Ex Parte Yabe et al

Board of Patent Appeals and Interferences

Mar 17, 2011

10576230 (B.P.A.I. Mar. 17, 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.
10/576,230 04/14/2006 Atsushi Yabe 4700.P0328US 7180
23474 7590 03/17/2011
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
03/17/2011 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 ATSUSHI YABE, JUNNOSUKE SEKIGUCHI,
TORU IMORI, and YOSHIHISA FUJIHIRA
________________

Appeal 2010-000891
Application 10/576,230
Technology Center 1700
________________

Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, 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 2010-000891
Application 10/576,230

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 5 and 6, the only claims pending in the
Application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 6 and dependent claim 5 are representative of the
invention and are reproduced below from the Claims Appendix to the
Appeal Brief:
6. An electroless copper plating method comprising the steps of:
preparing a pretreatment agent by reacting or mixing a noble metal
compound and a silane coupling agent having a functional group with metal-
capturing capability;
pretreating a mirror surface having a surface roughness of less than 10
nm with the pretreatment agent prior to electroless copper plating;
performing electroless copper plating on the pretreated mirror surface
with an electroless copper plating solution comprising a first reducing agent,
hypophosphorous acid or a hypophosphite as a second reducing agent and a
stabilizer for inhibiting copper deposition; and
forming a thin film having a thickness of no more than 500 nm on the
pretreated mirror surface by the electroless copper plating.
5. An electroless copper plating method according to Claim 6,
wherein the first reducing agent is glyoxylic acid, the second reducing agent
is hypophosphorous acid and the stabilizer to inhibit copper deposition is
2,2’-bipyridyl.

2 Appeal Brief filed Apr. 24, 2009 (“Br.”).
Appeal 2010-000891
Application 10/576,230

3
Appellants request review of the following grounds of rejection (Br.
2):
1. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Kondo3
in view of Uzoh 4, Maenosono5, and Imori6 (Ans.7 3-6); and
2. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Kondo
in view of Uzoh, Maenosono and Imori, and further in view of Yoshida8 and
Verbunt9 (Ans. 6-8).
In traversing the rejection of claim 5, Appellants essentially rely on
the arguments made in support of patentability of claim 6. (See Br. 8-9
(“Verbunt and Yoshida et al do not cure the deficiencies contained in the
previously discussed Kondo et al, Uzoh et al, Maenosono and [Imori]
references.”); Br. 9 (asserting, without explanation, that Example 2 provides
objective evidence of nonobviousness).) These arguments raise the
following issues10:
1. Did the Examiner reversibly err in determining that one of
ordinary skill in the art would have had a reasonable expectation of success

3 US 4,834,796, issued May 30, 1989.
4 US 2003/0160326 A1, published Aug. 28, 2003.
5 US 2001/0021466 A1, published Sept. 13, 2001.
6 WO 0149898, published Dec. 7, 2001 (as translated).
7 Examiner’s Answer mailed Jul. 21, 2009.
8 US 2002/0011176 A1, published Jan. 31, 2002.
9 US 2004/0152303 A1, published Aug. 5, 2004.
10 Any remaining issues raised by Appellants have been fully addressed by
the Examiner and are unpersuasive of error in the Examiner’s obviousness
determination for the reasons explained in the Answer (see e.g., Ans. 8-10
(regarding motivation to use a combination of formalin and sodium
hypophosphite), and 14, ll. 1-7 (regarding adherency of Maenosono’s film
layer)).
Appeal 2010-000891
Application 10/576,230

4
in applying the conventional plating techniques of the secondary references
in Kondo’s method? and
2. Did the Examiner err in determining that a preponderance of the
evidence, taking into account Appellants’ evidence of unexpected results,
weighs in favor of obviousness?
We answer these questions in the negative for the reasons stated in the
Answer and in the discussion that follows.
The Examiner finds that Kondo discloses the electroless copper
plating method of appealed claim 6 with the exception of “coating of the
mirror surface with the claimed surface roughness and the plating thickness
of 500 nm or less, and the application of the noble metal/silane pretreatment
agent before the electroless plating.” (Ans. 4; see Br. 4 (providing
essentially the same list of features absent in Kondo).) The Examiner notes
Kondo teaches that conventional plating techniques can be used in the
disclosed plating method. (Ans. 10.)
The Examiner relies on the secondary references as evidence of
conventional plating techniques at the time of the invention. More
specifically, the Examiner relies on Imori to establish that, at the time of the
invention, “pretreatment of mirrored finish surfaces using the noble
metal/silane (catalyst) [was] . . . a ‘conventional’ treatment.” (Ans. 11.)
Maenosono is cited for a teaching that it was well known in the art to plate
or coat thin films on silicon wafers having a roughness of 10 nm or less by a
variety of methods. (Ans. 13.) Uzoh is relied on for a teaching that it was
conventional in the art to plate copper on a substrate by electroless or
electroplating techniques for integrated circuit applications. (Ans. 12.)
Appeal 2010-000891
Application 10/576,230

5
Appellants contend these conventional treatments are intended for use
on mirrored finish substrate surfaces and, therefore, one of ordinary skill in
the art would not have had a reasonable expectation of success in applying
these treatments in Kondo’s electroless plating method, which requires
roughened substrate surfaces. (Br. 5-7.)
We have reviewed Kondo’s disclosure and are in agreement with the
Examiner that Kondo’s method is not limited to roughened substrate
surfaces. Rather, Kondo merely identifies cleaning and chemically
roughening as one example of a conventional pretreatment (see Kondo, col.
7, ll. 53-60, cited in Ans. 10). The Examiner has directed us to Kondo’s
examples, wherein Kondo describes using a stainless steel substrate which
appears to have been cleaned, but not chemically roughened (Ans. 9-10
(citing Kondo, col. 9)). The Examiner has also directed us to the disclosure
in Imori which supports a finding that it was known in the art at the time of
the invention to electrolessly metal plate silicon wafers having a mirrored
finish surface. (Imori11 5, 2nd para.) Appellants have not directly refuted
these specific findings which support the Examiner’s position that the
ordinary artisan would have had a reasonable expectation of success in using
mirrored finish substrate surfaces and conventional treatments of such
surfaces in Kondo’s electroless plating method.
Appellants also contend that Uzoh and Maenosono are directed to
electrochemical deposition techniques and, therefore, one of ordinary skill in
the art would not have had a reasonable expectation of success in applying
the teachings of these references to Kondo’s method which uses electroless
plating techniques. (Br. 5-6.)

11 Citations to Imori refer to the page numbers of the translation.
Appeal 2010-000891
Application 10/576,230

6
Appellants’ argument with respect to Uzoh is based on Uzoh’s
inventive method which involves “electroplating copper on a semiconductor
wafer to form copper interconnects” (Uzoh [0002]). Appellants have not
directly refuted the Examiner’s findings which are based on Uzoh’s
discussion of the prior art in the background section of the published
application. We have reviewed the relied-upon disclosure and determine it
supports the Examiner’s finding that, at the time of Appellants’ invention,
the ordinary artisan would have understood “[c]opper may be plated by
electroless or electroplating techniques on a substrate” (Ans. 12 (quoting
Uzoh [0005])). Moreover, Appellants have not directly refuted the
Examiner’s finding that “Uzoh exemplifies [] a process for integrated
circuits using a silicon wafer substrate and copper plating (with no limitation
to electroless or electroplating)” (Ans. 12 (citing (Uzoh [0006])). See In re
Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“[A] reference disclosure must
be evaluated for all that it fairly [teaches] and not only for what is indicated
as preferred.”); see also, In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir.
1992).
With respect to Maenosono, we are in agreement with the Examiner
that one of ordinary skill in the art would have had a reasonable expectation
of success in electrolessly plating a substrate surface with a roughness of 10
nm or less as described in Maenosono based on Imori’s disclosure (Ans. 13-
14, bridging para.). Appellants have not addressed the Examiner’s findings
with respect to the understanding of the ordinary artisan when considering
the combined teachings of Maenosono and Imori. (See Br. 6-7.)
In addition to arguing the Examiner has not established a prima facie
case of obviousness, Appellants contend the Specification Examples and
Appeal 2010-000891
Application 10/576,230

7
Comparative Examples demonstrate unexpected results in using the claimed
electroless copper plating solution as compared to plating solutions
containing formalin or glyoxylic acid alone, or a plating solution without a
stabilizer. (Br. 7.)
The Examiner relies on the following disclosure in Kondo in support
of her determination that it would have been obvious to have used
Appellants’ claimed electroless copper plating solution in Kondo’s method
(Ans. 4):
[F]ormalin may be detrimental to the human body and cause
instability of the bath when used in a large amount, and thus as
little as possible should be used. For example, it is better if the
amount of formalin is reduced and other reducing agents are
jointly used, and the deposition rate is still increased. . . .
. . . .
. . . [I]t is certain that sodium hypophosphite, although it does
not act alone, effectively accelerates the plating reaction if used
in combination with formalin.

(Kondo, col. 13, ll. 32-38, col. 14, ll. 6-9.)
The above-cited disclosure supports the Examiner’s contention that
one of ordinary skill in the art would have been motivated to use a
combination of formalin and sodium hypophosphite to achieve an improved
deposition rate (see Ans. 9-10). Moreover, this evidence provides a strong
prima facie showing of obviousness as to the claimed electroless copper
plating solution for the reasons fully explained by the Examiner (Ans. 15-
16). By contrast, Appellants’ evidence of unexpected results does not
appear to be commensurate in scope with the claims. For example,
Appellants’ claimed and comparative solutions were only tested on a single
substrate (i.e., a silicon wafer having a 15 nm tantalum nitride film formed
Appeal 2010-000891
Application 10/576,230

8
thereon (Spec. [0032])12) and there was no variation in the amounts of
reducing agents tested (see Spec. [0033-0042])13. For these reasons, we are
in agreement with the Examiner that a preponderance of the evidence, taking
into account Appellants’ secondary considerations, weighs in favor of
obviousness. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir.
2007) (noting that evidence of secondary considerations does not always
overcome a strong prima facie showing of obviousness).
In sum, for the reasons explained above and in the Answer, we are not
persuaded of error in the Examiner’s rejections of appealed claims 5 and 6.
Accordingly, we sustain both grounds of rejection.

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
bar

FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631

12 See Spec. [0011] (identifying other suitable substrates).
13 See Spec. [0013-0014] (listing the ranges of preferred concentrations).