Ex Parte Xu et al

Board of Patent Appeals and Interferences

Apr 29, 2011

10967740 (B.P.A.I. Apr. 29, 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.
10/967,740 10/18/2004 Frank Y. Xu P156-32-04 1077
25108 7590 04/29/2011
MOLECULAR IMPRINTS
PO BOX 81536
AUSTIN, TX 78708-1536
EXAMINER
JOHNSON, CONNIE P
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
04/29/2011 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 FRANK Y. XU, JUN SUNG CHUN, and
MICHAEL P.C. WATTS
__________

Appeal 2010-003415
Application 10/967,740
Technology Center 1700
____________

Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
8-18 and 21-26. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants describe a material for use in forming an integrated circuit
on a substrate having a low dielectric constant (Spec. para [0001]).
Claims 8, 9, 11, and 21 are illustrative:
8. A composition of matter that comprises:
a) a UV curable organic modified silicate, and
b) a decomposable organic compound,
c) a release agent,
wherein said composition has a viscosity less than about
200,000 cps, and
wherein said composition is polymerizable to form a
porous, substantially inorganic silica network.
9. A composition of matter according to claim 8 where
the release agent further comprises a fluorosurfactant.
11. A composition of matter according to claim 9
wherein said decomposable organic compound is chemically
bonded to said UV curable organic modified silicate.
21. The composition of Claim 8, wherein the porous
silica network comprises pores with a diameter of about 3 nm to
about 30 nm.
Appellants seek review of the following rejection:
Claims 8-18 and 21-26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ota (US 7,160,949 B2 issued Jan. 9, 2007) in view of
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Dupont Zonyl® UR technical disclosure (DUPONT, DUPONTTM ZONYL® UR
FLUOROSURFACTANT 1(2002)) and Oxman (US 5,753,781 issued May 19,
1998) as evidenced by Sachdev (US 7,329,439 B2 issued Feb. 12, 2008) and
Webmineral.com definition of Parsettensite (Parsettensite Mineral Data,
EXCALIBUR MINERAL COMPANY, 2001,
http://webmineral.com/data/Parsettensite.shtml).

Appellants argue the claims in the following groups: (1) Claims 8, 9,
12, 15-17 and 21-26; (2) claims 10 and 13; (3) claims 11 and 14; and (4)
claim 18 (App. Br. 6-12; Reply Br. 1-6). We select the following
representative claims from each group: Group (1) claims 8 and 21; Group
(2) claim 10; Group (3) claim 11 and Group (4) claim 18.

Group (1): Claim 8
ISSUE
Did the Examiner reversibly err in determining that Ota in view of
Oxman as evidenced by DuPont, Sachdev and Webmineral.com teach a
composition having UV curable organic modified silicate, a decomposable
organic compound and a release agent with the claimed viscosity as required
by claim 8? We decide this issue in the negative.

FACTUAL FINDINGS & ANALYSIS
The Examiner finds that Ota teaches a composition of phyllosilicates
(corresponding to the UV curable organic modified silicate),
polycaprolactone (i.e., decomposable organic compound); and a surfactant
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(i.e., release agent) as required by claim 8 (Ans. 5-6).1 The Examiner finds
that Ota does not teach the viscosity claimed (id. at 5-7). The Examiner
finds that Oxman teaches the viscosity of a thermoplastic molding
composition is a result effective variable because the amounts of high and
low molecular weight polycaprolactones are controlled to form a
composition with a lower viscosity (id. at 6-7). With regard to the subject
matter of claim 8, the Examiner relies on Sachdev as evidence that
phyllosilicates are UV curable (id. at 5).
Based upon these teachings, the Examiner concludes that it would
have been obvious to optimize the viscosity of the composition by
controlling the amount of polycaprolactone to achieve the claimed viscosity
(i.e., less than about 200,000 cps) (id. at 7). The Examiner further reasons
that Ota’s modified composition would be capable of being polymerized “to
form a porous, substantially inorganic silica network” (id. at 6).
Appellants argue that the claim phrase “said composition is
polymerizable to form a porous, substantially inorganic silica network” is a
structural limitation that is missing from the prior art (App. Br. 8).
Appellants argue that the Examiner improperly treats this inorganic silica
claim phrase as an intended use of the composition and has not given it the
proper patentable weight (id. and Reply Br. 4). Appellants contend that Ota
teaches that the phyllosilicates the Examiner relies on are dispersed in an
olefin block copolymer (A-1) such that the olefin block copolymer
composition is not polymerizable to form a porous, substantially inorganic
silica network (App. Br. 8). Appellants argue that the phyllosilicates are
fillers dispersed in the organic olefin block copolymer (A-1) such that the

1 We refer to the Examiner’s Answer mailed March 11, 2009.
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phyllosilicates contained in the olefin block copolymer are not
polymerizable to form a porous “substantially inorganic” silica network and
thus Ota’s composition is structurally different (Reply Br. 3-4).
Appellants argue that phyllosilicates absorb UV light, but that is not
the same as UV curable (App. Br. 8). Appellants contend that they define
“polymerizable material” in paragraph 26 of the Specification as one that is
curable by actinic radiation to form a solid from a liquid material (Reply Br.
2).
Contrary to Appellants’ arguments, the Examiner correctly states that
claim 8 is open-ended and may comprise other components, such as the
olefin block copolymer (A-1) (Ans. 8). This claim construction is supported
by the Specification that discloses that one skilled in the art may select the
polymerizable fluid composition and other materials to optimize Appellants’
method according to the specific needs of the end user (Spec. para. [0051]).
In other words, the polymerizable fluid composition is not limited solely to
UV curable silicates disclosed and claimed by Appellants but may include
other materials as well.
Furthermore, the Examiner has properly construed the disputed
inorganic silica network claim phrase as requiring that the claimed
composition be capable of polymerization to form a porous, substantially
inorganic network (Ans. 6). Contrary to Appellants’ argument, the
Examiner has given weight to the disputed claim phrase and determined that
Ota’s composition that includes a UV curable organic modified silicate, a
decomposable organic compound, and a release agent as required by the
claim would be capable of polymerization to form a porous, substantially
inorganic silica network (id. at 7-8).
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Appellants’ argument that the olefin block copolymer in Ota’s
composition would not make Ota’s composition polymerizable to form a
substantially inorganic porous polymer network is not persuasive because
there is no objective evidence to substantiate that the presence of Ota’s
olefin block copolymer would have had such an effect; mere attorney
argument is insufficient. In addition, as correctly acknowledged by
Appellants, Ota teaches that the phyllosilicates may be present in amounts
from 90 parts to 10 parts and the olefin block copolymer may be
complementarily present in the material from 10 parts to 90 parts (Reply Br.
3).
Ota further discloses that the polycaprolactone may comprise the
thermoplastic resin (C) as found by the Examiner (Ans. 6; Ota col. 19, l. 30).
Ota discloses that the thermoplastic resin (C) may be combined with the
olefin block copolymer (A-1) and filler (i.e., phyllosilicate) (col. 151, ll. 11-
25). Ota discloses that based on 100 parts by weight of the thermoplastic
resin (C) it is usual to use 0.01 to 150 parts olefin block copolymer (A-1)
and 0.01 to 300 parts filler (id. at ll. 26-34).
Therefore, the phyllosilicates may comprise the majority of the
composition (e.g., 90 parts or 300 parts) with the olefin block copolymer
(e.g., 10 parts or 0.01 parts) and thermoplastic resin (C) (e.g., 100 parts)
constituting a smaller portion of the composition. As a major component of
the composition, we agree with the Examiner that Ota’s composition
reasonably appears to be polymerizable to form a porous “substantially
inorganic silica network” composed of the phyllosilicates. Though
Appellants contend Ota’s disclosure that the olefin block copolymer has
excellent interfacial adhesion to the fillers such as the phyllosilicate, such a
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disclosure does not change the fact that the amount of olefin block
copolymer may be a minor part of the composition. Therefore, when present
in a minor amount, the olefin block copolymer may adhere well to a network
formed by the phyllosilicates, the major component of the composition.
We determine that the Examiner has met the burden of establishing
that Ota’s composition is capable of polymerizing to form a porous,
substantially inorganic silica network. Accordingly, Appellants have the
burden to show that Ota’s composition is not capable of polymerizing to
form a porous substantially inorganic silica network as claimed. Appellants’
argument has not convinced us that the Examiner erred.
Even though Appellants contend that phyllosilicates absorb UV light
but are not UV curable, Appellants’ argument fails to address the
Examiner’s stated case which is based upon Sachdev evincing that
phyllosilicates are known to be UV curable (Ans. 5 and 8). Notably,
Appellants have not provided any objective evidence to substantiate their
argument that phyllosilicates are not UV curable. We are unpersuaded by
such argument.

Claim 21
Regarding claims 21-26, Appellants merely indicate that the subject
matter of these claims as a structural limitation must be given patentable
weight by the Examiner (Reply Br. 5-6). However, the Examiner has
addressed these limitations in determining that the claims require the
composition be capable of forming a porous, substantially inorganic silica
network having the particular properties. Because the applied prior art
teaches a composition having the claimed components, we agree with the
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Examiner that the composition is prima facie capable of forming a porous,
substantially inorganic silica network upon polymerization absent evidence
to the contrary.
Appellants have the burden of showing that the prior art composition
does not possess the capability asserted by the Examiner. Appellants’ mere
attorney argument is not sufficient to rebut the prima facie case.
For these reasons, we affirm the Examiner’s rejection of claims 8, 9,
12, 15-17, and 21-26 over Ota in view of Oxman as evidenced by Sachdev,
DuPont, and Webmineral.com.

Group 2: Claim 10
Appellants argue that the art does not teach the polycaprolactone is a
decomposable organic compound (App. Br. 9).
However, the Examiner correctly finds Ota to teach polycaprolactones
may be part of the composition, which is the same material claimed by
Appellants as being the decomposable organic material (Ans. 6). Because
Ota uses the same material, we agree with the Examiner that Ota’s
polycaprolactones must be decomposable organic material. In re Papesch,
315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
thing.”).
Therefore, we affirm the Examiner’s § 103 rejection of claims 10 and
13 over Ota in view of Oxman, as evidenced by Sachdev, DuPont, and
Webmineral.com.

Group 3: Claim 11
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Appellants argue that the Examiner and cited art are silent regarding a
decomposable organic compound chemically bonded to a UV curable
organic modified silicate (App. Br. 9). Appellants contend that one of
ordinary skill in the art would know that reaction conditions and order affect
reaction products such that it would not have been obvious or expected that
combining the components of the composition under unspecified conditions
would result in chemical bonding of the polycaprolactone to the silicate
(Reply Br. 4-5).
However, a composition exists from the moment the ingredients are
mixed together and is not limited to the final product. Exxon Chem. Patents
v. Lubrizol Corp., 64 F.3d 1553, 1557-58 (Fed. Cir. 1995). Accordingly,
upon mixing the decomposable organic compound and the UV curable
organic modified silicate, the composition of claim 11 would have been
satisfied. We agree with the Examiner that Appellants’ arguments regarding
the order of addition of the components as affecting chemical bonding are
directed to a process and are not relevant to the composition as claimed
(Supp. Ans. 3).
We affirm the Examiner’s §103 rejection of claims 11 and 14 over
Ota in view of Oxman as evidenced by Sachdev, DuPont and
Webmineral.com.

Group 4: Claim 18
Appellants argue that the Examiner is silent regarding the weight
percent of silicon of the organic modified silicate (App. Br. 11).
Contrary to this argument, the Examiner relies on the
Webmineral.com disclosure as teaching that parsettensite, a phyllosilicate,
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has an Si content within the range recited in claim 18 (Ans. 5-6). Appellants
do not respond to this analysis.
We affirm the Examiner’s § 103 rejection of claim 18 over Ota in
view of Oxman as evidenced by Sachdev, DuPont and Webmineral.com.

DECISION
The Examiner’s decision is affirmed.
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).

ORDER
AFFIRMED

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