Cornelia Roeger-Goepfert et al.

Patent Trials and Appeals Board

Sep 20, 2019

13994540 - (D) (P.T.A.B. Sep. 20, 2019)

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.
13/994,540 06/14/2013 Cornelia Roeger-Goepfert 416869US99PCT 6813
22850 7590 09/20/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
RUFO, LOUIS J
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
09/20/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CORNELIA ROEGER-GOEPFERT,
ROMAN BENEDIKT RAETHER, HARALD HOERHAMMER,
ARNOLD MARCO, CHARLOTTE EMNET, and DIETER MAYER
____________________

Appeal 2018-006845
Application 13/994,540
Technology Center 1700
____________________

Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY and
MERRELL C. CASHION, JR., Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
June 15, 2017 decision finally rejecting claims 1–10, 12, 13, and 16–24
(“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
An oral hearing was held on September 12, 2019, a transcript of which will
be made part of the record.
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies BASF SE as the real party in interest
(Appeal Br. 1).
Appeal 2018-006845
Application 13/994,540

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to electroplating compositions
comprising a leveling agent (Spec. 1). A leveling agent, as described in the
Specification, is used to provide a substantially planar surface over a
substrate surface (id.). The claimed compositions also include (1) a source
of metal ions, (2) an accelerating agent, (3) a suppressing agent different
from the leveling agent, and (4) a chloride ion. The leveling agent is a
biguanide compound (or a corresponding salt thereof), having a specific
structure. Claim 1 is representative of the invention and is reproduced below
from the Claims Appendix to the Appeal Brief (emphasis added):
1. A composition, comprising:
a source of metal ions,
an accelerating agent,
a leveling agent,
a suppressing agent different from the leveling agent, and
a chloride ion,
wherein the leveling agent comprises
(i) a linear or branched polymeric biguanide
compound comprising a structural unit of formula Ll

wherein
R1 is, independently at each occurrence, an
H atom or an organic radical having from 1 to 20 carbon atoms,
R2 is a divalent organic radical having from l
to 20 carbon atoms, optionally comprising a polymeric
biguanide branch, and
n is an integer of 2 or more: or
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Application 13/994,540

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(ii) a corresponding salt of the polymeric
biguanide compound, formed by reacting the biguanide groups
with one or more organic or inorganic acids.

REJECTIONS
Claims 1–10, 12, 13, and 16–242 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mikkola3 in view of Michelet.4

DISCUSSION
Appellant does not argue any of the claims separately (see Appeal Br.
5–11). Accordingly, we focus our analysis on the rejection of claim 1 over
Mikkola and Michelet. The remaining claims stand or fall with claim 1.
The Examiner finds that Mikkola discloses a composition comprising
a source of copper ions, accelerating agents such as bis-sulfopropyl-
disulfide, a suppressing agent, and chloride ion in an amount between 5 and
50 ppm (Final Act. 3, citing Mikkola ¶¶ 17, 24, 25, 30, 33). The Examiner
further finds that Mikkola does not disclose the use of the claimed biguanide
compound. However, the Examiner finds that Michelet discloses a
composition used for a similar purpose to Mikkola’s composition and which

2 The Examiner did not include claim 24 in the statement of rejection. Final
Act. 3. However, the Examiner addressed claim 24 in the discussion of the
prior art. Id. at 6. Appellant acknowledges that claim 24 is properly rejected
in seeking its review on appeal. Appeal Br. 2, 12. Therefore, we consider
the omission to be harmless error.
3 Mikkola et al., US 2004/0217009 A1, published November 4, 2004.
4 Michelet, WO 2007/118985 A1, published October 25, 2007. Because
Michelet is in French, the parties make reference to the English-language
counterpart: Michelet, US 2010/0243467 A1, published September 30, 2010.
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Application 13/994,540

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contains the claimed biguanide compounds (Final Act. 4, citing Michelet,
¶ 14). The Examiner determines that it would have been obvious to use
Michelet’s biguanide compounds in Mikkola’s composition because
Michelet teaches that they lead to smoother copper electrodeposits (Final
Act. 4, citing Michelet ¶ 13).
Appellant argues that:
Michelet does not describe its polymeric biguanide compound
to be used as a leveler but only as a suppressor, because the
interaction between the polymeric biguanide compound and an
accelerator described in Michelet is typical for a suppressor that
would have been recognized by a skilled artisan at the time of
the invention.
(Appeal Br. 6).
This argument is not convincing for several reasons. First, as noted
above, Michelet specifically states that its biguanide compound containing
baths provide “smooth” copper electrodeposits (i.e. the biguanide compound
acts in some sense like a leveler). Thus, though Michelet does not describe
the biguanide compounds as levelers, it appears to recognize that they can
have a leveling effect. Second, because claim 2 further defines the claimed
leveler as having a specific chemical structure (i.e. the claimed biguanide
compounds), whether Michelet specifically describes those compounds as
levelers is not critical to the obviousness rejection, which only requires an
articulated reason with rational underpinnings to explain why a person of
skill in the art would have incorporated them into Mikkola’s composition.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner has provided such a
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Application 13/994,540

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reason for the proposed combination (namely that Michelet suggests that the
biguanide compound can provide a smoothing effect).
The statement in Michelet’s paragraph 13 is sufficient both to provide
a reason to incorporate the biguanide compound into Mikkola’s
composition, and also to provide a reasonable expectation of success in
doing so. Absolute predictability that the combination will be successful is
not required. All that is required is a reasonable expectation of success. See
In re O'Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988).
Although Appellant provides technical arguments as to why Michelet
suggests that the biguanide compound acts as a suppressor and not a leveler
(Appeal Br. 7–10), these arguments are not persuasive as they do not
adequately refute the rationale provided by the Examiner for making the
proposed combination (i.e. that Michelet teaches that its compositions,
including the biguanide compounds, are useful for smooth copper
electrodeposits).
Appellant also argues that Michelet teaches that its composition is
best used in the absence of chloride ions and, therefore, that a person of skill
in the art would not have sought to use components from Michelet in
Mikkola’s composition (Reply Br. 8). This argument is not convincing
because, although Michelet describes the disadvantages associated with the
presence of chloride ions (Michelet ¶ 6), it does not state that chloride ions
cannot be present at all, only that its disclosure “also relates to copper
electroplating baths devoid of chloride ions, comprising poly(alkylene-
biguanide) salts” (Michelet ¶ 11).
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Accordingly, Appellant has not shown reversible error in the
rejection.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–10, 12, 13, and
16–24
§ 103(a)
Mikkola and
Michelet
1–10, 12, 13,
and 16–24

Overall Outcome 1–10, 12, 13,
and 16–24

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