Ex Parte Kon et al

Patent Trial and Appeal Board

Jul 31, 2014

12618018 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YOSHINORI KON, NORIHITO NAKAZAWA, and CHIE
ISHIDA
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Appeal 2012-007649
Application 12/618,018
Technology Center 1700
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Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
ROMULO H. DELMENDO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the Examiner’s decision
rejecting all of the claims pending in the application, namely, claims 16-23.
We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

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CLAIMED SUBJECT MATTER
Appellants’ claims are directed to a method of polishing a
semiconductor surface. Claims 16 and 21 are the only independent claims
on appeal. Representative claims 16, 18, and 19, taken from the Claims
Appendix of the Appeal Brief, appear below:
Claim 16: A method of polishing a semiconductor surface, the
method comprising polishing the semiconductor surface with a polishing
composition comprising cerium oxide abrasive grains dispersed in water, an
inorganic acid and an additive, wherein the additive is ammonium
polyacrylate with a molecular weight of from 2000 to 30,000, the polishing
composition at 25°C has a pH of from 3.5 to 6, and the total concentration of
the additive is from 0.01 to 0.5% based on the total mass of the polishing
compound.

Claim 18: The method of Claim 16, wherein the cerium oxide
abrasive grains remain dispersed in the water of the polishing composition
for at least one week.

Claim 19: The method of Claim 16, wherein the semiconductor
polishing compound provides a dishing fluctuation of 65 nm or less when
applied to a semiconductor surface.

REJECTIONS
Claims 16-23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kido et al. (US 2002/0045350 a1, published Apr. 18,
2002) and as being unpatentable over Tsuchiya et al. (US 2002/0095872 A1,
published July 25, 2002).

ANALYSIS
Rejection under 35 U.S.C. § 103(a) as being unpatentable over Kido et al.
The Examiner finds that Kido discloses an abrasive composition for
polishing a semiconductor device comprising cerium oxide particles
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dispersed in water, a polyacrylic acid such as ammonium polyacrylate
having molecular weights and concentrations overlapping those recited in
the claims, and an inorganic acid resulting in a pH overlapping the pH range
recited in the claims. (Ans. 4-6.)
Appellants first argue that because Kido teaches a preferred pH of 4 or
more but less than 4 also may be used, “Kido teaches pH ranges outside the
claimed range [3.5 to 6] and thus is not a point of overlap with the claimed
pH range.” (App. Br. 4.) Appellants point to two of Kido’s examples in
which pH values are from 7.0 to 7.4, outside of the claimed range, as well as
to other described polishing compounds where the pH falls outside of the
claimed range. (App. Br. 5.).
We disagree. Kido clearly discloses that a “pH of 4 or more is
preferable in some cases . . .” (Kido ¶ 31). Where the claimed ranges
“overlap or lie inside ranges disclosed by the prior art” a prima facie case of
obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976); see In
re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Nor do we find that
the disclosed examples and other described compounds teach away from the
claimed range. Disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or nonpreferred
embodiments. In re Susi, 440 F.2d 442, 446 n. 3 (CCPA 1971).
Appellants next argue that their “data of unexpected improvements is
a proper showing of secondary considerations demonstrating the non-
obviousness of the claimed invention.” (App. Br. 7.) Appellants point to the
data in Specification Tables 1 and 2 to demonstrate the significance of the
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claimed additive amounts and pH ranges. (Id. at 7-8.)1 Table 1 purports to
show that within the recited additive amounts and pH ranges abrasive
particle diameter is maintained smaller and the time for agglomeration and
sedimentation is greater. Table 2 purports to show that increased
concentrations of ammonium acrylate beyond the claimed ranges have a
“deleterious effect on polishing time and/or dishing fluctuation, and/or
scratches.” (Id. at 8.)
The Examiner finds that Appellants’ data in Tables 1 and 2 are not
commensurate in scope with the claims because the data do not show results
for all the claimed contents and ranges. (Ans. 10-11.) For example, the
Examiner notes that a specific abrasive particle size is disclosed in the
examples but is not included in the claims. Similarly, the Examiner finds
that the independent claims recite an additive with a molecular weight of
from 2,000 to 30,000 but no examples of a molecular weight of 30,000 are
provided in the Specification examples. Id. at 11.
We agree with the Examiner that Appellants’ above evidence does not
rebut the prima facie showing of obviousness. Appellants identify nothing
in the Specification to support the attorney statement in the Appeal Brief that
the test results are unexpected. A statement by an attorney that results are
unexpected is not the factual evidence required to rebut a prima facie case of
obviousness. Geisler, 116 F.3d at 1470. Moreover, as the Examiner

