Ex Parte Yabe et al

Board of Patent Appeals and Interferences

Jun 19, 2012

12075745 (B.P.A.I. Jun. 19, 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.
12/075,745 03/13/2008 Atsushi Yabe 4700.P0355US 3433
23474 7590 06/20/2012
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
06/20/2012 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 ATSUSHI YABE, JUNNOSUKE SEKIGUCHI and TORU IMORI
____________

Appeal 2011-004087
Application 12/075,745
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004087
Application 12/075,745

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1
through 3 and 6. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to a method of forming a seed layer
for damascene copper wiring. App. Br. 2. Claim 1 is illustrative:
1. A method for forming a seed layer for damascene copper
wiring, comprising the step of forming a seed layer, during damascene
copper wiring formation, by using an electroless plating solution
comprising a water-soluble nitrogen-containing polymer and
glyoxylic acid as a reducing agent, wherein the weight-average
molecular weight (Mw) of the water-soluble nitrogen-containing
polymer is 1,000 to less than 100,000 and said seed layer has a
thickness of no greater than 15 nm.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Datta US 2002/0064592 A1 May 30, 2002
Miyata US 6,503,830 B2 January 7, 2003
Yabe US 2007/0042125 A1 February 22, 2007

Appellants request review of the following rejections (App. Br. 2) from the
Examiner’s final office action:
1. Claims 1-3 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Datta, Yabe and, optionally, Miyata.
2. Claims 1-3 and 6 stand provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-2 and 5 of
copending Application No. 10/576,231, Datta and, optionally, Miyata.
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Application 12/075,745

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OPINION1

Rejection under 35 U.S.C. § 103(a)
After thorough review of the respective positions provided by Appellants
and the Examiner, we AFFIRM for the reasons presented by the Examiner and add
the following for emphasis.
The Examiner found that Datta teaches a method of forming damascene
copper interconnects (wiring) on a substrate using an electroless plating solution
including glyoxylic acid as a reducing agent. Ans. 4. The Examiner also found
that Datta discloses depositing a seed layer around 10 nm thick. Id. at 6-7. The
Examiner recognized that Datta does not teach using an electroless plating solution
containing a water soluble nitrogen-containing polymer as required by the subject
matter of independent claim 1. Id. at 4-5. The Examiner found that Yabe discloses
the use of an electroless plating solution including a water soluble nitrogen
containing polymer with a molecular weight of 1800 in an electroless plating
process to provide a substrate with an adherent plating at lower temperatures. Ans.
6, Yabe ¶¶ [0015], [0033], Example 3. The Examiner concluded that it would have
been obvious to one skilled in the art to use the electroless plating solution
containing a water soluble nitrogen containing polymer in the process of Datta to
obtain the benefits disclosed by Yabe. Id.
Appellants argued that one skilled in the art would not use the water soluble
nitrogen-containing plating solution of Yabe in the electroless plating process of
Datta because the disclosure of Datta is directed to conventional plating bath

1 We will limit our discussion to independent claim 1 for the rejections presented
for our review. The non-argued claims will stand or fall together with independent
claim 1.
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Application 12/075,745

4
solutions which do not contain a water-soluble nitrogen containing polymer (App.
Br. 6) and that one skilled in the art would not expect the thickness/deposition time
relationship disclosed in Datta could be extended to the water-soluble nitrogen
containing polymer plating solution with a reasonable expectation of success
(Reply Br. 2).
In assessing whether a claim to a combination of prior art elements would
have been obvious, the question to be asked is whether the improvement of the
claim is more than the predictable use of prior art elements according to their
established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We are unpersuaded by Appellants’ arguments and agree with the
Examiner’s reasoning that one skilled in the art would have utilized a water-
soluble nitrogen-containing polymer plating solution in the process of Datta with
an expectation of providing a desirably adherent plating that is uniform at lower
temperatures, as taught by Yabe. Ans. 6, 16; Yabe, ¶ [0005]. The Examiner
correctly points out that, while Yabe prefers to use a water-soluble nitrogen-
containing polymer of at least 100,000 in the plating solution, Yabe does
contemplate using a water-soluble nitrogen-containing polymer in a plating
solution with a molecular weight of at least 1800 that yields an acceptable product
with no voids. Ans. 16; Yabe ¶¶ [0015], [0033], Example 3. Appellants have not
adequately explained why the combined disclosures of Data and Yabe would not
have led one skilled in the art to the subject matter of independent claim 1 given
the teachings of Yabe noted above.
Appellants also argued that there is no disclosure in Yabe of forming a seed
layer having a thickness of no more than 15 nm using Yabe’s disclosed water-
soluble nitrogen-containing polymer plating solution. App. Br. 5.
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Application 12/075,745

