Ex Parte REISS et al

Patent Trials and Appeals Board

Mar 5, 2019

15056198 - (D) (P.T.A.B. Mar. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/056, 198 02/29/2016
29050 7590 03/07/2019
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.
100590C 7078
EXAMINER
CULBERT,ROBERTSP
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
03/07/2019 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, 1
Viet Lam, and Renhe Jia
Appeal2018-006247
Application 15/056, 198
Technology Center 1700
Before MARK NAGUMO, DONNA M. PRAISS, and BRIAND. RANGE,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Cabot Microelectronics Corporation ("Reiss") timely appeals
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1-16. 3 We
have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as Cabot
Microelectronics Corporation. (Appeal Brief, filed O 1 December 2017
("Br."), 1.)
2 Office Action mailed 10 July 2017 ("Final Rejection"; cited as "FR").
3 Remaining copending claims 17-20 have been withdrawn from
consideration by the Examiner, and are not before us. (Ans. 2, § 3.)
Appeal 2018-00624 7
Application 15/056, 198
A. Introduction4
OPINION
The subject matter on appeal relates to a chemical-mechanical
polishing ("CMP") composition comprising wet process ceria particles.
According to the '198 Specification, ceria particles have three predominant
types of hydroxyl groups on their surfaces, namely monodentate (Ce-OH;
pKa 24), bidentate (Ce2-0H;l pKa 14.8), and tridentate (Ce3-0H; pKa 5.5).
(Spec. 10 [0033], Table 1.) As indicated by the distinctly different values of
pKa, 5 the hydroxyl groups have very different reactivities. (Id.) The
Specification indicates that "it is believed that ceria particles contain
predominately bidentate hydroxyl groups on their surfaces, but that ceria
particles containing increased tridentate content provide higher removal
rates in chemical-mechanical polishing compositions." (Id.) "Thus," the
Specification continues, "it is believed that optimizing the amount of
tridentate hydroxyl groups on the surface of the ceria particles can improve
polishing performance." (Id.) Put another way, the more tridentate
hydroxyl groups, the more effective the polishing.
4 Application 15/056, 198, Polishing composition containing ceria particles
and method of use, filed 29 February 2016, claiming the benefit of
62/128,802, filed 05 March 2015. We refer to the "'198 Specification,"
which we cite as "Spec."
5 The term pKa is defined as the negative logarithm of the acid dissociation
equilibrium constant, pKa = -log(K), so a difference of 1 unit in pKa is a
factor of 10 in the equilibrium constant. Thus, the difference of about 9
units between the pKa of tridentate hydroxyl and bidentate hydroxyl
corresponds to a factor of 109 (one billion) in free OH concentration at
equilibrium.
2
Appeal 2018-00624 7
Application 15/056, 198
The Specification teaches a general process of making ceria particles
according to the invention. (Spec. 3 [0011]-9 [0032].) A ceria precursor,
preferably cerium III nitrate (id. at 3 [0011 ]), is dissolved in water (id.), and
the pH raised (to pH 10-14) to precipitate amorphous Ce(OH)3
(id. at [0012]). The precursor solution is mixed for several hours (typically,
1-24 hours) (id. at 4 [0013]), transferred to a pressurized vessel, and heated
for 1-200 hours (id. at [0015]) at 50-500°C (id. at [0014]), and then filtered
to separate the precipitated ceria particles (id. at 5 [0016]). The precipitate
may be rinsed to remove unreacted precursor, then optionally sintered
(at 200-1000°C (id. at 5 [0018]) for 1-20 hours (id. at 6 [0019]), to reduce
the number of defects in the crystals (id. at [0017].) The precipitate is then
redispersed, typically in water, by lowering the pH of the mixture (to a pH of
about 2 to 5, id. at 6 [0021 ]), thereby generating a cationic zeta potential,
which creates a repulsive force between the particles and facilitates the
redispersion (id.). More preferred conditions for each of these steps-pH,
temperature, duration-are provided. The redispersed particles are milled to
reduce their size, and filtered to remove large particles. (Id. at 7 [0022].)
The particles can be sized by differential centrifugal sedimentation. 6
Median sizes between about 25 nm and about 150 nm are preferred, with a
particle size distribution ("PSD")7 of about 300 nm or more.
6 The Specification defines the particle size as "the diameter of the smallest
sphere that encompasses that particle." (Spec. 7 [0023].)
7 The Specification defines the term "PSD" as "the difference between the
particle size of the largest particle and the particle size of the smallest
particle." (Spec. 8 [0026].)
3
Appeal 2018-00624 7
Application 15/056, 198
The Specification also teaches that the amount of tridentate hydroxyl
groups can be determined by acid-base titration, because the tridentate
groups, when present, give rise to a distinctive peak shoulder just below
pH 6, on the dominant peak for the deprotonization of water at about pH 7,
in the normalized first derivative of the titration curve. (Id. at 10 [0034].)
The amount of base that reacted with the tridendate hydroxyl group can be
determined from the area under the peak shoulder, and the surface coverage
determined by dividing the corresponding number of tridentate hydroxyl
groups by the surface area of the particles, determined by BET analysis.
(Id.)
Claim 1 is representative and reads:
A chemical-mechanical polishing composition comprising:
(a) wet-process ceria particles having
a median particle size of about 25 nm to about 150 nm
and a particle size distribution of about 300 nm or more,
wherein the wet-process ceria particles have
a surface that comprises tridentate hydroxyl groups and
has a surface coverage of tridentate hydroxyl groups
that is about 2.0 x 10-5 moleslm2 or more, and
(b) an aqueous carrier.
(Claims App., Br. 6; some formatting, and emphasis added.)
4
Appeal 2018-00624 7
Application 15/056, 198
The Examiner maintains the following ground of rejection: 8, 9
Claims 1-16 stand rejected under 35 U.S.C. § 112(a) for
lack of an enabling disclosure.
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
It is well-settled that"[ w ]hether making and using an invention would
have required undue experimentation, and thus whether a disclosure is
enabling under 35 U.S.C. § 112, ,r 1 (1994), is a legal conclusion based upon
underlying factual inquiries." Johns Hopkins Univ. v. CellPro, Inc.,
152 F.3d 1342, 1354 (Fed. Cir. 1998), citing In re Wands, 858 F.2d 731,
735, 736-37 (Fed. Cir. 1988). In Wands, the court explained that "[t]he
determination of what constitutes undue experimentation in a given case
requires the application of a standard of reasonableness, having due regard
for the nature of the invention and the state of the art." 858 F.2d at 737. The
court continued, "[t]he test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely routine, or if the
specification in question provides a reasonable amount of guidance with
respect to the direction in which the experimentation should proceed." (Id.,
emphasis added.) Moreover, it has long been settled that the disclosure is
presumed to be enabling, "unless there is reason to doubt the objective truth
8 Examiner's Answer mailed 4 April 2018 ("Ans.").
9 Because this application was filed and claims a priority date
after 16 March 2013, the effective date of the America Invents Act, we refer
to the AIA version of the statute.
5
Appeal 2018-00624 7
Application 15/056, 198
of the statements contained therein which must be relied on for enabling
support." In re Marzocchi, 439 F.2d 220,223 (CCPA 1971).
The Examiner finds that producing wet process ceria and hydroxyl
group measurement on the surface [ of the ceria particles] "is well known."
(Ans. 3, 11. 16-17.) The Examiner finds, however, that the prior art is silent
on making particles having the tridentate coverage properties recited in the
claims. (Id. at 11. 1 7-18.) The Examiner concludes that because the only
theory related to tridentate hydroxyl groups is provided by the Specification
(paragraphs 33-35), the level of ordinary skill in the art is low. (Id. at 11. 18-
19.) The Examiner also finds that "[t]he related art of surface chemistry is
generally unpredictable," and that the direction and guidance provided by
the Specification is "general" and does not make clear which of the many
variables "may produce any tridentate hydroxyl groups or the claimed
coverage limitations." (Id. at 11.19-24.) Moreover, the Examiner finds, the
Specification fails to provide a commercial source or a specific working
example of making ceria having the required coverage of tridentate hydroxyl
groups. (Id. at 11. 24--26.) The Examiner concludes that the amount of
experimentation would have been undue because there is "no guidance on
the source or methods," and the ordinary worker "would have to perform
complex experimentation for wet process ceria particles from unlimited
sources and methods to determine the desired theoretical surface chemistry."
(Id. at 4, 11. 3-7 .)
The Examiner's analysis fails because, as Reiss argues (Br. 3--4;
Reply 10 5), the evidence and reasoning that the necessary experimentation
10 Reply Brief, filed 31 May 2018 ("Reply").
6
Appeal 2018-00624 7
Application 15/056, 198
would have been undue are deficient. Given that the Examiner finds that
making wet process ceria and the measurement of hydroxyl groups were
well known, the Examiner needs to explain why the "general" disclosure of
conditions would have been expected to result, more likely than not, in wet
process ceria particles not within the requirements of the claims, and why
the experimentation necessary to determine how to modify the process
would have been "complex" to the point that it would have been undue.
Merely "extensive" experimentation is not necessarily "complex," provided
that it is routine. The steps of the process----dissolving cerium nitrate, raising
the pH, mixing, heating in a pressurized vessel, filtering, rinsing, sintering,
redispersion, and grinding, all appear to be ordinary procedures using
relatively ordinary equipment under ordinary conditions. And while there is
the possibility than there is only a small set of conditions suitable for making
the required ceria having the required tridentate hydroxyl surface coverage,
the burden is on the Examiner to explain why that small set would, more
likely than not, have been unduly hard to find. In other words, why would
the preferred ranges of processing conditions have been expected to be an
ineffective guide to the routineer?
The Examiner's citation of the purported general unpredictability of
surface chemistry is not supported by evidence and analysis specific to the
presence of a significant number of tridentate hydroxyl groups in the midst
of predominantly bidentate groups. Mere citation to a general proposition
does not, in the absence of specific reasoning based on the chemistry of
ceria, demonstrate an objective reason to conclude that the experimentation
needed to determine suitable conditions would have been so extensive as to
be undue.
7
Appeal 2018-00624 7
Application 15/056, 198
In this regard, the tests for determining whether a given ceria particle
composition complies with the surface coverage requirement appear to be
routine, involving acid-base titration monitored by a pH meter, and standard
BET adsorption isotherm measurements of surface areas. Thus, even if,
arguendo, extensive testing of many samples proved to be necessary, the
Examiner has failed to show that the sample preparation and testing would
have been anything but routine. Nor do we understand the Examiner to have
made any arguments that Reiss's reports regarding the inventive ceria-based
CMP compositions are unreliable.
Finally, the Examiner's conclusion that the ordinary level of skill was
low because the Specification is the only source of information about the
efficacy of tridentate hydroxyl groups for a CMP composition is not well-
taken. The relevant inquiry into the level of ordinary skill is, would the
ordinary worker have been able to use the disclosed process to make the
tridentate hydroxyl group rich ceria particles, based on the disclosure in the
Specification, without undue experimentation? At best, the Examiner has
voiced the opinion that a great deal of experimentation might be necessary.
As discussed supra, however, the Examiner has not shown that the character
of that experimentation would have been beyond the routine, whether in
complexity or in quantity.
We therefore reverse the rejection for lack of an enabling disclosure.
C. Order
It is ORDERED that the rejection of claims 1-16 is reversed.
REVERSED
8