Ex Parte Siddiqui et al

Board of Patent Appeals and Interferences

Jan 4, 2012

10683231 (B.P.A.I. Jan. 4, 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.
10/683,231 10/10/2003 Junaid Ahmed Siddiqui 06462 USA 3282
23543 7590 01/04/2012
AIR PRODUCTS AND CHEMICALS, INC.
PATENT DEPARTMENT
7201 HAMILTON BOULEVARD
ALLENTOWN, PA 181951501
EXAMINER
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
01/04/2012 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 JUNAID AHMED SIDDIQUI and BIN HU
____________________

Appeal 2009-013629
Application 10/683,231
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2009-013629
Application 10/683,231
2
STATEMENT OF THE CASE
Appellants filed a request for rehearing, received Nov. 16, 2011
(hereinafter “Request” or “Req.”), in response to our decision mailed Sep.
16, 2011 (hereinafter “Decision” or “Dec.”). In the Decision, we affirmed
the Examiner’s rejection of claims 1-14, 17-20, 24-26, 28-31, 37, and 38, as
unpatentable over Yano, Sherry, and Chopra, but denoted the affirmance as
a new ground of rejection.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A chemical-mechanical planarization composition
comprising:
a) an abrasive; and
b) a dielectric protector comprising polyvinylpyridine-N-
oxide polymer.

The Examiner relied upon the following prior art references:
Chopra
Yano
Sherry
US 6,039,633
US 6,375,545
US 6,716,805
Mar. 21, 2000
Apr. 23, 2002
Apr. 6, 2004

ISSUES RAISED ON REQUEST FOR REHEARING
1. Did the Decision include an improper interpretation of FF4?
2. Did the Decision improperly find that Sherry teaches a surfactant?
3. Did the Decision improperly conclude that wetting is a desired
characteristic for chemical-mechanical planarization or polishing
(CMP) compositions?

Appeal 2009-013629
Application 10/683,231
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ANALYSIS
1.
In the Decision, we made the following finding of fact:
FF4. Yano teaches washing to remove residual
surfactants. Col. 9, ll. 40-44.
Dec. 3.
Appellants allege that the “Board interprets this text as saying that no
matter the impurity, the impurity can be washed off.” Req. 3. We made no
such interpretation. As apparent in the Decision and the finding itself, we
found that Yano teaches that it is known to wash away surfactants.
Appellants next allege that the cited portion of Yano teaches washing
of surfactants in the context of the abrasive polymer manufacturing process,
not a post-CMP process. Req. 3. We agree with Appellants, but
nevertheless point out that, in this portion of Yano, Yano teaches washing to
remove residual surfactants.
To the extent we cited FF4 to teach washing at the end of a CMP
process (Dec. 4:13), rather than an abrasive polymer manufacturing process,
we acknowledge that a citation to column 16, lines 25-28 (“particle removal
can be accomplished by a common washing method”), column 19, lines 24-
27 (“the thickness of the tungsten film of the polished, washed and dried
substrate was measured…”), or to similar locations within Yano discussing
washing after polishing, would have been more appropriate to illustrate that
it is known by one of ordinary skill in the art to wash away any residual
slurry (necessarily including any surfactants contained therein) after the
substrate is polished, and we clarify FF4 of the Decision to further include
these citations.

Appeal 2009-013629
Application 10/683,231
4
2.
In the Decision, we made the following statement:
One of ordinary skill in the art would understand
that surfactants provide wetting and that wetting is
a desirable property for surfactants in CMP
compositions. FF7.
Dec. 3.
Appellants allege that this sentence may contain an error because
Appellants sell many CMP slurries that do not contain surfactants. Req. 4.
However, the above statement does not state that all CMP slurries (or,
formulations) include surfactants, but rather that wetting is a property that is
desirable in CMP formulations.
Appellants next allege that “Sherry teaches PVNO is a hydrophilic
polymer, and does not teach that PVNO is a surfactant.” Req. 5. However,
Sherry teaches that PVNO “sheets” water and improves wetting. See, e.g.,
Sherry, col. 2, ll. 49-53 (“improved surface wetting”), col. 6, ll. 35-41
(“allowing the water to ‘sheet’ more readily”). A wetting agent is also
known as a surfactant, and a surfactant, in turn, is known as a substance
useful for wetting.1 Accordingly, while Sherry does not say, “PVNO is a
surfactant,” Sherry teaches a surfactant called PVNO.
Appellants next point out that PVNO is “substantive, that is, does not
wash off.” Req. 8. This is incorrect. Sherry instead specifically teaches that
the product works better when it is not washed off. The “persistence” of the
PVNO described in Sherry is because it is left behind to dry (i.e., persist) on

1 See, e.g., “surface-active agent” - “a substance useful for its cleansing,
wetting, dispersing, or similar powers”; “wetting agent” - “a surface-active
agent having higher wetting power than detergent or other powers.”
Webster’s Third New International Dictionary (1993) (available at
lionreference.chadwyck.com) (last visited Dec. 13, 2011).
Appeal 2009-013629
Application 10/683,231
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the substrate, not because it is irremovable from the substrate. See col. 2, ll.
54-66 (“the compositions herein are sprayed directly onto tile … and then
allowed to dry,” “the product works better, when it is not rinsed or wiped
off”); col. 3, ll. 2-3 (“[n]o build-up occurs because the preferred polymers
are water soluble”).
Furthermore, Sherry is merely a reference to provide evidence that
PVNO is a known material that is a surfactant. Sherry was not used in the
Decision to supply a reason to substitute PVNO as the particular surfactant
for the CMP slurry of Yano. See Dec. 4 (“it would have been obvious … to
select PVNO … as a simple substitution”). Additionally, considering Sherry
as a whole, we find no reason that Sherry’s teaching of “persistence” of
PVNO in the particular context in Sherry would cast doubt on PVNO as a
substitutable surfactant for use in Yano’s slurry. As we found above, Sherry
teaches that PVNO washes away, does not accumulate, and only persists
when deliberately left to dry on the substrate. We find no reason why one of
ordinary skill in the art would not expect PVNO to be washed away like any
other typical component of a CMP slurry when the process is finished.
3.
Appellants state that the third issue is “why is wetting a desired
characteristic?” Req. 8. Appellants then address the Examiner’s reasoning
on page 4 of the Examiner’s Answer, stating that “the exact opposite [from
what the Examiner states] occurs when PVNO is added to a CMP slurry.”
Req. 8-9. In the Decision, however, we affirmed the Examiner’s rejection
using a different rationale than that stated on page 4 of the Examiner’s
Answer. Dec. 4. Our conclusion in the Decision was not premised on why
wetting is desired or why surfactants are used. Id. PVNO is, based on the
evidence before us, merely an alternative surfactant to be used as a
Appeal 2009-013629
Application 10/683,231
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surfactant in a CMP slurry and subsequently washed off. Appellants do not
point us to any alleged error in this reasoning.
CONCLUSION
The arguments in Appellants’ Request have not convinced us that we
erred in the Decision.
DECISION
Appellants’ Request is granted to the extent that we have reconsidered
our Decision in light of the arguments in Appellants’ Request and have
modified FF4 as indicated supra. Appellants’ Request is denied to the extent
that we do not modify the outcome of the Decision. No time period for
taking any subsequent action in connection with this appeal may be extended
under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED

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