11630603 (B.P.A.I. Dec. 29, 2011)

Ex Parte Kane

Board of Patent Appeals and InterferencesDec 29, 2011

11630603 (B.P.A.I. Dec. 29, 2011)

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. 11/630,603 12/20/2006 Sean M. Kane 1740 WO/US 7125 7590 12/30/2011 Mallinckrodt Inc 675 McDonnell Boulevard P O Box 5840 St Louis, MO 63134 EXAMINER DELCOTTO, GREGORY R ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 12/30/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte SEAN M. KANE ________________ Appeal 2010-007570 Application 11/630,603 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007570 Application 11/630,603 2 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s refusal to allow claims 7 and 11. We have jurisdiction pursuant to 35 U.S.C. § 6. Claims 21, 25, 29, and 30, the other claims pending in this application, stand withdrawn from consideration by the Examiner. We REVERSE. STATEMENT OF THE CASE The subject matter on appeal is directed to a stripping and cleaning composition. Claim 7 is illustrative: 7. A stripping and cleaning composition for cleaning microelectronics substrates, the composition consisting of: about 20 to about 80 wt% of the composition of N- methyl pyrrolidone, monoethanolamine in an amount of from about 10% to about 45% based on the weight of the composition, from about 5% to about 15% by weight of the composition of diethylene glycol as a metal removing compound, catechol in an amount sufficient to neutralize from about 3% to about 75% by weight of the monoethanolamine such that the stripping composition has an aqueous pH of from about 9.6 to about 10.9, and water. The Examiner maintains the rejection of claims 7 and 11 under 35 U.S.C. § 103(a) as unpatentable over Lee (2004/0018949 A1, published Jan. 29, 2004) and Tanabe (US 5,795,702, issued Aug. 18, 1998). ISSUE Did Appellant establish that the Examiner reversibly erred in determining that Lee and Tanabe would have suggested a stripping and cleaning composition having an amount of diethylene glycol within the Appeal 2010-007570 Application 11/630,603 3 range required by claim 7 within the meaning of § 103? We decide this issue in the affirmative. PRINCIPLE OF LAW “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). FACTUAL FINDINGS 1. The Examiner finds that Lee teaches a photoresist stripping composition containing at least 10 wt% of a monoethanolamine; about 5 to about 40 wt% catechol; and the balance water or other polar solvent such as N-substituted pyrrolidone. (Ans. 3). 2. The Examiner finds that Lee does not teach that its photoresist stripping composition contains diethylene glycol. Id. 3. The Examiner finds that Tanabe teaches the use of a photoresist stripping composition comprising organic solvents such as diethylene glycol. Id. at 4. ANALYSIS AND CONCLUSION The Examiner concludes that it would have been obvious to one of ordinary skill in the art to substitute the diethylene glycol taught by Tanabe with 10% of Lee’s N-methyl pyrrolidone because the art recognizes that diethylene glycol and N-methyl pyrrolidone are equivalents. (Ans. 4, 6, and 7; see also FF 1-3). Appeal 2010-007570 Application 11/630,603 4 Appellant argues that Examiner has relied upon impermissible hindsight because the Examiner has not provided an adequate reason to employ an amount of diethylene glycol to be within the range (i.e., about 5% to about 15% by weight) required by claim 7. (App. Br. 12 and 13). We agree with Appellant. While the Examiner concludes (Ans. 4, 6, and 7) that it would have been obvious to one of ordinary skill in the art to substitute the diethylene glycol taught by Tanabe with 10% of Lee’s N-methyl pyrrolidone, the Examiner fails to direct us to any credible evidence or provide any persuasive explanation to support the Examiner’s conclusion that it would have been obvious to substitute diethylene glycol with N-methyl pyrrolidone in the amount (i.e., 10%) stated by the Examiner. Indeed, as correctly pointed out by Appellant at pages 9 and 10 of the Appeal Brief, Tanabe teaches at column 2, lines 42-43 and 59-60 and column 5, line 14 that its solvent, which may be diethylene glycol, must be present in an amount from 35-80%. The Examiner simply fails to provide any credible reason to support the Examiner’s conclusion that it would have been obvious to arrive at a composition having an amount of diethylene glycol within the range required by claim 7. Accordingly, we do not sustain the Examiner’s rejection. ORDER The Examiner’s decision is reversed. Appeal 2010-007570 Application 11/630,603 5 REVERSED bar/sld