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We agree with the Examiner that Datta provides general guidance that the
thickness applied to a surface is proportional to the deposition time. Ans. 7, 17;
Datta ¶ [0038]. Moreover, we note that Yabe’s Examples support the Examiner’s
reasoning. Examples 1 and 2 of Yabe show a plating time of 30 minutes results in
a plating film 80 nm thick and Example 3 of Yabe shows that a plating time of 60
minutes results in a plating film of 150 nm. Thus, a person of ordinary skill in the
art would have been capable of determining the deposition time necessary to obtain
a desired film thickness as disclose by the prior art. See In re Sovish, 769 F.2d
738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in
the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Appellants additionally argued that the objective test data in the
Specification is sufficient to rebut any prima facie case of obviousness. App. Br.
7. Appellants further argued that a comparison of the Examples representative of
the claimed invention against the disclosed Comparative Example 1 (Spec. 14-15),
which carries out the formation of a damascene copper layer without a water-
soluble nitrogen-containing polymer in the plating solution, shows the unexpected
differences resulting from the claimed invention. Id.
We are unpersuaded by Appellants’ argument and agree with the Examiner’s
reasoning that the showing is insufficient to overcome a prima facie case of
obviousness. As correctly noted by the Examiner, Appellants’ disclosed objective
evidence is not commensurate with the scope of the claims and does not compare
the claimed invention against the closest prior art. Ans. 20. Regarding
Comparative Example 1, we agree with the Examiner that the Comparative
Example is not representative of the process disclosed by Datta because it does not
include the surfactant used by Datta. Appellants have not adequately explained
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Application 12/075,745

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how the failure to include a surfactant (required by Datta) would not impact the
plating process. Accordingly, we sustain the Examiner’s rejection of claims 1
through 3 and 6 under 35 U.S.C. § 103(a) as unpatentable over Datta and Yabe.
We also sustain the Examiner’s alternative rejection of claims 1 through 3 and 6
under 35 U.S.C. § 103(a) as unpatentable over Datta, Yabe and Miyata for the
reasons given above. We note that Appellants did not substantively argue the
reference to Miyata. App. Br. 6-7.

Obviousness-Type Double Patenting Rejection
The Examiner found that claims 1 and 5 of Application No. 10/576,231
teaches electroless plating of a substrate using an electroless plating solution
containing a water soluble nitrogen containing polymer. Ans. 10. The Examiner
found that Datta teaches an electroless plating method to form a damascene copper
wiring on a substrate. Id. The Examiner also relies on Datta and Miyata to meet
the claimed thickness of no more than 15 nm as discussed in the previous rejection.
Id. at 11-12. The Examiner concluded that it would have been obvious for one
skilled in the art to modify the method of Application No. 10/576,231 to use the
electroless plating solution with a water-soluble nitrogen- containing polymer to
form a damascene copper wiring formation process as described by Datta. Id. at
11. The Examiner also concluded that, while claims 1 and 5 of Application No.
10/576,231 have no range of molecular weight for the polymer, one of ordinary
skill in the art would optimize the precise polymer used and its corresponding
molecular weight. Id.
Appellants argued that the claims of co-pending Application No. 10/576,231
do not disclose the use of an electroless copper plating solution in a damascene
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copper wiring process or the claimed molecular weight range for the water-soluble
nitrogen-containing polymer. App. Br. 9. Appellants further argued that nothing
in the claims of the co-pending application suggest a seed layer of no more than 15
nm could be formed. Id.
We are unpersuaded by Appellants’ arguments and agree with the
Examiner’s reasoning that one skilled in the art would have modified the claimed
method of Application No. 10/576,231 to form a damascene copper wiring as
described by Datta using the electroless plating solution of Application No.
10/576,231 that includes a water-soluble nitrogen-containing polymer. Ans. 11.
Moreover, we are also unpersuaded by these arguments as they do not consider the
prior art as a whole. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (the test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art). Appellants’ arguments in the Appeal
Brief improperly focus on the teachings of the references individually instead of
addressing the Examiner’s stated case for obviousness. App. Br. 8-9. Appellants
have not adequately explained why the claimed method of Application No.
10/576,231 would have been unsuitable for forming a damascene copper wiring
formation process as described by Datta.
Appellants addressed Datta and the alleged objective evidence by relying on
the same arguments presented in the previous rejection under 35 U.S.C. § 103. Id.
Our discussion of these arguments above is equally applicable here.
Accordingly, we sustain the Examiner’s obviousness-type double patenting
rejection of claims 1 through 3 and 6 over claims 1, 2 and 5 of Application No.
10/576,231 and Datta. We again note that Appellants did not substantively argue
the reference to Miyata. Id. at 9. Therefore, we also sustain the Examiner’s
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alternative obviousness-type double patenting rejection of claims 1 through 3 and 6
over claims 1, 2 and 5 of Application No. 10/576,231, Datta and Miyata for the
reasons given above.
ORDER
The rejection of claims 1-3 and 6 under 35 U.S.C. § 103(a) over Datta, Yabe
and, optionally, Miyata is affirmed.
The provisional rejection of claims 1-3 and 6 on the ground of nonstatutory
obviousness-type double patenting over copending Application No. 10/576,231,
Datta and, optionally, Miyata 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.
AFFIRMED

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