Ex Parte Bian

Board of Patent Appeals and Interferences

Sep 29, 2008

10396013 (B.P.A.I. Sep. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JINRU BIAN
____________

Appeal 2008-3625
Application 10/396,013
Technology Center 1700
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Decided: September 29, 2008
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Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-7, 11, and 12. We have jurisdiction
pursuant to 35 U.S.C. § 6.

Appeal 2008-3625
Application 10/396,013

Appellant’s claimed invention is directed to a chemical mechanical
planarization (CMP) solution. Claims 1 and 5 are illustrative and
reproduced below:
1. A chemical mechanical planarization solution useful for removing
a tantalum barrier material from a semiconductor wafer comprising by
weight percent 0.02 to 15 inhibitor for a nonferrous metal, 0 to 20
complexing agent for the nonferrous metal, 0.01 to 12 tantalum removal
agent selected from the group consisting of formamidine, formamidine salts,
formamidine derivatives, guanidine, guanidine derivatives, guanidine salts
and mixtures thereof, 0 to 5 abrasive, 0 to 15 particles selected from the
group consisting of polymeric particles and polymer-coated coated particles
and balance water and the solution being oxidizer free, a pH greater than 5 to
12 and has a tantalum nitride to TEOS selectively of at least 3 to 1 as
measured with a microporous polyurethane polishing pad pressure measured
normal to a wafer of less than 20.7 kPa.

5. A chemical mechanical planarization solution useful for removing
a tantalum barrier material from a semiconductor wafer comprising by
weight percent 0.02 to 10 inhibitor for a nonferrous metal, 0 to 10
complexing agent for the nonferrous metal, 0.1 to 10 tantalum removal agent
selected from the group consisting of formamidine, formamidine salts,
formamidine derivatives, guanidine, guanidine derivatives, guanidine salts
and mixtures thereof, 0 to 0.09 abrasive, 0 to 10 particles selected from the
group consisting of polymeric particles and polymer-coated coated particles
and balance water and the solution being oxidizer free with a pH greater than
5 to 12.

The Examiner relies on the following as evidence in rejecting the
appealed claims:
Lee 6,436,834 B1 Aug. 20, 2002
Bian 7,241,725 B2 Jul. 10, 2007
Lee ('662) EP 1 072 662 A1 Jan. 31, 2001
Wang WO 01/12740 A1 Feb. 22, 2001

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Appeal 2008-3625
Application 10/396,013

Claims 1-7, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lee (EP ‘662) in view of Wang. Claims 1-7, 11,
and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Lee ‘834 in view of Wang. Claims 1-7, 11, and 12 stand rejected under the
judicially created doctrine of obviousness-type double patenting over claims
1-6 of U.S. Patent No. 7,421,725.
We reverse the obviousness rejections under 35 U.S.C. § 103(a). We
affirm the obviousness-type double patenting rejection. Our reasoning
follows.
Starting with the rejections under 35 U.S.C. § 103(a), we note that all
of the appealed claims require a CMP solution that includes, among other
possible ingredients: a specified amount of a non-ferrous metal inhibitor; a
specified amount of tantalum removal agent selected from a small group of
compounds, including guanidine, guanidine derivatives, guanidine salts,
formamidine, its salts and derivatives, and a mixture thereof; water; and
with the further proviso that the pH of the solution is greater than 5-121, and
which solution is free of oxidizer. Appealed claim 1 and the claims which
depend therefrom further require a specified selectivity ratio and all of the
other appealed claims require that the maximum amount of abrasive in the
solution is 0.09 weight percent or less.

1 For purposes of deciding this appeal and in giving the claims a broadest
reasonable construction when read in light of the Specification, we construe
the recited pH range of greater than 5 to 12 to require a pH greater than 5. In
so doing, we note that Appellant refers to Specification paragraphs 15 and
16 in the Summary of the Claimed Invention as set forth in the Appeal Brief
(App. Br. 3).
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Appeal 2008-3625
Application 10/396,013

The Examiner has determined that Lee (EP ‘662) discloses a CMP
composition that can include, inter alia, an abrasive and an abrasion
accelerator, which accelerator can be selected to be formamidine or a
derivative structure and/or guanidine carbonate (Ans. 4-5; Lee (EP ‘662) ¶¶
0010 and 0016). The aforementioned disclosed accelerator component
materials of Lee (EP ‘662) are encompassed by Appellant's claimed
tantalum removal agent. The Examiner has found that Lee (EP ‘662) does
not require the presence of an oxidizer (Ans. 4). Lee (EP ‘662) discloses
that the CMP composition can include water as an additive and can be
employed at acid, neutral, or basic (alkaline) conditions, which latter
disclosure is reasonably suggestive of pH requirements for the CMP
composition of Lee (EP ‘662) that correspond to the claimed pH
requirements for Appellant's CMP solution (Lee (EP ‘662), ¶¶ 0014 and
0018).
Similarly, the Examiner has correctly found that Lee ‘834 discloses or
suggests a CMP composition that includes an abrasive and an accelerator
therefore, which accelerator can be selected to be formamidine, guanidine,
and/or salts or derivatives thereof (Ans. 6-7; Lee ‘834, col. 3, l. 65-col. 4, l. 6
and col. 5, ll. 7-27). The Examiner notes that Lee ‘834 can include an
oxidizer (Ans. 6), which disclosed optional ingredient suggests the absence
of the oxidizer as another option (Lee ‘834 col. 5, ll. 51-61). Likewise, Lee
‘834 provides disclosure that is reasonably suggestive of forming the CMP
composition with a pH property that would correspond with Appellant's
claimed pH requirements (Lee ‘834, col. 4, ll. 60-64 and col. 5, ll. 46-50).
Aside from the independent claim 1 functional requirement for the
selectivity of the claimed solution and the independent claim 5 requirement
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Appeal 2008-3625
Application 10/396,013

for a 0.09 weight percent or lesser amount of abrasive as claimed features
that are separately contested as alleged distinctions for the solution of the
two independent claims on appeal, there is another argued distinction for all
of the appealed claims. The Examiner acknowledges that this argued
distinction, the claimed requirement for a nonferrous metal inhibitor and
specified amount thereof, differentiates Appellant's claimed solution from
either of the applied Lee patent documents taken alone (Ans. 4-7). The
requirement for a nonferrous metal inhibitor and a specified amount thereof,
as part of the oxidizer free CMP solution, is required by all of Appellant's
appealed claims.
To address this latter argued difference of the subject matter required
by all of the rejected claims over that disclosed by either applied Lee patent
document, the Examiner turns to Wang in both of the obviousness rejections
before us.
Wang discloses a system for polishing at least one layer of a multi-
layer substrate, including a first metal layer and a second layer (Wang 1).
The polishing system includes a liquid carrier, at least one oxidizing agent,
and at least one polishing additive that increases the rate of polishing at least
one layer of the substrate (Wang 3, ll. 20-32). Wang discloses a variety of
other additions that can optionally be employed as part of the oxidant –
containing polishing system. These additives to the system include, inter
alia, a stopping compound, an abrasive and/or polishing pad, polymeric
compounds that reduce polishing rates, pH adjustors, binders, stabilizers,
surfactants, buffers, and passivating film-forming additives (Wang 7-10).
The last mentioned passivating material can be selected to be a triazole
compound, such as benzotriazole (BTA) (Wang 10, ll. 21-37).
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Appeal 2008-3625
Application 10/396,013

BTA is one of the materials that Appellants disclose as being
functional as a nonferrous metal inhibitor for their claimed CMP solution
(Spec. ¶ 0018).
For the first stated § 103(a) rejection, the Examiner takes the position
that:
In view of the primary reference teaching that
conventional additives can be added to the composition, it is the
examiner[']s position that this provides motivation to add an
azole component because this is a conventional additive, as
shown by the secondary reference. It is the examiner[']s
position that this component will not adversely affect the
composition of the primary reference and therefore the use of
this material is well within the scope of the skilled artisan and
teachings of the primary reference.

Ans. 5.
The Examiner takes a substantially similar position with respect to
combining Wang (secondary reference) with Lee ‘834 (primary reference) in
asserting the obviousness of adding an azole component to the CMP
composition of Lee ‘834 in the second stated § 103(a) rejection (Ans. 7).
However, we agree with Appellant that the Examiner has not fairly
established a prima facie case of obviousness based on the Examiner’s
conclusions as to the combinability of a selected polishing system
passivation film forming component from the oxidizing agent-containing
polishing system of Wang as an additive for the oxidizer free alternative
CMP composition of either of the applied Lee references (App. Br. 5-11).
After all, the Examiner bears the initial burden, on review of prior art
or on any other ground, of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Appeal 2008-3625
Application 10/396,013

In this regard, “a patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR Int'l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1741 (2007). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Here, the Examiner has not reasonably articulated why one of
ordinary skill in the art would have turned to the oxidizer-containing
formulations for polishing any of the variety of multi-layer substrates taught
by Wang for selecting an optional passivating film forming component
thereof as another ingredient to be added to the oxidizer- free version of the
abrasion accelerator- containing CMP compositions of either Lee reference.
The generalized notation in each of the Lee references that other
conventional ingredients that do not cause any adverse effects with regard to
their abrasion oriented composition may be included therein is not
sufficient.. Indeed, as pointed out by Appellant, this asserted presentation in
each of the applied Lee references is followed by a teaching that the optional
addition of a small amount of oxidant to the composition of each Lee
reference is the principal additive that is being referred to as the
conventional ingredient additive for the otherwise oxidant-free CMP
solutions of these references; or, in the alternative, such oxidant addition
was referred to as an adjunct to any other conventional ingredient additive
that each Lee reference may have been suggesting (App. Br. 5-9; Lee (EP
‘662), ¶ 0019; Lee ‘834, col. 5, ll. 51-61).
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Appeal 2008-3625
Application 10/396,013

The Examiner has not reasonably explained why one of ordinary skill
in the art would have plucked out a disclosed optional passivating film
forming material from the disparate oxidant-containing polishing system of
Wang for use in an oxidant-free alternative of the abrasion acceleration
agent containing CMP composition of either Lee reference based on the
generalized reference to conventional additives, such as the oxidant
additives that are furnished in each Lee reference. In other words, the
Examiner has not supported the notion that a selected passivation agent from
Wang would have been recognized by one of ordinary skill in the art as an
applicable additive to a non-oxidative agent containing CMP composition
formulation in accordance with either Lee reference, particularly as it relates
to the formulation of a composition that would possess all of required
features of any of the rejected appealed claims.
Thus, in making the assertions set forth in the Answer, the Examiner
has seemingly taken at least some of the applied references’ disclosures out
of context without providing persuasive reasoning to support the contention
that the combination thereof would have led one of ordinary skill in the art
to the here claimed subject matter.
Rejections based on § 103(a) must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of the invention
from the prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Here, the Examiner’s basis for the
rejection falls short of identifying a rationale that, prima facie, would have
led an ordinarily skilled artisan to combine selected features from each
reference in a way that would have resulted in a CMP solution
corresponding to the claimed solution. See KSR, 127 S. Ct. at 1741.
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Appeal 2008-3625
Application 10/396,013

We need not reach the Declaration of Jinru Bian, under 37 C.F.R. §
1.132, that was proffered in rebuttal by Appellant in reaching our Decision.
It follows that we shall reverse both of the Examiner’s § 103(a)
rejections.
Our disposition of the Examiner’s obviousness-type double patenting
rejection of all of the appealed claims over claims 1-6 of U.S. Patent No.
7,241,725 is another matter. At the outset, we note that the rejected claims
are not separately argued. We select appealed claim 5 as representative.
Appellant contends that the appealed claims require an oxidizer free
CMP solution that allows for a high tantalum nitride to TEOS selectivity
under specified polishing conditions whereas claims 1-6 of U.S. Patent No.
7,241,725 require an abrasive- free composition (Supp. App. Br. 1).
However, as the Examiner essentially contends (Ans. 8), the appealed
claims are not patentably distinct from claims 1-6 of U.S. Patent No.
7,241,725 on this basis. In this regard, for example, claim 1 of the
aforementioned U.S. Patent is drawn to a polishing fluid capable of
removing tantalum-containing barrier materials that does not require an
oxidizer component, includes 00025 - 2 weight percent of BTA (an azole
inhibitor) and a nitrogen-containing imine compound ingredient (guanidine
compound), and which patented claim 1 is not required to be abrasive-free.
Also, the appealed claims do not require an abrasive as evidenced by the
zero amount lower limit for abrasive in appealed claim 5. Moreover, given
these commonalities between the appealed claims and the claims of the
aforementioned U.S. Patent, it would reasonably be expected that tantalum
barrier materials, such as tantalum nitride, would be preferentially removed
compared to other materials such as TEOS while polishing with a fluid
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Appeal 2008-3625
Application 10/396,013

composition as claimed in U.S. Patent No. 7, 421,725, to the extent the
appealed claims require such a characteristic for the claimed CMP solution..
Consequently, we are not persuaded of reversible error in the obviousness-
type double patenting rejection under consideration based on the assertions
made in the Supplemental Examiner’s Answer.
On this record, we shall affirm the Examiner’s obviousness type
double patenting rejection of the appealed claims.

CONCLUSION
The decision of the Examiner to reject claims 1-7, 11, and 12 under
35 U.S.C. § 103(a) as being unpatentable over Lee (EP ‘662) in view of
Wang and to reject claims 1-7, 11, and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Lee ‘834 in view of Wang is reversed.
The decision of the Examiner to reject claims 1-7, 11, and 12 under
the judicially created doctrine of obviousness-type double patenting over
claims 1-6 of U.S. Patent No. 7,421,725 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(a)(1)(iv).
AFFIRMED

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