Ex Parte Hsu

Patent Trial and Appeal Board

Aug 7, 2014

10515372 (P.T.A.B. Aug. 7, 2014)

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.
10/515,372 11/22/2004 Chien-Pin Sherman Hsu 2198-14 B/PCT/US 1942
23869 7590 08/08/2014
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
WEBB, GREGORY E
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
08/08/2014 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 CHIEN-PIN SHERMAN HSU
____________

Appeal 2013-001152
Application 10/515,372
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, 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 45, 50, 51, 63, 70-73, 75, and 76. We
have jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse.

BACKGROUND
Appellant’s claimed invention “relates to methods and cleaning
compositions for cleaning microelectronic substrates.” Spec. 1:5-6.
Claim 70 is illustrative and reproduced below from the Claims
Appendix (App. Br. 14-15):
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70. A silicate free cleaning composition that is stable in strong
alkaline conditions of pH >9 and in the presence of H202 and
capable of cleaning photoresist and residues from microelectronic
substrates having copper metallization and a porous or non-porous
low-κ or high-κ dielectric, said cleaning composition being stable
when in the presence of hydrogen peroxide oxidizing agent, said
composition consisting essentially of:
from about 10 to about 90% by weight of a polar organic
solvent having hydrogen bonding capability and minimally or non-
reactive with an oxidizing agent, wherein the polar organic solvent
is selected from the group consisting of dimethylpiperidone,
sulfones, and sulfolanes;
from about 0.1 to about 10% by weight of a member
selected from the group consisting of a tetraalkylammonium
hydroxide, choline hydroxide, sodium hydroxide, and potassium
hydroxide;
from about 10 to about 60% water; and
from about 0.1 to about 5% by weight a chelating or metal
complexing agent selected from the group consisting of trans-1,2-
cyclohexanediamine tetraacetic acid, ethane-1-hydroxy-1,1-
diphosphonate and ethylenediamine tetra(methylene phosphonic
acid).
The Examiner maintains,1 and the Appellant appeals, the rejection of
claims 45, 50, 51, 63, 70, and 71 under 35 U.S.C. § 103(a) as being
unpatentable over Sahbari (US 6,475,966 B1, issued Nov. 5, 2002) in view
of Honda (US 5,561,105, issued Oct. 1, 1996). App. Br. 6.

ANALYSIS
The Examiner finds that Sahbari teaches all of the requirements of the
claimed invention except for the specific chelating agents recited in the

1 In the Final Action, dated March 7, 2007 (hereinafter referred to as “Final
Act.”), the Examiner rejected claims 72, 73, 75, and 76 under 35 U.S.C.
§ 103(a) over Sahbari in view of Honda. The Examiner, however, withdrew
this rejection in the Examiner’s Answer to the Appeal Brief. Ans. 3-4.
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claims. Final Act. 3. The Examiner further finds that Honda “provides
details [of] beneficial chelating agents including the 1,2-cyclohexanediamine
tetraacetic acid in amounts ranging from 0.5-10%.” Id. at 4. According to
the Examiner, “both Honda and Sahbari [we]re aware of the benefits of
chelating agents,” and therefore “it would have been obvious to have
selected those specific chelating agents from Honda for use in the stripping
compositions of Sahbari as those chelating agents were well-known at the
time.” Id.
Appellant contends that the Examiner’s reliance upon Honda “for the
disclosure of 1, 2-dicyclohexanediamin [sic] tetraacetic acid as a chelating
agent is clearly erroneous” because
[t]he mention of 1, 2-dicyclohexanediamin [sic] tetraacetic acid
in the Honda patent (col. 5, lines 14-15) is only as a ligand to be
covalently bonded to a polymeric or oligomeric backbone (col.
5, lines 4-46). Such polymeric or oligomeric components
containing ligands covalently bonded thereto, which are the
components of the Honda formulation, are not present in the
compositions of Applicant's claims 45, 70 and 71.
App. Br. 9-10. Accordingly, Appellant argues that the combination of
Sahbari and Honda would not have resulted in the claimed compositions
because the “polymeric or oligomeric backbones containing the ligands . . .
are not the per se chelating or metal complexing agent recited in
[Appellant]’s claims 45, 70 and 71.” Id. at 10.
In Response, the Examiner finds that the “chelating reagents” in
Honda are formed by a reaction wherein a chelating acid is attached to the
polymeric or oligomeric backbone through a covalent bond. Ans. 5 (citing
Honda, col. 5, ll. 30-45). The Examiner further finds that “[i]t is well-
known that such reactions do not proceed to 100% completion.” Id. The
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Application 10/515,372

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Examiner concludes that “[a]s all reactions are incomplete, a remainder of
the claimed chelating acid would remain in solution and would anticipate the
[Appellant]’s claimed compound.” Id.
In the Reply Brief, Appellant argues that the Examiner’s conclusion,
specifically that Honda’s reaction does not proceed to completion and results
in the presence of unreacted acid in solution, is unsupported. Reply Br. 2.
According to Appellant, “[t]here is absolutely no basis for such a speculative
contention, and, even if true, would provide no basis for the further
necessary contention that Honda teach[es] that such residual unbound
reagent compounds would be suitable for use as chelating agents per se in
the compositions of Sahbari.” Id.
To support an obviousness rejection, all claim limitations must be
taught or suggested by the prior art applied. See In re Royka, 490 F.2d 981,
984-85 (CCPA 1974). The Examiner bears the initial burden of presenting
evidence of a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant that the Examiner erred in rejecting
claims 45, 50, 51, 63, 70, and 71 under 35 U.S.C. § 103(a) as being
unpatentable over Sahbari in view of Honda. We do not find the evidence
presented by the Examiner to be sufficient to support a prima facie case of
obviousness. The Examiner offered no persuasive evidence to support the
finding that the reaction disclosed in Honda involving a chelating acid and a
polymeric or oligomeric backbone would not “proceed to 100%
completion,” and, therefore, 1, 2-cyclohexanediamine tetraacetic acid
“would remain in solution” and “anticipate the [Appellant’s] claimed
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Application 10/515,372

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compound.” Ans. 5. Nor did the Examiner offer sufficient evidence
demonstrating that “such residual unbound reagent compounds would be
suitable for use as chelating agents per se in the compositions of Sahbari.”
Reply Br. 2. Moreover, the Examiner identifies no other reference
disclosing the required chelating or metal complexing agent, including 1, 2-
cyclohexanediamine tetraacetic acid.
Therefore, we are constrained by the record to find that the Examiner
erred in rejecting claims 45, 50, 51, 63, 70, and 71 under 35 U.S.C. § 103(a)
as being unpatentable over Sahbari in view of Honda.

CONCLUSION
For the reasons set forth above, we reverse the rejection under
35 U.S.C. § 103(a) of claims 45, 50, 51, 63, 70, and 71.

REVERSED

cdc