JCU CORPORATION

Patent Trials and Appeals Board

Dec 24, 2020

2020003804 (P.T.A.B. Dec. 24, 2020)

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.
15/306,261 10/24/2016 Takafumi OMORI 477952US99PCT 8046
22850 7590 12/24/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WITTENBERG, STEFANIE S
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
12/24/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKAFUMI OMORI, HIROKI YASUDA,
and SYUNSUKE ANDO

Appeal 2020-003804
Application 15/306,261
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, DEBRA L. DENNETT, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–3 and 5–15. We have jurisdiction
under 35 U.S.C. § 6(b).
An oral hearing was heard December 8, 2020.
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as JCU
Corporation. Appeal Brief dated November 4, 2019 (“Appeal Br.”) 2.
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CLAIMED SUBJECT MATTER

The present application generally relates to a method of filling holes,
such as vias and through holes, or grooves, such as trenches, formed in a
substrate by copper plating. Specification dated Oct. 24, 2016 (“Spec.”) ¶ 1.
The Specification teaches that the described method may be
applicable to substrates such as printed circuit boards and silicon wafers. Id.
¶ 33. The Specification further teaches that the method includes “immersing
the substrate . . . in an acidic copper plating solution containing a copper ion,
a sulfate ion, and a halide ion, at from 30 to 70°C; and plating the substrate
at a current density of 3 A/dm2 or more by using an insoluble electrode as an
anode.” Id. ¶ 11.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
1. A method for filling holes or grooves formed in a
substrate by copper plating, comprising:
immersing the substrate having the holes or grooves in an
acidic copper plating solution comprising a copper ion, a sulfate
ion, a halide ion, a brightener, and a leveler at from 30 to
70°C; and
plating the substrate at a current density of 3 A/dm2 or
more using an insoluble electrode as an anode fix a time
sufficient to completely fill said holes or grooves,
wherein the copper ion in the acidic copper plating
solution is present in an amount of 25 g/L or more and the
saturation copper ion concentration of the copper plating
solution during said immersing or less, the sulfate ion in the
acidic copper plating solution is present in an amount of 50 g/L
or more, and the halide ion in the acidic copper plating solution
is present in an amount of from 5 to 300 mg/L,
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wherein the holes or grooves are completely filled
within a period of 30 minutes,
wherein said acidic copper plating solution is free from
ruthenium ion,
wherein the leveler is selected from the group consisting
of:
a reaction product of a compound having three or
more glycidyl ether groups and a heterocyclic compound,
a reaction product of diglycidyl ether and a
nitrogen-containing compound,
a water soluble resin obtained through reaction of a
polyamine, a dibasic carboxylic acid compound, and a
crosslinking agent, and
mixtures thereof,
wherein the brightener is a sulfur-containing organic
compound, and
wherein the substrate having the holes or grooves has at
least one of a via having an opening diameter of from 50 to 150
µm and a depth of from 20 to 100 μ.m, a through hole having
an opening diameter of from 50 to 100 μm and a thickness of
from 50 to 250 μm, and a trench having a width of from l to 50
μm and a depth of from l to 50 µm.
Appeal Br. 26–27 (Claims App.).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Cobley et al. (“Cobley”) US 2004/0206631 A1 Oct. 21, 2004
Willey et al. (“Willey”) US 2011/0284386 A1 Nov. 24, 2011
Yasuda et al. (“Yasuda”) US 2013/0043137 Al Feb. 21, 2013
Niazimbetova et al.
(“Niazimbetova”)
US 2013/0048505 Al Feb. 28, 2013

