Ex Parte Aizenberg et al

Patent Trial and Appeal Board

Feb 27, 2013

10442774 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOANNA AIZENBERG and VIKRAM SUNDAR
____________

Appeal 2010-010865
Application 10/442,774
Technology Center 2800
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and ANDREW J.
DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010865
Application 10/442,774

2
STATEMENT OF THE CASE
Appellants are appealing claims 1-6 and 25-28. Appeal Brief 3. We
have jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.

Introduction
The invention is directed to “using edges of self-assembled
monolayers (SAMs) to form narrow features and in particular trenches and
wires.” Appeal Brief 4.

Illustrative Claim
1. A method of manufacturing a trench in a substrate, comprising:
forming a patterned layer on a portion of a substrate such that said
patterned layer forms a target area located adjacent an edge of said patterned
layer;
chemically bonding a self-assembled monolayer (SAM) to said
substrate up to said patterned layer, but excluding said patterned layer, said
SAM including a disordered region in said target area; and
etching said substrate within said target area.

Rejections on Appeal
Claims 1-6, 25 and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Black (Black et al., “Patterning Disorder in
Monolayer Resists for the Fabrication of Sub-100-nm Structures in Silver,
Gold, Silicon, and Aluminum,” 121 Journal of American Chemical Society
Appeal 2010-010865
Application 10/442,774

3
8356-8365 (1999)) and Zhou (U.S. Patent Number 6,969,690 B2; issued
November 29, 2005; filed Mar. 18, 2004). Answer 3-5.
Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Black, Zhou and Aviram (U.S. Patent Number 5,552,256;
September 3, 1996). Answer 5-6.

Issue on Appeal
Do Black, Zhou and Aviram, either alone or in combination, disclose
a method of manufacturing a substrate having a trench formed therein,
wherein a self-assembled monolayer (SAM) is chemically bonded to the
substrate while excluding a patterned layer?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellants’ Appeal
Brief. However, we highlight and address specific findings and arguments
for emphasis as follows.
Appellants provided four reasons why the Examiner did not employ
the proper motivation in combining the Black and Zhou references:

1) The Examiner has not explained why the asserted
teaching of Zhou would motivate one of ordinary skill in
the art to modify Black’s process to chemically bond a
SAM to the substrate up to the patterned layer, but exclude
Appeal 2010-010865
Application 10/442,774

4
the patterned layer. The Appellants submit that no such
motive exists because Zhou's process is directed to
depositing nanostructure-containing material on metallized
portions of a substrate surface, and not to forming a trench
in a substrate.

2) The Examiner has provided no explanation why
providing a smooth pattern layer devoid of SAMs, as the
Examiner asserts Zhou teaches, would have facilitated
Black’s method of forming a trench, given that Black’s
etching process relies on the presence of non-smoothed
regions to support less-ordered or disordered SAMs
(Black, p. 8357, Column 1, Lines 16-20). Rather, this
appears to be an improper proposed modification that
would change the principle of operation of Black’s etching
process. (See M.P.E2. ¶ 2143.01 VI. THE PROPOSED
MODIFICATION CANNOT CHANGE THE
PRINCIPLE OF OPERATION OF A REFERENCE).

3) It is not clear why rendering some portion of the
substrate non-hydrophobic, as the Examiner asserts Zhou
teaches, is relevant to etching a trench in a substrate as
taught by Zhou. For instance, Black does not appear to
disclose, or, at least, the Examiner has not pointed out
where Black discloses, that rendering some portion of the
substrate non-hydrophobic is important to etching a trench
in a substrate.

4) Furthermore, the Examiner has not explained why one
of ordinary skill would be motivated to modify Black’s
process to protect the underlying substrate with respect to
etching reagents when the entire surface of the substrate is
covered with SAMs in Black’s method, and the SAMs
offer good protection against etching (see Fig 1 of Black).

Appeal Brief 11-12.
Appeal 2010-010865
Application 10/442,774

5
Appellants’ reasons fail to persuade us of Examiner error. The test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Kahn, 441 F.3d 977,
987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)
and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner can
satisfy this test by showing some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. The Examiner
finds that while Black does not disclose selectively bonding a SAM layer to
a substrate while excluding a patterned layer, such technology was well
known as disclosed by Zhou. Answer 3, 4, 6 and 7.

Zhou et al. disclose a step of chemically bonding a self-
assembled monolayer (SAM) to a substrate but excluding
the patterned layer (metal layer) (fig. 2, step 3b), such
patterned layer without the SAM would provide the
smooth patterned layer surface and render some portions
of the substrate non-hydrophobic in order to use the device
in a particular application (fig. 2).

Answer 6-7.
While Appellants have provided reasons why the Examiner did not
provide proper motivation to combine Black and Zhou (Appeal Brief 11-12),
the given reasons place additional burden on the Examiner to prove the
validity of the motivation to combine the references that is not supported by
court guidelines and therefore contrary to Appellants’ reasons; we find that
the Examiner has satisfied the test for obviousness by articulating reasoning
with foundation to support his legal conclusion of obviousness. See Kahn,
441 F.3d at 987-988.
Appeal 2010-010865
Application 10/442,774

6
We sustain the Examiner’s obviousness rejection of independent
claim 1, as well as claims 2-6, 25 and 26 not separately argued. See Appeal
Brief 12. Appellants argue that Aviram does not support a rejection of claim
1 and therefore a prima facie case of obviousness of dependent claims 27
and 28 has not been made. Id. However Aviram is not required to support
the obviousness rejection of claim 1, and therefore, we sustain the
Examiner’s obviousness rejection of claim 27 and 28 for the same reasons as
stated above.

DECISION
The obviousness rejections of claims 1-6 and 25-28 are affirmed.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED

peb