merely indicates what the silicate ion concentration should be at initially.” Br. 5. However, Miyazaki states what “the content of the silicate ion in the abrasive compound” is preferably, and does not limit when the content should be in the stated range. Miyazaki 19. One of ordinary skill in the art would reasonably infer that the content of the silica ion in Miyazaki should be maintained. See KSR, 550 U.S. at 418. Appellants also argue that Iida does not describe or suggest restoring silicate ion concentration at all, but describes only adjusting pH and silica abrasive grain concentration. Br. 5. As the Examiner points out, Miyazaki, not Iida, is used as the source of silicate ion concentration. It is the combination of references over which the Examiner finds claim 7 obvious. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole). It is well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In reFritch, 972 F.2d 1260, 1264—65 (Fed. Cir. 1992). Appellants contend that “the concentration of silicate ions is not conventionally taken into consideration by practitioners in the art,” and therefore one of ordinary skill in the art at the time of the invention would not have combined Miyazaki and Iida. Br. 6. Appellants’ argument is unpersuasive in light of the teachings of the references, as discussed above. 6 Appeal 2016-004369 Application 14/236,858 We have considered Appellants’ arguments, but we ultimately do not find them convincing. Appellants have not shown error in the Examiner’s determination that claim 7 is obvious over Miyazaki in view of Iida. For the same reasons, we sustain the Examiner’s rejections of claims 11, 14, and 17. DECISION For the above reasons, the Examiner’s rejection of claims 7, 11, 14, and 17 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation