ASM IP HOLDING B.V.

Patent Trials and Appeals Board

Apr 27, 2021

2020006399 (P.T.A.B. Apr. 27, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/364,024 11/29/2016 Suvi P. Haukka ASMMC.131AUS 2566
20995 7590 04/27/2021
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
GAMBETTA, KELLY M
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
04/27/2021 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUVI P. HAUKKA, ELINA FÄRM ,
RAIJA H. MATERO, EVA E. TOIS,
HIDEMI SUEMORI, ANTTI JUHANI NISKANEN,
SUNG-HOON JUNG, and PETRI RÄISÄNEN
____________

Appeal 2020-006399
Application 15/364,024
Technology Center 1700
____________

Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–10, 12–15, 17, 18, and 20. An oral hearing was
held on April 5, 2021. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).

1 Our Decision refers to the Specification (“Spec.”) filed Nov. 29, 2016, the
Final Office Action dated Nov. 19, 2019 (“Final Act.”), Appellant’s Appeal
Brief (“Appeal Br.”) filed May 11, 2020, the Examiner’s Answer (“Ans.”)
dated July 17, 2020, Appellant’s Reply Brief (“Reply Br.”) filed Sept. 14,
2020, and the April 5, 2021 Hearing Transcript (“Tr.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies ASM IP HOLDING B.V. as the real
party in interest. Appeal Br. 3.
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We AFFIRM.
STATEMENT OF THE CASE
The invention relates to selectively depositing thin films on a first
surface of a substrate relative to a second surface. Spec. ¶ 6. Claim 1,
reproduced below from the Claims Appendix to the Appeal Brief, is
illustrative (disputed limitation italicized).
1. A method for selectively depositing a thin film on a first
surface of a substrate relative to a second surface, the method
comprising:
contacting the first and second surfaces of the substrate
with a first vapor phase precursor;
exposing the substrate to a purge gas or vacuum after
contacting the first and second surfaces of the substrate with the
first vapor phase precursor; and
contacting the first and second surfaces of the substrate
with a second vapor phase precursor comprising molecular
oxygen (O2) as the sole source of oxygen in the method for
selectively depositing, after exposing the substrate to the purge
gas or vacuum;
wherein the thin film is thereby selectively deposited on
the first surface of the substrate relative to the second surface;
wherein the selective deposition from the first surface to
the second surface is at least about 50% selective;
wherein the thin film comprises an insulating metal oxide;
wherein the second surface comprises an organic species
selected from the group consisting of a self-assembled
monolayer (SAM) and a polymer.
Appeal Br. 34 (Claims Appendix). Claim 14 is the other independent claim
in this Appeal directed to a method for depositing a thin film on a surface of
a substrate and recites “magnesium oxide, lanthanum oxide, or hafnium
oxide thin film” instead of “thin film comprises an insulating metal oxide.”
Id. at 35.
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ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After considering
the positions of both the Examiner and Appellant, we are not persuaded the
Examiner reversibly erred for the reasons set forth in the Final Action, the
Answer, and discussed below.
The Examiner rejects the claims as follows:
Claim(s) 35 U.S.C. § References
1–6, 12, 13 103 Haukka,3 Färm4
1–3, 5–7, 12–15, 17,
20 103 Haukka, Levy
5
8–10, 14, 15, 17, 18,
20 103 Haukka, Levy, Kukli
6
9, 10 103 Haukka, Levy, Kukli, Raisanen7
Final Act. 5–9. We address each of the rejections below.
Rejection over Haukka and Färm
The Examiner rejects claims 1–6, 12, and 13 over Haukka’s method
for selectively depositing a thin film on a first surface of a substrate relative

3 US 2015/0217330 A1, published Aug. 6, 2015.
4 Elina Färm et al., Self-Assembled Octadecyltrimethoxysilane Monolayers
Enabling Selective-Area Atomic Layer Deposition of Iridium, 12 CHEM.
VAP. DEPOSITION 415–417 (2006).
5 US 2011/0120542 A1, published May 26, 2011.
6 Kaupo Kukli et al., Properties of hafnium oxide films grown by atomic
layer deposition from hafnium tetraiodide and oxygen, 92 JOURNAL OF
APPLIED PHYSICS 5698 (2002).
7 US 2010/0270626 A1, published Oct. 28, 2010.
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to a second surface. Final Act. 5 (citing Haukka ¶ 10). The Examiner finds
Haukka teaches contacting the surfaces with molecular oxygen as the sole
oxygen source and that Haukka’s thin film is an insulating metal oxide. Id.
(citing Haukka ¶¶ 29–32, 71–72, 245–248). The Examiner finds Haukka
teaches the second surface may undergo passivation to prevent deposition of
the metal oxide, but does not explicitly disclose a self-assembled monolayer
(SAM) as required by claim 1. Id. (citing Haukka ¶ 29). The Examiner finds
Färm teaches selectively depositing a thin film on a first surface of a
substrate relative to a second surface and the second surface comprises
organic species that is a SAM with 100% selectivity for passivation and
similar in composition to the passivation layer (organic silicon compound)
used in Haukka. Id. (citing Färm 416–17). The Examiner determines it
would have been obvious to modify Haukka with Färm’s SAM because
Färm teaches the art recognized suitability and utility of a SAM as a
passivation layer. Id. at 6.
Appellant argues that the Examiner erred in finding Haukka discloses
claim 1’s metal oxide because Haukka’s germanium oxide (GeO2) is a
semiconductor oxide, which is distinct from the recited metal oxide. Appeal
Br. 7. Appellant also contends the Examiner fails to provide any rationale
for selecting molecular oxygen (O2) from the “extensive prior art precursor
lists for use in the asserted combinations.” Id. at 7, 13–18. According to
Appellant, Haukka follows the general teaching that O2 is not a suitable
oxygen source for atomic layer deposition (ALD) of metal oxides and,
therefore, teaches away from the use of molecular oxygen as the sole oxygen
source that the Appellant’s Specification describes as responsible for
maintaining selectivity above the desired level. Id. at 8–10 (citing Spec.
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¶ 41, Haukka ¶ 94). Appellant contends Haukka’s and Färm’s disclosures of
molecular oxygen are limited to semiconductor oxides and metals,
respectively, and do not disclose or suggest metal oxides. Id. at 13, 17.
We do not find Appellant’s arguments persuasive of error,
fundamentally because neither Appellant’s Specification nor the cited prior
art references restrict specific dielectric materials such as germanium oxide
from being encompassed by the term “metal oxide.” The record supports the
Examiner’s finding that Haukka refers to germanium as a metal. Ans. 9, 18;
Haukka ¶ 10 (“[T]he selectively deposited metal is selected from Sb and
Ge.”); see also Haukka ¶¶ 146 (“In some embodiments[,] the film comprises
less than 1-at% of metal or semi-metal other than Ge.”), 255 (“In some
embodiments[,] the GeO2 film formed is a pure GeO2 film. Preferably, . . .
no other metal or semi-metal elements are present in the film.”). Therefore
germanium oxide is a metal oxide in Haukka’s selective ALD-type process.
The Examiner directs us to Haukka’s paragraphs 12–14, 17, and the title
(“Selective Deposition of Metals, Metal Oxides, and Dielectrics”) for
explicitly teaching creating a metal oxide film using a selective area ALD
process. Id. at 19–20. These additional disclosures in Haukka support the
Examiner’s finding that Haukka teaches creating a metal oxide film using a
selective area ALD and further shows that Haukka does not confine the
selectively deposited material to being one or the other in terms of metal
oxide or dielectric material.
In the Reply Brief, Appellant contends Haukka distinguishes
dielectric material from metal oxides and identifies GeO2 as a dielectric.
Reply Br. 1–2 (citing Haukka title, ¶¶ 12–14, 17, 146, 255). While Haukka
refers to GeO2 as a dielectric, Haukka also explicitly refers to germanium as
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a metal, discloses selectively depositing a GeO2 film, and teaches selectively
depositing metal oxide or dielectric material. Haukka ¶¶ 10, 12–14, 17, 146,
255. Therefore, Haukka’s usage of the terms “dielectric” and “metal oxide”
is not persuasive of error in the Examiner’s finding that Haukka discloses an
insulating metal oxide as required by claim 1. To the extent that Appellant
argues GeO2 may only be considered a dielectric and not a metal oxide, that
argument is not supported by the record because, at oral hearing, Appellant’s
counsel confirmed that a dielectric may be an insulating metal oxide:
JUDGE PRAISS: Counsel, this is Judge Praiss. Is a
dielectric an insulating metal oxide?
MR. AKHTAR: Yes. A dielectric could be an
insulating metal oxide. So for example, magnesium oxide is
also on that list of dielectrics. And that would also be
considered a metal oxide.
Tr. 6. Thus, the plain meaning of metal oxide does not preclude dielectrics
generally. Appellant also acknowledges that magnesium oxide is a metal
oxide. Id. Haukka describes both germanium oxide and magnesium oxide as
dielectric material. Haukka ¶ 13 (“In some embodiments the selectively
deposited dielectric material is selected from GeO2, SiO2 and MgO.”). Thus
Haukka discloses the selective deposition of metal oxides that are also
dielectrics. Accordingly, the Examiner’s finding that Haukka’s disclosure of
GeO2 is a disclosure of the claimed insulating metal oxide is supported by
the record in this Appeal.
Appellant’s position that the claim term “metal oxide” excludes GeO2
because Appellant’s Specification refers to GeO2 as a semiconductor oxide
rather than a metal oxide is not supported by the record. Reply Br. 2 (citing
Spec. ¶ 30). The full scope of “metal oxide” includes compounds containing
metal and oxide components which may also be a dielectric material.
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“Absent a clear disavowal or contrary definition in the specification or the
prosecution history, the patentee is entitled to the full scope of its claim
language.” Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358
(Fed. Cir. 2004). According to Appellant, the question of whether metal
oxide encompasses GeO2 within the meaning of the claims is answered by
Appellant’s Specification paragraph 30. Reply Br. 2. Paragraph 30 provides
In some embodiments the first surface may comprise a
semiconductor material. In some embodiments the first surface
may comprise silicon and/or germanium. For example, the first
surface may comprise silicon nitride, silicon oxide, silicon
carbide, or germanium oxide. In some embodiments the first
surface may comprise a silicon dioxide surface. In some
embodiments the first surface may comprise a mixture of two
or more of the materials recited above.
Spec. ¶ 30. At most, paragraph 30 suggests that what it refers to as
“semiconductor materials” in the first sentence includes all of the
compounds mentioned in the subsequent sentences as embodiments, which
includes germanium oxide. It does not affirmatively exclude any materials
on the basis of whether they are metal oxides or not or on the basis of
whether they are dielectrics or not. Thus paragraph 30 does not explicitly
exclude germanium oxide from the scope of materials that are included by
the term “metal oxide.” Accordingly, the Specification lacks a clear
disavowal or contrary definition of the claim term “metal oxide.”
Regarding Appellant’s position (Appeal Br. 7, 13–18) that the
Examiner’s rejection lacks a rationale for selecting molecular oxygen, we
are not persuaded of error because Haukka explicitly discloses the use of
molecular oxygen as the second reactant with germanium oxide, which is a
metal oxide as discussed above. Haukka ¶¶ 245–246. Moreover, in a
determination of obviousness, a reference may be relied upon for all that it
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would have reasonably suggested to one having ordinary skill in the art.
Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That
the [prior art] patent discloses a multitude of effective combinations does not
render any particular formulation less obvious.”). We agree with the
Examiner (Ans. 14) that Haukka’s list of oxygen and inactive gas, molecular
oxygen containing gas, air, molecular oxygen, activated or excited oxygen,
ozone, or oxygen plasma identifies seven possibilities of which three satisfy
the claim requirement, thus, choosing molecular oxygen as the sole source of
oxygen would have been obvious based on the known options described by
Haukka.
Regarding Appellant’s teaching away position, Appellant relies on
Haukka’s paragraph 94 which describes “other embodiments” in which the
second reactant is not an oxygen source. Appeal Br. 9–10; Haukka ¶ 94.
Because we are not persuaded that either the Specification or the cited prior
art references preclude germanium oxide from being a “metal oxide” as
recited in claim 1, we likewise do not find Haukka’s disclosure of molecular
oxygen to be limited to materials that are not metal oxides. We also note that
Haukka’s disclosure was published in 2015 and therefore supersedes
Appellant’s 2002 publication cited for the proposition that molecular oxygen
would have been expected to be too inert to react with typical metal
compounds. Appeal Br. 9; Ans. 17–18.
In view of the above, we affirm the Examiner’s rejection of
independent claim 1 over Haukka and Färm. For the same reasons, we also
affirm the Examiner’s rejection of claims 2–6, 12, and 13, based on their
dependency from claim 1.
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Rejection over Haukka and Levy
The Examiner rejects claims 1–3, 5–7, 12–15, 17, and 20 over
Haukka’s selective deposition method as modified by Levy’s inclusion of a
polymer as its passivation layer. Final Act. 7.
Appellant argues that the Examiner erred in rejecting independent
claim 1 over the cited prior art because Haukka only teaches molecular
oxygen as a possible oxygen source for selective ALD of semiconductor
oxides such as GeO2 rather than a metal oxide as required by claim 1.
Appeal Br. 22. Appellant argues that, with respect to selective ALD of
magnesium oxide recited in independent claim 14, Haukka teaches only
water and/or ozone as oxygen sources. Id. Appellant contends that Levy
provides no motivation to select molecular oxygen. Id.
Regarding the deficiency of Haukka, the Examiner directs us to the
discussion of the rejection of claim 1 over Haukka and Färm. Ans. 22.
Because we do not find Appellant’s arguments persuasive of error with
respect to the rejection of claim 1 over Haukka as modified by Färm, we
likewise affirm the Examiner’s rejection of claims 1–3, 5–7, 12, and 13 over
Haukka as modified by Levy for the same reasons discussed above.
Regarding Appellant’s argument that Haukka teaches only water
and/or ozone as oxygen sources for selective ALD of magnesium oxide as
recited in claim 14, the record supports the Examiner’s finding that Haukka
discloses a variety of metals in addition to germanium. Ans. 23; Haukka
¶ 13 (“In some embodiments the selectively deposited dielectric material is
selected from GeO2, SiO2 and MgO2.”). Haukka’s disclosures regarding
magnesium oxide are not limited to the examples provided because “a
reference is not limited to the disclosure of specific working examples.” In
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re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation omitted). Thus we affirm
the Examiner’s rejection of claim 14 over the combination of Haukka and
Levy as well as claims 15, 17, and 20 which depend from claim 14.
Accordingly, we affirm the Examiner’s rejection of claims 1–3, 5–7,
12–15, 17, and 20 over Haukka and Levy.
Remaining Rejections over Haukka and Levy
For the remaining rejections over Haukka and Levy, Appellant
presents the same arguments that Haukka teaches only molecular oxygen as
a possible oxygen source for selective ALD of semiconductor oxides
(GeO2), not for a “metal oxide” as required by independent claim 1, or
“magnesium oxide, lanthanum oxide, or hafnium oxide” as required by
independent claim 14. Appeal Br. 26–27. In response, the Examiner
maintains that Haukka’s disclosure of germanium oxide teaches selective
area ALD using a metal oxide and molecular oxygen. Ans. 25. Therefore,
we sustain the Examiner’s remaining rejections under § 103 over the
combination of Haukka and Levy with secondary references for the same
reasons discussed above in connection with the rejection of claim 1 over
Haukka and Färm.

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CONCLUSION
For these reasons, we affirm the Examiner’s rejection of claims 1–10,
12–15, 17, 18, and 20 under 35 U.S.C. § 103.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–6, 12, 13 103 Haukka, Färm 1–6, 12, 13
1–3, 5–7,
12–15, 17,
20
103 Haukka, Levy
1–3, 5–7,
12–15, 17,
20

8–10, 14,
15, 17, 18,
20
103 Haukka, Levy, Kukli
8–10, 14,
15, 17, 18,
20

9, 10 103 Haukka, Levy, Kukli, Raisanen 9, 10
Overall
Outcome
1–10, 12–
15, 17, 18,
20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED