11489054 (B.P.A.I. Feb. 8, 2011)

Ex Parte LI

Board of Patent Appeals and InterferencesFeb 8, 2011

11489054 (B.P.A.I. Feb. 8, 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. 11/489,054 07/19/2006 Shoutian Li 100287 9098 29050 7590 02/08/2011 STEVEN WESEMAN ASSOCIATE GENERAL COUNSEL, I.P. CABOT MICROELECTRONICS CORPORATION 870 NORTH COMMONS DRIVE AURORA, IL 60504 EXAMINER PARVINI, PEGAH ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 02/08/2011 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 SHOUTIAN LI ____________ Appeal 2009-013473 Application 11/489,054 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and BEVERLY A. FRANKLIN, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013473 Application 11/489,054 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6.2 The claimed invention is directed to a chemical-mechanical polishing composition for tantalum. Representative claim 1 is reproduced below. 1. A chemical-mechanical polishing composition for polishing a tantalum containing substrate consisting essentially of: (a) about 0.1 to about 10 percent by weight of a zirconia or fumed alumina abrasive; (b) about 0.1 to about 10 percent by weight of an alkali metal iodate salt; and (c) an aqueous liquid carrier therefor the composition having a pH of at least about 10. Appellant appeals the following rejections: Claims 1-9 stand rejected under 35 U.S.C. § 102(a) as anticipated by Fang, U.S. Patent 6,976,905 B1, issued December 20, 2005. Claims 1-9 stand rejected under 35 U.S.C. § 102(a) as anticipated by Li, Published U.S. Patent Application 2005/0005525A1, dated January 13, 2005. The issue on appeal is: Did the Examiner err in determining that Fang and Li each specifically describe a chemical-mechanical polishing composition for tantalum sufficient to anticipate the independent claims as 2 In this decision we have considered Appellant’s arguments presented in the Briefs, filed December 3, 2008, and May 4, 2009. Appeal 2009-013473 Application 11/489,054 3 required under 35 U.S.C. § 102. We answer this question in the affirmative. Therefore, We REVERSE.3 The issue turns on whether Fang and Li each specifically describe or suggest a chemical-mechanical polishing composition having a pH of at least about 10 consisting essentially of (1) zirconia or fumed alumina, (2) an alkali metal iodate salt, and (3) an aqueous liquid carrier as required by the independent claims. The Examiner bears the initial burden of establishing a prima facie case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986). Anticipation under 35 U.S.C. § 102 requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). The reference must “direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972). The Examiner found that Fang and Li each describe a chemical- mechanical polishing composition as required by the independent claims. (Ans. 4-5). We agree with the Appellant that the generic compositions disclosed in Fang and Li do not anticipate the present invention because they do not describe and enable the claimed invention sufficiently to place a person of ordinary skill in the art in possession of the invention. (App. Br. 3-5; Reply Br. 4). More specifically, Appellant asserts and we agree that Fang and Li 3 We select independent claim 1 as representative of the rejected subject matter. Appeal 2009-013473 Application 11/489,054 4 do not anticipate the claimed invention because Fang recites a long list of possible oxidizers and a broad pH range and Li recites a long list of inorganic abrasives as optional components and a wide pH range. (App. Br. 3-4). The Examiner has not adequately explained how the generic disclosures of Fang and Li specifically provide an express disclosure sufficient to place a person of ordinary skill in the art in possession of the claimed invention. Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing anticipation under 35 U.S.C. § 102. Therefore, the rejections of claims 1-9 under § 102 are reversed. ORDER The decision of the Examiner rejecting claims 1-9 under 35 U.S.C. § 102, is reversed. REVERSED bar STEVEN WESEMAN ASSOCIATE GENERAL COUNSEL, I.P. CABOT MICROELECTRONICS CORPORATION 870 NORTH COMMONS DRIVE AURORA, IL 60504