Ex Parte Noller et al

Patent Trial and Appeal Board

Jul 11, 2018

13821759 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/821,759 04/25/2013 Bastian N oiler
22850 7590 07/13/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
413134US99PCT 6755
EXAMINER
PHAM, THOMAS T
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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):
patentdocket@oblon.com
oblonpat@oblon.com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BASTIAN NOLLER, DIANA FRANZ, YUZHUO LI,
SHEIK ANSAR USMAN IBRAHIM,
HARVEY WAYNE PINDER, and
SHYAMSUNDARVENKATARAMAN
Appeal2017-005872
Application 13/821,759
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
SHELDON M. McGEE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-005872
Application 13/821,759
Appellants appeal under 35 U.S.C. § 134 of the final rejection of
claims 19-28 and 36. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b ).
We REVERSE.
Appellants' invention is directed to aqueous polishing compositions,
in particular chemical mechanical polishing (CMP) compositions, containing
N-substituted diazenium dioxides and/or N'-hydroxy-diazenium oxide salts.
(Spec. 1:6-8; claim 19).
Claim 19 is illustrative:
19. An aqueous polishing composition, comprising:
(A) at least one water-soluble or water-dispersible
compound selected from the group consisting of an N-
substituted diazenium dioxide and an N'-hydroxy-diazenium
oxide salt;
(B) at least one type of abrasive particles;
( C) a charge reversal agent; and
(D) at least one organic polyol having at least 3 hydroxyl
groups that are not dissociable in aqueous medium, an oligomer
formed from at least one monomer having at least 3 hydroxide
groups that are not dissociable in aqueous medium, a polymer
formed from at least one monomer having at least 3 hydroxide
groups that are not dissociable in aqueous medium, or a
combination thereof,
wherein the aqueous polishing composition has a pH of 3
to less than 7, and wherein the composition provides a silicon
oxide over silicon nitride selectivity of at least 124 when
applied to a silicon wafer containing oxide and silicon nitride
layers.
App. Br. 16 (Claims Appendix).
Appellants appeal the following rejections:
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Appeal2017-005872
Application 13/821,759
1. Claims 19-28 and 36 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 19-23, 25-28 and 36 are rejected under 35 U.S.C. § 103 as
unpatentable over Perry (US 2010/0255121 Al, published October 7,
2010).
3. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over Perry
in view of Beck (US 2008/0196742 Al, published August 21, 2008).
FINDINGS OF FACT & ANALYSIS
Rejection (1 ): Written Description
The Examiner finds that the claim 19 limitations "a pH of 3 to less
than 7" and "a silicon oxide over silicon nitride selectivity of at least 124"
lack written descriptive support (Final Act. 2--4 ). The Examiner finds that
the pH range recited in the claims includes a pH of 3 and a pH of less than 7
(Final Act. 3). The Examiner finds that "less than 7" includes a pH value
less than 3 and may even include negative pH values (Final Act. 3). The
Examiner finds that the pH range of less than 7 includes values less than a
pH of 3, which lack written descriptive support (Final Act. 3).
Regarding the limitation that the silicon dioxide over silicon nitride
selectivity is at least 124, the Examiner finds that the Specification
disclosure of selectivity at 124 and 352 are insufficient to support the broad
scope of "at least 124." (Final Act. 4).
Appellants argue that the pH range recited in claim 19 should be read
as including a pH of 3 at the lowest and a pH of less than 7 at the highest
(App. Br. 6). Appellants argue that the pH range does not include pH values
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Application 13/821,759
less than 3 as the Examiner finds. Id. Appellants argue that page 26, lines
20-22 of the Specification provides written descriptive support sufficient to
show possession of the pH range of 3 to less than 7 (App. Br. 7). Appellants
contend that the disclosure in Table 2 of the Specification of silicon oxide
over silicon nitride selectivities of 124 and 352 are sufficient to show
possession of selectivities of "at least 124" (App. Br. 7-8).
The preponderance of the evidence favors Appellants' argument that
the Specification provides written descriptive support for the claimed subject
matter. It is well settled that while the written description does not have to
describe the invention later claimed in haec verba, such written description
"must ... convey with reasonable clarity to those skilled in the art that ...
[appellant] was in possession of the invention now claimed." Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991); see also Purdue
Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000); In re
Wertheim, 541 F.2d 257, 262-65 (CCPA 1976). In the present appeal, we
construe the pH claim limitation "a pH of 3 to less than 7" as included in a
range with a pH of 3 as the minimum and a pH of less than 7 as the
maximum. Our construction is supported by Appellants' disclosure on page
26, lines 20--22 of the Specification as the pH may be set between 3 and 10,
with other more narrow preferences within that range. Therefore, we find
the Examiner's construction of the pH claim limitation as including pH
values below 3 is unreasonable when properly read in light of the
Specification. In light of our claim construction, we find that the
Specification at page 26, lines 20-22 provides written descriptive support for
the claimed pH range from 3 to less than 7.
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Appeal2017-005872
Application 13/821,759
Regarding the silicon oxide over silicon nitride selectivity, the
Examiner's findings are directed to an insufficient disclosure to support the
scope of the claims (Ans. 6). Although Appellants' evidence is limited to
two data points, the evidence shows that Appellants were in possession of
silicon oxide over silicon nitride selectivities that include 124 and values
above 124 (i.e., 352). In others words, Appellants' evidence demonstrates
that they had possession of silicon oxide over silicon nitride selectivities
greater than 124. It does not matter that the Appellants did not provide
verbatim disclosure of the selectivity range.
On this record, we reverse the 35 USC§ 112, first paragraph,
rejection for lack of written description.
Rejections (2) and (3)
Appellants only argue claim 19 (App. Br. 8-10). Accordingly, the
claims under rejections (2) and (3) will stand or fall with our analysis of
claim 19.
Appellants argue that Perry's pH ranges are outside the scope of the
claimed range (App. Br. 9). Appellants argue that the Examiner's rejection
is based upon hindsight (App. Br. 9). Appellants contend that Perry teaches
a pH of2 or less, which is nowhere near a pH of 3 (App. Br. 9-10).
The Examiner finds that claim 19 includes pH values below 3, such as
Perry's pH of 2 or less (Ans. 7). As noted above, our claim construction
differs from the Examiner's claim construction. We find that claim 19
requires a pH range between 3 and less than 7. Under our claim
construction, Perry's paragraph 90 disclosure of a pH of 2 or less would be
excluded. Perry's teachings in paragraphs 183, 187 all indicate a preference
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Application 13/821,759
for a basic pH outside the claimed range (i.e., greater than 7). Perry's
teachings of a pH adjusting agent to maintain a desired pH must be read in
context of the rest of the publication that teaches a pH of 2 or less or 12 to
15; all pH values outside the claimed range. Perry does not teach to
optimize or set the pH to value within the claimed range. The Examiner
seems to concede as much but the Examiner erroneously finds that the claim
includes pH values less than 3 (Ans. 7).
The Examiner has not shown where Perry teaches or would have
suggested all the limitations of claim 19. On this record, we reverse the
Examiner's § 103 rejections over Perry and over Perry in view of Beck.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
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