Ex Parte Moeggenborg et al

Board of Patent Appeals and Interferences

May 28, 2010

11442475 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KEVIN MOEGGENBORG
and MUKESH DESAI
____________________

Appeal 2009-011046
Application 11/442,475
Technology Center 1700
____________________

Decided: May 28, 2010
____________________

Before MICHAEL P. COLAIANNI, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 1, 3, 4, 6 through 18, and 20 through 32,
which are all of the claims pending in the above-identified application. We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of polishing a
substrate. Claims 1 and 10 are illustrative:
1. A method for polishing a substrate comprising the steps of:

providing a composition comprising an abrasive, a liquid
carrier, and a phosphorus-type mono-acid wherein said
composition has a pH of between about 1 and about 7;

providing a substrate selected from the group consisting of
sapphire and aluminum oxynitride;

providing means for physically abrading the substrate; and

abrading at least a portion of the substrate by contacting the
substrate with the means for physically abrading the substrate
and the composition.

10. The method of claim 1 wherein the acid concentration is
greater than about 0.0025 percent by weight.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Kido 5,800,577 Sep. 1, 1998
Hagan 2003/0077983 A1 Apr. 24, 2003
Scott 7,029,508 B2 Apr. 18, 2006

The Examiner maintains the following rejections:
1) Claims 1, 3, 4, 6-9, 12, 13, 17, 18, 20-26, and 321 under 35 U.S.C.
§ 103(a) over Scott and Hagan;

1 We note the Examiner's statement at page 3 of the Answer that claims 1, 4,
6-9, 17, 18, 21-24, 25, and 32 are rejected under § 103(a) over Scott and
Hagan is harmless error since it is apparent from the record that claims 1, 3,
4, 6-9, 12, 17, 18, 20-26, and 32 are rejected. See Office Action Summary
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2) Claims 10, 11, 14-16, and 27-31 under 35 U.S.C. § 103(a) over
Scott and Hagan, and further in view of Kido.

Rejection (1)

With respect to rejection (1), Appellants focus their arguments on
claim 1. (App. Br. 3-6 and Reply Br. 4-5). Accordingly, we address
Appellants' arguments regarding the rejection with respect to claim 1 only.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Did the Examiner err in combining Scott and Hagan to arrive at the
invention recited in claim 1? We decide this issue in the negative.

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and Final Office Action as
our own, except as to those findings that we expressly overturn or set aside in
the Analysis that follows. We add the following factual findings:
1. Appellants do not specifically dispute the Examiner's finding that

Scott discloses a method for polishing a substrate that includes
the step of: providing a composition such as abrasive, a liquid
carrier (col.2, lines 27-38), and a phosphorous type mono-acid
(col.34, lines 21-25), wherein said composition has a pH
between 1 and 11 (col.10, lines 34-36, col.34, lines 63-67,
col.35, lines 1-25); providing means for physically abrading the
structure by contacting the substrate with the means for

page in the Final Rejection mailed March 18, 2008; and Ans. 3-5; see also
Reply Br. 3 (stating that "[c]laims 1, 3, 4, 6-9, 12, 13, 17-18, 20-26, and 32"
are rejected under § 103(a) over Scott and Hagan).

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physically abrading the substrate and the composition (col.2,
lines 42-46, col.10, lines 10-15).

(Compare Ans. 3 with App. Br. 3-6 and Reply Br. 4-5).
In this regard, Scott teaches a "CMP [i.e., chemical mechanical polishing]
of a substrate," which may be a memory disk substrate. (Scott, col. 15, ll. 44
and col. 10, ll. 8-10; see also col. 1, ll. 25-26). Scott teaches that "[t]he
substrate can be a metal, a crystal, a semiconductor, an insulator, a ceramic,
a glass, or other materials which may be improved by oxidative CMP."
(Scott, col. 15, ll. 45-48). Scott also teaches that the "insulative structures
include dielectrics such as silica . . . [and] alumina." (Scott, col. 16, ll. 51-
52).
2. Appellants do not specifically dispute the Examiner's determination
that "Scott suggests that the CMP process is useful for insulative
structures that include dielectrics such as oxide and/or metal layers
(col.16, lines 14-16). It is noted that sapphire is “a crystal” that refers
to gem varieties of the mineral corundum, an aluminum oxide (Al2O3)
(alumina)." (Compare Ans. 6 with App. Br. 3-6 and Reply Br. 4-5).
3. Appellants do not specifically dispute the Examiner's determination
that "Hagan discloses the use of a substrate such as sapphire, which is
single crystal in nature (paragraph 0036)." (Compare Ans. 3 with
App. Br. 3-6 and Reply Br. 4-5). In this regard, Hagan teaches a
chemical mechanical process for a disk substrate, which may be a data
storage disk, by applying a "cleaning polish etch composition . . . to
the surface of the substrate while a pad mechanically rubs the surface
to etch the surface under polish conditions." (Hagan, ¶¶ [0001],
[0016], and [0059]). Hagan teaches that this substrate should have a
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"relatively high specific stiffness" and that "a number of materials
may be used for the disk substrate . . . [such as] alumina . . . [and]
sapphire." (Hagan, ¶¶ [0035] and [0036]).
Additional findings of fact may appear in the Analysis that follows.

