Ex Parte LIN et al

Patent Trials and Appeals Board

Feb 14, 2019

14639434 - (D) (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/639,434 03/05/2015
29050 7590 02/19/2019
Thomas Omholt
Patent Prosecution Agent
CABOT MICROELECTRONICS CORPORATION
870 NORTH COMMONS DRIVE
AURORA, IL 60504
Chih-AnLIN
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.
100527(B) 3558
EXAMINER
DAHIMENE, MAHMOUD
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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):
CMC_PROSECUTION@CABOTCMP.COM
thomas_omholt@cabotcmp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIH-AN LIN and ZHAN CHEN
Appeal2018-003412
Application 14/639,434
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 6-9, 11, 12, and 14--22 under 35 U.S.C. § 103
as unpatentable over Kollodge (US 2007 /0093182 Al, published April 26,
2007) in view of Shi (US 2014/0273458 Al, published September 18, 2014).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision refers to the Specification ("Spec.") filed March 5, 2015,
Appellant's Appeal Brief ("Appeal Br.") filed September 12, 2017, the
Examiner's Answer ("Ans.") dated December 11, 2017, and Appellant's
Reply Brief ("Reply Br.") filed February 8, 2018.
2 Appellant is the Applicant, Cabot Microelectronics Corporation, which
isidentified in the Appeal Brief as the real party in interest (Appeal Br. 1 ).
Appeal2018-003412
Application 14/639,434
STATEMENT OF THE CASE
The invention relates to chemical-mechanical polishing compositions
suitable for polishing tungsten surfaces (Spec. ,r 1 ).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A chemical-mechanical polishing (CMP) method
for polishing a tungsten-containing substrate comprising
abrading a surface of the substrate with a CMP composition
comprising an aqueous carrier containing:
(a) a polyamino compound, wherein the polyamino
compound is present in the composition, at point of use, at a
concentration in the range of about 5 to about 1000 parts-per-
million (ppm);
(b) at least one metal ion selected from a transition metal
ion and a group IIIA/IV A metal ion;
( c) a chelating agent, wherein the chelating agent
comprises at least one compound selected from the group
consisting of malonic acid, methylmalonic acid, ethylmalonic
acid, phenylmalonic acid, and hydroxyethylidene-1, 1-
diphosphonic acid, and wherein the at least one metal ion and
the chelating agent are present at a molar ratio of about 0.5: 1 to
about 2:1;
( d) a particulate aluminum doped silica abrasive,
wherein aluminum doped silica abrasive is present in the
composition, at point of use, at a concentration in the range of
about 0.05 to about 3 percent by weight (wt%);
( e) an oxidizing agent; and
(f) optionally, an amino acid.
Independent claim 16 recites a similar CMP method for polishing a
tungsten-containing substrate.
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Appeal2018-003412
Application 14/639,434
ANALYSIS
We review the appealed rejection for error based upon any alleged
error Appellant identifies and in light of the arguments and evidence
produced thereon. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). The
only issue Appellant raises in challenging the Examiner's obviousness
rejection is whether the Examiner reversibly erred in concluding that it
would have been obvious to modify Kollodge' s CMP method by using
alumina doped silica abrasive as taught in Shi (see Appeal Br. 5---6; Reply
Br. 4 ). Appellant does not otherwise challenge the Examiner's findings
regarding Kollodge' s and Shi' s teachings of CMP methods and
compositions for polishing tungsten-containing substrates. In addition,
Appellant does not argue the claims separately. We, therefore, select claim
1 as representative; claims 2, 3, 6-9, 11, 12, and 14--22 stand or fall with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv) (2017).
After review of the opposing positions Appellant and the Examiner
articulate, the applied prior art, and Appellant's claims and Specification
disclosures, we determine that Appellant's arguments are insufficient to
identify reversible error in the Examiner's obviousness rejection. We
determine that a preponderance of the evidence supports the Examiner's
findings of fact and conclusions of law with respect to the prima facie case
of obviousness.
There is no dispute that Kollodge teaches a preference for a CMP
composition that is substantially free of inorganic particulate ( compare
Appeal Br. 4 and Reply Br. 4 with Ans. 1 O; see also Kollodge ,r,r 10 and 11 ).
Based on this fact, Appellant argues that there is no suggestion to modify
Kollodge's CMP method in view of Shi's teaching to include alumina doped
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Appeal2018-003412
Application 14/639,434
silica (Appeal Br. 6). Appellant contends that, "to arrive at the claimed
invention, a person of ordinary skill in the art would have needed to select
only certain elements from the Kollodge reference, which teaches a
polishing composition for a fixed abrasive pad preferably having no added
abrasives, and combined it with Shi, which teaches many possible abrasives
as equivalents" (id. at 5). Appellant, therefore, urges that the Examiner's
proposed modification to Kollodge' s CMP composition "appears to read into
the prior art the teachings of the invention at issue, and amounts to the
impermissible use of hindsight" (id.).
We disagree. Appellant's hindsight argument is not persuasive
because the Examiner's reasons for combining the teachings of Kollodge
and Shi are supported by the prior art disclosures themselves. See, e.g.,
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
("The invention must be viewed not after the blueprint has been drawn by
the inventor, but as it would have been perceived in the state of the art that
existed at the time the invention was made." ( citing Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985))). Here, as the
Examiner finds (Ans. 10), the skilled artisan would have understood from
the Kollodge's teachings that, while the absence of free abrasive particles is
preferred, "[i]norganic particulates may also be included in the working
liquid [(CMP composition)]. These inorganic particulates may aid in the cut
rate." (Kollodge ,r 40). Moreover, Kollodge teaches silica, among others, as
an example of such inorganic particulates (id.). Thus, although Kollodge
expresses a preference for the absence of free abrasive particles, Kollodge
nonetheless teaches that such particles may be present in the CMP
composition to aid in the cut rate. Merck & Co. Inc. v. Biocraft
4
Appeal2018-003412
Application 14/639,434
Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)) ("But in a section 103 inquiry,
'the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered."'); accord, In re Burckel, 592 F.2d 1175,
1179 (CCPA 1979) and In re Mills, 470 F.2d 649 (CCPA 1972).
Turning to Shi, there is no dispute that Shi teaches a CMP method for
polishing a tungsten-containing substrate using a CMP composition
comprising abrasive particles selected from a number of equivalent abrasive
particles, including silica and alumina doped silica ( compare Appeal Br. 5
and Reply Br. 4 with Ans. 6; Shi ,r 55). An express teaching need not be
present in the art to support the substitution of one element for another
element used for the same purpose. In re Fout, 675 F.2d 297,301 (CCPA
1982). Further, the substitution of one known element for another is obvious
when the combination yields no more than a predictable result, as here (i.e.,
using alumina doped silica particles in Kollodge to aid in the cut rate). KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007) ("when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result"). Because Kollodge teaches
silica abrasive particles may be included in the CMP composition and Shi
teaches silica and alumina doped silica are equivalents for use as abrasive
particles in a CMP composition for the same purpose, the ordinary artisan
would have been motivated to use alumina doped silica abrasive particles in
Kollodge's CMP composition.
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Appeal2018-003412
Application 14/639,434
Because Appellant does not assert that the substitution of alumina
doped silica in Kollodge's CMP composition yields more than a predictable
result, nor otherwise asserts any objective evidence of nonobviousness, we
are not persuaded that the Examiner reversibly erred in maintaining the
obviousness rejection over the combined teachings of Kollodge and Shi.
Accordingly, we affirm the stated obviousness rejection for substantially the
fact findings and the reasons set forth by the Examiner in the Examiner's
Answer.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 1-
3, 6-9, 11, 12, and 14--22 under 35 U.S.C. § 103 as unpatentable over
Kollodge in view of Shi is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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