Ex Parte Raman et al

Patent Trial and Appeal Board

Feb 26, 2019

13510830 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/510,830 05/18/2012 Vijay Immanuel Raman
22850 7590 02/28/2019
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.
398916US99PCT 8343
EXAMINER
REMA VEGE, CHRISTOPHER
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIJAY IMMANUEL RAMAN, SOPHIA EBERT,
MARIO BRANDS, YONGQING LAN, PHILIPP ZACHARIAS,
ILSHAT GUBAYDULLIN, and YUZHUO LI
Appeal2017-004410
Application 13/510,830
Technology Center 1700
Before N. WHITNEY WILSON, JEFFREY R. SNAY, and
SHELDON M. MCGEE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
January 4, 2016 decision finally rejecting claims 1, 5-8, 12, 13, and 15-23,
which are all of the claims pending in the application ("Final Act."). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ). An oral hearing
was held on January 29, 2019. A transcript of that hearing will be made part
of the record.
We reverse.
1 Appellants identify BASF SE as the real party in interest (Appeal Br. 1 ).
Appeal2017-004410
Application 13/510,830
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to a process for removing a bulk
material layer from a substrate and planarizing the exposed surface by
chemical mechanical polishing (CMP) (Abstract). The CMP agent must
meet one of the following criteria at the end of the CMP process, without the
addition of any supplementary material: (1) the same or essentially the same
static etch rate (SER) as at the start of the CMP process and a lower material
removal rate (MRR) than at the start of the CMP process; (2) a lower SER
than at the start and the same or essentially the same MRR as at the start, or
(3) a lower SER and a lower MER than at the start (Abstract). The CMP
agent must meet certain specific requirements, as set forth in the claims.
Claim 1 is representative of the claimed invention, and is reproduced below
from the Claims Appendix to the Appeal Brief (emphasis added):
1. A process, comprising:
(1) contacting a surface of a bulk material layer of a substrate
with an aqueous chemical mechanical polishing agent
exhibiting at the end of a chemical mechanical polishing,
without addition of any supplementary material:
- the same or essentially the same static etch rate SER as
at a start of the chemical mechanical polishing, and a lower
material removal rate MRR than at the start of the chemical
mechanical polishing;
- a lower static etch rate SER than at the start of the
chemical mechanical polishing, and the same or essentially the
same material removal rate MRR as at the start of the chemical
mechanical polishing; or
- a lower static etch rate SER and a lower material
removal rate MRR than at the start of the chemical mechanical
polishing;
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Appeal2017-004410
Application 13/510,830
(2) chemically and mechanically polishing the bulk material
layer with the aqueous chemical mechanical polishing agent
while:
- an initial SER of the chemical polishing agent remain
the same or essentially the same, and an initial MRR of the
chemical polishing agent decreases;
- the initial SER decreases, and the initial MRR remains
the same or essentially the same; or
- the initial SER and the initial MRR both decrease,
until a bulk material layer is removed and a substrate surface is
exposed; and
(3) continuing chemical mechanical polishing with the chemical
mechanical polishing agent until all material residuals are
removed from the exposed surface
wherein the aqueous chemical mechanical polishing
agent comprises
(al) 0.1 to 10% by weight of a polyether comprising a chain of
at least one copolymerized ethylene oxide and at least one
copolymerized alkylene oxide having at least 3 carbon atoms or
an alkoxylated polyethyleneimine, said chain having a
statistical, alternating, or block distribution, wherein (al) is a
component capable of exhibiting in an aqueous phase, without
addition of any supplementary material, a change of at least one
chemical property, physical property, or both and which has a
lower critical solution temperature LCST or an upper critical
solution temperature UCST wherein the change of the at least
one chemical and/ or physical property of component ( a 1)
occurs at the LCST or the UCST and wherein the LCST or the
UCST is in the range of from 30 to 90°C, and comprising a
residue of at least one starter molecule selected from the
group consisting of ethylenediamine and a polyethyleneimine;
and
(a2) at least one additional component selected from the group
consisting of a component initially present in the aqueous phase
and a component generated in the aqueous phase during the
process.
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Appeal2017-004410
Application 13/510,830
REJECTIONS
I. Claims 1, 5-8, 12, 13, 15, 16, and 19-23 are rejected under
35 U.S.C. § I03(a) as unpatentable over Oswald2 as evidenced by
Wohlfarth, 3 and further in view of Balasubramanian. 4
II. Claims 1, 5-8, 12, 13, and 15-23 are rejected under 35 U.S.C. §
I03(a) as being unpatentable over Li5 as evidenced by Wohlfarth, and
further in view of Balasubramanian.
DISCUSSION
The Examiner finds that Oswald discloses each element of claim 1,
except that it does not disclose "at least one starter molecule consisting of
ethylene diamine and polyethyleneimine" (Final Act. 10). The Examiner
determines that "one of ordinary skill in the art would use any conventional
copolymerization method to form the block copolymers of Oswald" (Final
Act. 10). The Examiner further finds that Balasubramanian discloses the
limitation missing from Oswald (Final Act. 10). The Examiner concludes
that:
It would have been prima facie obvious to one of ordinary skill
in the art at the time the invention was made to modify the
method of providing a block copolymer of polyethylene
oxide/polypropylene oxide, of Oswald, to include synthesis of
the block copolymer by base-catalyzed process, of
Balasubramanian, as a conventional method of forming a
purified polyethylene oxide/polypropylene oxide block
2 Oswald et al., US 7,696,095 B2, issued April 13, 2010.
3 Wohlfarth, "CRC Handbook of Liquid-Liquid Equilibrium Data of
Polymer Solution", CRC Press, Nov 19, 2007, pg. 56.
4 Balasubramanian et al., US 2005/0095221 Al, published May 5, 2005.
5 Li et al., US 2004/0092102 Al, published May 13, 2004.
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Appeal2017-004410
Application 13/510,830
copolymer, as taught by Balasubramanian [para. 0047], and as
is well known in the art.
(Final Act. 11 ).
Similarly, with regards to Rejection II, the Examiner finds that Li
discloses or suggests each of the elements of claim 1, except that Li also
fails to disclose "at least one starter molecule consisting of ethylene diamine
and polyethyleneimine" (Final Act. 16-18). The Examiner relies on
Balasubramanian in the same manner as with the obviousness rejection over
Oswald in view of Balasubramanian to conclude that the claims would have
been obvious (Final Act. 18-19).
Appellants argue that "none of the cited prior art of record discloses or
suggests an aqueous CMP polishing agent comprising a polyether
comprising a residue of at least one starter selected from the group
consisting of ethylene diamine and a polyethyleneimine," in particular
because Balasubramanian is non-analogous art (Appeal Br. 5 (emphasis
omitted)).
In order to be properly relied upon in an obviousness analysis, a prior
art reference must qualify as "analogous art," i.e., it must satisfy one of the
following conditions: (i) the reference must be from the same field of
endeavor as the claimed invention; or (ii) the reference must be reasonably
pertinent to the particular problem with which the inventor is involved.
Innovention Toys, LLC v. MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011 ). "A reference is reasonably pertinent if it, as a result of its subject
matter, 'logically would have commended itself to an inventor's attention in
considering his problem."' K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364,
1375 (Fed. Cir. 2012) (citing Innovention Toys, 637 F.3d at 1321).
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Appeal2017-004410
Application 13/510,830
In this instance, both Oswald and Li are directed to CMP compositions
(Oswald Abstract; Li Abstract), as are the claims on appeal.
Balasubramanian, by contrast, is directed to a food additive for farm animals
(Balasubramanian ,r 14). There is no dispute that Balasubramanian is not in
the same field of endeavor as the claimed invention. Therefore,
Balasubramanian is only properly used in an obviousness rejection if it is
reasonably pertinent to the particular problem with which the inventor is
involved. Innovation Toys, 637 F.3d at 1321. "A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's attention in
considering his problem."
The Examiner argues that the problem presented by both Oswald and Li
is a method for making the block copolymers for their respective CMP
compositions and that Balasubramanian provides such a method and,
therefore, is reasonably pertinent (Ans. 4).
We agree with Appellants that Balasubramanian is not analogous art
and, therefore, neither rejection can be sustained. The claims on appeal are
directed to CMP compositions, while Balasubramanian is directed to a food
additive for farm animals. Though the Examiner states the problem presented
by both Oswald and Li is a method for making polyoxyalkylene block
copolymers, the Examiner has not provided sufficient evidence to show that a
person of skill in the art would have considered anything disclosed in
Balasubramanian to be reasonably pertinent to the CMP problems faced by
the inventors of the application on appeal. The Examiner has not shown how
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Application 13/510,830
food additives are reasonably pertinent to CMP compositions, or to the
problems associated with CMP compositions that are used in CMP processes.
Accordingly, we conclude that Balasubramanian is not analogous art,
necessitating reversal of both rejections.
CONCLUSION
We REVERSE the rejection of claims 1, 5-8, 12-16, and 19-23 under
35 U.S.C. § 103(a) as unpatentable over Oswald as evidenced by Wohlfarth,
and further in view of Balasubramanian.
We REVERSE the rejection of claims 1, 5-8, 12, 13, and 15-23 under
35 U.S.C. § 103(a) as being unpatentable over Li as evidenced by
Wohlfarth, and further in view of Balasubramanian.
REVERSED
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