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REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–3, 5, 8–10, 12 and 14 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Yasuda in view of Cobley.
Final Office Action dated March 14, 2019 (“Final Act.”) 4–8.
2. Claims 6 and 7 are rejected under 35 U.S.C. § 103 as being
unpatentable over Yasuda in view of Cobley, and further in
view of Willey. Id. at 8–9.
3. Claims 11, 13, and 15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Yasuda in view of Cobley and further
in view of Niazimbetova. Id. at 9–11.
4. Claims 1–3 and 5–15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Niazimbetova. Id. at 11–13.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–3, 5, 8–10, 12 and 14 as
obvious over Yasuda in view of Cobley. Id. at 4–8. In support of the
rejection, the Examiner finds that Yasuda teaches a copper plating method
generally similar to that claimed. Id. at 4–5. The Examiner finds that the
method taught by Yasuda includes immersing a substrate having via holes in
an acidic copper plating bath comprising a copper ion, a sulfate ion, a halide
ion, a brightener, and a leveler at a temperature between 20 to 30° C. Id. at
4.
The Examiner finds that the temperature, current density, copper ion
concentration, sulfate ion concentration, halide ion concentration, as well as
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the depth and diameter dimensions of Yasuda overlap with the instantly
claimed ranges “therefore a prima facie case of obviousness exists.” Id. at 5.
In the Examiner’s Answer, the Examiner supplies a table, reproduced
below, showing the claimed range of various parameters side-by-side with
the parameters taught by Yasuda.
Features of Claim 1 Claimed Range Yasuda et al.
(US 2013/0043137)
Temperature

30–70 °C About 20–30 °C
[0076]
Current density 3 A/dm2 or more About 0.05–3 A/dm2
[0076]
Copper ion concentration 25 g/L - saturation of
copper ion concentration
during immersing
10–80 g/L [0060]
Sulfate ion concentration 50 g/L or more 5–200 g/L [0061]
Halide ion concentration

5 to 300 mg/L 0.1–150 mg/L
[0063]
Depth of holes or grooves Via hole: 20–100 μm 30 μm [0078]
Diameter of holes or
grooves
Via hole: 50–150 μm 50 μm [0078]

Examiner’s Answer dated March 3, 2020 (“Ans.”) 17.
The Examiner additionally finds that Yasuda is silent as to whether
the anode is soluble or insoluble. Final Act. 6. The Examiner looks to
Cobley which teaches that insoluble anodes are preferred over soluble
anodes in the production of printed wiring and circuit boards. Id. The
Examiner determines that it would have been obvious to use an insoluble
anode as taught by Cobley with the process of Yasuda because Cobley
teaches that electroplating processes employing insoluble anodes are more
versatile, permit higher plating speeds, require smaller apparatus size,
facilitate ease of maintenance, improve solution flow and agitation, and
obtain more uniform plating results. Id. at 6–7.
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Appellant argues that the rejection should be reversed on several
bases. Appeal Br. 8–15.
First, Appellant argues that the cited prior art fails to teach that “the
holes or grooves are completely filled within a period of 30 minutes” as
required by claim 1. Id. at 10. In a similar vein, Appellant argues that
“selections must be made as to at least six different parameters without
guidance from Yasuda itself to achieve the combination of features recited in
claim l” and resultant filling speed. Id. at 10–11. Appellant further asserts
that “[t]he examiner has not provided a rationale for making all of the noted
selections together to achieve claim 1.” Id. at 11.
In the Answer, the Examiner directs us to Yasuda’s teaching that
“[t]ypically, for copper plating of a patterned board having a blind via hole
of 50 μm in diameter and 30 μm in depth to allow the via hole to be filled
completely, the plating may be effected for about 30 minutes.” Yasuda ¶ 78.
The Examiner determines that Yasuda teaches the features of claim 1
as follows:
The features of temperature, current density, and concentrations
of copper ion, sulfate ions and halide ions of Yasuda et al.
overlap with the claimed feature ranges thus a prima facie case
of obviousness exists. It is further noted that the features of
temperature and current density, which overlap at the endpoints
are presented as ‘about’ in the disclosure of Yasuda et al. and
therefore values slightly above the endpoints are present in the
disclosure of Yasuda et al. . . . Yasuda et al. provides the
necessary guidance to produce the claimed invention. The
guidance of Yasuda et al. is based in part on the ranges
provided by Yasuda et al. . . . . one of ordinary skill in the art
would have produced the claimed invention by routine
experimentation.

