Ex Parte Leng

Board of Patent Appeals and Interferences

Nov 30, 2007

10132572 (B.P.A.I. Nov. 30, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YAOJIAN LENG
____________

Appeal 2007-003252
Application 10/132,572
Technology Center 3700
____________

Decided: April 6, 2010
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
CHARLES F. WARREN, and JEFFREY T. SMITH,
Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-18. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention relates to a method of providing a slurry
useful for chemical mechanical polishing (CMP). An understanding
Appeal 2007-3252
Application 10/132,572

of Appellant’s claimed invention can be gleaned from independent
claim 1 which appears below:
1. A method of providing a slurry used for CMP process
comprising the steps of:
mixing abrasive part and chemical part of said slurry
and
aging said mixture at least five days or the equivalent of
being aged at least five days by an accelerating aging step
before polishing a wafer using the aged slurry.
The Examiner relies on the admitted prior art (APA)
appearing on page 4 of the present Specification in rejecting the
appealed subject matter.
I. Claims number 1-18 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
The issue presented is: Has the Examiner established that the
subject matter of claims 1-18 fails to meet the requirements of 35
U.S.C. § 112, second paragraph? We answer this question in the
negative.
The Examiner contends that the independent claims recite that
the slurry may be alternatively aged the equivalent of at least five
days by "an accelerating aging step". However, the parameters
which would define this equivalency are not specified in the claimed
invention (Answer 3).
“The legal standard for definiteness [under the second
paragraph of 35 U.S.C. § 112] is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). The inquiry is to determine
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whether the claim sets out and circumscribes a particular area with a
reasonable degree of precision and particularity. The definiteness of
the language employed in a claim must be analyzed not in a vacuum,
but in light of the teachings of the particular application. In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971).
After consideration of the present record, we determine that a
person of ordinary skill in the art would have recognized that the
slurry utilized in the claimed process would have the characteristics
of a slurry that has been aged at least five days. The Specification
discloses the aging of the slurry may be enhanced by elevated
temperature, mechanical stirring and re-circulation (see
Specification [0017]). There is nothing inherently wrong with
defining some part of an invention in functional terms or based upon
specified properties. The identification of a component based on its
characteristics does not, in and of itself, render a claim improper.
Compare In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Thus,
we determine that the claims reasonably apprise those of ordinary
skill in the art of their scope. Accordingly, we reverse the
Examiner’s § 112, second paragraph, rejection of claims 1-18 as
indefinite.
II. Claims 1-18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the admitted prior art (APA).1

1 The Examiner and Appellant indicate that the APA appears in the
Specification on page 4, line 6-14. This portion of the specification
is also identified as numbered paragraph [0015].
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Application 10/132,572

We have thoroughly reviewed each of Appellant’s arguments
for patentability. However, we are in complete agreement with the
Examiner that the claimed subject matter would have been obvious
to one of ordinary skill in the art within the meaning of § 103 in
view of the applied prior art. Accordingly, we will sustain the
Examiner's rejection.
The issue presented is as follows:
Has the Examiner reasonably determined that APA would
have led a person of ordinary skill in the art to form a slurry
polishing composition for least about one week prior to using in a
method for chemical mechanical polishing a wafer, within the
meaning of 35 U.S.C. § 103? On this record, we answer this
question in the affirmative.
Under 35 U.S.C. § 103, the factual inquiry into obviousness
requires a determination of: (1) the scope and content of the prior
art; (2) the differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) secondary
considerations. Graham v. John Deere Co. , 383 U.S. 1, 17-18
(1966). “[A]nalysis [of whether the subject matter of a claim would
have been obvious] need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex,
Inc., 127 S. Ct. 1727, 1740-41 (2007) quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006); see also DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed.
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Application 10/132,572

Cir. 2006) (“The motivation need not be found in the references
sought to be combined, but may be found in any number of sources,
including common knowledge, the prior art as a whole, or the nature
of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969) (“Having established that this knowledge was in the art, the
examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common
sense of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference.’”); In re Hoeschele, 406
F.2d 1403, 1406-407 (CCPA 1969) (“[I]t is proper to take into
account not only specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected
to draw therefrom . . .”). The analysis supporting obviousness,
however, should be made explicit and should “identify a reason that
would have prompted a person of ordinary skill in the art to combine
the elements” in the manner claimed. KSR, 127 S. Ct. at 1731.
Appellant contends that the APA does not teach or suggest
utilizing the polishing composition after it has been aged for at least
five days and provides a preference for mixing the slurry fresh
everyday (Appeal Br. 13). Appellant further contends that the APA
teaches away from aging the slurry beyond a day (Reply Br. 5).
We agree with the Examiner that the APA describes slurry
compositions that are commercially available under the name
Electropolish (Answer 3). The Specification reveals that the slurry
compositions are stable for about 1 week after mixing (Specification
[0015]). The Examiner concludes “[i]t’s [sic, its] shelf-life of up to
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about a week, allows the slurry to be used four days, five days, six
days, up to about seven days after initial mixing of the slurry
ingredients.” (Answer 3). As such, a person of ordinary skill in the
art would have recognized based on the teachings of the APA that
the slurry composition could have been mixed for about one week
prior to use. The disclosure of a preference for mixing the slurry
fresh prior to use does not detract from the disclosure that the
composition is stable for about a week. As such a person of
ordinary skill in the art would have reasonably expected that the
slurry composition would have been suitable for chemical polishing
for about one week after mixing. “For obviousness under § 103, all
that is required is a reasonable expectation of success.” In re
O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988).
Appellant’s arguments regarding the accelerated aging
process are not persuasive. The argued aging process is an
alternative to storing the slurry composition to age for at least five
days as required by the independent claims. Appellant has not
argued that methods for accelerated aging were unknown and
nonobvious to persons of ordinary skill in the art prior to the date of
filing the present application.
For the foregoing reasons and those presented in the Answer,
the rejection of claims 1-18 under 35 U.S.C. § 103(a) is affirmed.
As a final point with respect to the § 103 rejection, we note that
Appellant bases no argument upon objective evidence of
nonobviousness, such as unexpected results.

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Application 10/132,572

ORDER
The rejection of claims 1-18 under 35 U.S.C. § 112, second
paragraph is reversed. The rejection of claims 1-18 under 35 U.S.C.
§103 (a) is affirmed. Accordingly, the decision of the Examiner 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)(1)(iv).
AFFIRMED

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