Ex Parte Wu et al

Board of Patent Appeals and Interferences

Mar 12, 2004

09488075 (B.P.A.I. Mar. 12, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HU-JUNG WU and JAMES S. DRAGE
____________
Appeal No. 2003-1366
Application No. 09/488,075
____________
ON BRIEF
____________
Before PAK, KRATZ and MOORE, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-19, which are all of the claims pending in
this application.
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Application No. 09/488,075
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BACKGROUND
Appellants' invention relates to a method for treating a
silanol-containing silica film located on a substrate with an
oligomer or polymer reactive with the silanols of the film to
form a hydrophobic coating on the film. According to appellants
(specification, page 4), their inventive surface modification
method results in a treated film with enhanced mechanical
strength while achieving desirable dielectric values. Also, see
page 34, Table 7 and numbered lines 9-13 of the specification. A
further understanding of the invention can be derived from a
reading of exemplary claim 1, which is reproduced below.
1. A process for treating a silica film on a
substrate, which comprises reacting a suitable silica
film with a composition comprising a surface
modification agent, wherein said silica film is present
on a substrate and wherein said reaction is conducted
under conditions and for a period of time sufficient
for said surface modification agent to form a
hydrophobic coating on said film and said surface
modification agent comprises at least one type of
oligomer or polymer reactive with silanols on said
silica film.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Shimizu et al. (Shimizu) 5,013,585 May 07, 1991
Gnade et al. (Gnade) 5,470,802 Nov. 28, 1995
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1 The examiner and appellants refer to this reference as
Kotelnikov et al. Also, our references to Kotelnikov in this
decision is to the English language translation of the published
Russian patent application. The record reflects that a copy of
the translation was submitted to appellants with the examiner’s
answer.
Varanasi et al. (Varanasi) 5,798,144 Aug. 25, 1998
Masakara et al. (Masakara) 6,037,277 Mar. 14, 2000
Smirnov et al. (Kotelnikov1), Russian Pat. Appl. No. 2,089,499,
published September 10, 1997.
Claims 1-7, 9, 10, 15, 16, 18 and 19 stand rejected under
35 U.S.C. § 103 (a) as being unpatentable over Masakara and Gnade
in view of Kotelnikov. Claims 8, 11-14 and 17 stand rejected
under 35 U.S.C. § 103 (a) as being unpatentable over Masakara and
Gnade in view of Kotelnikov, Varanasi and Shimizu.
We refer to the brief and reply brief and to the answers for
a complete exposition of the opposing viewpoints expressed by
appellants and the examiner concerning the issues before us on
this appeal.
OPINION
Upon careful review of the respective positions advanced by
appellants and the examiner with respect to the rejections that
are before us for review, we find ourselves in agreement with
appellants’ viewpoint in that the examiner has failed to carry
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Application No. 09/488,075
Page 4
the burden of establishing a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-1472, 223
USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we will not
sustain the examiner’s rejections.
Masakara and Gnade are generally directed to the manufacture
of highly porous dielectric films on semiconductor substrates.
Both Masakara and Gnade disclose the optional use of surface
modifiers, such as trimethylchlorosilane (TMCS), to help impart
desirable properties, such as hydrophobicity, to the film.
The examiner has determined that “Masakara and Gnade fail to
disclose that the surface modification agent is an oligomer or
polymer reactive with silinols (sic) on the silica film” (answer,
page 3), a feature required by all of appellants’ claims. In
order to make up for that acknowledged deficiency in the
teachings of Masakara or Gnade relative to the here claimed
subject matter, the examiner turns to Kotelnikov. In this
regard, the examiner (answer, page 3) asserts that:
Kotelnikov et al. disclose a method of producing
hydrophobic silica coatings by chemical modification
reactions with oligomer or polymer silicon-containing
compounds.
Therefore, given the substantial teachings of
Masakara et al. and Gnade et al. in view of Kotelnikov
et al., it would have been obvious to one with ordinary
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skill in the art at the time of the invention to use a
surface modification agent, which is an oligomer or
polymer reactive with silinols (sic) on the silica
film.
In the supplemental answer, a further summary of what the
examiner regards Kotelnikov to teach regarding the use of an
oligomeric or polymeric modification agent is provided. However,
the examiner has not identified a particularized suggestion,
reason or motivation to combine the applied references.
As pointed out by appellants in the briefs (see, e.g., page
8, first two paragraphs of the brief), the examiner has not
identified a reasonable incentive for the proposed modification
of either of the primary references based on the applied
references’ teachings. In this regard, the primary references
are concerned with dielectrics including silanol containing
silica coatings for semiconductor substrates and the
constellation of properties associated therewith and Kotelnikov
(pages 2 and 3) is concerned with hydrophobic dispersed
substances useful in the oil and gas industry for changing the
oil and water permeability of strata. While Kotelnikov is
directed to improving hydrophobicity properties of dispersed
silica substances for use in the oil and gas industry via surface
modification using oligomer or polymer silicon-containing
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compounds (for example, polymethylsilazanes) as a possible fourth
component in their method (Kotelnikov, page 8), the examiner has
not established that the surface modification oligomer or polymer
silicon-containing agents disclosed by Kotelnikov would be useful
in the disparate semiconductor manufacturing methods of the
primary references while not adversely affecting the properties
of the semiconductors. The examiner’s effort falls short in
failing to establish a particularized suggestion for the proposed
modification of the specific primary references’ semiconductor
fabrication methods in a manner that would have led one of
ordinary skill in the art to arrive at the claimed invention with
a reasonable expectation of success in so doing. See In re
Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir.
1998). The examiner has not shown how the other references
applied by the examiner in rejecting claims 8, 11-14 and 17
remedy the above-noted shortcomings. It follows that we will not
sustain either of the examiner’s rejections.
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CONCLUSION
The decision of the examiner to reject claims 1-7, 9, 10,
15, 16, 18 and 19 under 35 U.S.C. § 103(a) as being unpatentable
over Masakara and Gnade in view of Kotelnikov and to reject
claims 8, 11-14 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Masakara and Gnade in view of Kotelnikov,
Varanasi and Shimizu is reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )
Appeal No. 2003-1366
Application No. 09/488,075
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RICHARD S. ROBERTS
P.O. BOX 484
PRINCETON, NJ 08542