11543835 (B.P.A.I. Aug. 23, 2010)

Ex Parte Lyu et al

Board of Patent Appeals and InterferencesAug 23, 2010

11543835 (B.P.A.I. Aug. 23, 2010)

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. 11/543,835 10/06/2006 Yi Yeol Lyu 6661-000013/US/COA 7467 30593 7590 08/24/2010 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER LISTVOYB, GREGORY ART UNIT PAPER NUMBER 1796 MAIL DATE DELIVERY MODE 08/24/2010 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 YI YEOL LYU, KWANG HEE LEE, JI MAN KIM, SEOK CHANG, JIN HEONG YIM, and JAE GEUN PARK ____________ Appeal 2010-009991 Application 11/543,835 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, BRADLEY R. GARRIS, and KAREN M. HASTINGS, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 19-22. We have jurisdiction under 35 U.S.C. § 6. 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 2010-009991 Application 11/543,835 We AFFIRM. Appellants claim a porous dielectric thin film comprising a pore generating material of a mixture of Gemini detergent and quaternary alkyl ammonium salt. Further details regarding this claim subject matter are set forth in representative claim 20 which reads as follows: 20. A porous dielectric thin film, comprising: (1) a pore generating material of a mixture of Gemini detergent represented by the formula (8) and quaternary alkyl ammonium salt represented by the formula (9); (2) thermo-stable organic or inorganic matrix precursor; and (3) a solvent for dissolving both the said material and/or salt and the matrix precursor: wherein, R1 and R2 are independently a methyl group or a ethyl group; R3 is a C5-40 alkyl group; X is a halogen atom; r is independently a hydrogen atom, a methyl group or a C1-10 alkoxy group; j is 0 or 1; n is an integer from 1 to 12; and 2 Appeal 2010-009991 Application 11/543,835 m is an integer from 0 to 10, and wherein, N is a nitrogen atom; X is a halogen atom; and L1, L2, L3, and L4 are independently a C1-30 alkyl group, wherein the content of the pore-generating material is 0.1~95 wt.% of the solid components (the pore-generating material + the matrix precursor), and wherein the content of the solvent is 20.0~99.9 wt.% of the composition (the matrix precursor + the pore-generating material + the solvent). The following references are relied upon by the Examiner in the rejections before us: Lyu ‘087 2004/0138087 A1 Jul. 15, 2004 Lyu ‘202 7,129,202 B2 Oct. 31, 2006 Robert Thornton Morrison & Robert Neilson Boyd, Organic Chemistry 738- 739 (Allyn & Bacon, Inc., 3d ed. 1973). The Examiner rejects claims 19-22 under 35 U.S.C. § 102 (b) as being anticipated by, or alternatively under 35 U.S.C. § 103 (a) as being obvious over, Lyu ‘087 as evidenced by Morrison (Ans. 3-7). The Examiner also rejects claims 19-22 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims of Lyu ‘202 in view of (i.e., as evidenced by) Morrison (id. at 7-10). 3 Appeal 2010-009991 Application 11/543,835 Appellants have not separately argued the individual claims under rejection (App. Br. 11-15). Accordingly, the rejected claims will stand or fall with representative claim 20. We sustain these rejections for the reasons fully detailed in the Answer (Ans. 3-11). We add the following comments for emphasis. Each of the Examiner's rejections is based on the theory that the quaternary alkyl ammonium salt required by claim 20 is inherently present in the reaction mixture disclosed and claimed by the Lyu publication and patent respectively as evidenced by Morrison (id. at 6, paragraph bridging 8- 9, 11). Appellants argue that the Examiner does not provide objective evidence or cogent technical reasoning to support the Examiner’s inherency theory (App. Br. 12, 14). This argument is erroneous as clearly revealed by the Answer citations in the paragraph above. Moreover, on this record, Appellants have not challenged the evidence (i.e., Morrison) and technical reasoning presented by the Examiner in these Answer citations. Appellants also argue that the Lyu references do not disclose the content percentages of pore-generating material and solvent required by representative claim 20 (id. at paragraph bridging 12-13, 15). This argument is unpersuasive because it fails to rebut or even acknowledge the Examiner's contrary findings of record (Ans. 5-6, 8, 11). In this regard, we are cognizant of Appellants' statement that "[e]xample 4 of Lyu teaches 0.5% of water (solvent), rather than 20.0~99.9 wt.% of the composition as recited in claims 19 and 20" (Reply Br. 7). However, Appellants identify no support for this statement, and our independent study of example 4 reveals no such support. 4 Appeal 2010-009991 Application 11/543,835 Finally, we observe that the Appellants present new arguments in the Reply Brief (Reply Br. 5 at first para., para. bridging 5-6, 6 at first full para.) which were not but could have been presented in the Appeal Brief. We will not consider these new arguments because Appellants have not explained why the arguments were not presented in the Appeal Brief. Under regulations governing appeals to the Board, any argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the arguments could not have been presented in the Appeal Brief, as fully explained in Ex parte Borden, 93 USPQ2d 1473, 1473-1477 (BPAI 2010) and Ex parte Atsuhisa Nakashima, 2010 WL 191183 at *3-*5 (BPAI Jan. 07, 2010). In summary, we have sustained each of the Examiner's rejections for the reasons set forth above and in the Answer. 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) (2008). AFFIRMED ssl HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 5