Ex Parte Du et al

Board of Patent Appeals and Interferences

May 28, 2010

11378521 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIANBAO DU,
FENG Q. LIU,
ALAIN DUBOUST,
JOSE SALAS-VERNIS,
and WEI-YUNG HSU
____________________

Appeal 2008-005724
Application 11/378,521
Technology Center 1700
____________________

Decided: May 28, 2010
____________________

Before MICHAEL P. COLAIANNI, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Appeal 2008-005724
Application 11/378,521

2
Examiner's refusal to allow of claims 13 through 22.1 We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of rinsing a
substrate between exposures to platens. Claim 13 is illustrative:
13. A method for rinsing a substrate between exposures to platens,
comprising:
moving the substrate from a first platen to a second platen; and
exposing the substrate to a rinse agent comprising:
one or more carboxylate acid containing compounds;
one or more surfactants with a concentration between about
0.01 to about 0.50 percent by volume; and
one or more corrosion inhibitors.

The Examiner maintains the following rejections:
1) Claims 13-19, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable
over So (US 2003/0119692 A1, published Jun. 26, 2003) and Mahulikar (US
2004/0082275 A1, published Apr. 29, 2004); and
2) Claim 20 under 35 U.S.C. § 103(a) as unpatentable over So and
Mahulikar, and further in view of Lortz (US 2003/0150838 A1, published
Aug. 14, 2003).

1 We note that the Examiner also rejects claims 23 through 32 in the
Final Rejection, however, Appellants state at page 5 of the Brief that
"[c]laim[s] 23-32 are withdrawn from the appeal. The final rejection of
claims 13-22 are [sic, is] appealed." Accordingly, we decide this appeal
based on the Examiner's rejection of claims 13 through 22. Because the
appeal with regard to claims 23-32 is withdrawn, the Examiner should
cancel non-appealed claims 23-32 upon return of jurisdiction to the
Examiner. Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008).
Appeal 2008-005724
Application 11/378,521

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With respect to rejection (1), Appellants focus their arguments on
claim 13. (Br. 9-11). Accordingly, we address Appellants’ arguments with
respect to claim 13 only. See 37 C.F.R. § 41.37(c)(1)(vii). With respect to
rejection (2), Appellants provide no additional argument for this rejection
and instead refer to the arguments made regarding the rejection of claim 1 in
rejection (1). (Br. 11-12). Therefore, rejection (2) stands or falls with our
decision regarding the rejection of claim 1 in rejection (1).

ISSUE
Did the Examiner err in determining that So would have rendered
obvious the method for rinsing a substrate recited in claim 13 within the
meaning of § 103? We decide this issue in the negative.

ANALYSIS AND FACTUAL FINDINGS
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except for those findings that we expressly overturn or
set aside in the Analysis that follows. Additional findings may be included
in this section.
Appellants argue that
The Examiner errs in rejecting claims 13-19 and 21-22 under
35 U.S.C. § 103(a) as being unpatentable over So et al. in view of
Mahulikar et al. because there is no suggestion or motivation to
modify the cleaning solution of So et al. with a concentration range
of a component used in a chemical mechanical polishing slurry of
Mahulikar et al. The Examiner's statement that both cleaning
compositions and rinsing compositions have similar components fails
to identify any support in Mahulikar et al., or any reason that would
have prompted a person of ordinary skill to use a range of a surfactant
Appeal 2008-005724
Application 11/378,521

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concentration from a chemical mechanical polishing slurry to
formulate a cleaning solution.

(Br. 10). We agree.
The Examiner's statement at page 5 that "it would have been obvious
to the skilled artisan to have modified the surfactant of So et al., to include
the surfactant concentration of Mahulikar" lacks a persuasive reason to
combine So and Mahulikar to arrive at the invention recited in claim 13.
In this regard, it is unclear to us why one of ordinary skill in the art
would employ Mahulikar's disclosed range of surfactant concentration (i.e.,
about 0.0001% to 1%), which is used in a chemical mechanical polishing
(CMP) slurry to polish a substrate during a CMP step, as the range of So's
surfactant concentration in So's cleaning solution, which is used to clean a
substrate and polishing pad after a CMP step. (See Mahulikar, ¶¶ [0003],
[0023], [0038], and [0044]; see also So, ¶ [0056], [0034]-[0036], and
[0020]).
However, this is not the Examiner's only rationale2 in rejection (1) for
rejecting claim 13. In this regard, the Examiner states and Appellants do not
specifically dispute that

2 Since Appellants failed to file a petition requesting that a ground of
rejection (i.e., the Examiner's additional rationale in rejection (1) for arriving
at the claimed invention) be designated as a new ground of rejection,
Appellants have waived any allegation that the Examiner's Answer contains
an improper new ground of rejection. See Manual of Patent Examining
Procedure § 1207.03 (IV) (8th Ed. rev. 3, August 2005) (stating that "[a]ny
allegation that an examiner’s answer contains a new ground of rejection not
identified as such is waived if not timely raised (i.e., by filing the petition
within two months of the answer) by way of a petition under 37 CFR
1.181(a)"). Accordingly, we decide this appeal based upon all of the
grounds of rejections regarding appealed claims 13-22 stated in the Answer
Appeal 2008-005724
Application 11/378,521

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So et al. disclose the claimed invention except for the concentration of
the surfactant. It would have been obvious to a person having
ordinary skill in the art at the time the invention was made to have
adjusted the concentration of the surfactant of So et al. in order to
effectively wet the surface of the residue, since it has been held that
discovering an optimum value of a result effective variable involves
only routine skill in the art.

(Compare Ans. 5 with Br. 9-11). Indeed, So states that
[t]he surfactant enables the complexing agents to more completely
wet the surface of the residue. By wetting the surface of the residue,
the surfactant improves the reaction kinetics by enabling an increased
concentration of complexing agent on the surface of the residue. The
surfactant also reduces the static etching of the copper surface by
coating the surface of the copper with a protective layer.

(So, ¶ [0036]).
In other words, So recognizes that controlling the amount of
surfactant in the cleaning solution affects the ability of the solution to wet
the surface and thus affects the reaction kinetics of the cleaning solution's
complexing agents on the surface of the residue and also reduces the static
etching of the copper surface (i.e., the amount of surfactant is a result
effective variable).
Accordingly, we agree with the Examiner that determining the
optimum amount of surfactant concentration, including an amount within the
range of surfactant concentration required by claim 13, via routine
experimentation would have been well within the ambit of one of ordinary
skill in the art and, thus, would have been obvious. See In re Boesch, 617
F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result

including the Examiner's additional rationale in rejection (1) for arriving at
the claimed invention.
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Application 11/378,521

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effective variable in a known process is ordinarily within the skill of the
art.”).
Thus, it follows that the Examiner did not err in determining that So3
would have rendered obvious the method for rinsing a substrate recited in
claim 13 within the meaning of § 103.

ORDER
The § 103 rejections of claims 13-22 made by the Examiner are
sustained.
Accordingly, the Examiner's decision is affirmed.

TIME PERIOD
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) (2009).
AFFIRMED

cam

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3 We note that Mahulikar is cumulative to the teachings of So.