Ex parte Joshi et al.

Board of Patent Appeals and Interferences

Oct 13, 2000

08367565 (B.P.A.I. Oct. 13, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
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not written for publication and is not binding precedent of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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RAJIV V. JOSHI
and MANU J. TEJWANI
__________
Appeal No. 1998-1095
Application No. 08/367,565
__________
ON BRIEF
__________
Before HAIRSTON, BARRETT, and BLANKENSHIP, Administrative
Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 3, 5 through 14, 16 through 20, 39 and 40.
Appeal No. 1998-1095
Application No. 08/367,565
2
The disclosed invention relates to a soft metal
conductor. The soft metal in the soft metal conductor is
selected from the group consisting of Al, Cu and Ag.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A soft metal conductor comprising an upper-most layer
consisting of grains capable of providing a substantially
scratch-free planar surface upon polishing in a subsequent
chemical mechanical polishing step, said soft metal is
selected from the group consisting of Al, Cu, Ag, binary and
ternary alloys of Al, Cu and Ag.
The reference relied on by the examiner is:
Kikkawa 5,345,108 Sept. 6,
1994
Claims 1 through 3, 5 through 14, 16 through 20, 39 and
40 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Kikkawa.
Reference is made to the final rejection, the brief and
the answer for the respective positions of the appellants and
the examiner.
OPINION
The 35 U.S.C. § 102(a) rejection of claims 1 through 3, 5
through 14, 16 through 20, 39 and 40 is reversed.
Appeal No. 1998-1095
Application No. 08/367,565
3
According to the examiner (Final rejection, page 2),
Kikkawa discloses a first soft metal layer 105 of AlSiCu, and
a second soft metal layer 107 of AlSiCu. The examiner further
states (Final rejection, page 3) that the “process limitations
cannot impart patentability to product claims where the
product is not patentably distinguished over prior art.”
Appellants argue (Brief, page 5) that “the present
application does not contain any product by process claims.”
We agree. The phrase “capable of providing a substantially
scratch-free planar surface upon polishing in a subsequent
chemical mechanical polishing step” is a statement of intended
use of the soft metal conductor, and it is not a process step
for making the soft metal conductor per se.
Appellants also argue (Brief, page 6) that:
The present invention teaches a soft metal
selected from the group consisting of Al, Cu, Ag,
binary and ternary alloys of Al, Cu and Ag. This is
equivalent to reciting a soft metal selected from
the group consisting of Al, Cu, Ag, AlCu, AgCu, AlAg
and AlCuAg. On the other hand, the Kikkawa
reference teaches an alloy of AlCuSi wherein Si is
not a component presented in any one of the
compositions claimed by the Appellant[s]. Moreover,
at no place in the Kikkawa patent has [Kikkawa]
mentioned that his alloy is a soft metal that is
scratch resistant. Furthermore, Kikkawa has not
taught, disclosed or suggested the grain size of the
alloy particles.
Appeal No. 1998-1095
Application No. 08/367,565
In Mannesmann Demag Corp. v. Engineered Metal Products1
Co., Inc., 793 F.2d 1279, 1282, 230 USPQ 45, 46 (Fed. Cir.
1986), the Court noted that “the phrase ‘consisting of’
appears in clause (a), not the preamble of the claim, and thus
limits only the element set forth in clause (a).”
4
We agree with appellants’ arguments. The phrase
“consisting of” in the claims limits each of the claims to1
the elements recited therein. Thus, the claims on appeal are
not anticipated by the teachings of Kikkawa because of the
presence of Si in the alloy AlSiCu.
DECISION
The decision of the examiner rejecting claims 1 through
3, 5 through 14, 16 through 20, 39 and 40 under 35 U.S.C. §
102(a) is reversed.
REVERSED
Kenneth W. Hairston )
Administrative Patent Judge )
)
)
)
Lee E. Barrett ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 1998-1095
Application No. 08/367,565
5
Howard B. Blankenship )
Administrative Patent Judge )
KWH:tdl
Randy W. Tung
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