PRINCIPLE OF LAW
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)(quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)).

ANALYSIS AND CONCLUSION
Appellants argue that
[O]ne of ordinary skill in the art, at the time of invention, would
have had to ignore common knowledge that sapphire and
aluminum oxynitride are fully oxidized substrates, and combine
these substrates of the Hagan '983 reference with the teaching
of a composition which requires an oxidizer for chemical
etching, as in the Scott '508 reference. There is no suggestion
or motivation provided by the Scott '508 reference to use their
oxidizers on fully oxidized substrates.

(App. Br. 4). In addition, Appellants argue that
the Examiner provides no appropriate reason for assuming that
one of ordinary skill in the art would combine the various
elements disclosed in the cited references in the precise manner
necessary to arrive at the subject matter of the pending claims -
without the improper hindsight knowledge of the present
invention. We find no suggestion to combine the teachings and
suggestions of the Scott '508 reference and the Hagan '983
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reference, as advanced by the Examiner, except from using
Appellants' invention as a template through a hindsight
reconstruction of the various elements.

Appellants argue there is no motivation to combine the references teachings
so as to achieve the claimed invention (App. Br. 5). Appellants also argue
that "[e]ven though Hagan teaches that sapphire my be a substrate for a data
storage disk, and that it may be superfinished using polishing compositions .
. . there would have been no motivation, and no reasonable expectation of
success, to modify the oxidative composition of Scott to polish sapphire."
(Reply Br. 4). We disagree.
Scott teaches a chemical mechanical polishing (CMP) process for,
inter alia, a memory disk substrate. (FF 1). Scott teaches that this substrate
may be a crystal. (FF 1). Scott also teaches that the substrate may be an
insulator having an "insulative structure . . . [that] include[s] dielectrics such
as silica [i.e., SiO2] . . . [and] alumina [i.e., Al2O3]." (FF 1). In other words,
Scott teaches that its substrate may be formed from oxidized materials such
as silica [i.e., SiO2] and alumina [i.e., Al2O3].
Scott, however, does not explicitly mention that its crystal substrate is
sapphire. Hagan teaches a CMP process for, inter alia, a data storage disk
substrate, which may be formed from materials such as alumina [i.e., Al2O3]
or sapphire and should have a "relatively high specific stiffness." (FF 3). In
this regard, Appellants do not specifically dispute the Examiner's
determination that "sapphire . . . is [a] single crystal." (FF 3) (emphasis
added). Nor do Appellants specifically dispute the Examiner's finding that
sapphire is a crystal form of aluminum oxide. (FF 2).
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Thus, we agree with the Examiner that it would have been obvious to
employ Hagan's sapphire disk substrate as Scott's crystal disk substrate in
order to provide the disk with a desired amount of stiffness. (See Ans. 3). In
doing so, one of ordinary skill in the art would have reasonably expected
that using sapphire as the disk would have provided the disk with stiffness. 2
Furthermore, we determine that the use of Hagan's sapphire disk
substrate as Scott's crystal disk substrate is nothing more than the predictable
use of a prior art element (i.e., sapphire disk substrate) according to its
established function (e.g., imparting stiffness to a disk). KSR, 550 U.S. at
417. (See FF 3).
Thus, it follows that the Examiner did not err in combining Scott and
Hagan to arrive at the invention recited in claim 1.

Rejection (2)
Appellants argue the claims as a group. (App. Br. 6-7 and Reply Br.
4-5). Accordingly, we address Appellants’ arguments regarding the
rejection with respect to claim 10 only. See 37 C.F.R. § 41.37(c)(1)(vii).

ADDITIONAL FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and Final Office Action as
our own, except as to those findings that we expressly overturn or set aside in
the Analysis that follows. We add the following factual findings:

2 We note that Hagan's sapphire substrate polished via a CMP process (FF 2)
appears to meet the sapphire wafer recited in product-by-process claim 12.
See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (holding that even
though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself).

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4. Appellants do not specifically dispute the Examiner's finding that
"[t]he applied art of Scott (co1.34, lines 21-25), Hagan (paragraph
0061) and Kido (co1.6, lines 10-30) teach the use of phosphoric acid
as a suitable stabilizing agent in the CMP of several substrates listed
above. Phosphoric acid is a weak acid which is commonly used in the
CMP process." (Compare Ans. 7 with App. Br. 6-7 and Reply Br. 4-
5). In this regard, Scott teaches a CMP composition having
phosphoric acid as a stabilizing agent in order to "facilitate or promote
stabilization of the composition against . . . decomposition.
Stabilizers can be used to extend the pot-life of the oxidizing
agent(s)." (Scott, col. 33, ll. 32-40; see also col. 8, ll. 33-38 and col.
34, ll. 21-28). Scott teaches that this phosphoric acid "reduce[s]
reactions that degrade the oxidizing agent." (Scott, col. 34, ll. 26-27).
5. Kido teaches a polishing composition a for chemical mechanical
polishing process. (Kido, col. 1, ll. 5-11). Kido teaches that
phosphoric acid in its polishing composition "exhibits a catalytic [i.e.,
stabilizing] function on the chemical reaction while the chemical
mechanical polishing proceeds" to ensure, inter alia, that the "effect
of increasing the polishing rate is . . . exhibited." (Kido, col. 6, ll. 19-
25).
6. Appellants do not specifically dispute the Examiner's finding that
"Kido discloses the presence of phosphoric acid in the composition in
the concentration range from 0.0005 to about 0.1 Wt% (col.6, lines
18-25), which covers the range of acid concentration suggested by the
applicant." (Compare Ans. 5 with App. Br. 6-7 and Reply Br. 4-5).
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In this regard, Kido teaches using "preferably 0.001 to 0.01 part[s] by
weight" phosphoric acid in its polishing composition. (Kido, col. 6, ll.
19-25).
Additional findings of fact may appear in the Analysis that follows.
ANALYSIS AND CONCLUSION
Appellants argue that because neither Scott nor Hagan mention the
prevention of corrosion marks for sapphire or aluminum oxynitride, it would
not have been obvious to combine Kido with Scott and Hagan (App. Br. 6-
7). .
The Examiner, however, does not solely rely on the prevention of
corrosion marks as a reason to combine the applied prior art references. In
this regard, the Examiner finds and Appellants do not specifically dispute
that "[t]he applied art of Scott (co1.34, lines 21-25), Hagan (paragraph 0061)
and Kido (co1.6, lines 10-30) teach the use of phosphoric acid as a suitable
stabilizing agent in the CMP of several substrates listed above." (FF 4)
(emphasis added).
Thus, we agree with the Examiner that it would have been obvious to
employ an amount of Scott and Hagan's phosphoric acid to be within Kido's
range of 0.0005 to about 0.1 wt%, including an amount within the claimed
range of an amount "greater than about 0.0025 percent by weight" as
required by claim 10, in order to ensure that the phosphoric acid functions as
a stabilizing agent. Thus, Appellants' argument is unpersuasive of reversible
error.
Appellants also refer to their arguments made in connection with
rejection (1). (App. Br. 6). We are unpersuaded by these arguments for the
reasons explained above.
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Accordingly, we sustain the Examiner's rejection (2).

ORDER
For the above reasons, we sustain the Examiner's rejections.
Accordingly, the Examiner's decision is affirmed.

TIME PERIOD
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)(2009).
AFFIRMED

cam

STEVEN WESEMAN
ASSOCIATE GENERAL COUNSEL, I.P.
CABOT MICROELECTRONICS CORPORATION
870 NORTH COMMONS DRIVE
AURORA IL 60504