Ex Parte Her et al

Board of Patent Appeals and Interferences

Jun 12, 2003

09692730 (B.P.A.I. Jun. 12, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Yie-Shein Her, Ramanathan Srinivasan, Suryadevara Babu,
and Suresh Ramarajan
____________
Appeal No. 2003-1092
Application No. 09/692,730
____________
ON BRIEF
____________
Before GARRIS, OWENS, and WALTZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 2, 4-16 and 18-20 which are all of the claims remaining in
the application.
The subject matter on appeal relates to a chemical-mechanical
polishing slurry comprising an amount of an agent selected from the
group consisting of lysine and arginine sufficient to suppress the
rate at which an underlying silicon-containing dielectric layer is
removed by at least about 50%. This appealed subject matter is
Appeal No. 2003-1092
Application No. 09/692,730
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adequately illustrated by independent claim 2 which reads as
follows:
2. A chemical-mechanical polishing slurry for use in
removing a barrier layer during the fabrication of a damascene
structure comprising an amount of an agent selected from the group
consisting of lysine and arginine sufficient to suppress the rate
at which an underlying silicon-containing dielectric layer is
removed by at least about 50% as compared to the rate at which said
underlying silicon-containing dielectric layer would be removed if
said agent was not present in said slurry.
The references set forth below are relied upon by the Examiner
as evidence of obviousness:
Grumbine et al. (Grumbine) 6,136,711 Oct. 24, 2000
(filed May 29, 1998)
Kaisaki et al. (Kaisaki) 6,194,317 Feb. 27, 2001
(effective filing date Jun 24, 1998)
All of the claims on appeal stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kaisaki in view of Grumbine.
On page 4 of the answer, the Examiner expresses his obviousness
conclusion in the following manner:
Since Kaisaki is concerned with a
polishing slurry having lysine to polish TiN
layer while suppressing the removal rate of the
underlying dielectric layer, one skilled in the
art would have found it obvious to modify
Kaisaki slurry by using a sufficient amount of
lysine in a slurry as taught by Grumbine
especially because Grumbine states that his CMP
exhibits desirable low polishing rate towards
the dielectric insulating layer (col 9, lines
49-51).
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Application No. 09/692,730
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We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the Appellants
and by the Examiner concerning the above noted rejection.
OPINION
For the reasons set forth below, this rejection cannot be
sustained.
As correctly indicated by the Appellants in their brief,
Kaisaki teaches using lysine in an ammonium ion buffer system
for controlling the pH of his slurry (e.g., see lines 40-62 in
column 14), whereas Grumbine teaches using lysine in his slurry for
inhibiting the etching or corrosion of tungsten (e.g., see lines 4-
24 in column 6). Clearly, the pH buffering purpose or function
served by lysine in Kaisaki’s slurry is completely unrelated to the
tungsten etch/corrosion inhibiting purpose or function served by
the lysine in Grumbine’s slurry. Because these purposes or
functions are unrelated, an artisan would have had no basis for
believing that the inhibiting-effective concentrations of Grumbine
would also be effective for achieving the tungsten etch/corrosion
inhibiting desideratum of Kaisaki. It follows that the here
applied references would not have provided either a motivation or
Appeal No. 2003-1092
Application No. 09/692,730
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a reasonable expectation of success vis-à-vis the combination
proposed by the Examiner. In re O’Farrell, 853 F.2d 894, 903,
7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988).
Under these circumstances, we cannot sustain the Examiner’s
§ 103 rejection of all appealed claims as being unpatentable over
Kaisaki in view of Grumbine.
OTHER ISSUES
On pages 3-4 of the answer (as well as on page 3 of the final
office action), the Examiner makes the following statement:
However, Grumbine discloses a polishing
composition/slurry to polish TiN layer, the
slurry comprises from about 0.001 to about 2.0
weight percent of lysine (col 6, lines 5-23).
Grumbine’s slurry reads on a slurry comprises a
sufficient amout of lysine/arginine to suppress
the rate at which an underlying silicon-
containing dielectric layer is removed because
0.1 to about 5.0 weight percent of lysine in a
slurry, is defined in page 6 of the instant
specification, as a sufficient amount of
lysine/arginine to suppress the rate at which
an underlying silicon-containing dielectric
layer is removed.
This statement indicates that, in the Examiner’s view, the
lysine-containing slurry of Grumbine “reads on” the lysine-
containing slurry defined by at least certain of the appealed
claims (e.g., see independent claim 2 and claim 4 which depends
therefrom) because the lysine concentration taught by Grumbine
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Application No. 09/692,730
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overlaps the lysine concentration taught and claimed by the
Appellants. Stated otherwise, as it presently exists, the
application file record reflects that the Examiner believes
at least some of the appealed claims are unpatentable over the
disclosure of Grumbine. We will not here comment upon whether or
not such a belief is well founded since the appeal before us does
not present such an issue.
Nevertheless, the file record must be clarified in terms of
claim patentability versus unpatentability in relation to the
Examiner’s aforequoted statement. This is because, in the absence
of clarification, the Examiner’s statement could be interpreted as
militating against the validity of any patent claims which might
issue from this application. As a consequence, upon return of the
subject application to the jurisdiction of the Examining Corps, the
Examiner must address and resolve on the written record whether and
why he believes the slurry defined by some or all of the appealed
claims to be patentably distinguishable or indistinguishable from
the slurry disclosed by Grumbine.
For example, the Examiner may believe that an artisan in
formulating a slurry in accordance with Grumbine’s disclosure would
have found it obvious to select lysine specifically as a tungsten
etch/corrosion inhibiting agent and would have found it obvious to
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Application No. 09/692,730
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select specific concentrations from patentee’s broadly disclosed
range which fall within the Appellants’ disclosed and claimed range
of lysine concentration. If so and if the Examiner further
believes that the slurry resulting from these selections is
indistinguishable from the slurry claimed by the Appellants, the
Examiner must express these beliefs and the reasons therefor
in the context of a rejection under 35 U.S.C. § 103. On the other
hand, if the Examiner believes the appealed claims are patentable
over Grumbine, this belief and the reasons therefor must be
expressly stated in the record of this application file.
In any case, it is paramount that the record be clarified as
to whether and why the Examiner considers the appealed claims to be
patentable or unpatentable over the above discussed disclosure of
Grumbine.
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Application No. 09/692,730
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SUMMARY
The decision of the Examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
BRG/jrg
Appeal No. 2003-1092
Application No. 09/692,730
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