Ex Parte Ohta et al

Board of Patent Appeals and Interferences

Sep 28, 2010

10594636 (B.P.A.I. Sep. 28, 2010)

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.
10/594,636 09/28/2006 Yoshiharu Ohta 5120-007 3366
7590 09/28/2010
LOWE HAUPTMAN HAM & BERNER, LLP
Suite 310
1700 Diagonal Road
Alexandria, VA 22314
EXAMINER
MARCHESCHI, MICHAEL A
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
09/28/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte YOSHIHARU OHTA
and YASUYUKI ITAI
________________

Appeal 2009-010356
Application 10/594,636
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-010356
Application 10/594,636

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-18, all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
The Invention
Appellants’ invention is directed to a semiconductor polishing
composition that is an aqueous dispersion solution comprising fumed silica.
Claim 1 is illustrative:
1. A semiconductor polishing composition comprising:
fumed silica, a semiconductor polishing composition being an
aqueous dispersion solution of fumed silica,
wherein a content of the fumed silica having a particle diameter
of 100 nm or less is 15% by volume or more based on a total amount
of the fumed silica.
Claims 1-18 stand rejected under 35 U.S.C. § 102(a), or in the
alternative 35 U.S.C. § 103(a), as unpatentable over Chu, WO
2005/007770 A1, published January 27, 2005.
Claims 1-3, 5-8, 12, 13, 15, 16, and 18 stand rejected under 35
U.S.C. § 102(b), or in the alternative 35 U.S.C. § 103(a), as
unpatentable over Takashina, US 2004/0040217 A1, published March
4, 2004.
Claims 4, 9-11, 14, and 17 stand rejected under over 35 U.S.C.
§ 103(a) over Takashina.
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OPINION
The Examiner found that Chu teaches a semiconductor polishing
composition that comprises 20 weight percent fumed silica, having the
claimed particle distribution. In support of the rejection the Examiner cited
Chu’s abstract, paragraphs [0020], [0028], [0039], [0044], and claims. (Ans.
4). Thus, the Examiner finds that the claimed invention is anticipated
because Chu teaches a composition that comprises the claimed specific
distribution of fumed silica particles. (Id.). Alternatively, the Examiner
concludes that the claimed size distribution would have been obvious
because the ranges of Chu and the claimed invention overlap one another.
(Ans. 5).
The Examiner found that Takashina teaches a semiconductor
polishing composition that comprises 5-30 weight percent fumed silica,
having the claimed particle distribution. In support of the rejection the
Examiner cited Takashina’s abstract, paragraphs [0036], [0047], and claims.
(Ans. 5). The Examiner contends that Takashina teaches a maximum
particle size which reads on the claimed maximum frequency. Thus, the
Examiner finds that the claimed invention is anticipated because Takashina
teaches a composition that comprises the claimed specific distribution of
fumed silica particles. (Id.). Alternatively, the Examiner concludes that the
claimed size distribution would have been obvious because the ranges of
Takashina and the claimed invention overlap one another. (Ans. 6).
Appellants argue that neither Chu nor Takashina teach a composition
that includes fumed silica. Appellants maintain that both Chu and Takashina
fail to disclose or suggest a semiconductor polishing composition
comprising fumed silica having the particle distribution of independent
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claim 1. Appellants further contend that Chu’s disclosure regarding particle
size and distribution applies to colloidal silica and not fumed silica because
Chu discloses problems are known to be associated with fumed particles and
superior results are achieved with colloidal silica. (App. Br. 12). Appellants
specifically state:
For example, Chu recognizes problems associated with fumed
particles at paragraph [0009]. Further, at paragraph [0051] Chu
demonstrates the preferred use of colloidal silica when compared to
otherwise identical slurries containing precipitated silica, fumed silica
and colloidal alumina. At paragraph [0052] Chu summarizes the
results of Table 1 as clearly showing “that the polydisperse colloidal
silica provides the greatest removal rate while providing a polished
surface quality that is superior (smoother) than that achieved with the
other three abrasives” (see also Tables II and III).
(App. Br. 12).

