Ex Parte Vacassy et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11491612 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/491,612 07/24/2006 Robert Vacassy 100278 4876
29050 7590 01/17/2012
STEVEN WESEMAN
ASSOCIATE GENERAL COUNSEL, I.P.
CABOT MICROELECTRONICS CORPORATION
870 NORTH COMMONS DRIVE
AURORA, IL 60504
EXAMINER
CHRISTIE, ROSS J
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
01/17/2012 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 ROBERT VACASSY,
BENJAMIN BAYER, ZHAN CHEN, and
JEFFREY P. CHAMBERLAIN
__________

Appeal 2010-009144
Application 11/491,612
Technology Center 1700
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009144
Application 11/491,612

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is said to be directed to a chemical-mechanical
polishing composition and method for its use (Spec. para. [0001]).
Claims 1is illustrative:
1. A chemical-mechanical polishing composition
consisting essentially of:
(a) silica having an average primary particle size of about
10 nm to about 40 nm,
(b) an oxidizing agent selected from the group consisting
of hydrogen peroxide, urea hydrogen peroxide, percarbonate
salts, benzoyl peroxide, peracetic acid, sodium peroxide, di-
tert-butyl peroxide, monopersulfate salts, dipersulfate salts,
nitrate salts, iron (III) compounds, and combinations thereof,
(c) a quaternary ammonium compound comprising a
cation with the structure R1R2R3R4N+ wherein R1, R2, R3, and
R4 are independently selected from the group consisting of C2-
C6 alkyls and C7-C12 arylalkyls, and
(d) water,
wherein the polishing composition has a pH of about 1 to
about 5.
Appellants appeal the following rejection:
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Grumbine (US 6,136,711 issued Oct. 24, 2002) in view of
Yoshida (US 2005/0274080 A1 published Dec. 15, 2005).
Appeal 2010-009144
Application 11/491,612

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Appellants argue the claims as a group, of which we select claim 1 as
representative (App. Br. 3-7).

ISSUES
1. Did the Examiner reversibly err concluding that one of ordinary skill
in the art would have employed Yoshida’s condensed-silica having a
particle size from 1 to 40 nm in Grumbine’s chemical-mechanical
polishing composition? We decide this issue in the negative.
2. Is Appellants’ evidence of nonobviousness with regard to the claimed
silica particle size sufficient to outweigh the Examiner’s evidence of
obviousness? We deicide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
Issue (1)
Appellants argue that there is no guidance or direction in Grumbine or
Yoshida to combine the teachings of these references in the manner required
by claim 1 absent impermissible hindsight (App. Br. 6). Appellants contend
that, contrary to the Examiner (Ans. 4), Yoshida does not teach the average
particle size of 1 to 40 nm would have increased the polishing rate (App. Br.
6). Appellants argue that Yoshida teaches that the reduction in nano-
scratches is achieved by using a colloidal silica particle with a size from 1 to
40 nm and Yoshida’s disclosed density of silanol groups on the particles (id.;
Reply Br. 4-5).
We have considered the Examiner’s stated case and all of Appellants’
arguments and find ourselves in agreement with the Examiner’s position.
Specifically, the Examiner’s obviousness conclusion is based on the
Appeal 2010-009144
Application 11/491,612

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teachings of Grumbine and Yoshida as a whole not impermissible hindsight
(Ans. 3-7).
Grumbine teaches a chemical-mechanical polishing composition that
includes silica particles having a particle size of “less than 400 nm”
(Grumbine, col. 8, ll. 17-21, Ans. 4). Grumbine teaches that the silica
particles may be made by any technique known to one skilled in the art, such
as a sol-gel process (Grumbine, col. 7, ll. 23-27).
Yoshida teaches forming colloidal silica particles by reacting silicate
in a sol or gel state (Yoshida, para. [0019]-[0020]). The resulting colloidal
silica particles have a silanol concentration of 0.06 to 0.3 mmol/g (id. at
para. [0026]). Yoshida further teaches that the size of the silica particles
should be between 1 to 40 nm (id. at para. [0022], Ans. 4). Yoshida further
teaches that the polishing rate and nano-scratch formation may be controlled
by selecting a suitable particle size within the range of from 1to 40 nm (id.).
Specifically and contrary to Appellants’ argument, Yoshida teaches selecting
a larger particle size within Yoshida’s range to achieve a faster polishing
rate while also reducing nano-scratch formation (Yoshida, para. [0022]).
Based on these teachings, we agree with the Examiner that the
teachings of Yoshida and Grumbine as a whole would have suggested the
claimed invention. One of ordinary skill in the art would have employed
Yoshida’s silica particles having a particle size from 1 to 40 nm and the
silanol content formed by a sol-gel process as the silica particles in
Grumbine’s composition to control the polishing rate and nano-scratch
formation (i.e., surface roughness). As Appellants acknowledge, Yoshida
teaches that reduced nano-scratch is achieved by using colloidal silica
particles having a particle size from 1 to 40 nm and a silanol content from
Appeal 2010-009144
Application 11/491,612

5
0.06 to 0.3 mmol/g in the chemical-mechanical polishing composition (id. at
para. [0017]; App. Br. 6; Reply Br. 4-5).
We now weigh Appellants’ evidence of nonobviousness (e.g.,
unexpected results) with the Examiner’s evidence of obviousness.
Issue (2)
Appellants contend that the evidence provided in their Specification
and the Vacassy Declaration dated November 20, 2008, establishes
unexpectedly good oxide removal rates for particle sizes within the claimed
range from about 10 nm to about 40 nm (App. Br. 6-7). Appellants contend
that their evidence shows a trend in the data that would allow an ordinarily
skilled artisan to reasonably recognize that the Appellants have afforded
proof for the claimed range for the primary particle size (id. at 7).
Appellants’ evidence, however, fails to address what is the expected
result of the using a particle size within the range disclosed by the prior art
(i.e., Yoshida). Yoshida teaches that the expected result of using a larger
particle size within Yoshida’s range of 1 to 40 nm is an increase in the
polishing rate (Yoshida, para [0022]). In other words, Appellants’ evidence
merely depicts the expected result of having an increase in polishing rate for
larger particles within the claimed range.
Notably, the Vacassy Declaration does not allege that the results are
“unexpected”, but rather states that the results achieved were “comparatively
high” (Vacassy Dec. 2). The only allegation of unexpected results is
presented as part of the attorney argument in the principal Brief. Appellants
bear the burden of showing that the results are unexpected. In re Nolan, 553
F.2d 1261, 1267 (CCPA 1977).
Appeal 2010-009144
Application 11/491,612

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Appellants’ evidence, as found by the Examiner, is not commensurate
in scope with the claimed range of 10 to 40 nm or the pH range, among other
variables (Non Final Office Action dated Mar. 25, 2009). Specifically, the
evidence only shows data for particle sizes from 21 to 30 nm, which is not
commensurate in scope with the claimed particle size range.
Therefore, on this record, we determine that the evidence of
obviousness outweighs Appellants’ evidence of nonobviousness. We affirm
the Examiner’s § 103 rejection over Grumbine in view of Yoshida.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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