Ex Parte Sommer et al

Patent Trial and Appeal Board

Oct 31, 2018

13638658 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/638,658 10/01/2012
68956 7590
SOLVAY USA INC.
504 CARNEGIE CENTER
CN 5203
PRINCETON, NJ 08540
10/31/2018
FIRST NAMED INVENTOR
Christoph Sommer
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.
S 2010/14 5736
EXAMINER
KLUNK, MARGARET D
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
10/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPH SOMMER,
OLIVIERO DIANA, JOHANNES EICHER,
ERCAN UENVEREN, STEP AN MROSS,
HOLGER PERNICE, PETER M. PREDIKANT,
THOMAS SCHWARZE, and REINER FISCHER
Appeal 2018-000135
Application 13/638,658
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1 and 4--21 of Application
13/638,658 under 35 U.S.C. § 103(a) as obvious. Final Act. (mailed July 22,
2016). Appellants 1 seek reversal of the rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.
1 Solvay SA is identified as the real party in interest. Br. 4.
Appeal 2018-000135
Application 13/638,658
BACKGROUND
The '658 Application describes a method of using purified elemental
fluorine (F 2) as an etchant for the manufacture of electronic devices. Spec.
1:5---6, 1: 13. F2 is said to be conventionally produced electrolytically from
hydrogen fluoride (HF) in the presence of an electrolyte salt according to the
equation 2HF----+ H2 + F2. Id. at 1 :7-8, 1: 12. The '658 Application further
describes using F 2 as a cleaning agent for treatment chambers used in the
manufacture of electronic devices. Id. at 1: 16-17.
Claim 1 is representative of the '658 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for the manufacture of electronic devices
compnsmg:
at least a step for the manufacture of elemental fluorine
on site in an electrolytic cell; and
at least one step selected from the group of etching of
items in a chamber using elemental fluorine as etching agent
and cleaning a chamber using elemental fluorine as chamber
cleaning agent,
wherein the elemental fluorine after its manufacture and
before its application for etching or chamber cleaning is
subjected to a low temperature treatment at a pressure in the
range of 4.5 to 11 Bars absolute and contacted with NaF at a
pressure lower than the pressure used for the low temperature
treatment to remove at least a part of entrained hydrogen
fluoride [(HF)]; and
wherein the removed HF is recycled to the electrolytic
cell.
Br. 19 (Claims App.) (emphasis added).
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Application 13/638,658
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 4--21 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Hodgson, 2 Iikubo, 3
Torisu,4 as evidenced by Diana5 and Tsirukis. 6 Final Act. 3.
2. Claims 17 and 18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Hodgson, Iikubo, Torisu,
as evidenced by Diana, Tsirukis, and Paganin. 7 Final Act. 7-9.
3. Claims 1, 4--8, and 10-21 are rejected under 35 U.S.C. § I03(a)
as unpatentable over the combination of Paganin, as evidenced
by Diana and Tsirukis. Final Act. 9-12.
DISCUSSION
Rejection 1. The Examiner rejected claims 1 and 4--21 under 35
U.S.C. § I03(a) as unpatentable over the combination of Hodgson, Iikubo,
Torisu, as evidenced by Diana and Tsirukis. Final Act. 3.
Appellants argue for the reversal of the obviousness rejection of
claims 4--21 on the basis of limitations present in independent claim 1. See
Br. 11-15. We, therefore, limit our analysis to claim 1 for these dependent
2 WO 2004/009873, published Jan. 29, 2004.
3 US 2011/0097253 Al, published Apr. 28, 2011.
4 US 2004/0028600 Al, published Feb. 12, 2004.
5 US 2015/0209838 Al, published July 30, 2015.
6 US 2003/0180211 Al, published Sept. 25, 2003.
7 US 2013/0012027 Al, published Jan. 10, 2013.
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Application 13/638,658
claims. Claims 4--21 will stand or fall with claim 1. 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Appellants argue that the rejection of claim 1 as unpatentable over the
combination of Hodgson, Iikubo, Torisu, as evidenced by Diana and
Tsirukis should be reversed because: (1) the ordinary skilled artisan would
not have been motivated to combine Hodgson's apparatus for F2 generation
at a low flow rate with Iikubo's large scale F2 generating apparatus having
an incompatible high flow rate, Br. 11-12; (2) the Examiner has not
provided a rationale as to why the ordinary skilled artisan would have
expected that Iikubo's low temperature treatment is suitable for HF removal
in Hodgson's traps and filters, id. at 12; (3) Hodgson is silent as to
compressing F2 before arrival at the compression cassette and Iikubo
provides no guidance to select 4.5-11 Bar absolute pressure because it
"merely discloses a broad range of pressures," id. at 13; (4) it would not
have been obvious to try contacting F2 with NaF at a pressure lower than the
pressure used for the low pressure treatment because the Examiner's options
of lower, the same, or a higher pressure are arbitrary and are not identifiable
and predictable solutions, id. at 13-14; and (5) Diana discloses that whether
the actual pressure drops in relation to a static HF scrubber depends on the
apparatus, temperature, gas flow, etc., and thus a pressure drop is not
inherent to every low temperature treatment process. Id. at 14--15.
Appellants' arguments are not persuasive.
First, arguments (1 ), (2), and (3) have not identified reversible error in
the Examiner's rationale for combining Hodgson and Iikubo. The Examiner
has found that Hodgson teaches or suggests every step or limitation recited
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Application 13/638,658
in claim 1 with the exception of, inter alia, subjecting manufactured F2 to a
low temperature treatment at above ambient pressure. Final Act. 3.
The Examiner, however, found that "Iikubo teaches a low temperature
treatment at a pressure above ambient ... for removal of HF." Id. (citing
Iikubo ,r,r 77-80 ( disclosing in Table 1 subjecting a F2 product stream to -82
~Cat 3.90 atm)).
The Examiner determined that it would have been obvious for the
ordinary skilled artisan to modify Hodgson's apparatus to include Iikubo's
low pressure treatment at a pressure above ambient "because Hodgson does
not limit the purification process and Iikubo demonstrates successful results"
by reducing HF to 10 ppm. Final Act. 3--4 ( citing Iikubo ,r 77).
Appellants' argument: (1) is not persuasive because we agree with
the Examiner that Appellants have not provided any "evidence that
[Iikubo's] purification process would not work [in the Examiner's proposed
modification] because of different flow rates." Ans. 2. As found by the
Examiner, both Hodgson and Iikubo teach electrolytic formation of fluorine
and thus each process would have been expected to produce F 2 with at least
some impurities, such as HF. Id.; see also Hodgson 13:33-34; Iikubo
Abstract. Likewise, Appellants' attempts to distinguish Iikubo' s teachings
from Hodgson's based on the F2 generation plant's scale is similarly
unpersuasive-the apparatus disclosed in each reference produces the same
gas and removes the same HF impurity.
Appellants' argument (2) is not persuasive because Iikubo teaches that
"[t]he Coolant 203 maintains the temperature of the HF Separation Chamber
220 at a temperature sufficiently low to condense HF gas to a liquid,
preferably between -84° C. and 19.5° C." Iikubo ,r 35. A person of ordinary
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Application 13/638,658
skill in the art at the time of the invention would have reasonably inferred
that reducing the temperature of Hodgson's traps and filters may condense
HF gas to further facilitate its removal. 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, 416 (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).
We are not persuaded by argument (3) because the Examiner found
that Iikubo: (i) exemplifies HF removal by treatment at 3.9 atm (3.95 bar);
and (ii) discloses that suitable treatment pressures may be in excess of 2 atm.
Ans. 4. We, therefore, discern no reversible error in the Examiner's finding
that "pressures above 2 atm would include the claimed 4.5 bar particularly in
view of the specific teaching of 3.95 bar." Id.; see, e.g., In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003) (holding that a prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art).
Second, Appellants' arguments ( 4) and ( 5) fail to identify reversible
error in the Examiner's findings that the cited prior art discloses or suggests
the claimed NaF contacting step at the requisite lower pressure.
The Examiner found that Torisu teaches that after a low temperature
treatment, the flow of electrolytically produced fluorine is contacted with
NaF for purification. Final Act. 4 (citing Torisu ,r 27, Fig. 1). Thus, the
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Examiner correctly determined and Appellants do not dispute that "[i]t
would have been obvious to a person having ordinary skill in the art at the
time the invention was made to contact the fluorine gas with NaF for further
purification because Torisu teaches this as a purification process ... in
conjunction with a low temperature treatment." Final Act. 4.
The Examiner found that Diana provides evidence that the
incorporation of Torisu's NaF contacting step would have resulted in a
pressure drop following Iikubo's pressurized low temperature step. Id.
According to the Examiner, this pressure drop would have necessarily
resulted in the claimed lower pressure for Torisu's subsequent NaF
contacting step. Id. at 4--5.
Argument ( 4) is not persuasive because claim 1 does not recite a
specific pressure for the NaF contacting step. Rather, the claim only
requires use of a pressure for the NaF contacting step that is lower than the
pressure used for the preceding low temperature step. Therefore, we agree
with the Examiner's determination that "the second step represents an
obvious to try modification of choosing between a finite number of options
[ such as a lower, the same, or a higher pressure than the previous step] with
a reasonable expectation of success." Id. at 5.
We are unpersuaded by Appellants' argument ( 5) because Diana
teaches that: (i) there will be a pressure drop and (ii) the magnitude of that
pressure drop will depend upon the apparatus, temperature, gas flow, etc.
See Diana ,r,r 52, 57; Table 1. Appellants, furthermore, have not provided
any argument or reasoning supported by adequate facts to explain why lower
total pressure would not be expected to drop as HF impurities and their
concomitant partial pressures are removed. See Ans. 5.
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Application 13/638,658
Appellants contend in connection with argument ( 5) that it was
improper for the Examiner to rely upon Diana because it "does not show a
universal fact such that the exception to the rule [applies] that the critical
reference date must precede the effective US filing date." Br. 14.
Appellants' argument is unpersuasive because the Examiner relied
upon Diana only to provide evidence of the natural occurrence of lower
pressures following impurity removal. Therefore, it is immaterial that Diana
was published after the effective U.S. filing date of the '658 Application.
For the reasons set forth above, in the Final Office Action, and in the
Answer, we are not persuaded by any of Appellants' arguments for reversal
of the rejection of claims 1 and 4--21. 37 C.F.R. § 4I.37(a)(l)(iv).
We, therefore, affirm Rejection 1.
Rejection 2. The Examiner rejected claims 17 and 18 under
35 U.S.C. § 103(a) as unpatentable over the combination of Hodgson,
Iikubo, Torisu, as evidenced by Diana, Tsirukis, and Paganin. Final Act. 7-
8.
Appellants argue that this rejection should be reversed because
Paganin does not cure the deficiencies of Hodgson, Iikubo, Torisu, as
evidenced by Diana, and Tsirukis in the rejection of claim 1. Br. 15-16.
Having found no such deficiencies, we also affirm Rejection 2.
Rejection 3. The Examiner rejected claims 1, 4--8, and 10-21 under
35 U.S.C. § 103(a) as unpatentable over the combination of Paganin, as
evidenced by Diana and Tsirukis. Final Act. 9.
Appellants argue for the reversal of the obviousness rejection of
claims 4--8 and 10-21 on the basis of limitations present in independent
claim 1. See Br. 16-1 7. We, therefore, limit our analysis to claim 1 for
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Application 13/638,658
these dependent claims. Claims 4--8 and 10-21 will stand or fall with claim
1. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue that the rejection of claim 1 as unpatentable over the
combination of Paganin, as evidenced by Diana and Tsirukis should be
reversed because: (1) Paganin provides "no disclosure or suggestion about
the relative pressures used in each step," Br. 16; (2) nor does Paganin
provide any "disclosure or suggestion of varying the pressure within each
step, such as the purification step," id.; (3) Diana is deficient for
substantially similar reasons proffered in argument ( 5) for the reversal of
Rejection 1. Compare id. at 16-17 with id. at 14--15.
Appellants' arguments are not persuasive.
First, argument (1) fails to identify reversible error in the Examiner's
findings because Appellants admit that Paganin "teaches a range equal to or
greater than 1.5 bar and preferably equal to or lower than 15 bar." Br. 16.
In other words, pressures above 1.5 bar and lower than 15 bar would
encompass the claimed 4.5-11 Bars absolute. See Peterson, 315 F.3d at
1329; see also Fritch, 972 F.2d at 1264--65. Furthermore, the Examiner
found Paganin teaches that "the elemental fluorine after its manufacture and
before its application for etching or chamber cleaning is subjected to a low
temperature treatment ... at a pressure in the range of 4.5-11 bars abs ([i.e.]
1.5-12 bars) and contacted with NaF." Final Act. 10 (citing Paganin ,r,r 25,
31 ). Thus, a person of ordinary skill in the art at the time of the invention
would have reasonably inferred from Paganin that elemental fluorine could
be purified by subjecting it to a low temperature treatment at a pressure in
the range of 4.5 to 11 Bars absolute. See KSR, 550 U.S. at 416.
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Second, Appellants' arguments (2) and (3) regarding Diana's evidence
are unpersuasive for the reasons set forth above discussing argument ( 5) for
reversal of Rejection 1. We reiterate that the Examiner relied upon Diana
only to provide evidence of the natural occurrence of lower pressures
following impurity removal. Thus, lower pressure would have necessarily
occurred in Paganin's described NaF contacting step, which follows the low
temperature treatment at 4.5-11 bars abs.
For the reasons set forth above, in the Final Office Action, and in the
Answer, we are not persuaded by any of Appellants' arguments for reversal
of the rejection of claims 1, 4--8, and 10-21. 37 C.F.R. § 4I.37(a)(l)(iv).
We, therefore, affirm Rejection 3.
DECISION
For the reasons set forth above, we affirm the§ 103(a) rejections of
claims 1 and 4--21 of the '65 8 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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