Appellants argue that Takashina fails to disclose or suggest a
semiconductor polishing composition comprising fumed silica having the
particle distribution of independent claim 1. Appellants urge that
Takashina’s disclosure regarding particle size and distribution applies to
colloidal silica and not fumed silica because Takashina discloses problems
are known to be associated with fumed particles and superior results are
achieved with colloidal silica. (App. Br. 14). Appellants specifically state:
Takashina also discusses disadvantages in the use of fumed silica as a
polishing particle (paragraph [0005]). For example, Takashina
recognizes disadvantages to the use of fumed silica due to scratches
generated on a surface of a polished semiconductor device because of
aggregated particles. It is due to the non-aggregative properties of
colloidal silica that colloidal silica is used over fumed silica in
Takashina.
(App. Br. 14).
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35 U.S.C. § 102 Rejections2
The issue presented for review is: Did the Examiner err in finding that
both Chu and Takashina disclose a semiconductor polishing composition
comprising fumed silica having the particle distribution of independent
claim 1? We answer this question in the negative.
The proper test of whether a publication is a § 102 bar is “whether one
skilled in the art to which the invention pertains could take the description of
the invention in the printed publication and combine it with his own
knowledge of the particular art and from this combination be put in
possession of the invention on which a patent is sought.” In re Elsner, 381
F.3d 1125, 1128 (Fed. Cir. 2004) (citing In re LeGrice, 301 F.2d 929, 939
(CCPA 1962)). In particular, in view of the publication, one must be able to
make the claimed invention without undue experimentation. Elsner, 381
F.3d at 1128. Disclosures of “certain specific preferences” are relevant to an
anticipation inquiry. In re Petering, 301 F.2d 676, 681 (CCPA 1962); see
also In re Schaumann, 572 F.2d 312, 316-17 (CCPA 1978) (holding that
preferences can also be set forth by the claims).
Chu and Takashina both disclose that the described range is applicable
to abrasive particles. (Chu [0015], [0028], Takashina [0027], [0047]). As
set forth above, the Examiner has pointed to the specific teaching in both
Chu and Takashina that discloses fumed silica is suitable for the formation
of a semiconductor polishing composition having the particle distribution of
independent claim 1. (Chu [0020], Takashina [0036]). Consequently, a

2 Appellants have not presented separate arguments for all of the rejected
claims. We select claim 1 as representative of rejected claims. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
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person of ordinary skill in the art would have been in possession of the
claimed invention based individually on the teachings of Chu and Takashina.
Therefore we affirm the stated 35 U.S.C. § 102 rejections.

35 U.S.C. § 103 Rejections3
We do not find Appellants argument persuasive regarding the § 103
rejection of claims 1-18 over Chu and the § 103 rejection of claims 1-3, 5-8,
12, 13, 15, 16, and 18 over Takashina.
The issue presented for review is: Did the Examiner err in finding that
both Chu and Takashina disclose or suggest a semiconductor polishing
composition comprising fumed silica having the particle distribution of
independent claim 1? We answer this question in the negative.
Appellant's arguments fail to account for the full disclosure of Chu
and Takashina that discloses the particle distribution utilized applies to
abrasive particles including fumed silica. (Chu [0020], and Takashina
[0050]). A reference is available for all that it teaches to a person of
ordinary skill in the art. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“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”) (quoting In re Lamberti,
545 F.2d 747, 750 (CCPA 1976)). The Examiner has adequately identified
sufficient evidence and provided an adequate explanation as to why a person

3 Appellants have not presented separate arguments for all of the rejected
claims. Appellants have argued as a group claims 4, 9, 10 and 11. Any
claim not separately argued will stand or fall with independent claim 1. We
select claim 4 as representative of the separately argued claims. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
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of ordinary skill in the art would have made selections necessary based on
the teachings of Chu and Takashina to form a semiconductor polishing
composition comprising fumed silica (abrasive particle) having a particle
distribution that falls within the scope of independent claim 1.
We also affirm the Examiner's rejection of claims 4, 9, 10 and 11 as
obvious over Chu. The Examiner has identified specific portions in the
reference for selecting a maximum frequency within the claimed range.
(Ans. 8). Appellants' arguments do not adequately identify error in the
Examiner's findings. Consequently for the reasons set forth by the Examiner
we affirm the stated rejection.
However, we reverse the Examiner's rejection of claims 4, 9-11, 14,
and 17 as obvious over Takashina. Appellants argue Takashina merely
discloses the range of particle sizes and there is no range of particle size
having a maximum frequency as required by claim 4. (App. Br. 15). The
Examiner has failed to identify specific portions in the reference for
selecting a maximum frequency within the claimed range. (Ans. 9-10).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

DECISION

The Examiner’s 35 U.S.C. §§ 102 and 103 rejections of claims 1-18
over Chu and claims 1-3, 5-8, 12, 13, 15, 16, and 18 over Takashina are
affirmed.
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The Examiner's 35 U.S.C. § 103(a) rejections of claims 4, 9-11, 14,
and 17 over Takashina is reversed.

AFFIRMED

bar

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