Ex Parte Nishioka et al

Board of Patent Appeals and Interferences

Jan 11, 2012

11794201 (B.P.A.I. Jan. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AYAKO NISHIOKA, YUJI ITOH, and
YOSHITOMO SHIMAZU
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Appeal 2010-010028
Application 11/794,201
Technology Center 1700
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Before TERRY J. OWENS, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-17 and 23. Claims 18-22 and 24-26, which are all of
the other pending claims, stand withdrawn from consideration by the
Examiner. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a chemical-mechanical polishing composition.
Claim 1 is illustrative:
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1. A chemical-mechanical polishing composition comprising a
dicarboxylic acid having 8 to 13 carbon atoms in an amount of 0.3 to 10
mass% based on the chemical-mechanical polishing composition, an
oxidizing agent, an abrasive and water.

The References
Geke 5,047,095 Sep. 10, 1991
Sakai 2003/0051413 A1 Mar. 20, 2003
The Rejection
Claims 1-17 and 23 stand rejected under 35 U.S.C. § 103 over Sakai
in view of Geke.
OPINION
We reverse the rejection. We need to address only the sole
independent claim, i.e., claim 1. That claim requires 0.3-10 mass% of a
dicarboxylic acid having 8 to 13 carbon atoms.
Sakai discloses a chemical-mechanical polishing composition “to be
used for polishing substrates for semiconductors, photomasks and various
memory hard disks, particularly for polishing for planarization of the surface
of device wafers in e.g. semiconductor industry” (¶ 0001). The composition
comprises “usually from 0.1 to 1 g/l, preferably from 0.02 to 0.1 g/l, based
on the entire composition” of an etching-suppressing agent which can be
sebacic acid or dodecanoic diacid (¶¶ 0073-74). Sakai states that “if the
amount of the etching-suppressing agent exceeds 1 g/l, it tends to suppress
the stock removal rate of the copper layer excessively, and its dissolution in
the polishing composition tends to be difficult” (¶ 0074).
Geke simultaneously cleans, descales, surface protects, trims, grinds,
smooths, burnishes and polishes metal parts by treating them with an
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aqueous solution containing phosphoric acids or phosphate salts, carboxylic
acids containing at least two carboxyl groups per molecule, and active
substances and/or auxiliaries typically present in cleaning, surface protecting
and mass finishing compositions (abstract; col. 3, ll. 3-15, 29-34, 44-47).
The aqueous solution preferably contains 0.1-1 wt% of the carboxylic acids
(col. 4, ll. 54-57).
The Examiner argues that “it would have been obvious to a person of
ordinary skill in the art to produce the product of Sakai including the
specifically claimed dicarboxylic acid amounts, in view of the teaching of
Geke. The suggestion or motivation for doing so would have been to select
an amount of the dicarboxylic acid to more effectively mass finish, clean,
and surface protect metal workpieces (Geke, column 4, lines 38-40)”
(Ans. 3-4). The Examiner also argues that “Sakai does allow for
dicarboxylic acid in an amount commensurate with the claimed range, as
that reference of Sakai does not state it is impossible to use the claimed
range” (Ans. 7).
Establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed.” KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner has not set forth an apparent reason for using as the
amount of etching-suppressing agent in Sakai’s composition for polishing
semiconductor devices (¶¶ 0073-74) the amount of dicarboxylic acid used by
Geke in a composition for cleaning, descaling, surface protecting, trimming,
grinding, smoothing, burnishing and polishing metal parts (col. 3, ll. 29-34,
43-46). The Examiner has not established that one of ordinary skill in the art
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would have considered the Examiner’s proposed reason for doing so, i.e., “to
more effectively mass finish, clean, and surface protect metal workpieces”
(Ans. 4), to be relevant to etching suppression in Sakai’s polishing
composition for semiconductor devices.
Accordingly, we do not sustain the Examiner’s rejection.
DECISION/ORDER
The rejection of claims 1-17 and 23 under 35 U.S.C. § 103 over Sakai
in view of Geke is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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