Ex Parte Morgan

Board of Patent Appeals and Interferences

Jul 1, 2011

11435422 (B.P.A.I. Jul. 1, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/435,422 05/17/2006 Paul A. Morgan MI22-4215 6985
21567 7590 07/05/2011
Wells St. John P.S.
601 West First Street #1300
Spokane, WA 99201-3828
EXAMINER
AHMED, SHAMIM
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
07/05/2011 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 PAUL A. MORGAN
________________

Appeal 2010-004392
Application 11/435,422
Technology Center 1700
________________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 32 and 34-55, the only claims pending in
the Application.2 We have jurisdiction under 35 U.S.C. § 6(b).
Appellant requests our review of the following grounds of rejection
(App. Br. 4):

1 Final Office Action mailed Jun. 6, 2008(“Final”).
2 Appeal Brief filed Nov. 4, 2008 (“App. Br.”).
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1. Claims 32 and 34-55 under 35 U.S.C. § 112, second paragraph,
as indefinite (Ans.3 3);
2. Claims 32, 34-54 under 35 U.S.C. § 103(a) as unpatentable
over Sato (US 2004/0182720 A1, published Sep. 23, 2004) (Ans. 3-5);
3. Claim 55 under 35 U.S.C. §103(a) as unpatentable over Sato in
view of Healy (US 5,968,238, issued Oct. 19, 1999) (Ans. 5-6);
4. Claims 35-54 under 35 U.S.C. §103(a) as unpatentable over
Moeggenborg (US 6,974,777 B2, issued Dec. 13, 2005) (Ans. 6-8); and
5. Claims 32 and 34-47 under 35 U.S.C. §103(a) as unpatentable
over Hardee (US 5,262,040, issued Nov. 16, 1993) (Ans. 8).
We AFFIRM.
FINDINGS OF FACT
According to the Specification,
films of Group VIII metals and metal oxides, particularly the
second and third row metals (e.g., Ru, Os, Rh, Ir, Pd, and Pt)
have suitable properties for a variety of uses in integrated
circuits. For example, they can be used in integrated circuits
for electrical contacts. They are particularly suitable for use as
barrier layers between the dielectric material and the silicon
substrate in memory devices, such as ferroelectric memories.
Furthermore, they may even be suitable as the plate (i.e.,
electrode) itself in capacitors.

(Spec. 1:22-28.)
Many surfaces that result during the formation of Group VIII
metal-containing films, particularly in the wafer fabrication of
semiconductor devices, do not have uniform height, and
therefore, the wafer thickness is also non-uniform. Further,
surfaces may have defects such as crystal lattice damage,
scratches, roughness, or embedded particles of dirt or dust.

3 Examiner’s Answer mailed Sep. 14, 2009.
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(Spec. 2:6-10.)

The present invention provides methods of removing material,
either by etching or by planarization [e.g., chemical-mechanical
polishing (Spec. 2:14-15)], from a surface that includes one or
more of the Group VIII metals. The Group VIII metals . . .
include the iron triad (Fe, Ru, Os), the cobalt triad (Co, Rh, Ir),
and the nickel triad(Ni, Pd, Pt).

(Spec. 6:26-7:1.)
Independent claim 32 is representative of the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:
32. An acidic composition comprising a mixture of concentrated acids
without additional added water, the mixture comprising:

concentrated phosphoric acid;

concentrated sulfuric acid;

concentrated nitric acid; and

concentrated hydrochloric acid;

wherein the mixture can remove a Group VIII metal-containing
material from a surface of a substrate.

Independent claim 35 recites: “An acidic composition comprising a
substrate in contact with a mixture of concentrated acids without additional
added water, wherein the substrate has a Group VIII metal-containing
material on the surface thereof.” Claim 35 further requires the same mixture
of concentrated acids recited in claim 32. Claim 48, the remaining
independent claim, is identical to claim 32, but further specifies the amounts
of each acid present in the mixture.
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The Specification states that “the acidic composition [] can be in the
form of an etchant solution or acidic composition” (Spec. 4:25-26) and
identifies the Normalities and concentrations of commercially available
concentrated reagent-grade phosphoric, sulfuric, nitric and hydrochloric
acids (Spec. 7:27-8:6). According to the Specification, “[e]ach of these
acids is typically available in an aqueous solution. Thus, the acidic
composition is typically an aqueous composition, whether additional water
is added or not. If desired, additional deionized water (e.g., of the level of
purity conventionally used in semiconductor processing) can be added.”
(Spec. 7:23-26.) “The acidic composition is preferably used at an elevated
temperature. . . . If the temperature is less than about 65°C, the removal rate
is typically too slow and nonuniform for practical application. If the
temperature is more than about 100°C, the composition is typically too
unstable.” (Spec. 8:29-9:4.) The Specification includes two examples of
methods of etching a workpiece using an acidic composition as claimed in
independent claims 32, 35, and 48. (Spec. 14:14-21.) The Specification
does not include any comparison examples.
Sato “relates to a polishing method, a polishing apparatus, a plating
method, and a plating apparatus used in producing a semiconductor device.”
(Sato [0002].) More specifically, an object of the invention is to provide
a polishing method and a polishing apparatus capable of
easily flattening an initial unevenness, excellent in efficiency
of removing an excess copper film, and capable of
suppressing damage to an interlayer insulation film below a
copper film when flattening the copper film by polishing in a
process of producing a semiconductor device having copper
interconnections.

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(Sato [0025].) In order to polish and flatten the film, Sato employs an
electrolytic elution step (Sato [0195]) using an electrolytic solution that may
contain “phosphoric acid, nitric acid, ammonia chloride, sulfuric acid,
hydrochloric acid, or the like or a mixture of these” (Sato [0197]).
Moeggenborg is directed to a method of polishing (e.g., planarizing) a
substrate comprising a low-k dielectric layer. (Moeggenborg, col. 6, ll. 13-
15.) The polishing system is said to be “particularly suited for use in
conjunction with a chemical-mechanical polishing (CMP) apparatus” (col. 8,
ll. 3-5). The polishing system utilizes an amphiphilic nonionic surfactant to
“suppress the removal rate of the low-k dielectric layer without substantially
affecting the removal rates of any other layers (e.g., oxide layers, metal
layers) that are present on the surface of the substrate” (col. 6, ll. 38-42).
The polishing system may include “[s]uitable pH adjusters, regulators, or
buffers . . ., for example, sodium hydroxide, sodium carbonate, potassium
hydroxide, potassium carbonate, sulfuric acid, hydrochloric acid, nitric acid,
phosphoric acid, citric acid, potassium phosphate, mixtures thereof, and the
like.” (Col. 7, ll. 54-59.) The metal layer may comprise “copper, tantalum,
titanium, tungsten, aluminum, nickel, platinum, ruthenium, iridium,
rhodium, alloys thereof (e.g., binary alloys thereof and ternary alloys
thereof), and combinations thereof.” (Col. 6, ll. 31-36.)
Hardee discloses a method of preparing a substrate metal surface by
etching to provide enhanced adhesion of subsequently applied coatings.
(Hardee Abstract.) The substrate metal may be nickel, titanium, tantalum,
aluminum, or niobium (col. 3, ll. 6-9), or a metal alloy, such as an alloy of
titanium with nickel, cobalt, iron, manganese or copper (col. 3, ll. 12-15).
According to Hardee,
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Typical etch solutions are acid solutions. These can be
provided by hydrochloric, sulfuric, perchloric, nitric, oxalic,
tartaric, and phosphoric acids as well as mixtures thereof, e.g.,
aqua regia. Other etchants that may be utilized include caustic
etchants such as a solution of potassium hydroxide/hydrogen
peroxide, or a melt of potassium hydroxide with potassium
nitrate. For efficiency of operation, the etch solution is
advantageously a strong, or concentrated, solution, such as an
18-22 weight % solution of hydrochloric acid. Moreover, the
solution is advantageously maintained during etching at
elevated temperature such as at 80° C. or more for aqueous
solutions.

(Col. 5, ll. 35-47.)
ISSUES, PRINCIPLES OF LAW, AND ANALYSIS
Rejection under 35 U.S.C. 112, second paragraph
The issue we consider with respect to this ground of rejection is
whether the Examiner erred in determining that the term “concentrated” is
indefinite within the meaning of 35 U.S.C. § 112, second paragraph.
A claim satisfies the definiteness requirement of 35 U.S.C. § 112,
second paragraph, when one skilled in the art understands the claim
parameters as read in light of the specification. BJ Servs. Co. v. Halliburton
Energy Servs., 338 F.3d 1368, 1372 (Fed. Cir. 2003) (quoting Union Pac.
Res. Co. v. Chesapeake Energy Corp., 236 F.2d 684, 692 (Fed. Cir. 2001)
(“The definiteness inquiry focuses on whether those skilled in the art would
understand the scope of the claim when the claim is read in light of the rest
of the specification.”)).
Appellant has cited a reference which supports his contention that one
of ordinary skill in the art would recognize “the term ‘concentrated’ as used
to modify acids (i.e., ‘concentrated acids,’ for example, concentrated
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phosphoric acid, concentrated sulfuric acid, concentrated nitric acid, and
concentrated hydrochloric acid) is not a relative term, but rather a
quantitative term that is clearly and unambiguously descriptive of an acid of
well-known concentration.” (App. Br. 5-6 (citing Masterton et al., Chemical
Principles with Qualitative Analysis 354-355(CBS College Publishing, 6th
ed., 1986)(reciting the well-known concentrations of “concentrated”
acids)).) Moreover, the Specification describes the Normalities and
concentrations of commercially available concentrated reagent-grade
phosphoric, sulfuric, nitric and hydrochloric acids. (Spec. 7:27-8:6 supra p.
4).) The Examiner has not fully addressed the evidence relied on by
Appellant to establish that the term “concentrated” is not indefinite within
the meaning of 35 U.S.C. § 112, second paragraph. (See Ans. 9.)
In sum, Appellant has persuasively shown that one of ordinary skill in
the art would understand the scope and meaning of the term “concentrated”
as used in the claims. Accordingly, we reverse the rejection of claims 32
and 34-55 under 35 U.S.C. §112, second paragraph, as indefinite.
Rejections under 35 U.S.C. §103(a)
Appellant has presented arguments in support of patentability of
several groups of claims. We have separately considered the patentability of
these argued groups of claims as indicated below. Appellant’s traversal of
the third ground of rejection is limited to their contention that Healy fails to
cure the deficiencies of Sato. (See App. Br. 13-14.) Therefore, we decide
the rejection of claim 55 based on the arguments made in support of
patentability of claim 32, from which claim 55 depends.

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Claims 32, 35, and 48
The issues we consider with respect to the rejections of claims 32, 35,
and 48 are whether the Examiner erred:
1. in finding that one of ordinary skill in the art would have found
it obvious to use concentrated acids, prior to addition of water, to prepare
Sato’s (App. Br. 10-11), Moeggenborg’s (App. Br. 15), and Hardee’s (App.
Br. 18) compositions;
2. in finding that one of ordinary skill in the art would have found
it obvious to select the claimed combination of acids for use in
Moeggenborg’s composition (App. Br. 16);
3. in determining that Sato (App. Br. 10) and Hardee (App. Br.
19) suggest mixtures of acids which would inherently be capable of
removing a Group VIII metal-containing material from a substrate surface;
and
4. in finding that Sato (see App. Br. 9-10) and Hardee (App. Br.
19-20) disclose or suggest substrates having a Group VIII metal-containing
material on the surface thereof in contact with a mixture of concentrated
acids as recited in appealed claim 35 (App. Br. 19-20).
Issue 1:
“[W]here a skilled artisan merely pursues ‘known options’ from a
‘finite number of identified, predictable solutions,’ obviousness under § 103
arises.” In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)). Under the flexible
obviousness inquiry set forth by the Supreme Court, it is appropriate for the
examiner to take account of the “inferences and creative steps,” or even
routine steps, that an ordinary artisan would employ. Ball Aerosol and
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Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed.
Cir. 2009) (quoting KSR , 550 U.S. at 417-18 ).
Although Sato, Moeggenborg, and Hardee do not explicitly disclose
the method of making their acid compositions, one of ordinary skill in the art
would have understood that there are a finite number of ways in which the
components of the compositions could be combined. One such method of
making the compositions would be to combine commercially available
concentrated acids which, as admitted by Appellant, were readily available
from various commercial sources at the time of the invention. (See Spec.
7:27-8:6; App. Br. 5-6 (citing Masterton).) As indicated by Hardee, use of a
strong, or concentrated solution, is more efficient. (See Hardee col. 5, ll. 35-
47 supra p. 6.) Thus it was reasonable for the Examiner to conclude that the
ordinary artisan, in making the Sato, Moeggenborg or Hardee compositions,
would have found it obvious to combine commercially available
concentrated acids, thereby achieving a mixture comprising concentrated
phosphoric, sulfuric, nitric and hydrochloric acids as claimed.4 See Perfect
Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir.
2009) (“Common sense has long been recognized to inform the analysis of
obviousness if explained with sufficient reasoning” and where there is a
factual foundation from which the analysis flows.).
Issue 2:
An obviousness rejection predicated on selection of one or more
components from numerous possible choices may be appropriate if the prior

4 We note that Appellant has not disputed the Examiner’s determination that
the specific amounts of the acid components recited in claim 48 would have
been a matter of routine optimization (see Ans. 4-5, 7). (See generally, App.
Br. 8-17.)
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art provides direction as to which of many possible choices is likely to be
successful. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1364 (Fed Cir. 2007); In re O'Farrell, 853 F.2d 894, 903
(Fed.Cir.1988). “[W]ith respect to inventions requiring selection of a
species from a disclosed genus, [] the possible approaches and selection to
solve the problem must be ‘known and finite.’” Rolls-Royce, PLC v. United
Technologies Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010) (citing Abbott
Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008)); cf. Merck &
Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That
the ‘813 patent discloses a multitude of effective combinations does not
render any particular formulation less obvious. This is especially true
because the claimed composition is used for the identical purpose taught by
the prior art.”).
Appellant’s argument that one of ordinary skill in the art would have
been motivated to select the particular combination of concentrated acids
recited in Appellant’s claims 35 and 48 from Moeggenborg’s list of acids
(App. Br. 16) is not supported by the relevant case law. Moeggenborg
clearly identifies pH adjusters, regulators, and buffers as useful in the
disclosed polishing composition and provides a limited list of such
components, which includes the acids recited in appealed claims 35 and 48.5
(See Ans. 6-7.)

5 We note that use the transitional term “comprising” in the claims means
Appellant’s claimed mixture of acids reads on a composition including
additional ingredients in any amount. See In re Baxter, 656 F.2d 679, 686
(CCPA 1981) (“As long as one of the monomers in the reaction is
propylene, any other monomer may be present, because the term ‘comprises'
permits the inclusion of other steps, elements, or materials.”).

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Issue 3:
Where . . . the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under
35 U.S.C. § 102, on ‘prima facie obviousness' under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). See also,
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
For the reasons discussed in connection with issue 1 (see also, note 5
supra), we are in agreement with the Examiner that Sato and Hardee suggest
acidic compositions which are substantially identical to Appellant’s claimed
mixture of acids. Accordingly, the Examiner properly shifted the burden to
Appellant to demonstrate that Sato’s and Hardee’s compositions do not
necessarily or inherently possess the ability to remove Group VIII metal-
containing material from the surface of the substrate. Appellant has not met
this burden. (See generally, App. Br. 8-25; discussion of Spec. Examples
supra p. 4.)
Issue 4:
The examiner bears the initial burden of presenting a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). We
are in agreement with Appellant that the Examiner failed to clearly identify a
teaching or suggestion in Sato and Hardee of an acidic composition
comprising a mixture of concentrated acids in contact with a substrate
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having a Group VIII metal-containing material on the surface thereof. (See
Final 2-7, 9-10; Ans. 3-5, 8-12.6) Accordingly, we reverse the Examiner’s
rejections of claim 35 as unpatentable over Sato and Hardee, as well as the
rejections of the claims dependent therefrom, i.e., claims 36-47.
Claim 34
The issue we consider with respect to the rejection of claim 34 is
whether the Examiner properly identified a teaching or suggestion of
including a plurality of abrasive particles in Hardee’s composition (App Br.
21).
Having reviewed the Final Rejection and the Answer, we are in
agreement with Appellant that the Examiner failed to identify a teaching or
suggestion of using abrasive particles in Hardee’s composition. (See Final
9-10; Ans. 8.) In fact, the Examiner failed to respond to Appellant’s
argument. (See Ans. 11(Response to Argument).) Accordingly, because the
Examiner has not met the initial burden to establish a prima facie case of
obviousness, we reverse the rejection of claim 34 under 35 U.S.C. §103(a)
as unpatentable over Hardee.
Claim 39 and 40
The issues we consider with respect to the rejections of claims 39 and
40 are whether the Examiner properly identified in Moeggenborg a teaching
or suggestion of a substrate comprising a semiconductor substrate or wafer.
(App. Br. 16.)
In support of the rejection, the Examiner explicitly relies on
Moeggenborg col. 6, lines 30-35 (see supra p. 5) which disclose a substrate

6 But see Hardee col. 3 supra p. 5 (listing materials for the substrate which
include Group VIII metals and stating that the substrate can be etched).
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comprising a “dielectric layer (e.g., silicon dioxide).” (See Ans. 6.) In the
Background of the Invention, Moeggenborg discloses that “[p]olishing
compositions for silicon-based inter-metal dielectric layers have been
particularly well developed in the semiconductor industry, and the chemical
and mechanical nature of polishing and wear of the silicon-based dielectrics
is reasonably well understood” (col. 1, ll. 31-35). (See also, Moeggenborg,
EXAMPLES 1-5 (describing polishing of wafer substrates).) In our view,
one of ordinary skill in the art would have readily understood that
Moeggenborg’s “substrate [] compris[ing] a[] dielectric layer” (col. 6, l. 30)
could be a semiconductor substrate or wafer as recited in claims 39 and 40.
Therefore, we are not persuaded of error in the Examiner’s rejection of
claims 39 and 40 as unpatentable in view of Moeggenborg.
Claims 41 and 42
The issue we consider with respect to the rejections of claims 41 and
42 is whether the Examiner erred in finding that Moeggenborg discloses a
mixture of acids in contact with a substrate as claimed (App. Br. 16-17).
The limitations recited in claims 41 and 42 are directed to the manner
in which the acidic mixture contacts the substrate during wet etching. (See
Spec. 3:19-20 (“Typically, wet etching is performed by immersing the
substrate in an appropriate solution or by spraying the surface with the
etchant solution.”) Therefore, we view the subject matter of claims 41 and
42 as product claims comprising product-by-process limitations.
“The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
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though the prior product was made by a different process.” In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).
Moeggenborg discloses contacting a substrate with a composition
during a CMP process, and does not explicitly discuss wet etching processes.
(See citations to Moeggenborg supra p. 5.) However, Appellant has the
burden to explain how a substrate in contact with a mixture of concentrated
acids during a wet etching process patentably differs from a substrate in
contact with a mixture of concentrated acids during a CMP process.
Appellant has not met this burden. (See generally, App. Br. 14-17.)
Claims 51-54
The issue we consider with respect to the rejections of claims 51-54 is
whether the Examiner erred in finding that Sato (App. Br. 13) and
Moeggenborg (App. Br. 17) disclose compositions as recited in claims 51-
54.
Claims 51-54 recite compositions at temperatures ranging from 65 to
100 ºC. The Specification indicates that the acidic composition must be
heated to reach this temperature (Spec. 9:10-11), which is the temperature at
which “[t]he acidic composition is preferably used” (Spec. 8:29). Thus, we
view the recited limitations as product-by-process limitations. (See Ans.
11.) As discussed in connection with claims 41 and 42 (see supra p. 14),
Appellant has the burden to establish a patentable difference between a
composition at temperatures used in the processes of Sato and Moeggenborg
(e.g., temperatures typically used in elution and CMP processes) and a
composition at the claimed temperatures. Appellant has not met this burden.
(Cf. Spec. 9:1-4 (indicating that temperatures below 65 ºC effect process
rates).)
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ORDER
We REVERSE the following rejections:
Claims 32 and 34-55 under 35 U.S.C. § 112, second paragraph, as
indefinite;
Claims 35-47 under 35 U.S.C. § 103(a) as unpatentable over Sato; and
Claims 34-47 under 35 U.S.C. § 103(a) as unpatentable over Hardee.
We AFFIRM the following rejections:
Claims 32, 34, and 48-54 under 35 U.S.C. § 103(a) as unpatentable
over Sato;
Claim 55 under 35 U.S.C. § 103(a) as unpatentable over Sato in view
of Healy;
Claims 35-54 under 35 U.S.C. § 103(a) as unpatentable over
Moeggenborg; and
Claim 32 under 35 U.S.C. § 103(a) as unpatentable over Hardee.

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).
AFFIRMED

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