1 Appellants also refer to “three declarations made of record in this case
(copies appended to this brief).” (Id. at 7.) However, contrary to
Appellants’ statement, the Appeal Brief does not include any Evidence
Appendix or copies of the referenced declarations. Because Appellants’
Appeal Brief fails to comply with the evidence requirements of 37 C.F.R.
§ 41.37(c)(1)(ix), we will not attempt to find and consider the declaration
evidence referred to by Appellants.
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correctly notes, the data do not include a sufficiently comprehensive
showing to establish a factual basis upon which to find unexpected results
for all the claimed contents and ranges (i.e., the claimed ranges of pH,
molecular weight, concentration of additive, etc.), and therefore the data
evidence is not commensurate in scope with the claims.
Appellants separately argue (App. Br. 12-19) that claims 18, 19, 22,
and 23 are erroneously rejected based on the Examiner’s finding that the
duration of dispersion in water of the abrasive and the dishing fluctuation
required by these claims are “considered characteristics of the polishing
composition or obtained upon using it, and since the reference discloses a
substantially similar abrasive composition used in the process of polishing a
semiconductor, said characteristics are expected to follow from the disclosed
composition of the reference.” (Ans. 6.)
Appellants argue that “not all of the compositions within the scope of
Kido and certainly not the ones [exemplified] achieve [the claimed] stable
dispersion” (App. Br. 13) or the claimed dishing fluctuation (id. at 17).
Essentially, Appellants argue that because some compositions described in
Kido, such as examples 8-10, would not result in the claimed features, then
it is inappropriate to consider any of the Kido compositions inherently would
yield the features recited in the above claims. (Id. at 13, 17.)
We do not find Appellants’ arguments persuasive. “[A] prior art
product that sometimes, but not always, embodies a claimed method
nonetheless teaches that aspect of the invention.” Hewlett-Packard Co. v.
Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003). It is irrelevant to
the issue of prima facie obviousness that Kido also would have suggested
other compositions which are outside the scope of Appellants’ claims and
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which would not possess the claimed dispersion duration and dishing
fluctuation.

Rejection under 35 U.S.C. § 103(a) as being unpatentable over
Tsuchiya et al.
The Examiner finds that Tsuchiya discloses a polishing slurry for
polishing semiconductor devices comprising a water-soluble polyacrylate
polymer such as ammonium polyacrylate having molecular weights and
concentrations overlapping those recited in the claims, water, ceria, and an
inorganic acid, and having a pH of preferably 3 or more and 9 or less. (Ans.
7.)
Appellants do not dispute that “Tsuchiya has these various listings of
ingredients.” (App. Br. 20.) Instead, Appellants argue that Tsuchiya does
not teach one of ordinary skill to combine ceria with an anionic thickener
such as polyacrylic acid or its salts. (Reply Br. 6.) In support of this
argument, Appellants contend that Tsuchiya “teaches that positively charged
materials are not to be combined with anionic thickeners” (App. Br. 21) and
that ceria has such a positive charge in acidic conditions. Id.
The Examiner correctly notes that there is no evidence of record
showing “that cerium oxide particles in the disclosure of Tsuchiya et al. have
positive charge, and that they cannot be used in a polishing slurry solution
having the claimed polymer.” (Ans. 11.)
Appellants ask the Board to take judicial notice of the fact that anyone
of ordinary skill would know that ceria has a net positive charge in acidic
conditions. (Reply Br. 6.) Appellants’ arguments are not founded on facts
of record. It would be inappropriate for the Board to take judicial notice of
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such facts, and we decline to do so. In re Eynde, 480 F.2d 1364, 1370
(CCPA 1973) (facts constituting the state of the art are normally subject to
the possibility of rational disagreement among reasonable people and are not
amenable to the taking of official notice).
Lastly, Appellants argue that their showing of unexpected results
rebuts the Examiner’s prima facie case of obviousness. For the reasons
discussed above, we find that Appellants’ evidence does not rebut the prima
facie showing of obviousness.

DECISION
The Examiner’s decision rejecting claims 16-23 under 35 U.S.C.
§ 103(a) 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)(1)(iv).

AFFIRMED

cdc