Ex Parte Paik et al

Board of Patent Appeals and Interferences

Feb 16, 2011

11421965 (B.P.A.I. Feb. 16, 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.
11/421,965 06/02/2006 Un Gyu Paik 16003.0002 3417
27890 7590 02/16/2011
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE, N.W.
WASHINGTON, DC 20036
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
02/16/2011 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 UN GYU PAIK, JEA GUN PARK,
SANG KYUN KIM, YE HWAN KIM,
MYOUNG WON SUH, and
DAE HYEONG KIM
____________

Appeal 2010-003861
Application S.N. 11/421,965
Technology Center 1700
____________

Heard: February 10, 2010
____________

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

FRANKLIN, 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 2010-003861
Application 11/421,965

2

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-4, 6, and 8-22. We have jurisdiction under 35 U.S.C.
§ 6.

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A CMP slurry comprising polishing particles, the polishing
particles comprising organically-modified colloidal silica;

wherein the organically-modified colloidal silica is synthesized using
organo-metallic alkoxide as a precursor by sol-gel reaction; and

wherein the polishing particles have an organic modification of
5-65%.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
January 4,472,510 Sep. 18, 1984
Kohyama 4,664,679 May 12, 1987
Bruxvoort 5,958,794 Sep. 28, 1999
Fang 6,293,848 B1 Sep. 25, 2001
McClain 6,623,355 B2 Sep. 23, 2003
Do KR 2004052355A Jun. 23, 2004

THE REJECTIONS
1. Claims 1 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kohyama in view of the combination of January and
Bruxvoort.
Appeal 2010-003861
Application 11/421,965

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2. Claims 2-4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kohyama in view of the combination of January, and
Bruxvoort, as cited in claims 1 and 6, above, further in view of Fang.
3. Claims 8-14, 17, and 20-22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kohyama in view of the combination of January,
and Bruxvoort, as cited in claims 1 and 6, above, further in view of McClain.
4. Claims 15-16 and 18-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kohyama in view of the combination of January,
Bruxvoort, and McClain, as cited in claims 8-14, 17, and 20-22, above, in
further view of Do.
ISSUE
Did the Examiner err in determining that the applied art suggests the
subject matter of claim 1, and in particular, polishing particles that have “an
organic modification of 5-65%”?
We answer this question in the affirmative and REVERSE.

ANALYSIS
(with Findings of Fact and Principles of Law)

As an initial matter, Appellants have not presented separate arguments
for all of the rejected claims. Rather, Appellants’ arguments are principally
directed to independent claim 1. Any claim not separately argued will stand
or fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)
(vii). Also, we focus on Rejection 1, and our determination made with
respect to Rejection 1 is dispositive for all of the rejections.
Appeal 2010-003861
Application 11/421,965

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On page 5 of the Answer, the Examiner states:
Kohyama fails to teach the explicitly claimed range of modification of
the particles, however, because applicant does not limit the type of
percentage it appears that the percentage of surfacial density taught by
Kohyama would encompass the claimed percentage for either volume
% or weight %.
In response, on page 3 of the Reply Brief, Appellants state:
Contrary to the allegation that "applicant does not limit the type of
percentage" of modification of the particles (Examiner's Answer, p.
5), Appellants' specification does define "organic modification" as
"the degree of organic modification per polishing particle" (page 24,
lines 1-3 of Appellants' specification). In addition, Appellants'
specification explains that the degree of organic modification is
measured using the HR-TEM technique and phase area ratio (page 22,
lines 24-25 of Appellants’ specification). Thus, the scope of
Appellants’ claimed percentage of organic modification is clear and
corresponds to the ratio of organo-metallic alkoxide coating per
polishing particle, not to a volume percentage or weight percentage,
contrary to the Examiner’s Answer. Appellants’ claimed percentage
of organic modification is not disclosed in or encompassed by
Kohyama.
We agree with Appellants’ above-mentioned response. Importantly,
the Examiner does not explain how the teachings of the applied art suggest
the “organic modification of 5-65%” in terms of the ratio of organo-metallic
alkoxide coating per polishing particle as defined by the Specification. The
Examiner has not properly construed the claims in this manner, and as a
result, has not properly compared the applied art with Appellants’ claimed
invention. “Although the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the one that those
Appeal 2010-003861
Application 11/421,965

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skilled in the art would reach.” In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999). See also In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(“[I]t would be unreasonable for the PTO to ignore any interpretative
guidance afforded by applicant’s written description.”).
In view of the above, we reverse the rejections.
CONCLUSIONS OF LAW AND DECISION
Each rejection is reversed.
REVERSED

cam

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