Jia-Ni Chu et al.

Patent Trials and Appeals Board

Aug 31, 2021

2020005137 (P.T.A.B. Aug. 31, 2021)

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.
14/067,605 10/30/2013 Jia-Ni Chu W9643-04 5094
30633 7590 08/31/2021
W.R. GRACE & CO.-CONN.
7500 GRACE DRIVE
COLUMBIA, MD 21044
EXAMINER
DAHIMENE, MAHMOUD
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
08/31/2021 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JIA-NI CHU and JAMES NEIL PRYOR
Appeal 2020-005137
Application 14/067,605
Technology Center 1700
Before LINDA M. GAUDETTE, DEBRA L. DENNETT, and RACHEL H.
TOWNSEND, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s decision rejecting claims 1–7, 11–14, 23, 24, 26, 27, 31, 32, 34,
and 35. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The following documents are of record: Specification filed October 30,
2013 (“Spec.”); Final Rejection dated June 6, 2019; Appeal Brief filed
March 3, 2020 (“Appeal Br.”); Examiner’s Answer dated April 30, 2020;
Reply Brief filed June 29, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as W. R. Grace & Co.-CONN.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The “invention relates to abrasive particles and slurries containing the
particles,” in particular for use in chemical mechanical planarization (CMP).
Spec. ¶ 1. Claims 1 and 11, reproduced below, are illustrative of the claimed
subject matter:
1. An abrasive composition for polishing substrates
comprising:
a plurality of colloidal silica abrasive particles
having a polydisperse particle size distribution with a median
particle size, by volume, being about 20 nanometers to about
100 nanometers, and a span value, by volume, being greater
than or equal to about 15 nanometers, wherein a fraction of said
colloidal silica abrasive particles having a particle size greater
than about 100 nanometers is less than or equal to about 20%
by volume of the colloidal silica abrasive particles;
water; and
ammonium hydroxide;
with the proviso that said abrasive composition does not
contain any fumed silica particles.
Appeal Br. 34 (Claims App.).
11. An abrasive slurry composition for polishing substrates
consisting essentially of:
a plurality of colloidal silica abrasive particles
having a polydisperse particle size distribution with a median
particle size, by volume, being about 20 nanometers to about
100 nanometers, and a span value, by volume, being greater
than or equal to 15 nanometers, wherein a fraction of said
colloidal silica abrasive particles having a particle size greater
than about 100 nanometers is less than or equal to about 20%
by volume of the colloidal silica abrasive particles;
a liquid carrier consisting essentially of water; and
a particle stabilizer consisting essentially of an
alkaline compound.
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Id. at 36.
REFERENCES
Name Reference Date
Fournier US 6,200,899 B1 Mar. 12, 2001
Fang US 6,527,817 B1 Mar. 4, 2003
Fruge US 2003/0198759 A1 Oct. 23, 2003
Banerjee US 2006/0046490 A1 Mar. 2, 2006

REJECTIONS
1. Claims 1–7, 23, and 24 are rejected under 35 U.S.C. § 103 as
unpatentable over Banerjee in view of Fruge. Final Act. 2–7.
2. Claims 26, 32, and 35 are rejected under 35 U.S.C. § 103 as
unpatentable over Banerjee in view of Fruge and Fournier. Final Act. 10–12.
3. Claims 11–14 are rejected under 35 U.S.C. § 103 as
unpatentable over Fang. Final Act. 7–10.
4. Claims 27, 31, 34, and 35 are rejected under 35 U.S.C. § 103 as
unpatentable over Fang in view of Fournier. Final Act. 10–12.
5. Claims 1, 11, and 35 are rejected under 35 U.S.C. § 103 as
unpatentable over Fournier in view of Fruge.
6. Claims 1, 11, and 35 are rejected under 35 U.S.C. § 103 as
unpatentable over Fournier in view of Fang.
OPINION
Independent claims 1, 11, and 35 recite compositions “comprising”
(claim 1), “consisting essentially of” (claim 11), and “consisting of” (claim
35) “a plurality of colloidal silica abrasive particles” having the following
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properties: (1) a polydisperse particle size distribution with a median particle
size, by volume, of about 20 to about 100 nanometers; (2) a span value, by
volume, greater than or equal to about 15 nanometers; and (3) 20% or less
by volume with a particle size greater than about 100 nanometers. See
Appeal Br. (Claims App.) 32, 36, 39.3 Claim 1 further includes a negative
claim limitation: “said abrasive composition does not contain any fumed
silica particles.” Id. at 32. In addition to “a plurality of colloidal silica
abrasive particles,” independent claims 1 and 35 recite that the abrasive
composition “compris[es]” (claim 1) and “consist[s] of” (claim 35) water
and ammonium hydroxide, see Appeal Br. (Claims App.) 32, 39, and
independent claim 11 recites that the abrasive slurry composition “consist[s]
essentially of . . . a liquid carrier consisting essentially of water; and a
particle stabilizer consisting essentially of an alkaline compound,” id. at 36.
Rejections over Banerjee in view of Fruge
The Examiner rejected claims 1–7, 23, and 24 as unpatentable over
Banerjee in view of Fruge, and claims 26, 32, and 35 as unpatentable over

3 The Specification explicitly defines “‘[p]oly-dispersed’ . . . as meaning a
dispersion of particles having a particle size distribution in which the median
particle size is in the range of 15–100 nm and which has a relatively large
distribution.” Spec. ¶ 26. The Specification explicitly defines “‘[s]pan’ . . .
as meaning a measure of the breadth of particle size distribution.” Id. “The
span (by volume) range is measured by subtracting the d10 particle size (i.e.,
the size below which are 10% by volume of the particles) from the d90
particle size (i.e., the size below which are 90% by volume of the particles)
. . . .” Id. As to property (3), the Specification explains that “particles that are
relatively large (e.g., above 100 nanometers) . . . contribute to scratching and
the appearance of defects on the surface of the substrate subsequent to the
CMP process.” Id.
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Banerjee in view of Fruge and Fournier. See above-listed grounds 1 and 2.
The Appellant argues in support of patentability of claims 1, 26, 32, and 35.
See generally Appeal Br. 10–16, 21–24, 26, 27. We address the arguments
as to each of these claims below.
1. Claim 1
The Appellant argues that Banerjee, directed to specific chemical
mechanical polishing (CMP) abrasive compositions, would not have
“guide[d] one skilled in the art to seek out the teaching of Fruge directed to
inkjet recording sheets. There simply is no connection between the non-
analogous teachings of Banerjee and Fruge other than both references
disclose the use of colloidal silica as a composition component.” Appeal Br.
12. The Appellant further argues that even if the ordinary artisan “would
have somehow been guided to the teaching of Fruge,” id., they would have
had neither a reason to modify nor a reasonable expectation of success in
modifying Banerjee’s composition “to utilize a polydispersed colloidal
silica, similar to Fruge’s polydispersed cationic colloidal silica,” id. at 13.
The Appellant’s arguments are not persuasive because the Examiner
did not rely on Fruge for a reason to modify Banerjee. See Final Act. 5.4

4 We additionally note that the Appellant misapprehends the law on
analogous art. The question is not whether one prior art reference is
analogous to another prior art reference; it is whether each prior art reference
is within the realm of prior art that one of ordinary skill in the field of the
inventor should be charged with knowing. See In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011) (“A reference qualifies as prior art for an obviousness
determination under § 103 only when it is analogous to the claimed
invention.” (citations omitted)). Further, analogous art is not limited to art
from the inventor’s field of endeavor, but includes art that is outside the
inventor’s field if “reasonably pertinent to the particular problem with which
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Rather, the Examiner relied on Fruge to establish that “colloidal silica[s] . . .
having a particle size distribution in which the median particle size is in the
range of 1–300 nanometers and . . . 80% of the particles span a size range of
at least 30 nanometers and can span up to 70 nanometers [we]re
conventional . . . at the time the [application] was filed.” Id.; see also Ans.
14 (“The reference of Fruge is only relied on to teach that the very definition
of a polydisperse colloidal silica, at least partially, encompasses the median
particle size and the span value claimed by the appellant. The polydisperse
colloidal silica of Fruge appear[s] to be a composition readily available in
the market.”). In other words, the Appellant has not identified error in the
Examiner’s finding that the ordinary artisan would have used as the colloidal
silica in Banerjee’s composition one of the conventionally known and
readily available colloidal silicas having the claimed properties. See Final
Act. 6; see generally Appeal Br. 10–16.
The Appellant argues that “Fruge discloses ‘polydispersed’ cationic
colloidal silicas having a particle size distribution based on particle size,”
and, therefore, the Examiner failed to identify a teaching of a polydisperse
particle size distribution having the claimed “median particle size . . . and
. . . span value, by volume.” Appeal Br. 13. This argument is not persuasive
for the reasons explained by the Examiner in the paragraph bridging pages
14–15 of the Answer.
Because the Appellant has not convinced us of reversible error in the
Examiner’s rejection of claim 1 as unpatentable over Banerjee in view of

the inventor is involved.” Id. (quoting In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004)).
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Fruge, we sustain the rejection as to claim 1, as well as claims 2–7, 23, and
24.
2. Claims 26, 32, and 35
Claim 26 depends from claim 1 and recites that the abrasive
composition “consists essentially of” the plurality of colloidal silica abrasive
particles, water, and ammonium hydroxide. Appeal Br. (Claims App.) 38.
Claim 32 depends from claim 1 and recites that the abrasive composition
“consists of” the plurality of colloidal silica abrasive particles, water, and
ammonium hydroxide. Id. As indicated above, claim 35 is an independent
claim that recites a composition “consisting of” the components explicitly
recited in claim 1. See supra 3–4; see also Appeal Br. (Claims App.) 39.
But, unlike claim 1, claim 35 does not include a negative limitation
excluding the presence of fumed silica particles. See Appeal Br. (Claims
App.) 39.
The Examiner found that Fournier describes using ammonium
hydroxide-stabilized alkaline colloidal silica slurries for polishing various
insulator materials. Final Act. 11. The Examiner determined that the
ordinary artisan would have stabilized the colloidal silica particles of the
Banerjee-Fruge composition by preparing “a sub-composition consisting of
the [colloidal silica] particles, water and ammonium hydroxide before
adding the other ingredients because Fournier teaches it is conventional to
do so.” Id.
The Appellant argues that “[e]ven if one skilled in the art decided to
incorporate ammonium hydroxide into the compositions of Banerjee or
Fruge, the resulting compositions would still comprise (i) Banerjee’s
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benzenesulfonic acid and per-compound oxidizing agent or (ii) Fruge’s
binder.” Appeal Br. 24; see id. at 26. The Appellant contends that the
transition phrases “consists essentially of,” “consists of,” and “consisting of”
in claims 26, 32, and 35, respectively, exclude these additional components
from the claimed compositions. Id. at 24, 26–27; see AFG Indus., Inc. v.
Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001) (“[T]ransition
phrases such as ‘consisting of’ are understood to exclude any elements,
steps, or ingredients not specified in the claim.”); PPG Indus., Inc. v.
Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998) (The phrase
“consisting essentially of” indicates that “the invention necessarily includes
the listed ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention.”).
The Appellant’s arguments are not persuasive because the Appellant
misapprehends and, therefore, does not identify error in the Examiner’s fact
finding and reasoning. Specifically, the Examiner’s rejection is based on a
determination that the ordinary artisan would have formed an intermediate
composition consisting of a plurality of colloidal silica abrasive particles
having the properties recited in claims 1 and 35, see supra 3–4, water, and
ammonium hydroxide, and then added other components to this intermediate
composition to form Banerjee’s final, modified abrasive composition. Final
Act. 11. In support of this determination, the Examiner relies on Fournier
column 4, lines 55–66. Final Act. 11; see Fournier 4:61–66 (“[P]ure (not
diluted) colloidal silica slurries stabilized by an alkaline are the preferred
cleaning mixtures. Ammonium hydroxide-stabilized . . . colloidal silica
slurries . . . are commercial products easily available on the shelf . . . .”).
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Fournier’s description of ammonium hydroxide-stabilized colloidal silica
slurries as “commercial products . . . available on the shelf,” Fournier 4:65–
66, supports the Examiner’s obviousness conclusion. See In re Mullin, 481
F.2d 1333, 1335–36 (CCPA 1973). The Appellant does not explain why the
Examiner’s determination that claims 26, 32, and 35 read on the
intermediate product resulting from the Banerjee-Fruge-Fournier
combination was erroneous or unreasonable. See generally Appeal Br. 21–
27; Reply Br. 6–7.
We add that, even if the Appellant were correct in asserting that the
Examiner’s combination of Banerjee, Fruge, and Fournier would have
resulted in a composition that included Banerjee’s benzenesulfonic acid and
per-compound oxidizing agent, or Fruge’s binder, the Appellant’s arguments
would not be persuasive of reversible error in the Examiner’s rejection of
claim 26. In assessing the broadest reasonable interpretation of a claim that
includes a “consisting essentially of” transition phrase, the Appellant bears
the burden of: (1) showing the basic and novel characteristics of the claimed
invention, and (2) establishing how those characteristics would be materially
changed by any allegedly excluded component of an applied reference. See
In re DeLajarte, 337 F.2d 870, 873–74 (CCPA 1964). The Appellant has not
met this burden, nor do we find any indication in the Specification that
Banerjee’s benzenesulfonic acid or per-compound oxidizing agent would
materially change the basic and novel characteristics of the claimed abrasive
composition, see, e.g., Spec. ¶ 30 (“Any suitable oxidizing agent can be used
in conjunction with the present invention.”). See In re Herz, 537 F.2d 549,
551 (CCPA 1976) (“[I]n construing the phrase ‘consisting essentially of’ in
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appellants’ claims, it is necessary and proper to determine whether their
specification reasonably supports a construction that would include
additives” found in the prior art composition.).
Regarding Fruge’s binder, as discussed above, the Examiner relied on
Fruge solely to establish that colloidal silica abrasive particles having the
claimed properties were conventional at the time the present application was
filed. See Final Act. 5; Ans. 14. The Appellant acknowledges that such
binders “are typically used to prepare ink jet recording sheets.” Appeal Br.
24. The Appellant has not explained why the ordinary artisan would have
included a binder in Banerjee’s abrasive composition, nor has the Appellant
shown that a binder would materially change the basic and novel
characteristics of the claimed abrasive composition.
For the above reasons, we sustain the rejection of claims 26, 32, and
35 as unpatentable over Banerjee in view of Fruge and Fournier.
Rejections over Fang
The Examiner rejected claims 11–14 as unpatentable over Fang, and
claims 27, 31, 34, and 35 as unpatentable over Fang in view of Fournier. See
above-listed grounds 3 and 4. The Appellant argues in support of
patentability of claims 11, 27, 31, and 35. See generally Appeal Br. 16–27.
We address the arguments as to each of these claims below.
1. Claim 11
The Appellant acknowledges that Fang discloses an abrasive
composition comprising colloidal silica particles, see Appeal Br. 17, Fang
3:5–9, but argues that Fang requires the presence of fumed silica particles
“which have been specifically excluded from” the Appellant’s claim 11
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composition by the transition phrase “consisting essentially of,” id. at 19.
The Appellant’s argument is not persuasive because the Appellant has
not shown, nor does the Specification indicate, that fumed silica particles
would materially change the claim 11 abrasive slurry composition’s basic
and novel characteristics. See DeLajarte, 337 F.2d at 873–74.
The Specification discloses that “[i]n an embodiment of the present
invention colloidal silica is utilized as an abrasive” Spec. ¶ 19, and identifies
poly-dispersed colloidal silica as particularly suitable, id. ¶ 26. The
Specification further discloses that an “embodiment of the present invention
also relates to an abrasive slurry composition for polishing substrates
including a plurality of abrasive particles having a poly-dispersed particle
size distribution as described,” id. ¶ 28, that “can be used in conjunction
with any suitable component (or ingredient) known in the art, for example,
additional abrasives,” id. ¶ 29. The Specification explicitly defines
“abrasive” as “any synthetic and/or natural inorganic and organic material,
which [is] relatively inert when utilized in CMP slurries, such as, for
example, fumed . . . silica.” Id. ¶ 19. Based on these descriptions, we
determine that the Specification supports construing “consisting essentially
of” in claim 11 as including fumed silica. See Herz, 537 F.2d at 551.
The Appellant also argues that Fang requires the presence of a
chemical accelerator “which ha[s] been specifically excluded from” the
Appellant’s claim 11 composition by the transitional phrase “consisting
essentially of.” Appeal Br. 19. This argument is not persuasive because the
Appellant has not explained why it was erroneous or unreasonable for the
Examiner to have found that the claim 11 “particle stabilizer consisting
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essentially of an alkaline compound” reads on the nitrogen-containing
compound in Fang’s composition. See Final Act. 10. As indicated by the
Examiner, Final Act. 10, the Appellant’s characterization of the
composition’s alkaline compounds as particle stabilizers does not patentably
distinguish over Fang’s composition containing the very same alkaline
compounds, but characterized as chemical accelerators. Compare Spec. ¶ 24,
with Fang 5:3–5. “From the standpoint of patent law, a compound and all of
its properties are inseparable; they are one and the same thing.” In re
Papesch, 315 F.2d 381, 391 (CCPA 1963)). Further, like Fang, the
Appellant acknowledges that “certain compounds may perform more than
one function.” Spec. ¶ 36; Fang 5:55–56. This argument is also unpersuasive
for the reasons discussed above, that is, the Appellant has not met its burden
of showing that the basic and novel characteristics of its claimed invention
would be materially changed by the presence of components other than those
that claim 11 explicitly recites. See DeLajarte, 337 F.2d at 873–74; Spec.
¶ 29 (“The present CMP slurry can be used in conjunction with any suitable
component (or ingredient) known in the art.”).
The Appellant argues that Fang teaches away from the Appellant’s
compositions and that removal of fumed silica particles would change
Fang’s composition’s principle of operation. See Appeal Br. 19–20. Because
these arguments are based on the Appellant’s overly narrow interpretation of
claim 11, discussed above, and the Examiner did not rely on a finding that
the ordinary artisan would have removed Fang’s fumed silica particles, we
are not persuaded of reversible error.
We sustain the rejection of claims 11–14 as unpatentable over Fang.
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2. Claims 27, 31, and 35
Claim 27 depends from claim 11 and recites that the abrasive slurry
composition “consists of” the plurality of colloidal silica abrasive particles,
water, and ammonium hydroxide. Appeal Br. (Claims App.) 38. Claim 31
depends from claim 11 and recites “wherein said alkaline compound consists
of ammonium hydroxide.” Id. Claim 35 is an independent claim that recites
a composition “consisting of” the components explicitly recited in claim 1.
See supra 7. Similar to the rejection of claims 26, 32, and 35 over Banerjee,
Fruge, and Fournier, the Examiner determined that the ordinary artisan
would have stabilized the colloidal silica particles of Fang’s composition by
preparing “a sub-composition consisting of the [colloidal silica] particles,
water and ammonium hydroxide before adding the other ingredients because
Fournier teaches it is conventional to do so.” Final Act. 11; see supra 7.
The Appellant argues that the resultant composition would contain
one or more components explicitly excluded from the claims by the
transition phrases “consists essentially of” (claim 11), “consists of,” (claims
27, 31) and “consisting of” (claim 35). See Appeal Br. 24–27. As discussed
above regarding the rejection of claims 26, 32, and 35, these arguments are
unpersuasive because the Appellant does not explain why the Examiner’s
determination that claims 27, 31, and 35 read on the intermediate product
resulting from the Fang-Fournier combination was erroneous or
unreasonable. See generally Appeal Br. 21–27; Reply Br. 6–7.
For the above reasons, we sustain the rejection of claims 27, 31, 34,
and 35 as unpatentable over Banerjee in view of Fruge and Fournier.
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Rejections over Fournier
The Examiner rejected claims 1, 11, and 35 as unpatentable over (1)
Fournier in view of Fang and (2) Fournier in view of Fruge. The Examiner
found that Fournier teaches ammonium hydroxide-stabilized alkaline
colloidal silica slurries for polishing various insulator materials, that such
slurries are readily available as on the shelf, commercial products, and
“[w]ater is conventionally used as a carrier to facilitate transport.” Final Act.
12; see Fournier 4:55–66. The Examiner determined that the ordinary artisan
would have modified Fournier’s sub-composition consisting of silica
particles, water, and ammonium hydroxide by using any colloidal silica
particle distribution and content, including that of Fruge or Fang, both of
which describe particles having the properties recited in claims 1, 11, and
35. Final Act. 12.
The Appellant’s arguments are limited to those made in traversing the
rejections over (1) Banerjee in view of Fruge and (2) Fang. See generally,
Appeal Br. 27–32. These arguments are unpersuasive for the reasons
discussed above. Therefore, we sustain the rejections of claims 1, 11, and 35
as unpatentable over Fournier in view of Fang and Fournier in view of
Fruge.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 23, 24 103 Banerjee, Fruge 1–7, 23, 24
26, 32, 35 103 Banerjee, Fruge,
Fournier
26, 32, 35
11–14 103 Fang 11–14
27, 31, 34,
35
103 Fang, Fournier 27, 31, 34,
35

1, 11, 35 103 Fournier, Fang 1, 11, 35
1, 11, 35 103 Fournier, Fruge 1, 11, 35
Overall
Outcome
1–7, 11–14,
23, 24, 26,
27, 31, 32,
34, 35

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED