Ex Parte Roeger-Goepfert et alDownload PDFPatent Trials and Appeals BoardJun 25, 201913259482 - (D) (P.T.A.B. Jun. 25, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/259,482 09/23/2011 Cornelia Roeger-Goepfert 22850 7590 06/27/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 386231US99PCT 4954 EXAMINER WONG,EDNA ART UNIT PAPER NUMBER 1795 NOTIFICATION DATE DELIVERY MODE 06/27/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CORNELIA ROEGER-GOEPFERT, ROMAN BENEDIKT RAETHER, CHARLOTTE EMNET, ALEXANDRA HAAG, and DIETER MA YER Appeal2018-008239 Application 13/259,482 Technology Center 1700 Before GEORGIANNA W. BRADEN, MONTE T. SQUIRE, and BRIAND. RANGE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 40-55. We have jurisdiction under 35 U.S.C. § 6(b). 1 In this Decision, we refer to the Specification filed September 23, 2011 ("Spec."); Final Office Action dated April 20, 2018 ("Final Act."); Appeal Brief filed March 19, 2018 ("Appeal Br."); Advisory Action dated May 31, 2018 ("Adv. Act."); Examiner's Answer dated June 11, 2018 ("Ans."); and Reply Brief filed August 7, 2018 ("Reply Brief'). 2 According to the Appeal Brief (Appeal Br. 1 ), BASF SE is the real party in interest. Appeal2018-008239 Application 13/259,482 We AFFIRM. The Claimed Subject Matter Appellants' disclosure relates to a composition for metal plating comprising a source of metal ions and a suppressing agent. Spec. 1; Abstract. Claim 40 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 40. A composition, comprising: a source of at least one metal ion; and at least one suppressing agent obtained by a method comprising reacting: a) an amine compound comprising at least one active amino functional group with b) a mixture of ethylene oxide and at least one additional alkylene oxide selected from the group consisting of a C3 alkylene oxide and a C4 alkylene oxide, to form random copolymers of the ethylene oxide and the additional alkylene oxide starting from the at least one active amino functional group of the amine compound, wherein the at least one suppressing agent has a molecular weight Mw of 6000 to 30000 g/mol, and wherein the total content of ethylene oxide in the random copolymers of the ethylene oxide and the additional alkylene oxide is from 35 to 70 wt%. Claims Appendix i (key disputed claim language italicized and bolded). 2 Appeal2018-008239 Application 13/259,482 The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Paneccasio, Jr. et al. ("Paneccasio") Hafezi et al. ("Hafezi") US 2006/0141784 Al June 29, 2006 US 2006/0283716 Al Dec. 21, 2006 The Rejections On appeal, the Examiner maintains (Ans. 3) the following rejections: 3 1. Claims 40-54 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Paneccasio ("Rejection l "). Ans. 3. 2. Claim 55 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Paneccasio as applied to claims 40-54 above, and further in view of Hafezi ("Rejection 2"). Id. at 8. OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner's rejections based on the fact-finding and reasoning set forth in the Answer, Advisory Action, and Final Office Action, which we adopt as our own. We add the following. 3 The Examiner's rejection of claims 40-54 under pre-AIA 35 U.S.C. § 102(a) as anticipated by Paneccasio is withdrawn by the Examiner at page 10 of the Answer. 3 Appeal2018-008239 Application 13/259,482 Rejection 1 In response to the Examiner's rejection of claims 40-54 as obvious over Paneccasio (Rejection 1, stated above), Appellants present arguments for the patentability of claims 40, 49, 51, and 53 (Appeal Br. 10-18) but do not separately argue the patentability of any other claim subject to the rejection. We select claims 40, 49, 51, and 53 as representative, and address each of these claims below. The remaining claims subject to this rejection stand or fall with claims 40, 49, 51, and 53. 37 C.F.R. § 41.37(c)(l)(iv). Claim 40 The Examiner determines Paneccasio teaches or suggests a composition satisfying all of the limitations of claim 40 and thus, concludes that the reference would have rendered the claim obvious. Ans. 3-8 ( citing Paneccasio ,-J,-J 13, 23-25, 44, 45). Appellants principally argue that the Examiner's rejection should be reversed because Paneccasio' s disclosures would not have led one of ordinary skill in the art to the claimed invention. Appeal Br. 9-10; Reply Br. 2-3. In particular, Appellants contend that "there is nothing in Paneccasio that would lead a skilled artisan to the specifically claimed combination of molecular weight (from 6,000 to 30,000 g/mol), total EO content (from 35 to 70 wt%), and random copolymer arrangement." Appeal Br. 9. Appellants also contend "Paneccasio does not direct persons having ordinary skill in the art to the claimed invention without picking, choosing, and combining various disclosures" (id. at 10) and the elements "are never combined in the same specific way as recited in the claim" (id. at 9-10). See also Reply Br. 2 ( arguing "the Examiner fails to consider the entire disclosure of Paneccasio"). 4 Appeal2018-008239 Application 13/259,482 We do not find Appellants' argument persuasive of reversible error in the Examiner's rejection. On the record before us, we find that a preponderance of the evidence and sound technical reasoning support the Examiner's analysis and determination (Ans. 3-8, 10-14) that Paneccasio teaches or suggests all of the limitations of claim 40, and conclusion that the reference would have rendered the claim obvious. Paneccasio ,-J,-J 13, 23-25, 44, 45. In particular, as the Examiner finds (Ans. 11 ), Paneccasio teaches "a suppressor compound comprising a combination of propylene oxide (PO) repeat units and ethylene oxide (EO) repeat units present in a PO:EO ratio between about 1 :9 and about 9: 1 and bonded to a nitrogen-containing species" (Paneccasio ,-J 13); that the nitrogen-containing species comprises at least one amine functional group (id. ,-i 23); and wherein the PO repeat units and EO repeat units are in a "random configuration" (id. ,-i 25). As the Examiner further finds (Ans. 11 ), Paneccasio teaches that "the molecular weight of the suppressor compound is between about 1000 and about 30000 g/mol" (Paneccasio ,-J 13), which encompasses the claimed range. It is well-settled that where claimed ranges "overlap or lie inside ranges disclosed by the prior art," a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,267 (CCPA 1976). Indeed, where, "as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap." In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). The Examiner also provides a reasoned basis, which is supported by a preponderance of the evidence in this appeal record, to evince why one of ordinary skill would have arrived at Appellants' claimed invention based on 5 Appeal2018-008239 Application 13/259,482 Paneccasio's teachings. Ans. 11; see also KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed). Appellants fail to direct us to persuasive evidence or provide an adequate technical explanation to establish why the Examiner's factual findings and articulated reasoning for why one of ordinary skill would have arrived at the claimed invention lacks a rational underpinning or is otherwise based on some other reversible error. Appellants' argument that "Paneccasio does not direct persons having ordinary skill in the art to the claimed invention without picking, choosing, and combining various disclosures" (Appeal Br. 10) is not well-taken because the fact that a reference suggests a multitude of effective combinations does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The fact that Paneccasio discloses certain claim elements of the prior art composition in a list or at various paragraphs throughout the reference, without more, does not weigh in favor of non-obviousness or otherwise establish reversible error in the Examiner's findings and analysis in this regard. Merck, 874 F.2d at 807. Appellants' assertions that "there is nothing in Paneccasio that would lead a skilled artisan to the specifically claimed combination of molecular weight (from 6,000 to 30,000 g/mol), total EO content (from 35 to 70 wt%), and random copolymer arrangement" (Appeal Br. 9) and the elements "are never combined in the same specific way as recited in the claim" (id. at 9- 10) are not persuasive because they are conclusory and based on attorney 6 Appeal2018-008239 Application 13/259,482 argument. Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants' argument in this regard is also misplaced because, as the Examiner notes (Ans. 10-11 ), a showing of obviousness does not require that all of the claim elements be expressly disclosed or combined in a single reference. See In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979) ("[A] reference must be considered not only for what it expressly teaches, but also for what it fairly suggests."); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."). Appellants argue further that the claimed invention yields unexpected results. Appeal Br. 10-16; Reply Br. 3-10. Appellants argue that Examples 5-7 of the Specification "show that having the EO and PO units in random configuration provides unexpected results." Appeal Br. 10. In particular, Appellants contend that a suppressor having random copolymers of the ethylene oxide and the additional alkylene oxide starting from the at least one active amino functional group of the amine compound provides bottom up filling without voids or seams and a flat copper growth front in the trenches as opposed to the block copolymers of Paneccasio, which result in slower deposition that exhibits voids. These results are surprising and unexpected in view of Paneccasio, which is completely indifferent to the structure of the EO and PO units. Id. at 14. 7 Appeal2018-008239 Application 13/259,482 This argument is not persuasive. In attempting to overcome a prima facie case of obviousness by showing unexpected results, the burden rests with Appellants to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). On the record before us, we concur with the Examiner that Appellants' alleged showing of unexpected results is not commensurate in scope with the claims. As the Examiner finds (Ans. 16, 19), Appellants' claims are broader in scope than the examples tested and the examples tested are not representative of the overall scope of the claims. For example, the claims recite the suppressor compound having a "molecular weight Mw of 6000 to 30000 g/mol" and a total content of ethylene oxide ranging "from 35 to 70 wt%," but Appellants' examples tested (Examples 5-7) only cover inventive suppressor compounds synthesized from either "Diethylenetriamine" or "Triethylenetetramine" (Spec. 18-21 ), which fail to evince the criticality over the entire breadth of the molecular weight and total content of ethylene oxide recited in the claims. Thus, we are not persuaded that Appellants have provided data sufficient to show that the alleged unexpected results occur over the entire claimed ranges. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("Evidence of secondary considerations must be reasonably commensurate with the scope of the claims."). In view of this deficiency, Appellants' assertion that "[t]hese results are surprising and unexpected" (Appeal Br. 14) is conclusory and, without 8 Appeal2018-008239 Application 13/259,482 more, insufficient to establish unexpected results. De Blauwe, 736 F.2d at 705 ("It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice."). Appellants do not adequately explain why the alleged improvements Appellants contend are shown in Examples 5-7 are considered to be unexpected results and not just typical results by one of ordinary skill in the art. Klosak, 455 F.2d at 1080 ("[T]he burden of showing unexpected results rests on [the party] who asserts them."). Claims 49, 51, and 53 Although Appellants separately argue dependent claims 49, 51, and 53, respectively, in the Appeal Brief (see Appeal Br. 16-21 ), Appellants repeat and rely on principally the same arguments previously presented above in response to the Examiner's rejection of claim 40. See Appeal Br. 1 7 ( arguing "there is nothing in Paneccasio that would lead a skilled artisan to ... replace the diamine in Paneccasio with a triamine, increase the molecular weight of the suppressor to at least 6,000 g/mol, and replace the EO:PO block copolymer with a EO:PO random copolymer" and "claim 49 is commensurate in scope with the scope of the unexpected results"), 19 (arguing "one of ordinary skill in the art would have had to select from "numerous possible choices"'), 20 ( arguing "claim 51 is commensurate in scope with the scope of the unexpected results"), 21 (arguing "there is nothing in Paneccasio that would lead a skilled artisan to the specific selection of a combination of a molecular weight greater than 6,000 g/mol, an EO:PO random copolymer rather than an EO:PO block copolymer" and "claim 53 is commensurate in scope with the scope of the unexpected results"). 9 Appeal2018-008239 Application 13/259,482 Thus, we do not find these arguments persuasive of reversible error in the Examiner's rejection of claims 49, 51, and 53 for principally the same reasons discussed above for sustaining the Examiner's rejection of claim 40. Accordingly, we affirm the Examiner's rejection of claims 40-54 under pre-AIA 35 U.S.C. § 103(a) as obvious over Paneccasio Rejection 2 Claim 55 depends from claim 51 and further recites "wherein the composition has a pH from 9 to 12." Claims Appendix v. The Examiner determines that the combination of Paneccasio and Hafezi suggests a composition satisfying all of the limitations of claim 55 and thus, concludes the combination would have rendered the claim obvious. Ans. 8-9 ( citing Paneccasio ,i,i 13, 23-25, 44, 45, 54; Hafezi ,i,i 64, 67, 69). Appellants argue that the Examiner's rejection of claim 55 should be reversed because Paneccasio "teaches away from a primary to tertiary in an alkaline bath" and "it would not have been obvious to use a tertiary amine in a composition having a pH from 9 to 12." Appeal Br. 24; Reply Br. 11-13. Appellants also argue that "a person of skill in the art would not have been motivated to use a primary to tertiary amine in an alkaline bath." Appeal Br. 25. We do not find Appellants' arguments persuasive of reversible error in the Examiner's rejection based on the fact-finding and well-stated reasoning provided by the Examiner at pages 8-9 and 21-24 of the Answer. In particular, we find that a preponderance of the evidence and sound technical reasoning support the Examiner's analysis and determination that the combination of Paneccasio and Hafezi suggests a composition satisfying all of the limitations of claim 55, including the recitation "wherein the 10 Appeal2018-008239 Application 13/259,482 composition has a pH from 9 to 12," and conclusion that the combination would have rendered the claim obvious. Paneccasio ,i,i 13, 23-25, 44, 45, 54; Hafezi ,i,i 64, 67, 69. Appellants' teaching away argument is not persuasive because Appellants do not identify sufficient evidence to support it, and we will not read into the references a teaching away where no such language exists. Cf DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellants do not direct us to any teaching in Paneccasio which discourages one of ordinary skill in the art from using primary, secondary, or tertiary amine compounds in an alkaline bath. In re Fulton, 391 F.3d 1195, 1201 (finding that there is no teaching away where the prior art's disclosure "does not criticize, discredit, or otherwise discourage the solution claimed"). Rather, as the Examiner finds (Ans. 23) and contrary to what Appellants argue, Paneccasio does not criticize, discredit, or otherwise discourage using an amine, diamine, triamine, tetraamine, pentaamine, or even higher amine compounds in alkaline baths. See, e.g., Paneccasio ,i 23 ( disclosing that "the cationic species can be an amine, a diamine, a triamine, a tetraamine, a pentaamine, or an even higher amine"). Moreover, as the Examiner finds (Ans. 9), Paneccasio teaches that the electrolytic baths include acid baths and alkaline baths (Paneccasio ,i 54) and Hafezi teaches using a complex alkaline electrolyte for plating a gapfill layer and that the bath may contain one or more pH-adjusting agents (Hafezi ,i,i 67, 69). As the Examiner further finds (Ans. 9), Hafezi teaches that one or more pH-adjusting agents are optionally added to the plating solution to achieve a pH 2:7.0, "preferably between about 7.0 and about 9.5" (Hafezi ,i 64), which overlaps the claimed range of "pH from 9 to 12." 11 Appeal2018-008239 Application 13/259,482 Thus, we determine a preponderance of the evidence in this appeal record does support the Examiner's conclusion (Ans. 9) that it would have been obvious to one of ordinary skill to have modified Paneccasio' s composition to have a pH from 9 to 12 because Hafezi teaches that using an alkaline plating solution having a pH> 7.0 was conventional and known in the art. See Hafezi ,i,i 64, 67, 69. Appellants' contentions that "it would not have been obvious to use a tertiary amine in a composition having a pH from 9 to 12" (Appeal Br. 24) and "a person of skill in the art would not have been motivated to use a primary to tertiary amine in an alkaline bath" (id. at 25) are not persuasive of reversible error in the Examiner's rejection because they are largely conclusory and, without more, insufficient to establish reversible error. Blauwe, 736 F.2d at 705; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ( explaining that mere lawyer's arguments or conclusory statements, which are unsupported by concrete factual evidence, are entitled to little probative value). Accordingly, we affirm the Examiner's rejection of claim 55 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination of Paneccasio and Hafezi. DECISION The Examiner's rejections of claims 40-55 are affirmed. It is ordered that the Examiner's decision is affirmed. 12 Appeal2018-008239 Application 13/259,482 No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a). AFFIRMED 13 Copy with citationCopy as parenthetical citation