Ex Parte Mizuno et al

Patent Trial and Appeal Board

Feb 27, 2018

13818058 (P.T.A.B. Feb. 27, 2018)

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.
13/818,058 02/20/2013 Takahiro Mizuno 103475-0108 4798
22428 7590 03/01
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
DUCLAIR, STEPHANIE P.
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAHIRO MIZUNO, SHUUGO YOKOTA,
YASUYUKI YAMATO, and TOMOHIKO AKATSUKA1
Appeal 2017-003303
Application 13/818,05 82
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH,
and MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 2, and 6-8.3 We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention relates generally to polishing compositions for
polishing silicon nitride, comprising colloidal silica on which a sulfonic acid
is immobilized to the surface. (Spec. 2). Claim 1 illustrates the subject
1 These are the names of the identified inventors of the appealed application.
2 According to the Appeal Brief, the real party in interest is Fujimi Inc. See
(App. Br. 3).
3 Claim 5 has been withdrawn from consideration. (Final Act. 2).
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Application 13/818,058
matter on appeal and is reproduced from the Claims Appendix to the
principal Brief.
1. A polishing composition used in an application to polish
silicon nitride, comprising
colloidal silica on which a sulfonic acid is immobilized to the
surface, the colloidal silica on which a sulfonic acid is
immobilized to the surface is obtained by coupling a silane
coupling agent having a thiol group to colloidal silica, followed
by oxidizing the thiol group, wherein the polishing composition
has a pH of 6 or less, and wherein under a pH of 6 or less, the
colloidal silica on which a sulfonic acid is immobilized to the
surface has a zeta-potential opposite to that of the silicon
nitride.
Appellants (see generally App. Br.) request review of the following
rejections under 35 U.S.C. § 103(a):
I. Claims 1, 2 and 6 rejected as unpatentable over the
combined teachings of Kamimura (US 2010/0009538 Al,
published: Jan. 4, 2010), Sun (US 7,044,836 B2, issued:
May 16, 2006), Siddiqui (US 2008/0182485 Al, published:
July 31, 2008) and Cano-Serrano et al. (Sulfonic Acid
functionalized silica through quantitative oxidation of thiol
groups, Chem. Comm. Issue 2, 246-247 (2003)).
II. Claims 7 and 8 rejected as unpatentable over the combined
teachings of Kamimura, Sun, Siddiqui, and Cano-Serrano,
and Minamihaba (US 2006/0243702 Al, published: Nov. 2,
2006).
III. Claim 7 rejected as unpatentable over the combined
teachings of Kamimura, Sun, Siddiqui, and Cano-Serrano,
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andNakajo (US 2009/0267021 Al, published: Oct. 29,
2009).
IV. Claims 1, 2 and 6 rejected as unpatentable over the
combined teachings of Sun, Siddiqui, and Cano-Serrano.
V. Claims 7 and 8 rejected as unpatentable over the combined
teachings of Sun, Siddiqui, and Cano-Serrano, and
Minamihaba.
VI. Claim 7 rejected as unpatentable over the combined
teachings of Sun, Siddiqui, and Cano-Serrano, andNakajo.
OPINION4
After consideration of Appellants’ arguments and evidence and the
Examiner’s position in the Final Office Action and Answer, we AFFIRM the
obviousness determinations.
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have not identified reversible error in the
Examiner’s determination that the subject matter recited in claims 1, 2, and
4 Appellants present arguments for independent claim 1. (App. Br. 7-17).
Appellants do not present substantial arguments addressing dependent
claims 2, and 6-8. (See generally App. Br.). We limit our discussion to
independent claim 1 which we select as representative of the rejected claims.
A discussion of Minamihaba and Nakajo are unnecessary for disposition of
the present appeal.
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6-8 would have been obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a). Accordingly, we sustain rejections I-VI.
The complete statement of the rejections on appeal appear in the Final
Office Action. (Final Act. 2-14).
The Examiner found Kamimura describes a colloidal silica polishing
composition used to polish silicon nitride that differs from the claimed
invention by not describing the colloidal silica in which a sulfonic acid is
immobilized. (Final Act. 2-3).
The Examiner found Sun describes a polishing composition that
comprises colloidal silica bonded with a sulfonic acid further including an
organic acid and coupling a silane compound. (Final Act. 3). Sun discloses
the polishing compositions comprising metal oxide particles (silica) are
colloidally stable over a wide pH range. (Sun Col. 1 11. 56-58). Sun
discloses the silane compound is preferably adhered to a portion of the metal
oxide particle through covalent bonds. (Sun Col. 3 11. 2^4). Sun further
discloses the anionic polymer (sulfonic acid) can be adhered to the silane
compound by covalent bonds. (Sun paragraph bridging Cols. 2-3). Sun
discloses the polishing abrasive can have any suitable zeta potential. (Sun
Col. 4 11. 16-23).
The Examiner found Siddiqui discloses a polishing composition that
comprises colloidal silica, a polymer having an immobilized stabilizer and
chelating agent. (Final Act. 3-4). The Examiner also found Siddiqui
describes adjusting the zeta potential of the polishing abrasive. (Id; Siddiqui
110).
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The Examiner found Cano-Serrano discloses a method of forming
colloidal silica in which a sulfonic acid is immobilized is silica wherein the
colloidal silica is obtained by coupling a silane coupling agent having a thiol
group to silica followed by oxidizing the thiol group. (Final Act. 4-5).
The Examiner determined the combined teachings of Kamimura, Sun,
Siddiqui, and Cano-Serrano would have rendered obvious the subject matter
of independent claim 1. (Final Act. 2-14).
Rejections Based on Kamimura, Sun, Siddiqui, and Cano-Serrano
Appellants argue Kamimura does not teach a polishing composition
where the polishing composition comprises colloidal silica as presently
claimed and the additional references Sun, Siddiqui and Cano-Serrano do
not remedy the deficiencies of Kamimura. (App. Br. 7-8, 11-14).
Appellants argue Kamimura does not teach the organic acid is
immobilized on the surface of the colloidal silica. (App. Br. 11). This
argument is not persuasive because the Examiner acknowledges Kamimura
does not teach the organic acid is immobilized on the surface of the colloidal
silica and relies on Sun, Siddiqui and Cano-Serrano for this teaching. (Final
Act. 2-3).
Appellants argue Sun and Siddiqui disclose polishing compositions
having surface-modified silica. However, Sun discloses that the polymers,
which may include acid functional groups, are merely adhered to the surface
of colloidal silica. Appellants further argue Sun’s polymers shield the
charges on the silica particles. (App. Br. 11-12). In further support of the
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arguments presented against Sun, Appellants rely on the Declaration of
Yasuyuki Yamato. The Declarant states:
[I]t is clear that the polymer is adhered to the silane compound
in Sun by a reaction between the functional groups of the polymer and
the functional group of the silane compound to form a coating. Thus,
the functional groups in Sun’s polymers merely serve as anchors to
the silane compound and are located within the resulting coating. In
fact, Sun specifies that “[pjreferably, the polymer is adhered to the
silane compound through one or more electrostatic bonds.” Id., col. 4,
lines 4-6. Sun’s particles do not contain a colloidal silica particle on
which to sulfonic acid is immobilized.”
(Yamato Declaration^ 7).
Appellants’ arguments and statements presented in the Declaration are
not persuasive of reversible error. According to the Specification:
The immobilization of an organic acid on the surface of
colloidal silica in the polishing composition is carried out by
chemically bonding a functional group of the organic acid to the
surface of colloidal silica. The immobilization of an organic acid on
colloidal silica cannot be achieved by only allowing colloidal silica
and an organic acid to merely coexist.
(Spec. 3).
The statements of the Declarant are based on portions of the Sun
disclosure appearing in columns 2 and 3 which have been identified as
optional or preferred embodiments. (Yamato Declaration ^ 5-6). The
Declarant has not explained how the reaction of the functional groups of the
polymer and silane are different from what has been described in the
Specification as the basis of creating immobilization. Sun also discloses the
reaction can take place by using covalent bond. (Sun cols. 3—4).
Furthermore, the Examiner relied on Siddiqui for describing the
immobilization of sulfonic acid to colloidal silica.
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Sun’s discussion of shielding is directed to a possible theory that
hypothesizes that the shielding is a result from the additional adhering of the
polymer to a portion of the metal oxide particles—that is additional to
adhering the polymer to the silane compound. (Col. 4,11. 8-15). Sun
discloses the shielding of the particles from agglomeration results in
colloidal stability. Appellants have not established that the additional
shielding properties renders the present invention patently distinct from the
disclosure of Sun.
Appellants argue Siddiqui’s teachings of adjusting the zeta potential
of the abrasive particles and the layer to be polished are not suggestive of the
opposite zeta potential, required by the claimed invention. (App. Br. 12-
13). Appellants’ argument is not persuasive. As set forth above, Sun in
addition to Siddiqui discloses the suitability of adjusting the zeta potential.
Appellants have failed to show that a person of ordinary skill in the art,
based on the teachings of the cited prior art, would not have sufficient skill
to adjust the zeta potential.
Appellants argue Cano-Serrano does not indicate that the sulfonic acid
modified silica disclosed therein can be used in a polishing composition to
achieve an increased rate of silicon nitride polishing. (App. Br. 8, 11).
The Examiner cited Cano-Serrano for disclosing recognized methods
of forming colloidal silica in which a sulfonic acid is immobilized is silica
wherein the colloidal silica is obtained by coupling a silane coupling agent
having a thiol group to silica followed by oxidizing the thiol group. (Final
Act. 4-5). Appellants have not directed us to any evidence showing that a
person of ordinary skill in the art, based on the teachings of the cited prior
art, would not have reasonably expected that colloidal silica in which a
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sulfonic acid is immobilized would be suitable in polishing compositions.
To the extent that the claimed polishing composition achieves an
“increased” rate of silicon nitride polishing, Appellants do not direct our
attention to adequate evidence of unexpected results. As explained by the
Examiner, the showings from the Specification in the Declaration are
insufficient to determine what is necessary to achieve the alleged unexpected
results. (Ans. 20). It is not readily discernible from the present Specification
the techniques which are utilized in forming the representative colloidal
silica or the organic acid utilized in the type “B” composition.
Appellants argue “[e]ach of Sun, Siddiqui, and Cano-Serrano disclose
different types of surface-modified silica.” Thus, Appellants conclude there
is no motivation to combine the references and there is no reasonable
expectation of success for combining the teachings of Kamimura, Sun,
Siddiqui, and Cano-Serrano due to their contrary teachings. (App. Br. 14).
We are not persuaded by Appellants’ arguments. The prior art cited
by the Examiner establishes it is recognized that colloidal silica in which a
sulfonic acid is immobilized is suitable for polishing compositions. The
cited prior art also establishes known techniques for forming colloidal silica
in which a sulfonic acid is immobilized. As discussed above, Sun discloses
that the colloidal silica can be formed by a variety of techniques, and
Appellants do not explain, in any detail, how those techniques would have
been expected to affect the ability to immobilize sulfonic acid thereon.
Consequently, on this record, we find a person of ordinary skill in the art
would have reasonably expected the recognized techniques for forming
colloidal silica in which a sulfonic acid is immobilized would have been
suitable for polishing compositions.
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Rejections Based on Sun, Siddiqui, and Cano-Serrano
Appellants rely on substantially the same arguments when addressing
the combination of Kamimura, Sun, Siddiqui and Cano-Serrano and the
combination of, Sun, Siddiqui and Cano-Serrano. (App. Br. 6-15).
As stated above, the arguments presented against the combination of
Kamimura, Sun, Siddiqui and Cano-Serrano were not found persuasive.
Accordingly, we sustain the rejection of the claims over Sun, Siddiqui and
Cano-Serrano for the reasons presented by the Examiner and given above.
For the reasons stated above, and the reasons presented by the
Examiner, we sustain the rejections of claims 1,2, and 6-8 under 35 U.S.C.
§ 103(a).
ORDER
The rejections of claims 1, 2, and 6-8 under 35 U.S.C. § 103(a) are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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