Ex Parte Sommer et alDownload PDFPatent Trial and Appeal BoardOct 31, 201813638658 (P.T.A.B. Oct. 31, 2018) Copy Citation 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). 2 Appeal 2018-000135 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. 3 Appeal 2018-000135 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 4 Appeal 2018-000135 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 5 Appeal 2018-000135 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 6 Appeal 2018-000135 Application 13/638,658 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. 7 Appeal 2018-000135 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 8 Appeal 2018-000135 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. 9 Appeal 2018-000135 Application 13/638,658 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 10 Copy with citationCopy as parenthetical citation