Ex Parte Kojima et al

Patent Trial and Appeal Board

Dec 6, 2016

11522413 (P.T.A.B. Dec. 6, 2016)

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.
11/522,413 09/18/2006 Hiroshi Kojima 296041US0CONT 3488
22850 7590 12/08/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
DAHIMENE, MAHMOUD
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
12/08/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ oblon. com
oblonpat @ oblon. com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROSHI KOJIMA, HITOSHI MISHIRO, and MASABUMIITO
Appeal 2015-000914
Application 11/522,413
Technology Center 1700
Before BRADLEY R. GARRIS, JULIA HEANEY, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s rejection of claims 1—8 and 11—14.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Non-Final Office Action appealed from,
mailed January 15, 2014 (“Non-Final Act.”), the Appeal Brief dated June 5,
2014 (“App. Br.”), the Examiner’s Answer to the Appeal Brief dated
September 18, 2014 (“Ans.”), and the Appellants’ Reply Brief dated October
28, 2014 (“Reply Br.”).
2 Appellants identify Asahi Glass Company, Limited as the Real Party in
Interest. App. Br. 1.
Appeal 2015-000914
Application 11/522,413
The Claimed Invention
Appellants’ disclosure relates to a polishing method for a glass
substrate required to have high surface smoothness and surface precision and
to be used for EUV (Extreme Ultra Violet) lithography in a process for
producing semiconductors. Spec. 11,11. 5—11; Abstract. Claim 1 is
representative of the claims on appeal and is reproduced below from the
Claims Appendix to the Appeal Brief (App. Br. i) (key disputed limitations
in italics):
1. A polishing method for a quartz glass substrate
comprising polishing a surface of a quartz glass substrate
containing Si02 as the main component and HO2, with a
polishing slurry comprising water and colloidal silica having an
average primary particle size of at most 50 nm and having the
pH adjusted to be within a range of from 0.5 to 4, so that the
surface roughness Rms will be at most 0.15 nm as measured by
an atomic force microscope, wherein the content of the
colloidal silica in the polishing slurry is from 10 to 30 mass%,
wherein the polishing is carried out so that the number of
concave defects with widths of at least 60 nm will be not more
than 3 within an area of 142 mm x 142 mm.
The Reference
The Examiner relies on the following prior art reference as evidence
in rejecting the claims on appeal:
Oshimaetal., US 2004/0266323 A1 Dec. 30, 2004
(hereinafter “Oshima”)
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The Rejection
On appeal, the Examiner maintains the following rejection: Claims
1—8 and 11—14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oshima. Ans. 2; Non-Final Act. 2.3
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Non-Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
Appellants argue claims 1—8 and 11—14 as a group. We select claim 1
as representative and the remaining claims stand or fall with claim 1.
37 C.F.R. §41.37(c)(l)(iv).
The Examiner finds that Oshima suggests a polishing method for a
quartz glass substrate satisfying all of the limitations of claim 1 and
concludes that Oshima would have rendered claim 1 obvious. Ans. 2—5
(citing Oshima 34—39, 48, 111, 127, 154, 158, and 160).
Appellants argue that the Examiner’s rejection should be reversed for
failing to establish a prima facie case of obviousness. App. Br. 4, 19. In
3 Claims 13 and 14 appear to have been inadvertently omitted from the
Statement of Rejection as stated on page 2 of both the Answer and Non-
Final Action. See Ans. 7 (setting forth the Examiner’s rejection of claims 13
and 14 under 35 U.S.C. § 103(a) as being unpatentable over Oshima); Non-
Final Act. 7 (same).
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Application 11/522,413
particular, Appellants argue that: (1) “Oshima . . . does not disclose or
suggest using a quartz glass” (App. Br. 4); (2) “Oshima neither discloses nor
suggests the claimed [content of the colloidal silica in the] polishing slurry”
{id. at 5—7); and (3) based on Oshima’s disclosure, “the skilled artisan would
[have been] led away from the claimed colloidal silica amount” {id. at 8).
We are not persuaded by Appellants’ arguments. On the record
before us, we find that a preponderance of the evidence and sound technical
reasoning support the Examiner’s conclusion and finding that Oshima
suggests all of claim l’s limitations, including using a quartz glass and the
claimed content of the colloidal silica in the polishing slurry. Oshima,
Abstract, H3A-39, 48, 111, 127, 154, 158, and 160.
As the Examiner finds (Ans. 2, 4), Oshima discloses a polishing
process for a substrate comprising polishing a surface of a glass substrate
containing Si02 as the main component and that the polishing composition
may include “glassy substances such as glass” and metals such as
“titanium[] and alloys thereof.” Oshima, Abstract, 1158. In light of
Oshima’s disclosures, we agree with the Examiner’s conclusion (Ans. 4) that
it would have been obvious to one of ordinary skill in the art at the time the
invention was made to expect Oshima’s polishing method to be effective on
any glassy substance including quartz glass because the list of substrates
Oshima discloses encompasses silicon oxide quartz with any impurities
including titanium. Oshima, 1158. Appellants’argument exposes no
reversible error in the Examiner’s analysis and factual findings in this
regard.
Appellants’ argument that Oshima’s “silicon dioxide is not disclosed
as being in a glass, but rather is in a ceramic material” (App. Br. 7) is
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Application 11/522,413
unpersuasive because it too narrowly construes the scope of Oshima’s
disclosure and what Oshima’s teachings would have suggested to one of
ordinary skill in the art. A reference must be considered for all that it
teaches, including the reasonable inferences that would be drawn by the
skilled artisan. See In re Preda, 401 F.2d 825, 826 (CCPA 1968). As the
Examiner points out (Ans. 7), Oshima suggests polishing a broad category of
glassy substrates (Oshima, 1158) and because quartz glass is a common,
well-known, glassy substrate—comprised mainly of silicon dioxide—one of
ordinary skill would have understood that quartz glass could be used and
been motivated to employ Oshima’s polishing process on quartz glass, and
have a reasonable expectation of success in doing so.
We also agree with the Examiner’s finding (Ans. 2, 3) that Oshima
suggests the claimed content of the colloidal silica in the polishing slurry, as
recited in claim 1. Oshima, Abstract, || 34—36, 48, 111, 127, 154, 160. In
particular, as the Examiner finds (Ans. 2, 3), Oshima discloses a polishing
slurry comprising water and colloidal silica and that the colloidal silica may
be “0.5 to 20% by weight,” which overlaps the claimed range and reads on
claim 1. Oshima, Abstract, ||34—36, 111.
Appellants fail to direct us to sufficient evidence or provide a
persuasive technical explanation of why the Examiner’s findings and
analysis in this regard, particularly at pages 2 and 3 of the Answer, lack a
rational underpinning or are otherwise based on reversible error.
Appellants’ calculations at page 6 of the Appeal Brief are
unpersuasive of error on the Examiner’s part. Indeed, as the Examiner
correctly points out (Ans. 8), Appellants’ own calculations regarding the
content of colloidal silica based on Oshima’s disclosures (App. Br. 7),
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Application 11/522,413
suggest amounts of 12 wt. %, 13.6 wt. %, and 20 wt. %, respectively, which
all fall within the claimed range.
Moreover, Appellants’ assertion that “Oshima neither discloses nor
suggests the claimed polishing slurry content of the claimed invention with
sufficient specificity so as to lead the artisan to this limitation or the benefits
flowing therefrom” (App. Br. 5, 6) is conclusory and, without more,
insufficient to establish reversible error in the Examiner’s findings and
analysis in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); cf. also In reLovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011);
37 C.F.R. § 41.37(c)(l)(iv).
Appellants’ argument that “the skilled artisan would be led away from
the claimed colloidal silica amount of amended Claim 1” (App. Br. 8) is
unpersuasive because Appellants do not identify sufficient evidence to
support it, and we will not read into a reference a teaching away where no
such language exists.4 Cf. DyStar Textilfarben GmbHv. C.H. Patrick Co.,
464 F.3d 1356, 1364 (Fed. Cir. 2006); In re Fulton, 391 F.3d 1195, 1201
(finding that there is no teaching away where the prior art’s disclosure “does
not criticize, discredit, or otherwise discourage the solution claimed”).
Fastly, Appellants argue that the Examiner’s rejection should be
reversed because the claimed method yields unexpected results and “the
Declarations . . . filed on June 16, 2009, July 22, 2010, March 29, 2013, and
December 17, 2013, are sufficient to rebut... aprima facie case of
obviousness.” App. Br. 10. In particular, Appellants argue that:
4 See also App. Br. 8 (Appellants urging that “[e]ven if the examples are not
a true ‘teaching away’ they are important to consider when looking at how
the artisan would interpret the disclosure of Oshima”).
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Application 11/522,413
the specifically claimed colloidal silica content in the
polishing slurry . . . provides an unexpected advantage as
compared to the colloidal silica content similar to those
utilized in Oshima.
Id. at 10. Appellants further argue that the data provided in the declarations
“illustrates the criticality of the content of the colloidal silica in the polishing
slurry being within the claimed range of 10 to 30 mass%” and “clearly
show[s] the criticality of the entire range.” Id. at 12, 14. Appellants also
argue that the declaration evidence demonstrates “the unexpected results
obtained by using a quartz glass as claimed.” Id. at 16.
We are not persuaded by Appellants’ arguments. In attempting to
overcome a prima facie case of obviousness by showing unexpected results,
the burden rests with Appellants to establish: (1) that there actually is a
difference between the results obtained through the claimed invention and
those of the prior art; and (2) that the difference actually obtained would not
have been expected by one skilled in the art at the time of the invention. See
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
unexpected results rests on he who asserts them”).
Appellants have failed to satisfy the requisite burden. Appellants do
not identify sufficient evidence that there actually is a difference between the
results obtained through the claimed invention and those of the prior art and
that the difference actually obtained would not have been expected by one
skilled in the art at the time of the invention. As the Examiner finds (Ans.
9), Appellants’ declaration evidence regarding polishing quartz glass is
insufficient to show unexpected results because Oshima discloses that any
glassy substrate could be polished using such method and one of ordinary
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Application 11/522,413
skill would have understood quartz glass to be encompassed by Oshima’s
generic disclosure.
Further, as the Examiner finds regarding the claimed content of
colloidal silica (Ans. 9), the experimental data provided in the declarations is
not commensurate in scope with the full claimed range of 10 to 30 mass%.
In particular, the data presented does not show any negative results for
colloidal silica content immediately above the claimed upper limit of 30 wt.
% and shows only a single data point (6.4 wt. %) with negative results below
the lower limit of the claimed range, which, without more, is not sufficient
to show unexpected results for the entire claimed range.
Accordingly, we affirm the Examiner’s rejection of claims 1—8 and
11—14 under 35 U.S.C. § 103(a) as unpatentable over Oshima.
DECISION/ORDER
The Examiner’s rejections of claims 1—8 and 11—14 are affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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