Ans. 17–18.
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In its Reply Brief, Appellant argues at length that
1) Yasuda offers insufficient guidance to lead one to the claims
(Reply Br. 1, 9, 16),
2) one of skill in the art would not have had a reasonable
expectation of success without undue experimentation (id. at
2, 5, 6, 8–9, 11–12, 14, 15–16),
3) the Examiner offers insufficient explanation as to why routine
optimization would have led one to the invention (id. at 2–3,
4, 7–8),
4) the Examiner erroneously shifts the burden of proving
patentability to Appellant (id. at 3),
5) the rule of In re Peterson2 is inapplicable to instances where
there are multiple processing parameters (id. at 5, 8, 14–15),
6) the prior art is not enabling (id. at 6), and
7) the experimentation required to achieve the claimed process
is more than routine optimization (id. at 10).
We find Appellant’s arguments to be unpersuasive. The Federal
Circuit has long “recognized that ‘where the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.’” E.I. DuPont de Nemours &
Co. v. Synvina C.V., 904 F.3d 996, 1006 (Fed. Cir. 2018) (quoting In re
Aller, 220 F.2d 454, 456 (CCPA 1955)). The “general conditions of the
claim” are taught where the prior art discloses overlapping values. See
Applied Materials, 692 F.3d 1289, 1297 (“[B]ecause the prior art disclosed

2 In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003).
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values overlapping the claimed ranges, the ‘general conditions’ of the claim
are disclosed.”). Further, precedent instructs “that prima facie rejections
may be appropriate ‘where there is a teaching in the prior art that the end
points of the prior art range are approximate, or can be flexibly applied.’” In
re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018) (quoting In re Patel, 566
Fed. Appx. 1005, 1010 (Fed. Cir. 2014)).
Here, as set forth in the Examiner’s Table 1 (Ans. 17), the general
conditions of the claim are disclosed. Yasuda teaches concentrations of
copper ion, sulfate ion, and halide ion that overlap the claimed ranges. Id.
Yasuda further teaches that its process is applicable to holes having a depth
and diameter as specified by claim 1. Id.
Yasuda teaches ranges for the temperature and current density having
upper values that coincide with the lower end of the claimed ranges (id.).
Yasuda further teaches, however, that “the plating may be effected at a fluid
temperature of about 20 to 30° C.” and a “current density of about 0.05 to
3A/dm2.” Yasuda ¶ 76 (emphasis added). Thus, Yasuda indicates that the
end points of the range are approximate.
Yasuda further teaches that “[t]ypically, for copper plating of a
patterned board having a blind via hole of 50 μm in diameter and 30 μm in
depth to allow the via hole to be filled completely, the plating may be
effected for about 30 minutes.” Id. ¶ 78. Yasuda also teaches that a small
trench in a silicon wafer that is 0.1 to 0.5 μm in diameter and 0.2 to 1 μm in
depth may be filled in “about 150 seconds.” Id. ¶ 79. These dimensions are
only slightly smaller than the lower boundary of the “trench having a width
of from l to 50 μm and a depth of from l to 50 µm” of claim 1. Appeal Br.
27 (Claims App.); see also Yasuda ¶¶ 99–102 (25 minute plating time).
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Thus, it appears that achieving a 30 minute fill time for the holes or trenches
of the claim was known in the art at the time of the Appellant’s invention.
This appears to be particularly so in regard to holes or trenches near the
lower boundary of the claim’s dimensional limitations.
In its Reply Brief, Appellant relies on In re Stepan3 as support for its
contention that the Examiner did not articulate an adequate rationale in
support of the finding that one of ordinary skill in the art would have had
reason to optimize the parameters of Yasuda to achieve a 30 minute filling
time. Reply Br. 3, 4, 8. This is not persuasive. Yasuda specifically teaches
the 30 minute filling time. Yasuda ¶¶ 78, 79, 102.
Further, in Stepan, the reference taught only that “any combination of
surfactants” may be used. In re Stepan, 868 F.3d at 1345. Here, Yasuda
gives much more focused guidance. Indeed, it teaches a value falling within
the claimed range for each parameter. Ans. 17 (Table 1). This is not an
instance where one of skill in the art would have been obliged to select
among multiple embodiments or from a large list of elements.
“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Consistent with Peterson, the Examiner reasonably determined that the
normal desire to optimize a known process would have led one of skill in the
art to the claimed parameters. Similarly, because the claimed parameters
(other than the anode) overlap those taught by Yasuda, one of skill in the art

3 In re Stepan Company, 868 F.3d 1342 (Fed. Cir. 2017).
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would have had a reasonable expectation of success in achieving the method
of the claims. Appellant has not shown error in such determination.4
Next, Appellant argues that Yasuda does not disclose the upper end of
the copper ion concentration limitation. Appeal Br. 11. Claim 1 requires
“the copper ion in the acidic copper plating solution is present in an amount
of 25 g/L or more and the saturation copper ion concentration of the copper
plating solution during said immersing or less.” Id. at 26 (Claims App.). As
best understood, the latter portion of this limitation is intended to indicate an
upper bound of the claimed range of copper ion. See Ans. 17. The
Specification describes several exemplary copper plating solutions having
copper ion concentrations ranging from 63.6 g/L to 76.3 g/L as “the methods
of the invention.” Spec. ¶¶ 46 (Table 1), 47, 51.
In the Final Office Action, the Examiner finds that Yasuda teaches a
copper ion concentration of 10 to 80 g/L. Final Act. 4 (citing Yasuda ¶ 60).
The portion of Yasuda cited by the Examiner provides that “[t]he
concentration of the copper ion in the composition of a copper plating bath is
10 to 80 g/L, preferably 35 to 75 g/L.” Yasuda ¶ 60.
In regard to the copper ion concentration limitation, the Examiner
finds that “while Yasuda does not specifically address the claim limitation
‘saturation concentration’, this is considered to be an intrinsic property
resulting from varying the solution components, which are the same or
overlapping as those instantly claimed.” Final Act. 5. The Examiner

4 Any argument set forth in the Reply Brief concerning Rejection 1 and not
addressed above is considered to be a new argument not properly before the
board, see 37 CFR § 41.41(b)(2) (providing that new argument will not be
considered by the Board absent a showing of good cause), or not adequately
stated so as to present an issue for appeal.
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determines that the teachings of Yasuda establish a prima facie case and that
the burden of showing this limitation is not taught therefore shifts to
Appellant. Id. at 5–6.
Appellant argues that the Examiner has “not provided a technical
basis for asserting that any particular concentration of copper ions
encompassed by Yasuda is necessarily less than the saturation concentration
under any particular plating conditions encompassed by Yasuda.” Appeal
Br. 11.
Appellant’s argument is not persuasive. Yasuda teaches a copper ion
concentration range of “10 to 80 g/L, preferably 35 to 75 g/L.” Yasuda ¶ 60.
Regardless of the precise upper bound of the claim’s copper ion
concentration limitation, it is apparent that there is at least partial overlap.
Appellant has not rebutted, nor sought to rebut, this finding. Nor has
Appellant offered any view as to how the upper bound may be quantified.
Appellant additionally argues that the Examiner has not articulated a
basis for concluding that a skilled artisan would have reasonably expected
that the process of Yasuda may be combined with the insoluble anode of
Cobley to achieve the claimed method. Appeal Br. 11–12. Appellant argues
that the exemplary embodiments of Yasuda employ a plating temperature
and current density that are “low, conventional, and outside of the range of
claim 1.” Id. at 12.
In the Answer, the Examiner finds that Cobley teaches the use of
insoluble anodes in a process similar to that of Yasuda. Ans. 22. The
Examiner finds that Cobley “teaches that electroplating processes employing
insoluble anodes are more versatile than those using consumable (i.e.
soluble) electrodes.” Id. at 22–23. The Examiner further finds that Cobley
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teaches that insoluble anodes “permit higher plating speeds, require smaller
apparatus size, ease of maintenance, improved solution flow and agitation
and allow anodes to be placed close to cathodes and thus more uniform
plating results are obtained.” Id. at 23 (citing Cobley ¶ 5).
Appellant does not substantively address the Examiner’s findings
regarding use of an insoluble anode in its Reply Brief.
Cobley teaches that it “is directed to a plating bath and method for
improving deposition of a metal on a substrate.” Cobley ¶ 1. Cobley further
teaches that “[i]nsoluble anodes are preferred over the soluble anodes in the
production of printed wiring and circuit boards.” Id. ¶ 5. Cobley further
teaches that “an insoluble anode (composed of an inert material such as
platinum, platinized titanium, lead, and the like) may be employed where
electroplating rates are greater than in methods using soluble anodes.” Id. ¶
58 (emphasis added); see also Spec. ¶ 35 (insoluble electrode may be
“formed of titanium coated with . . . platinum”).
In view of the Examiner’s uncontested findings, including that
insoluble anodes permit higher plating speeds, we determine that Appellant
has not shown error with regard to whether a skilled artisan would have had
a reasonable expectation of success in combining the teachings of Cobley
regarding use of an insoluble anode with the process of Yasuda.

Claim 3
Appellant additionally argues that the Examiner errs in rejecting claim
3 over Yasuda in view of Cobley. Appeal Br. 13–15. Claim 3 depends from
claim 1 and further specifies that
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the copper ion in the acidic copper plating solution is present in
an amount greater than or equal to the saturation copper ion
concentration of the copper plating solution at 20°C, and less
than or equal to the saturation copper ion concentration of the
copper plating solution during said immersing.
Id. at 27–28 (Claims App.).
In rejecting claim 3, the Examiner relies on Yasuda’s teaching that the
copper ion concentration is 10 to 80 g/L. Final Act. 7 (citing Yasuda ¶ 60).
The Examiner finds that “saturation concentration” is an intrinsic property
and that, because the solution components of Yasuda are the same as or
overlapping those claimed, there is a prima facie showing of overlap in
copper ion concentration. Id. As a result, the Examiner determines, the
burden of showing that the claimed range is different shifts to Appellant. Id.
Appellant argues that the Examiner’s showing is insufficient to show
that the components taught by Yasuda would inherently result in a copper
ion concentration as required by claim 3. Appeal Br. 13. Appellant asserts
that the concentration required by claim 3 is “substantial” and that it, in
conjunction with the other claimed parameters, yields favorable filling
properties. Id. at 14–15.
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed.Cir.1990).
Such a burden-shifting framework is fair because of “the PTO’s inability to
manufacture products or to obtain and compare prior art products.” In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) (referencing In re Brown, 59
CCPA 1036, 459 F.2d 531 (CCPA 1972)).
It is difficult for the Examiner to construe the precise scope of claim 3
as drafted. Review of the Specification, however, indicates that Appellant
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has supplied test data for plating solutions having a copper ion concentration
ranging from 50.9 g/L to 76.3 g/L. Spec. ¶¶ 46, 62. Appellant has further
described methods applied to plating solutions having a copper ion
concentration ranging from 63.6 g/L to 76.3 g/L as “the methods of the
invention.” Id. ¶ 51.
As persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent
legal error or contrary factual evidence, those findings can establish a prima
facie case of obviousness. Id. Here, Yasuda teaches a somewhat broad
range of copper ion concentration. Yasuda ¶ 60. Given the teachings of the
Specification, it is reasonable for the Examiner to make a prima facie finding
that Yasuda’s range overlaps the claimed range. Appellant has not
meaningfully sought to rebut such finding.
Appellant additionally makes a brief assertion that any prima facie
showing of obviousness is rebutted by evidence of unexpected results.
Appeal Br. 15. Appellant however, does not direct us to evidence of
criticality commensurate with the scope of claim 3 nor does it direct us to a
side-by-side comparison to the closest prior art. Id. Appellant directs us to
certain general statements in the Specification (¶ 52) regarding the benefits
of the claimed method. Id. at 14–15. Paragraph 52 of the Specification,
however, appears largely to describe known tradeoffs. Further, the cited
paragraph is not specific to the copper ion concentration of claim 3.
Accordingly, Appellant has not shown error with respect to the
rejection of claim 3.
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Appellant relies on its arguments set forth with respect to claim 1 in
support of its appeal of the remaining claims subject to Rejection 1. Appeal
Br. 13. As we have not found such arguments to be persuasive, we
determine that Appellant has not shown error with respect to the claims
subject to Rejection 1.

Rejection 2. The Examiner rejects claims 6 and 7 as obvious over
Yasuda in view of Cobley and further in view of Willey. Final Act. 8–9.
Claim 6 depends from claim 1 and adds certain limitations, including
“immersing the substrate having the holes or grooves in the acidic copper
plating solution at from 35 to 65°C.” Appeal Br. 28 (Claims App.). Claim 7
depends from claim 2 (which depends from claim 1) and further requires
“immersing the substrate having the holes or grooves in the acidic copper
plating solution at from 35 to 55°C.” Id. at 29.
In the Final Office Action, the Examiner relies on Willey as teaching
electroplating at elevated temperatures in order to increase the solubility of
copper salts and the plating rate. Final Act. 9. The Examiner cites to
Willey’s teaching that some electroplating is conducted between 30 to 80°C.
Id. (citing Willey ¶ 88). Willey teaches that “in some embodiments,
electroplating is performed at an elevated electrolyte temperature of about
30–80° C., such as between about 40–60° C.” Willey ¶ 88.
The Examiner determines that one of ordinary skill in the art would
have had reason to combine the teachings of Willey with those of Yasuda
and Cobley in order to increase the solubility of copper salts and
consequently the available copper ion concentration. Final Act. 9.
Additionally, the Examiner determines, Willey teaches that the higher
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electroplating temperature allows for faster diffusion of the copper ions and
therefore higher achievable plating rates. Id.
Appellant argues that the specific embodiments described in Willey
do not employ elevated temperatures. Appeal Br. 17. Appellant further
argues that the Examiner does not provide an adequate basis to determine
that one of skill in the art would have had a reasonable expectation of
success in achieving the claimed process. Id.
That Willey does not include a specific example where electroplating
is performed at an elevated temperature is not indicative of error as the
reference must be considered for all that it teaches, including elevated
electroplating temperature. “A reference must be considered for everything
that it teaches, not simply the described invention or a preferred
embodiment.” In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir.
2012). Further, the Examiner finds that the temperatures taught by Willey
permit “higher achievable plating rates.” Final Act. 9. This is supported by
Willey. See Willey ¶ 88 (“The higher temperature also allows for faster
diffusion of the copper ions and therefore higher achievable plating rates.”).
Accordingly, the Examiner has articulated a reasonable basis to expect that
the hypothetical combination would succeed in achieving the claimed filling
time.

Rejection 3. The Examiner rejects claims 11, 13, and 15 as obvious
over Yasuda in view of Cobley and Niazimbetova. Final Act. 9–11. Claim
11 depends from claim 1 and further requires that the leveler be selected
from a group including “a reaction product of diglycidyl ether and a
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nitrogen-containing compound.” Appeal Br. 30 (Claims App.). Claims 13
and 15 depend from claim 11. Id. at 30–31.
In support of the rejection, the Examiner finds that Yasuda teaches a
leveling compound that includes triglycidyl ether reacted with a nitrogen-
containing compound, but does not teach a diglycidyl ether reacted with a
nitrogen-containing compound. Final Act. 10. The Examiner additionally
finds that Niazimbetova teaches to use a leveling agent produced using
either triglycidyl ethers or diglycidyl ethers. Id. (citing Niazimbetova ¶ 31).
The Examiner determines as follows:
[I]t would have been obvious to one of ordinary skill in the art to
produce a method comprising a reaction product of a diglycidyl
ether and a nitrogen containing compound, as Niazimbetova
discloses wherein a leveling agent is produce [sic] using either
triglycidyl ethers or diglycidyl ethers [0031] to produce the result
of a substantially planar copper deposit (abstract), and as Yasuda
discloses the use of multi-glycidyl ethers reacted with nitrogen
containing compounds. Given the close chemical structural
similarities, it would have been obvious to substitute one ether
for another to produce the same or similar result of a leveling
agent.

Final Act. 10.
Appellant argues that the use of a compound that has three or more
glycidyl ether groups is “the very core” of the disclosure of Yasuda and that
“[t]he examiner’s proposed modification undermines the entire point of
Yasuda.” Appeal Br. 19 (emphasis omitted).
Appellant directs us to Yasuda’s teaching that “a copper plating bath
containing a condensate of an amine with a glycidyl ether and/or a
quaternary ammonium derivative of said condensate has already been
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known.” Yasuda ¶ 5. Appellant describes such teaching as having
“disparaged” other glycidyl ether-based leveling agents. Appeal Br. 19.
In the Answer the Examiner asserts that “[t]he combination includes
the substitution of the leveling agent of Yasuda et al. with the leveling agent
of Niazimbetova to produce the same or similar predictable result (i.e.
copper filling of features with electroplating).” Ans. 26. The Examiner
further determines that the cited portion of Yasuda does not teach away from
the use of other glycidyl ether-based leveling agents. Id. at 27. The
Examiner reiterates that Niazimbetova indicates that successful copper
plating occurs with either the use of a triglycidyl ether-based or diglycidyl
ether-based leveling agent. Id.
The Federal Circuit has “held that, for chemical compound claims, a
prima facie case of obviousness frequently turns on the structural similarities
and differences between the compounds claimed and those in the prior art”
and that “[o]ur case law reflects an understanding that skilled artisans can
expect structurally similar compounds to have similar properties.” Valeant
Pharm. Int'l, Inc. v. Mylan Pharm. Inc., 955 F.3d 25, 32 (Fed. Cir. 2020)
(internal citations omitted). Here, Niazimbetova teaches both a diglycidyl
ether and a triglycidyl ether. Niazimbetova ¶ 31. Niazimbetova additionally
teaches that the epoxides are reacted with a nitrogen-containing compound
(a cyclodiaza-compound) to form a leveling agent. Id. ¶ 37. Niazimbetova
further teaches that “[a]ny suitable epoxide-containing compound may be
used to make the reaction products of the present invention. Such epoxide-
containing compounds may contain 1 or more epoxide groups, and typically
contain 1, 2 or 3 epoxide groups.” Id. ¶ 27. Accordingly, one of skill in the
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art would have had reason to combine the teachings of Yasuda and
Niazimbetova in this regard.
Appellant’s assertion that Yasuda disparages the use of diglycidyl
ether-based leveling agents (Appeal Br. 19) is not persuasive. Yasuda
merely acknowledges that “a condensate of an amine with a glycidyl ether
and/or a quaternary ammonium derivative of said condensate has already
been known.” Yasuda ¶ 5. This does not rise to the level of disparagement.
In view of the foregoing, Appellant has not shown error in the
Examiner’s determination that the structural similarity of triglycidyl ether-
based and diglycidyl ether-based leveling agents, in conjunction with
Niazimbetova’s teaching that both are suitable for use as leveling agents, is
sufficient to establish a prima facie case of obviousness.

Rejection 4. The Examiner rejects claims 1–3 and 5–15 as obvious
over Niazimbetova. Final Act. 11–13. In support of the rejection, the
Examiner finds that Niazimbetova generally teaches process parameters that
overlap those claimed. Id. at 11. The Examiner finds, however, that
Niazimbetova does not specifically address the copper ion saturation
concentration point. Id. at 11–12. The Examiner finds that the saturation
point is an intrinsic property of a given solution. Id. at 12. The Examiner
further finds that, because of the overlapping values taught by
Niazimbetova, a prima facie case of obviousness is established and the
burden shifts to Appellant to show that Niazimbetova does not teach the
upper bound of the copper ion concentration limitation. Id. The Examiner
further finds that Niazimbetova does not explicitly teach the 30 minute
filling time limitation but that such rate of filling would be achieved by
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routine experimentation from varying the current density and dimensions of
the opening. Id.
Appellant makes certain general statements that the claimed
limitations are not taught and specifically argues that Niazimbetova does not
teach or suggest the claimed saturation concentration and 30 minute filling
time. Appeal Br. 20–21. Appellant additionally asserts that the exemplary
embodiments of Niazimbetova are limited to a narrow range of conditions
that are generally dissimilar to the claimed process. Id. at 22.
In the Answer, the Examiner sets forth a table showing overlap
between Niazimbetova’s teachings and the temperature, current density,
copper ion concentration, sulfate ion concentration, halide ion concentration,
and hole and groove dimensions of claim 1. Ans. 28.
The Examiner further cites to the Specification’s teaching that “[t]he
amount of the copper ion . . . [is not particularly limited, and may be, for
example,] 25 g/L or more, preferably 40 g/L or more, and more preferably
50 g/L or more.” Id. at 28 (citing Spec. ¶ 16). The Examiner additionally
cites to similar copper concentration values set forth in Table 1 of the
Specification. Id. (citing Spec. ¶ 46).
Niazimbetova teaches a range of copper ion concentration values that
begins at 10g/L, somewhat below claim 1’s lower bound of 25 g/L and
extends to 220 g/L. Thus, there appears to be substantial overlap regardless
of the precise value of the limitation’s upper bound. Accordingly, we
discern no error in the Examiner’s finding that Niazimbetova teaches copper
ion concentration values that overlap those claimed.
In regard to the claimed 30 minute filling time limitation, the
Examiner finds that Example 7 of Niazimbetova teaches to evaluate results
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after 44 minutes. Ans. 29. The Examiner further finds that the filling time
is known to be a result-effective variable dependent on the plating rate and
aperture dimensions. Id. The Examiner additionally finds that plating rate
depends upon applied current density. Id. The Examiner determines that,
given the overlap in current density and aperture size between claim 1 and
Niazimbetova, the “duration of filling or complete filling of Niazimbetova et
al. would be within the scope of the claimed range.” Id. at 30. The
Examiner further determines that “[o]ne of ordinary skill would produce
such a filling time by routine experimentation.” Id.
In its Reply Brief, Appellant argues that a person of ordinary skill in
the art would have had to engage in “undue numerous trials and
experimental errors with no reasonable expectation of success for each and
every experimental variation and adjustment” in order to achieve the
claimed fill time. Reply Br. 10. This argument is not supported by citation
to factual evidence of record.
Appellant’s argument that it would have required undue
experimentation with no reasonable expectation of success to achieve the
claimed fill time is not persuasive. The apertures described as filled in 44
minutes in Niazimbetova are much larger than those at issue in the claims.
Compare claim 1 with Niazimbetova ¶ 59. Further, Niazimbetova expressly
teaches that “current density choice is within the abilities of those skilled in
the art.” Niazimbetova ¶ 48.
Accordingly, we determine that Appellant has not shown error with
regard to the rejection of claims 1–3 and 5–15 as obvious over
Niazimbetova.

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CONCLUSION

In view of the reasoning and findings set forth in the Final Office
Action, the Examiner’s Answer, and above, the Examiner’s rejections are
affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 8–
10, 12, 14
103 Yasuda, Cobley 1–3, 5, 8–
10, 12, 14

6, 7 103 Yasuda, Cobley,
Willey
6, 7
11, 13, 15 103 Yasuda, Cobley,
Niazimbetova
11, 13, 15
1–3, 5–15 103 Niazimbetova 1–3, 5–15
Overall
Outcome
1–3, 5–15

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED