Ex Parte Palanisamy Chinnathambi et al

Patent Trial and Appeal Board

Oct 26, 2017

14156201 (P.T.A.B. Oct. 26, 2017)

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.
14/156,201 01/15/2014 Selvaraj PALANISAMY CHINNATHAMBI 100569 7272
29050 7590
Thomas Omholt
Patent Prosecution Agent
CABOT MICROELECTRONICS CORPORATION
870 NORTH COMMONS DRIVE
AURORA, IL 60504
EXAMINER
LU, JIONG-PING
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
CMC_PROSECUTION@CABOTCMP.COM
thomas_omholt @ c abotcmp .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SELVARAJ PALANISAMY CMNNATHAMBI
and MICHAEL WHITE
Appeal 2016-008378
Application 14/156,2011
Technology Center 1700
Before DONNA M. PRAISS, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 10 and 12-20 as obvious under 35 U.S.C. § 103(a)
1 Cabot Microelectronics Corporation, the Applicant, is identified by
Appellants as the real party in interest. App. Br. 1.
2 In this opinion, we refer to the Specification filed Jan. 15, 2014 (“Spec.”),
the Final Office Action dated Sept. 16, 2015 (“Final Act.”), the Appeal Brief
filed Jan. 28, 2015 (“App. Br.”), the Examiner’s Answer dated July 19, 2016
(“Ans.”), and the Reply Brief filed Sept. 13, 2016 (“Reply Br.”).
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Application 14/156,201
over the combination of Jia,3 Ikeda,4 and Chaneyalew5 with additional
secondary references Kimura6 (claims 15 and 16) and Fang7 (claims 17 and
18). App. Br. 2-3; Final Act. 4, 8-9.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to chemical-mechanical polishing
(CMP) compositions for use in conjunction with semiconductor device
manufacture. Spec. Tflj 1, 6. According to the Specification, Appellants’
polishing composition comprises aluminate-modified silica particles that can
be wet-process silica particles “modified by treating the wet-process silica
particles with a source of aluminum ions,” for example, aluminum nitrate
treated in an aqueous solution of potassium hydroxide. Id. ]} 7. Claims 10
and 15 are illustrative (emphasis added):
10. A method of chemically-mechanically polishing a
substrate, which method comprises:
(i) providing a substrate,
(ii) providing a polishing pad,
(iii) providing a polishing composition comprising:
(a) about 0.001 wt.% to about 10 wt.% of
aluminate-modified silica particles,
(b) about 1 ppm to about 1000 ppm of a
polyacrylamide,
3 US 6,149,696, issued Nov. 21, 2000.
4 Ikeda et al„ WO 2007/069488 Al, published June 21, 2007 (“Ikeda”).
Citations are to corresponding US 8,157,877 B2, issued Apr. 17, 2012.
5 Chaneyalew et al., US 6,896,591 B2, issued May 24, 2005
(“Chaneyalew”).
6 US 8,778,217 B2, issued July 15, 2014.
7 US 6,805,812 B2, issued Oct. 19, 2004.
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(c) optionally, a heterocyclic film-forming agent,
and
(d) water,
wherein the polishing composition has a pH of about 1 to
about 7, and wherein the polishing composition further
comprises about 0 .1 wt. % to about 2 wt.% of a chelating agent,
(iv) contacting a surface of the substrate with the polishing
pad and the polishing composition, and
(v) abrading at least a portion of the surface of the
substrate to remove at least a portion of the surface of the
substrate to polish the surface of the substrate, wherein the
substrate comprises at least one layer of nickel-phosphorous, and
wherein abrading at least a portion of the surface of the substrate
removes at least some nickel-phosphorous from the surface of
the substrate to polish the surface of the substrate.
15. The method of claim 10, wherein the polyacrylamide
has a molecular weight of from about 500 daltons to about
15,000 daltons.
App. Br. 9-10 (Claims App’x).
OPINION
The Examiner finds that claims 10 and 12-20 would have been
obvious to one of ordinary skill in the art at the time of the invention for the
reasons stated on pages 4-9 of the Final Action.
Appellants do not separately argue the patentability of claims 10, 12-
14, 19, and 20. App. Br. 3-7. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), and based upon the lack of arguments directed to the
subsidiary rejection of claims 17 and 18 (App. Br. 8), claims 12-14 and 17-
20 will stand or fall together with independent claim 10. Similarly,
Appellants do not present separate arguments for claims 15 and 16 (App. Br.
7), therefore claim 16 will stand or fall together with claim 15.
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Claim 10
Appellants argue that the Examiner erred in rejecting claim 10 over
the combination of Jia, Ikeda, and Chaneyalew because “Jia does not teach
or mention aluminate-modified silica particles” and the Examiner’s finding
that it is reasonable to expect some aluminum ions would be adsorbed on the
silica particles of Jia is not supported by evidence. App. Br. 4. Appellants
assert this is merely speculation by the Examiner because Appellants’
application “teaches modifying the silica with an aluminum compound in an
aqueous solution of potassium hydroxide.” Id. at 5. Because Jia’s
composition adds aluminum nitrate under acidic pH conditions, Appellants
contend that the silica particles would be positively charged as the AH3 ion
would be adsorbed to the negatively charged silica surface. Id. According
to Appellants, “[a] person of skill in the art would know that the ‘aluminate-
modified silica particles’ of the present invention are different from an
aluminum-treated silica particle, as the Examiner has extrapolated from the
teaching of Jia.” Id.
Appellants also argue that they “have demonstrated the specificity of
polyacrylamide for reducing scratches, and have shown that
poly(meth)acrylic acid is not a useful compound” while Ikeda teaches many
different water-soluble polymers as being useful with poly(meth)acrylic acid
being preferred. Id. at 6 (citing Spec. Table 1, Example 1). Appellants
argue that Jia’s composition is different from that of Ikeda in that it uses a
silica abrasive and does not mention any need for dispersing the particles,
therefore there is the Examiner’s reason for combining the reference “would
not be relevant to the primary reference.” Id. at 6. Appellants also
distinguish Ikeda’s polishing composition as having abrasive grains with a
pore volume of more than 0.14 mEg or more, a dispersion medium, and a
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preferred anionic polymer as the water soluble polymer, and a pH preferably
of 5 to 9, which parameters are “very different from the Jia composition of a
silica abrasive and pH of 2.” Id. at 4.
The Examiner responds that Jia’s aluminum nitrate treated colloidal
silica particles are aluminate-modified silica particles consistent with
paragraph 7 of the Specification, which discloses that silica particles can be
modified by treating wet-process silica particles with a source of aluminum
ions such as aluminum nitrate. Ans. 2. The Examiner also finds that claim
10 does not recite either structural limitations or process details for making
aluminate-modified silica on which Appellants can base their product-by­
process argument that a structural difference exists over the cited prior art.
Id. at 3.
Regarding the combination of Jia with Ikeda, the Examiner responds
that Ikeda teaches that the abrasive grains include silica, alumina, or
modified particles and also that a water soluble polymer can improve the
dispersibility of the abrasive grains. Id. at 4 (citing Ikeda 3:45-49, 3:61-64,
7:38-41). The Examiner further finds that Ikeda teaches that nitrogen-
containing polymers such as polyacrylamide are preferable. Id. (citing Ikeda
6:41-43). The Examiner determines that it was therefore known from Ikeda
to use polyacrylamide in a slurry composition, and adding it would have
been expected to produce improved dispersiblity of modified silica in the
slurry of Jia because Jia discloses that a slurry including a high silica content
and aluminum nitrate sometimes jells, indicating a need for improved
dispersiblity of the modified silica particles. Id.
Regarding Appellants’ alleged evidence of “the specificity of
polyacrylamide for reducing scratches” and that poly(meth)acrylic acid is
not a useful compound, the Examiner responds that the evidence is not
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commensurate with the scope of the claims because the data referenced was
for one specific pH, one specific concentration, two specific molecular
weights. Id. at 3 and 4.
In the Reply Brief, Appellants argue that “Jia does not mention any
need for dispersing the colloidal silica particles” therefore there is no
expectation that Ikeda’s dispersion of ceria and organic abrasives would be
useful in the composition of Jia which does not use an organic particle.
Reply Br. 4. Appellants also argue that alumina ions absorbed to a silica
particle is not an aluminate-modified silica, which Appellants assert is
obtained by modifying the silica abrasive with an aluminum compound in an
aqueous solution of potassium hydroxide. Id. Appellants further contend
that Jia’s acidic pH conditions would result in a more positively charged
colloidal silica particle compared to silica without added aluminum ions
whereas the aluminate-modified silica described by Appellants would have a
negative charge due to the reaction of aluminate ion on the surface which
replaces some of the Si in the SiCE framework. Id. at 4-5.
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). For the reasons
stated in the Final Action and the Answer, we are not persuaded by
Appellants that the Examiner reversibly erred in rejecting claim 10 over the
combination of Jia, Ikeda, and Chaneyalew. We add the following primarily
for emphasis.
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Appellants do not dispute that the cited references evidence that it was
known in the art at the time of the invention (1) to make an aqueous
chemical polishing composition comprising colloidal silica, (2) to modify
the composition with aluminum nitrate, and (3) to improve dispersibility of
the composition with polyacrylamide. Appellants’ arguments focus on
distinguishing Jia from the claimed “aluminate-modified silica particles” on
the basis that Jia does not modify the silica particles with aluminum nitrate
in an aqueous solution of potassium hydroxide as disclosed in the
Specification, but, rather, with aluminum nitrate in an aqueous solution
having acidic pH conditions. App. Br. 5. We are not persuaded by
Appellants’ argument that modification of the silica particles with aluminum
ions from the same source disclosed in the Specification, i.e. aluminum
nitrate (Spec. ]} 7; Jia 3:31-33), but different pH conditions of the aqueous
solution, does not produce the recited “aluminate-modified silica particles”
absent evidence. While pH conditions of the solution may affect the
reactions of the aluminum ions with the silica particle to some degree, we
are not persuaded that Jia’s aluminum ion source does not generate
“aluminate-modified silica particles” as would be understood from the
Specification because it is the same aluminum ion source disclosed in the
Specification.
The Specification does not support Appellants’ argument regarding
the conditions of the solution for producing the aluminate-modified silica
particles. Instead, the Specification teaches that modification is the result of
“the wet-process silica particles with a source of aluminum ions.” Spec. | 7.
Appellants do not dispute the Examiner’s finding that Jia discloses a
polishing composition comprising silica mixed with aluminum nitrate and
water (Final Act. 5). Therefore, having identified a source of aluminum ions
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Application 14/156,201
in solution with the silica particles which the Specification discloses is
responsible for generating aluminate-modified silica particle, the Examiner
has met the initial burden of establishing a prima facie case that the
“aluminate-modified silica particles” element of claim 10 is disclosed by Jia.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”). Once a prima facie case
of unpatentability has been established, the burden then shifts to Appellants
to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. Id. at 1445.
We are not persuaded by Appellants’ argument that Jia’s acidic
solution results in only adsorption of aluminum on the surface of Jia’s silica
particles (App. Br. 5). Appellants’ argument requires us to find that
aluminate-modified silica is understood in the art to mean that aluminum
ions replace some of the Si in the Si02 framework and that results in a
negatively charged particle surface that is not present in Jia (App. Br. 5).
However, none of Appellants’ assertions are supported by evidence on this
appeal record. Neither the claims nor the Specification describe such a
reaction let alone an extent of reaction, or preclude the acidic conditions of
the solution disclosed in Jia. It is well settled that arguments of counsel
cannot take the place of factually supported objective evidence. See, e.g., In
re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984).
Moreover, Appellants’ assertion that Jia does not mention any need
for dispersing the colloidal silica particles (Reply Br. 4; App. Br. 6) is not
supported by the record cited on appeal. Jia explicitly discloses “I have
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found that a silica slurry including a high silica content and aluminum nitrate
sometimes jells” (Jia 3:56-57) and “Aluminum nitrate can significant
increase the the NiP removal rate of a colloidal silica slurry and remove
polish scratches[, hjowever, aluminum nitrate may cause polish pits and
cause the slurry to jell” (Jia 6:29-32). Accordingly, we find the Examiner’s
reason to combine the teachings of Jia and Ikeda supported by a
preponderance of the evidence.
Appellants’ argument that one skilled in the art would not have had
reason to select polyacrylamide in particular from among the water-soluble
polymers disclosed in Ikeda (App. Br. 6) also is not persuasive of reversible
error by the Examiner. The Examiner’s explicitly finds that Ikeda discloses
that nitrogen-containing polymers such as polyacrylamide are preferable.
Ans. 4. The Examiner’s finding is supported by the evidence (Ikeda 6:41—
43) and not disputed by Appellants. Therefore, the Examiner’s rejection is
based on what is known from the prior art references and not Appellants’
Specification.
Appellants’ argument challenging the rejection on the basis that there
is no reasonable expectation that the water-soluble polymer taught by Ikeda
to maintain a dispersion would not be expected to be useful in the
composition of Jia (Reply Br. 4) is also not persuasive because the
Examiner’s findings are supported by the record. Appellants do not
adequately explain why the combination oflkeda’s water-dispersible
polymer, particularly polyacrylamide (Ikeda 6:31), with colloidal silica as
the abrasive grain in an aqueous polishing composition as disclosed by both
Ikeda (Ikeda 3:44—46, 65) and Jia (Jia 3:30-33, 47-50) and further disclosed
by Jia as being known to jell in an aqueous chemical mechanical polishing
composition (Jia 3:56-57, 6:32-33), would not be expected by one of
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ordinary skill in the art to achieve the benefit taught by Ikeda. According to
Appellants, the person of ordinary skill in this art would have an advanced
chemistry degree and at least a few years of experience in the field of
chemical-mechanical polishing of substrates. App. Br. 4. Given that level
of skill, we are not persuaded that the lack of an explicit example in Ikeda
combining the polyacrylamide polymer in a solution containing silica
without an organic particle evidences no reasonable expectation of success
in the prior art combination. Therefore, the cited record on appeal supports
the Examiner’s finding that there would have been a reasonable expectation
of success in the effectiveness of Ikeda’s dispersibility compound in Jia’s
polishing composition.
Appellants’ argument that Ikeda’s water-soluble polymer would be
expected to be useful in compositions containing ceria and an organic
particle but not compositions containing silica without an organic particle,
because Ikeda’s discloses the former as preferred (Reply Br. 4), also is not
persuasive of error. A reference may be relied upon for all that it would
have reasonably suggested to one having ordinary skill in the art. Merck &
Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). Ikeda explicitly
discloses that the abrasive grains may be ceria or silica, including colloidal
silica. Ikeda 3:44-46, 3:65. Appellants do not adequately explain why a
skilled artisan would not expect ceria and colloidal silica to be
interchangeable based on Ikeda’s teachings. Similarly, Ikeda discloses the
inclusion of an organic particle as an optional addition. Indeed, the organic
particles are disclosed as “auxiliary particles (D)” that are merely preferred
and not critical to the aqueous dispersion. Ikeda 7:45-49, 8:28-29.
Appellants do not adequately explain why a skilled artisan would not expect
the water-dispersible polymer taught by Ikeda to function to improve
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dispersibility of the interchangeable colloidal silica abrasive grain in an
aqueous polishing composition that does not contain the auxiliary organic
particle. Moreover, Ikeda’s teaching to use a water-soluble polymer
together with an abrasive particle to improve dispersibility is not limited to
compositions containing ceria in combination with organic particles because
“a reference is not limited to the disclosure of specific working examples.”
In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation omitted).
Whether an invention has produced unexpected results is a question of
fact. In reMayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). “[T]here is no
hard-and-fast rule for determining whether evidence of unexpected results is
sufficient to rebut a prima facie case of obviousness.” Kao Corp. v.
Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re
Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) (“[e]ach situation must be
considered on its own facts.”). However, a party asserting unexpected
results as evidence of nonobviousness has the burden of proving that the
results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). “[I]t is not enough to show that results are obtained which differ
from those obtained in the prior art: that difference must be shown to be an
unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Moreover, “when an inventor tries to distinguish his claims from the prior
art by introducing evidence of unexpected ‘synergistic’ properties, the
evidence should at least demonstrate ‘an effect greater than the sum of the
several effects taken separately.’” Merck & Co., 874 F.2d at 808.
We are not persuaded that Appellants have demonstrated unexpected
results by asserting that the claimed water-soluble polymer polyacrylamide
is particularly useful for reducing scratches compared to poly(meth)acrylic
acid (App. Br. 6). Appellant do not rebut the Examiner’s finding that the
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evidence presented by Appellants is not commensurate in scope with the
claims (Ans. 3-4). Moreover, Appellants acknowledge that objective
evidence of nonobviousness is not relied upon in this appeal (App. Br. 6).
Consequently, Appellants’ assertion that polyacrylamide is particularly
useful for reducing scratches does not outweigh the Examiner’s
determination of obviousness over the cited references.
Accordingly, we are not persuaded of reversible error in any of the
Examiner’s findings as to Jia, Ikeda, and Chaneyalew and the Examiner’s
determination that the chemical mechanical polishing composition recited in
claim 10 would have been obvious to one of ordinary skill in the art to use in
the claimed method over the combination of the cited prior art.
In sum, we affirm the Examiner’s rejection of claims 10, 12-14, and
17-20 as obvious over the combination of Jia, Ikeda, and Chaneyalew.
Claim 15
Appellants argue that the Examiner erred in rejecting claim 15 over
the combination of Jia, Ikeda, and Chaneyalew in further view of Fang
because Kimura’s disclosure of a water-soluble polymer having a weight
average molecular weight of 500 or more does not disclose the role or
benefit of the polymer, therefore there is nothing in Kimura to motivate a
skilled artisan to combine the teaching with Jia’s method for polishing NiP
plated substrates of Jia. App. Br. 7.
The Examiner responds that Kimura is only relied upon for teaching a
known range of molecular weight for polyacrylamide. Ans. 5. Because
Ikeda discloses the use and benefit of polyacrylamide in a polishing
composition without specifying the molecular weight, it would have been
obvious to use a known molecular weight for polyacrylamide, including that
disclosed by Kimura. Id.
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In the Reply Brief, Appellants contend that it is not a good enough
reason that a known polyacrylamide existed with the claimed molecular
weight. Reply Br. 5.
Appellants’ arguments are not persuasive of reversible error because
Kimura’s disclosure of polyacrylamide having the claimed molecular weight
is in the context of polishing compositions, and it is Ikedathat the Examiner
relies upon for a reason to use polyacrylamide in a polishing composition.
In the absence of a molecular weight being specified by Ikeda, it would have
been obvious to a skilled artisan to select a polyacrylamide that is used in
polishing compositions. Appellants point out that Kimura’s polishing
composition is a nonselective barrier metal slurry while Jia discloses
polishing NiP plated substrates (App. Br. 7). However, Appellants do not
adequately explain why that asserted distinction would make the known
polyacrylamide of Kimura’s nonselective barrier metal slurry undesireable
to one having ordinary skill in the art.
Therefore, for the reasons stated in the Final Action and the Answer,
we are not persuaded of reversible error in any of the Examiner’s findings as
to Jia, Ikeda, and Chaneyalew in further view of Fang and the Examiner’s
determination that the method of claim 15 would have been obvious to one
of ordinary skill in the art over the combination of the cited prior art.
In sum, we affirm the Examiner’s rejection of claims 15 and 16 as
obvious over the combination of Jia, Ikeda, and Chaneyalew in further view
of Fang.
CONCLUSION
We affirm the Examiner’s decision to reject claims 10 and 12-20 as
obvious under 35 U.S.C. § 103(a).
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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).
AFFIRMED
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