Ex Parte REISS et al

Patent Trials and Appeals BoardJan 9, 2019

14209110 - (D) (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/209,110 03/13/2014 29050 7590 01/11/2019 Thomas Omholt Patent Prosecution Agent CABOT MICROELECTRONICS CORPORATION 870 NORTH COMMONS DRIVE AURORA, IL 60504 Brian REISS 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 ATTORNEY DOCKET NO. CONFIRMATION NO. l00450CIP2DIV 1290 EXAMINER CHRISTIE, ROSS J ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 01/11/2019 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@cabotcmp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN REISS, TIMOTHY JOHNS, MICHAEL WHITE, LAMON JONES, and JOHN CLARK Appeal2018-003083 Application 14/209, 110 Technology Center 1700 Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and LILAN REN, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection under 35 U.S.C. Â§ 103(a) of claims 1-5, 8, and 9 as unpatentable over the combined prior art of Kozasa (US Pub. 2009/0298393 Al; pub. Dec. 3, 2009), Small (US Pub. 2008/0038995 Al; pub. Feb. 14, 2008), Xu (US Pub. 2003/0154659 Al; pub. Aug. 21, 2003), Uemura (US 2006/0090402 Al; pub. May 4, 2006), Jing (CN 101492592 A; pub. Jan. 25, 2008), and Kobayashi (US Pub. 2002/0039875 Al; pub. Apr. 4, 2002). 1 Appellant is the Applicant, Cabot Microelectronics Corporation, which is also identified as the real party in interest (Appeal Br. 1 ). Appeal2018-003083 Application 14/209,110 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We affirm. CLAIMED SUBJECT MATTER Claim 1 is representative: 1. A chemical-mechanical polishing composition consisting essentially of: (a) about 0.5 wt.% to about 20 wt.% of silica, (b) about 0.005 wt.% to about 2 wt.% of one or more aminophosphonic acids, (c) about 0.001 wt.% to about 0.1 wt.% of one or more polysaccharides, wherein the polysaccharide is hydroxyethylcellulose having a molecular weight of about 25,000 daltons to about 100,000 daltons, (d) about 0.05 wt.% to about 5 wt.% of one or more tetraalkylammonium salts, (e) about 0.01 wt.% to about 2 wt.% of a bicarbonate salt, (f) about 0.005 wt.% to about 2 wt.% of one or more compounds comprising an azole ring, (g) optionally potassium hydroxide, and (h) water, wherein the polishing composition has a pH of about 7 to about 11. (Appeal Br. Claims Appendix). OPINION Upon consideration of the evidence in this appeal and each of Appellant's contentions as set forth in the Appeal Brief filed Aug. 2, 2017, as well as the Reply Brief filed Jan. 30, 2018, we determine that Appellant has not demonstrated reversible error in the Examiner's rejection (e.g., Ans. 2-24 (mailed Nov. 30, 2017)). In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining the Board's long-held practice of requiring Appellants to identify the alleged error in the Examiner's rejection). We 2 Appeal2018-003083 Application 14/209,110 sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. It has been established that "the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264-- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant does not specifically dispute most of the Examiner's findings with respect to the teachings of the applied prior art; rather, they allege that there is reversible error because the Examiner used impermissibly hindsight to combine the teachings in the applied prior art (Appeal Br. 8, 9), 2 and that there is no motivation to use an ammonium quaternary compound Kozasa as proposed by the Examiner because Kozasa only teaches use of the same in a prior art polishing composition (Reply Br. 3; Appeal Br. 8). Appellant also argues that Xu' s quaternary ammonium salt is used in a composition where the hydroxyethylcellulose (HEC) component is above a molecular weight of 1 million as contrasted to the claimed maximum of 100,000 daltons ( component ( c) of claim 1 ), and that the Examiner's position that HEDP and ATMP used in Small are well known acronyms for 2 To the extent Appellant is contending that the Examiner used too many references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). 3 Appeal2018-003083 Application 14/209,110 phosphonate compounds ( component (b) of claim 1) is deficient (Reply Br. 4 ). These arguments are not persuasive for at least the reasons set out by the Examiner (Ans. 12-24). Appellant does not sufficiently address the Examiner's position that Xu also teaches the desirability of a quaternary ammonium salt in a polishing composition (Final Act. 7; Ans. 6, 7), nor does Appellant sufficiently address the Examiner's position that Kozasa does indeed at least suggest the use of such a component in its composition (Ans. 13). Appellant's contention does not outweigh the evidence and reasonable inferences from Kobayashi regarding the desirability of the claimed molecular weight ofHEC in a polishing composition (Final Act. 6, 7; Ans. 5, 6, 19). It is also noted that only very minor amounts of each of the components need to be present in the composition (claim 1; e.g., only 0.001 wt.% of HEC need be present). The Examiner's position that one of ordinary skill in the art would have readily inferred from Small the known use of an organophosphonate is reasonable (Ans. 14; Small ,r 65 ( explicitly lists phosphonic groups on the chelating or complexing agents); Final Act. 5). Appellant does not sufficiently address the Examiner's position that there is a limited number of possibilities in the applied prior art combination needed to arrive at the claimed component ranges that are all explicitly taught or suggested to be overlapping ranges with those recited herein for desirable properties for a chemical mechanical polishing composition (Ans. generally). Cf In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) ("It is [generally considered] prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a composition which is to be used for the very same 4 Appeal2018-003083 Application 14/209,110 purpose."); KSR Int 'l Co., 550 U.S. at 421 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."); Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the "inferences and creative steps," as well as routine steps, that an ordinary artisan would employ). See also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness."). Cf Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art's disclosure of over 1200 possible combinations rendered all possible formulations obvious). As pointed out by the Examiner, each reference explicitly suggests the desirability of the use of each of the claimed components in a chemical- mechanical polishing composition, such that one of ordinary skill in the art would have, using no more than ordinary creativity, made such a composition (e.g., Ans. generally). Furthermore, inasmuch as these components were known in the art as suitable, indeed desirable, for a chemical-mechanical polishing composition, it is incumbent upon Appellant to establish that the present inventors had to resort to more than routine experimentation for attainment of the claimed composition. However, no such evidence is of record. "Obviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success." In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (quoting In re O 'Farrell, 853 F.2d 894, 903- 04 (Fed. Cir. 1988)). This falls short of the necessary evidence, or 5 Appeal2018-003083 Application 14/209,110 persuasive technical reasoning, to explain why one of ordinary skill would have been unable to attain the claimed composition which comprises components all taught to be desirable in the pertinent applied prior art for a chemical-mechanical polishing composition. It is noted that Appellant does not rely upon any evidence of unexpected results (Appeal Br. 8; stating there is "no need to refer to any objective evidence ofunobviousness"). See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference between the claimed invention and the prior art is some range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a )(1 )(iv). AFFIRMED 6