Ex Parte Ramos et al

Board of Patent Appeals and Interferences

May 21, 2012

10940686 (B.P.A.I. May. 21, 2012)

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.
10/940,686 09/15/2004 Teresa A. Ramos H0007488 (4780) 7147
7590 05/22/2012
Richard S. Roberts
P.O. Box 484
Princeton, NJ 08542-0484
EXAMINER
ALANKO, ANITA KAREN
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
05/22/2012 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 TERESA A. RAMOS, ROBERT R. ROTH, ANIL S. BHANAP,
PAUL G. APEN, DENIS H. ENDISCH, BRIAN J. DANIELS, ANANTH
NAMAN, NANCY IWAMOTO, and ROGER Y. LEUNG
____________

Appeal 2010-008055
Application 10/940,686
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and LINDA M.
GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 4, 5, and 7-18. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2010-008055
Application 10/940,686

2
Appellants’ claimed invention is directed to a composition that is said
to increase the hydrophobicity and mechanical strength of an organosilicate
glass dielectric film when applied thereto. The composition comprises a
specified activating agent and a component capable of alkylating or arylating
silanol moieties of such a film via silylation.
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A toughening agent composition for increasing the hydrophobicity
and/or increasing the mechanical strength properties of an organosilicate
glass dielectric film when applied to said film, which comprises a
component capable of alkylating or arylating silanol moieties of the
organosilicate glass dielectric film via silylation, and an activating agent
comprising an amine, an onium compound or an alkali metal hydroxide.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Hacker 2004/0013858 A1 Jan. 22, 2004
Claims 1, 2, 4, 5, 7-9, and 13-171 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by Hacker. Claims 10-12, and 18 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Hacker.
We reverse the stated rejections. Our reasoning follows.
Concerning the anticipation rejection, the Examiner has reasonably
determined that Hacker discloses applying a surface modification
composition to a silica dielectric film, which surface modification agent
includes a component that corresponds to the component of Appellants’
composition that Appellants indicate as being capable of alkylating or

1 Appellants erroneously include claim 18 in the first stated rejection (App.
Br. 9). See the Examiner’s Answer (Ans. 2) and the Final Office action
(FOA 3).
Appeal 2010-008055
Application 10/940,686

3
arylating silanol moieties of an organosilicate glass dielectric film via
silylation (Ans. 3). However, the Examiner has not established that Hacker
describes, implicitly or explicitly, that the surface modification composition
includes an amine activating agent in addition to a component capable of
alkylating or arylating silanol moieties of a film, as is required by
independent claim 1, and consequently all of the rejected appealed claims.
In this regard and as argued by Appellants (App. Br. 10-12; Reply Br.
1-3), the Examiner has resorted to speculation in asserting that a previously
applied etchant reagent, including a disclosed amine etching reagent
alternative of Hacker that is alleged to correspond to an activating agent
within the scope of Appellants’ claims, would have remained on the film
and, consequently, would have become combined with and become part of
the subsequently applied surface modification composition of Hacker, when
a wet cleaning step is not performed prior to the surface modification agent
addition of Hacker (Ans. 3 and 4; Hacker, paras. 0022-0026, 0033).
Moreover, the Examiner has engaged in too much selection from the
several disclosures of Hacker in combination with the aforementioned
supposition regarding the activating agent to establish that Hacker provides a
sufficiently specific disclosure of a composition that anticipates the claimed
composition. In particular, the evidence of record, relied upon by the
Examiner, does not establish that Hacker would have necessarily formed the
claimed two-component composition during the application of Hacker’s
surface modification composition to a silica dielectric film.
The above-discussed shortcomings of the Examiner’s anticipation
position are not remedied in the obviousness rejection of certain dependent
Appeal 2010-008055
Application 10/940,686

4
claims over Hacker wherein the obviousness discussion relates to the
additional limitations of the separately rejected dependent claims.
Accordingly, we shall not sustain either of the stated rejections.

ORDER
The Examiner’s decision to reject claims the appealed claims is
reversed.

REVERSED

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