Ex Parte Doi et alDownload PDFPatent Trial and Appeal BoardDec 13, 201613514683 (P.T.A.B. Dec. 13, 2016) Copy Citation 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. 13/514,683 06/08/2012 Toshiro Doi MMS-18 1572 54630 7590 12/13/2016 RORFRTS & RORFRTS T T P EXAMINER ATTORNEYS AT LAW PARVINI, PEGAH P.O. BOX 484 PRINCETON, NJ 08542-0484 ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 12/13/2016 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 TOSHIRO DOI, SYUHEI KUROKAWA, OSAMU OHNISHI, TADASHI HASEGAWA, YASUHIRO KAWASE, and YASUHIDE YAMAGUCHI1 Appeal 2015-006823 Application 13/514,683 Technology Center 1700 Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and BRIAN D. RANGE, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 2, 4, 6, and 9-14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to polishing slurries for silicon carbide and associated methods. E.g., Spec. 11; Claim 1. Claim 1 is 1 According to the Appellants, the real parties in interest are Kyushu University, National University Corporation, and Mitsui Mining & Smelting Co., Ltd. App. Br. 3. Appeal 2015-006823 Application 13/514,683 reproduced below from page 16 (Claims Appendix) of the Appeal Brief: 1. A polishing slurry for silicon carbide comprising a suspension liquid in which a pH of the polishing slurry is 6.5 or more and manganese dioxide particles are suspended, wherein a redox potential of V volts of the polishing slurry for silicon carbide has been regulated such that it falls within the range specified by the following formula representing a relation between V and pH, pH being a variable: 1.014 - 0.0591 pH < V < 1.620 - 0.0743 pH. REJECTIONS ON APPEAL2 1. Claims 1, 2, 4, 6, and 9-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Singh et al. (US 2010/0258528 Al, published Oct. 14, 2010). 2. Claims 1, 2, 4, 6, and 9-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Takemiya (US 2008/0200033 Al, published Aug. 21, 2008). 3. Claims 1, 2, 4, 6, and 9-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bian et al. (US 2005/0056810 Al, published Mar. 17, 2005). ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellants and the Examiner, we determine that the Appellants have not identified reversible error in the Examiner’s rejections. Accordingly, we affirm the rejections for reasons set forth below, 2 In the Examiner’s Answer, the Examiner withdraws a rejection under 35 U.S.C. § 112,12, of claims 9—12 and 14. Ans. 2. 2 Appeal 2015-006823 Application 13/514,683 in the Final Action, and in the Examiner’s Answer. See generally Final Act. 2—17; Ans. 2—8. The Appellants present the claims as six groups: (1) claims 1 and 2, (2) claims 4, 6, 9, and 10, (3) claim 11, (4) claim 12, (5) claim 13, and (6) claim 14. Most of the Appellants’ arguments apply collectively to all three grounds of rejection, with certain arguments applying only to individual prior art references. We address the rejections according to the claim groupings identified by the Appellants. Group 1 (Claims 1 and 2) Claim 2 depends from claim 1. The Appellants present no separate arguments for claim 2. Therefore, claim 2 will stand or fall with claim 1. Concerning Rejection 1 over Singh, the Examiner finds that Singh teaches an aqueous polishing slurry for silicon carbide comprising each element of claim 1, except that Singh teaches “a pH of from 0.1 to 13.9 wherein during the polishing process, the pH is generally less than or equal to 8,†which overlaps the claimed range of “6.5 or more.†Final Act. 3. The Examiner finds that Singh teaches the optional addition of hydrogen peroxide, which the Appellants’ Specification discloses as a redox potential regulator. Id.', see also Spec. 114. Concerning Rejection 2 over Takemiya, the Examiner finds that Takemiya teaches an aqueous polishing slurry for silicon carbide comprising each element of claim 1, except that Takemiya teaches “a pH in the range of 9—12,†which overlaps the claimed range of “6.5 or more.†Final Act. 6. The Examiner finds that Takemiya teaches the optional addition of hydrogen peroxide to the slurry. Id. 3 Appeal 2015-006823 Application 13/514,683 Concerning Rejection 3 over Bian, the Examiner finds that Bian teaches an aqueous polishing slurry for silicon carbide-nitride comprising each element of claim 1, except that Bian teaches “a pH in the range of 7— 10,†which overlaps the claimed range of “6.5 or more.†Final Act. 9—10. The Examiner finds that Takemiya teaches the optional addition of hydrogen peroxide to the slurry. Id. For all three rejections, the Examiner finds that a pH falling within the claimed range of “6.5 or more†would result in a redox potential falling within the scope of claim 1. See id. at 4—6 (Singh), 7—9 (Takemiya), 10—12 (Bian). Thus, the Examiner concludes that polishing slurries having the claimed pH and redox potential would have been obvious in view of the prior art. Id. The Appellants principally argue that pH and redox potential can be regulated independently such that a slurry having a pH that falls within the scope of claim 1 does not necessarily have a redox potential that falls within the scope of claim 1. See App. Br. 6—13. For support, the Appellants rely on the declarations of named inventor Yasuhide Yamaguchi. See id. The Yamaguchi declarations discuss examples that appear to demonstrate that redox potential can be regulated independently of pH. See Yamaguchi Declarations dated May 15, 2013 (“Yamaguchi Iâ€) and Nov. 22, 2013 (“Yamaguchi IIâ€). Even assuming that the Appellants are correct that it is possible to regulate pH and redox potential independently, the Appellants’ arguments do not identify reversible error in the Examiner’s rejections. The Appellants acknowledge that “[o]ne way of regulating redox potential is by regulating pH until this required V value is obtained.†Reply Br. 3. The Yamaguchi II 4 Appeal 2015-006823 Application 13/514,683 declaration states that “it is needless to say once pH is chosen, the required range of V is also determined.†Yamaguchi II at 5. Those statements are supported by the examples in the Specification, which appear to disclose embodiments falling within the scope of claim 1 in which the claimed redox potential is achieved by regulation of pH, without regard to addition of a redox regulator. See Spec. 7—11. As the Appellants acknowledge, the inclusion of hydrogen peroxide in each of the three prior art references is optional. See Reply Br. 2. Claim 1 does not require the inclusion of hydrogen peroxide or any other redox regulator. It simply requires a pH of 6.5 or more and a redox potential that falls within a particular range. Given the Appellants’ statement that redox potential can be regulated by pH, Reply Br. 3, and that the examples in the Specification appear to achieve the claimed redox potential by regulating the pH, it appears that the prior art examples relied upon by the Examiner would likewise achieve the claimed redox potential if adjusted to have pHs of 6.5 or more, at least in the instance in which the optional redox regulator is not used. As explained above, Singh teaches a slurry pH that overlaps that of claim 1; Takemiya and Bian teach slurry pHs that are fully encompassed by that of claim 1. On this record, the Appellants provide no persuasive evidence or technical reasoning to show that the polishing slurries of the prior art would not possess redox potentials that fall within the scope of claim 1. See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.â€); see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) 5 Appeal 2015-006823 Application 13/514,683 (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.â€). It is irrelevant that none of the prior art “even mentions redox potential at all.†See App. Br. 6. The Appellants claim a polishing slurry. If the polishing slurries of the prior art possess or otherwise render obvious the claimed redox potential, no express recognition of that property is necessary. Cf. Toro Co. v. Deere & Co., 355 F.3d 1313, 1320 (Fed. Cir. 2004) (“[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.â€). The Appellants’ assertion that redox potential and pH can be regulated independently also fails to show reversible error in the rejection. Even assuming that to be true, the Appellants fail to show that the slurries of the prior art, having pHs that overlap the claimed pH range, do not possess the claimed redox potential. As explained above, the Appellants’ own examples show regulation of redox potential by achieving the desired pH. The prior art references disclose pHs that overlap with, or are fully encompassed by, the claimed pH range. While it may be true that ingredients could be added to the prior art slurries that would cause their redox potentials to fall beyond the scope of claim 1, the Appellants have identified no such ingredients as required by the prior art slurries, and each prior art reference appears to teach or suggest slurry compositions that would meet the redox potential 6 Appeal 2015-006823 Application 13/514,683 requirements of claim 1. See Spada, 911 F.2d at 708; Best, 562 F.2d at 1255. Concerning Rejection 1 over Singh, the Appellants additionally argue that Singh’s disclosed range of 0.1 to 13.9 “does not provide a basis for describing the invention.†See App. Br. 9. The Appellants also argue that an example in Singh suggests that lower pHs produce superior removal rates, and that Singh therefore “teaches away from the present invention.†Id. We are not persuaded by those arguments. Singh’s disclosure of pHs simply suggests that acidic, basic, or neutral pHs can be used. Claim 1 is limited to neutral or basic pHs, which are expressly taught by Singh as being appropriate. Cf. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.â€); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.â€). Singh’s disclosure of an example in which acidic pHs achieve higher removal rates, see Singh 138, does not teach away from neutral or basic pHs. For a reference to “teach away,†it must criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Appellants provide no evidence or explanation as to why a person of ordinary skill would have considered the lower rates of the compositions having pHs of 6.5 and 9.0 to be undesirable or unacceptable. On the contrary, Singh itself suggests that those rates still would have been considered “high†or “very high†removal rates. See Singh 7 Appeal 2015-006823 Application 13/514,683 114 (“high polishing rate . . . such as a removal rate >200 nm/hrâ€), 138 (“Note the very high removal rates obtained, such as >500 nm/hr.â€) Singh also discloses examples in which higher pHs appear to achieve removal rates comparable to lower pHs. See Singh 139 (Example 2). The Appellants’ discussion of Singh’s Example 1 does not persuade us that Singh teaches away from the use of pHs that overlap those of claim 1. Concerning Rejection 3 over Bian, the Appellants additionally argue that Bian teaches the polishing of silicon carbide-nitride (SiCN) rather than silicon carbide, and that Bian’s slurries require “a non-ionic surfactant which has a goal of suppressing the removal rate of silicon carbide-nitride.†App. Br. 10. Those arguments do not persuade us of reversible error. Claim 1 ’s recitation of “silicon carbide†is a statement of intended use. Cf. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). The Appellants provide no explanation as to how or why claim 1 ’s recitation of “silicon carbide†may impart some structural distinction to the claimed slurry relative to Bian’s slurry. Nor do the Appellants argue that Bian’s slurry could not be used to polish silicon carbide. Concerning Bian’s surfactant, claim 1 is a “comprising†claim that does not preclude the addition of a surfactant. The Appellants’ argument fails to explain how or why a slurry that otherwise meets the limitations of claim 1 would be removed from the scope of claim 1 by the inclusion of Bian’s surfactant. We have carefully considered the Appellants’ arguments, including both Yamaguchi declarations, and we are not persuaded of reversible error in the Examiner’s rejection of claim 1. Accordingly, we affirm the rejection. 8 Appeal 2015-006823 Application 13/514,683 Groups 2-6 The Appellants include separate sections for Groups 2—6. However, their arguments consist essentially of a recitation of claim language (or other general description of the claims at issue), followed by a naked assertion that the prior art does not teach or suggest the claims at issue. See App. Br. 13— 14. Such arguments typically are not persuasive. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art†is unpersuasive). Concerning claims 11—14, we additionally note the following: Claims 11 and 13 require a redox potential regulating component. Claims 12 and 14 require that component to comprise hydrogen peroxide. While the Appellants’ argument concerning those claims fails for the reason stated above, see Lovin, 652 F.3d at 1357, all three of the cited references disclose the optional addition to the polishing slurry of hydrogen peroxide. See Singh 128; Takemiya 1 84; Bian 123. Although the Appellants are correct that no reference expressly discloses the use of hydrogen peroxide as a redox regulating component, the Appellants’ Specification discloses only a single redox regulating component: hydrogen peroxide. Thus, whether the prior art references discuss redox potential or not, it appears that hydrogen peroxide necessarily would act as a redox regulating component in the slurries of the prior art. The Appellants provide no persuasive argument to the contrary. Nor do they persuasively argue that adding that component to the slurries of the prior art would otherwise remove the prior art slurries from the scope of the claims. We affirm the Examiner’s rejection of the claims in Groups 2—6. 9 Appeal 2015-006823 Application 13/514,683 CONCLUSION We AFFIRM the Examiner’s rejections of claims 1, 2, 4, 6, and 9—14. 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 10 Copy with citationCopy as parenthetical citation