Ex Parte Shinoda et alDownload PDFPatent Trial and Appeal BoardDec 29, 201713265926 (P.T.A.B. Dec. 29, 2017) Copy Citation 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. 13/265,926 10/24/2011 Takashi Shinoda SOEI0105 6011 24203 7590 01/( GRIFFIN & SZIPL, PC SUITE 112 2300 NINTH STREET, SOUTH ARLINGTON, VA 22204 EXAMINER DUCLAIR, STEPHANIE P. ART UNIT PAPER NUMBER 1713 NOTIFICATION DATE DELIVERY MODE 01/03/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): GandS @ szipl.com burke @ szipl. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKASHI SHINODA, KAZUHIRO ENOMOTO, and TOSHIAKI AKUTSU1 Appeal 2016-005428 Application 13/265,926 Technology Center 1700 Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as Hitachi Chemical Company, Ltd. Appeal 2016-005428 Application 13/265,926 Appellants request our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 7, 8, 13, 21—26, 29, and 30. Claims 2—6, 9-12, 14—20, 27, and 28 have been canceled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Claim 1 is illustrative of Appellants’ subject matter on appeal and is set forth below: 1. A CMP polishing liquid comprising: (a) a first solution; and (b) a second solution, wherein the first solution comprises cerium-based abrasive grains, a dispersant and water, wherein the cerium-based abrasive grains comprise cerium oxide particles, wherein the second solution comprises a polyacrylic acid compound, a nonionic surfactant, at least one phosphoric acid compound of phosphoric acid and a phosphoric acid derivative, and water, wherein a pH of the first solution is 7.0 or higher, wherein a pH of the second solution is 6.5 or higher, wherein the first solution and second solution are mixed so that a phosphoric acid compound content is 0.01-1.0 mass% based on a total mass of the CMP polishing liquid, wherein the first solution and second solution are mixed so that a nonionic surfactant content is at least 0.01 mass% based on the total mass of the CMP polishing liquid, and wherein the phosphoric acid compound is present in an amount effective for increasing a polishing rate for a silicon nitride film. 2 Appeal 2016-005428 Application 13/265,926 The Examiner relies on the following prior art references as evidence of unpatentability: Lee US 6,171,352 Jan. 9,2001 Li US 2005/0005525 A1 Jan. 13,2005 Nishioka US 2008/0087644 A1 Apr. 17,2008 THE REJECTION Claims 1, 7, 8, 13, 21—26, and 29—30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Li in view of Lee and Nishioka. ANALYSIS To the extent that Appellants have presented substantive arguments for the separate patentability of any individual claims on appeal, we will address them separately consistent with 37 C.L.R. § 41.37(c)(l)(vii). Upon consideration of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports the Examiner’s findings and conclusion that the subject matter of Appellants’ claims are unpatentable over the applied art. Accordingly, we sustain each of the Examiner’s rejections on appeal for the reasons set forth in the Final Office Action and in the Answer, and add the following for emphasis. Appellants argue (on pages 6—11 of the Appeal Brief) that the Examiner has not established a prima facie case of obviousness because (1) the claimed combination of Li in view of Lee and Nishioka does not disclose each and every element of the claimed invention and (2) the combination of Li in view of Lee and Nishioka is improper because there is insufficient rationale for making the combination as proposed by the Examiner. 3 Appeal 2016-005428 Application 13/265,926 More specifically, Appellants argue that Li discloses a nonpolymeric organic particle and solvent to form a slurry, but does not disclose anything about two separate solutions that are mixed to obtain the polishing composition. Appeal Br. 7. Appellants admit that Li discloses a passivating agent is added in the range of 0.0001-10w/w%. Appellants also recognize that Li discloses a nonionic surfactant but argues that this surfactant is used in wet grinding in order to control the size and size distribution of non-polymeric organic particles. Appeal Br. 7. Therefore, Appellants submit that Li cannot be found to disclose a “nonionic surfactant content in at least 0.01 mass% based on a total mass of the CMP polishing liquid.” Appel Br. 8. Appellants argue Lee does nothing to cure the deficiencies of Li. Appellants argue that Lee is completely silent regarding “nonionic surfactant content in at least 0.01 mass% based on a total mass of the CMP polishing liquid,” as recited by independent claims 1 and 8. Appellants argue that Lee does not disclose “the first solution and the second solution are mixed so that the phosphoric acid compound content is 0.01 -1.0 mass% based on a total mass of the CMP polishing liquid” as recited by independent claims 1 and 8 or “the phosphoric acid compound content is 0.03-0.5 mass% based on a total mass of the CMP polishing liquid,” as recited by claims 29 and 30. Appeal Br. 8. Appellant argues Nishioka does not cure the deficiencies of Li and Lee. Appeal Br. 8. Appellant argues that Nishioka is a polishing composition that includes dicarboxylic acid, an oxidizing agent, an abrasive and water. Appellant notes Nishioka discloses that it is possible to increase the removal rate of metal, such as copper, in order to adjust the relative removal rates of a wiring metal, a barrier metal and an interlayer dielectric film by using an additional acid such as phosphoric acid. Appeal Br. 8. 4 Appeal 2016-005428 Application 13/265,926 Appellants finally argue that Nishioka pertains to a polishing composition that discloses an additive, including the surfactant, is included in amounts of less than 0.005 mass% in order to prevent degrading the performance of the composition. Appeal Br. 8—9. It is Appellants’ position that Nishioka teaches away from the claimed solution. It is Appellants’ position that based on Nishioka’s teachings, that a person of ordinary skill in the art would expect a nonionic surfactant content of 0.01 mass% or higher to degrade the performance of the polishing composition, and would not have a reasonable expectation of success in achieving the claimed invention with a nonionic surfactant content of 0.01 mass% or higher. Id. As such, it is Appellants’ position that Li as modified by Lee and Nishioka fail to disclose “a nonionic surfactant content is at least 0.01 mass% based on a total mass of the CMP polishing liquid.” It is Appellants’ position that the Examiner has failed to establish aprima facie case of obviousness. Appeal Br. 9. We are unpersuaded by the aforementioned arguments for the reasons provided by the Examiner in the record, reiterated below. The Examiner first correctly points out that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986). Ans. 4. We agree with the Examiner that much of Appellants’ arguments attack the references individually, and such arguments are not persuasive as they do not address squarely the Examiner’s rejection. Appellants argue (on pages 7—8 of the Appeal Brief) that Li does not disclose a nonionic surfactant in Appellants’ claimed amounts. It is the Examiner's position that while Li discloses the inclusion of a surfactant during the wet grinding process (11 [0036]—[0037]), Li further continues to disclose that the slurry for polishing may include at least one of a surfactant, an oxidizing agent, a chelating agent and a 5 Appeal 2016-005428 Application 13/265,926 passivation agent (| [0042]), wherein the surfactant can either be an ionic or nonionic surfactant in amounts of 0.05—10 w/w% (1 [0045]). Ans. 4—5. Therefore, it is the Examiner’s position that the portions cited by Appellants are not those relied upon in the rejection, as those portions cited by Appellants in the Appeal Brief are not the surfactant of the polishing composition as relied upon by the Examiner in the rejection. Therefore, it is the Examiner's position that Li render obvious “a nonionic surfactant content is at least 0.01 mass% based on the total mass of the CMP polishing liquid” because it is the Examiner’s position that Li discloses a non-ionic surfactant in amounts of 0.05-10w/w% (Li, | [0045]), which overlap the claimed range. Ans. 5. We agree. Appellants also argue (on page 8 of the Appeal Brief) that Lee fails to teach the specific content of nonionic surfactant and phosphoric acid based on the total mass of the CMP polishing liquid. However, the Examiner points out that Lee was cited in order to teach the inclusion of polyacrylic acid copolymer, which can act as a viscosity reducing agent in order to control the formation of scratches on the surface of the wafer during polishing (Lee, col. 3,11. 51—65, discloses polyacrylic acid copolymer acting as a viscosity reducing agent, and Lee, col. 2,11. 23—26, discloses high viscosity will lead to abrasive particles settles on the polishing pad and be difficult to remove, possibly scratching the wafer surface) Ans. 5. The Examiner correctly points out that Appellants have not addressed the Examiner’s reasoning for the inclusion of Lee, nor have Appellants addressed the Examiner’s motivation for such modification. Ans. 5. The Examiner did not cite Lee for the inclusion of the nonionic surfactant or the phosphoric acid content. Therefore, Appellants’ arguments are not persuasive of reversible error. Appellants’ arguments on pages 8—9 of the Appeal Brief that Nishioka teaches away from Appellants’ invention are also found unpersuasive. As the Examiner 6 Appeal 2016-005428 Application 13/265,926 states on page 6 of the Answer, Nishioka was not cited to teach any component of the polishing slurry. Nishioka was cited for the limited purpose of teaching the general understanding that components of a polishing composition can be stored in separate solutions and combined during polishing (| | [0095]—[0096]). The Examiner states that Nishioka in particular teaches that “in consideration of the stability of the polishing liquid ... a polishing solution composed mainly of abrasive and the other solutions may be respectively supplied in separate lines”, and then supplied and combined during polishing (| [0095]). The Examiner states that Appellants have not addressed the basis for the inclusion of Nishioka, but rather addresses the composition of Nishioka, which was not relied upon for the combination as presented. Ans. 6. As such, Appellants’ arguments of teaching away are not considered persuasive as they do not squarely address the teachings relied upon in the Final Office Action. Appellants’ argument that the combination of Li in view of Lee and Nishioka does not disclose “the phosphoric acid compound content is 0.03-0.5 mass% based on a total mass of the CMPL polishing liquid” is also found unpersuasive. As stated by the Examiner on page 6 of the Answer, the modified teachings of Li discloses wherein the final composition has a phosphoric acid content of 0.0001-10 w/w% (Li Paragraph [0050]) which overlaps Applicant’s claimed amount of 0.03-0.5 mass% based on the total mass of the CMP polishing liquid. The Examiner states that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness is met. Ans. 6—7. Appellants argue (on pages 9-11 of Appellants’ Appeal Brief) that the Examiner has failed to establish a prima facie case of obviousness against claims 1, 2—8, 13 and 21—26 because a person of ordinary skill in the art would have no motivation to combine the references in the manner proposed. 7 Appeal 2016-005428 Application 13/265,926 Appellants argue that the claimed subject matter increases the polishing rate specifically for silicon oxide films and silicon nitride films with respect to the polishing rate for polysilicon films. Appeal Br. 10. Appellants submit that Li pertains to an abrasive composition for CMP comprising non-polymeric organic particle and a solvent to form a slurry. Appellants argue that Li does not disclose anything about two separate solutions that are mixed to obtain the polishing composition. Appeal Br. 10. Appellants further argue that Li discloses a passivating agent is added in the range of 0.0001—10 w/w% based on the weight of the slurry. Appellants argue that Nishioka pertains to a polishing composition which can be in the form of a kit comprising a plurality of compositions that are mixed together to create the polishing composition. Appellants also argue that Nishioka discloses that the pH range of the composition can be from 2 to 4 or from 8 to 12. Appeal Br. 10. Appellants argue that Nishioka discloses a two-step polishing method with a first step for polishing copper and copper alloys at a high rate and a second step of polishing a barrier film. Appeal Br. 10—11. Appellants argue that Li's composition is specifically for polishing copper. Appellants argue that Li is an example of a polishing liquid that would be used in the first step of Nishioka and not in the second step. As such, Appellants submit that the polishing properties of Nishioka and Li’s polishing liquids are quite different, and that one skilled in the art would not have any plausible rationale for applying Li’s technique to Nishioka’s disclosure. Appeal Br. 11. Therefore, Appellants submit that even if the combination of Li, Lee and Nishioka did disclose every element of the claimed invention, which it does not, there would still be no motivation to combine them as proposed in the rejection. We are unpersuaded by this line of argument for the reasons provided in the record by the Examiner, discussed below. 8 Appeal 2016-005428 Application 13/265,926 It is the Examiner’s position that the combination of Li in view of Lee and Nishioka was proper. Nishioka was cited for the limited purpose of teaching the general understanding that components of a polishing composition can stored in separate solutions and combined during polishing (| | [0095]—[0096]). Ans. 8. The Examiner states that Nishioka in particular teaches that "in consideration of the stability of the polishing liquid ... a polishing solution composed mainly of abrasive and the other solutions may be respectively supplied in separate lines”, and then supplied and combined during polishing (| [0095]). The Examiner states that Appellants appear to argue the components of Nishioka teach against Appellants’ claimed subject matter, while none of the components of Nishioka were cited as being added to or modifying the composition of Li. The Examiner states that Nishioka was not cited to teach the use of Nishioka’s composition. The Examiner states that Appellants appear to recognize the purpose of Nishioka on pages 10-11 of Appellants’ Appeal Brief. The Examiner states that Appellants acknowledge that Nishioka discloses that a polishing composition can be in a kit comprising a plurality of compositions that are mixed together to create the composition. The Examiner maintains that polishing compositions can be stored separate and mixed during polishing in order to maintain the stability of the composition. The Examiner maintains that one skilled in the art would have understoodd this teaching as being applicable to polishing compositions in general, and that Appellants have not adequately argued that the cited prior art fails to disclose a first and second solution which can be combined to form the composition rendered obvious by the cited prior art. Ans. 8—9. We agree. Having determined that a prima facie case has been met, we turn now to Appellants’ rebuttal evidence. Appellants argue (on pages 11—14 of the Appeal Brief) that they have adequately demonstrated superior and unexpected results that 9 Appeal 2016-005428 Application 13/265,926 are sufficient to overcome any prima facie showing of obviousness. Appellants refer to Table 1 of the Specification, and to Table A of the Shinoda Declaration in this regard. Appeal Br. 11. Appellants state that Table 1 of the Specification demonstrates a CMP polishing liquid as claimed in independent claims 1 and 8 increases the polishing speed of silicon oxide and silicon nitride films, while limiting the polishing speed of polysilicon films. Appeal Br. 12. Appellants argue that this is shown when comparing Examples 1—11, which have phosphoric acid in contents in the range of 0.01—1.0 mass%, with Comparative Examples 1, 2, and 6 (found in Table 2) which do not have phosphoric acid compound contents in the range of 0.01 -1.0 mass%. Id. Appellants submit also the examples and comparative examples use the same surfactant in order to demonstrate that the claims are commensurate in scope with the showing. Appeal Br. 12. Appellants further argue that the claims are commensurate because the examples meet the requirements of the claim language, and the examples show unexpected and superior results at a range of specific components/amounts of components. Id. Appellants argue that they are not required to show every single possible combination covered by the claimed language. Appeal Br. 12. Appellants argue that requiring the showing of superior and unexpected results across the full claimed range is not reasonable, but nonetheless filed additional evidence (in the Shinoda Declaration, Table A) to further flush out the claimed range of phosphoric acid compound content. Appellants argue that these additional examples further demonstrate superior and unexpected results over the full range of all the component ranges. Appeal Br. 12—13. 10 Appeal 2016-005428 Application 13/265,926 Appellants submit that they have shown superior and unexpected results over the full range of the phosphoric acid compound content, and have indicated they find the phosphoric acid compound content to be a critical range. Appeal Br. 13. Appellants maintain they have shown comparative examples, with the same surfactant, that are just barely above and below the claimed range, and which do not exhibit the superior and unexpected results. Id. As such, Appellants submit that they have provided sufficient evidence of superior and unexpected results. Appeal Br. 13-14. It is the Examiner's position that Appellants have not demonstrated unexpected results which are commensurate in scope with the claims. Ans. 10. The Examiner states that Appellants appear to argue that the criticality must only be shown over the claimed range of phosphoric acid. Ans. 11. The Examiner explains that evidence of nonobviousness consisting of comparing a single composition within the broad scope of the claims with the prior art was found insufficient to rebut a prima facie case of obviousness because there was “no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.” Ans. 11. It is thus the Examiner's position that Appellants’ showing of unexpected results is not commensurate in scope with the claims. Ans. 12. The Examiner states that therefore, it is unclear whether a different surfactant, dispersant, or a phosphoric acid derivative having the claimed amounts would have the same results. As such, the Examiner maintains the prima facie case of obviousness. We are unconvinced of error in the Examiner’s stated position as discussed herein for the reasons provided by the Examiner in the record. We add that when considering whether proffered evidence demonstrates patentability, a side-by-side comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims 11 Appeal 2016-005428 Application 13/265,926 is needed, with an explanation as to why the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Also, it is noted that Appellants have not explained how the comparative examples are representative of the closest prior art. The burden rests with Appellants to establish, inter alia, that the comparisons are to the disclosure of the closest prior art. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In the instant case, Appellants have failed to do so. Appellants essentially reiterate arguments in the Reply Brief which are unpersuasive for similar reasons discussed in addressing issues raised by Appellants in their principal brief. A preponderance of the evidence in this appeal weighs in favor of the Examiner’s obviousness determination. Accordingly, we affirm the rejection. DECISION The rejection 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation