Ex Parte Allibert et al

Board of Patent Appeals and Interferences

Apr 27, 2010

11433713 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FREDERIC ALLIBERT and FRANCOIS BRUNIER
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Appeal 2009-014290
Application 11/433,713
Technology Center 1700
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Decided: 27 April 2010
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Before MICHAEL P. COLAIANNI, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014290
Application 11/433,713

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10, 12-16, and 20.1 (Final Rejection mailed February
13, 2008; App. Br. 2.) We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants describe a method to facilitate mapping of electronic
properties of a structure made from semiconductor materials by forming a
plurality of working layer islands on the structure. (Spec. 4.) Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method to facilitate mapping of electronic properties of a
multilayer structure made from semiconductor materials, with
the structure including a working layer and an electrically
insulating layer located beneath the working layer, wherein the
method comprises:
applying a plurality of elementary masks onto the
working layer in a sealed manner to selectively mask desired
regions of the working layer in order to define boundaries of
several islands therein with the elementary masks providing a
cavity within each boundary to minimize contact of the masks
with the islands, with each region masked from the working
layer corresponding to a respective island;
wet chemical etching of the masked working layer to etch
away unmasked portions of the working layer, and
removing the elementary masks to form a plurality of
working layer islands each surrounded by the electrically
insulating layer.

1 Claims 11, 17, and 19 have been canceled. (Appeal Brief filed July 1,
2008, (hereinafter “App. Br.”) 2.) Although not addressed by Appellants, it
appears that claim 18 was also canceled. (Amendment filed June 11, 2007,
p. 3 and 4.)
Appeal 2009-014290
Application 11/433,713

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THE REJECTION
The Examiner rejected claims 1-10, 12-16, and 20 under 35 U.S.C. §
103(a) as being unpatentable over Appellants’ Admitted Prior Art (AAPA)
on pages 2-3 and paragraph [0014] of the Specification, in view of
Bowerman (U.S. 2,905,539 (issued Sept. 22, 1959)).
The Examiner found that AAPA discloses forming at least a single
island on a working layer of a semiconductor structure, but that AAPA does
not explicitly discloses the application of a plurality of elementary masks in
a sealed manner. (Examiner’s Answer entered September 15, 2008,
(hereinafter “Ans.”) 3.) The Examiner found that “Bowerman illustrates a
process of making patterns using a suction cup type masking member (18,
40) in a closed fashion on to a working layer (12, L).” (Ans. 3.) The
Examiner concluded that it would have been obvious to combine
Bowerman’s teaching into the AAPA’s process for achieving a desired
pattern with lower processing cost and time as suggested by Bowerman.
(Ans. 4.) Additionally, the Examiner concluded that it would have been
obvious to form more than one island or pattern on the working layer as
discussed by the AAPA, and because duplicating parts has been held to have
been obvious. (Id.)
Appellants contend that AAPA does not suggest a plurality of masks.
(App. Br. 4.) Appellants contend that the claimed methods do not
implement suction cups for the same use or in the same place as disclosed in
Bowerman. (App. Br. 7-8.) Accordingly, Appellants argue that there is no
reason to combine AAPA and Bowerman as suggested by the Examiner.
(App. Br. 8.)

Appeal 2009-014290
Application 11/433,713

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ISSUE
Did the Examiner err in determining that AAPA in view of Bowerman
suggests forming a plurality of working layer islands according to the
method recited in claim 1?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Bowerman discloses improved methods and apparatus for
manufacture of conductive patterns on insulated supports. (Col. 1,
ll. 15-21.)
2. Bowerman discloses masking members 18 and 40, having
backings 20 and 42, elastomer bodies 22 and 44, and raised
portions 24 and 46 having one or more elemental parts making up
the desired pattern to be formed on the conductive layer 12. (Col.
5, ll. 3-11 and 34-46; Figs. 2-4.)
3. Bowerman discloses “[a] raised annular portion or ring 58 may be
formed integrally with the stamp body 44 about the air passage 54
to serve as a suction cup.” (Col. 5, ll. 50-54; Fig. 3.)
4. Bowerman discloses “these cups will define regions not making up
the main conductive pattern as defined by the raised pattern 46 and
which will remain unetched when the assembly is subjected to the
action of the etchant.” (Col. 5, ll. 57-60.)

Appeal 2009-014290
Application 11/433,713

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PRINCIPLES OF LAW
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
“A factfinder should be aware . . . of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421.

ANALYSIS
We agree with Appellants that the Examiner’s rejection fails to
present a sufficient reason to employ the suction cups disclosed in
Bowerman to fabricate multiple islands to electrically characterize the
fabricated structure of the AAPA. (App. Br. 7.) The Examiner states that
Bowerman is relied on for the concept of using a plurality of masking
patterns compared to single pattern forming mask of the AAPA. (Ans. 5.)
The Examiner relies on masking members 18 and 40 disclosed by
Bowerman as suction cup type masking members. (Ans. 3.)
However, masking members 18 and 40 include raised portions 24 and
46, respectively, in order to provide the desired pattern. (FF 2.) In addition,
Bowerman does not disclose that the raised portions 24 and 46 “provide a
cavity within each boundary to minimize contact of the masks with the
Appeal 2009-014290
Application 11/433,713

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islands” as required in the claims on appeal. Moreover, Bowerman discloses
that the suction cups defined by raised annular portion or ring 58, formed
integrally with stamp body 44 about air passage 54 although providing
regions that remain unetched, do not make up the main conductive pattern.
(FF 3-4.) Accordingly, the Examiner has failed to identify a sufficient
reason why one of ordinary skill in the art would have used a plurality of
Bowerman’s suction cups to define a plurality of elementary masks in order
to form a plurality of working layer islands as recited in the claims on
appeal.

CONCLUSION
The Examiner erred in determining that AAPA in view of Bowerman
suggests forming a plurality of working layer islands according to the
method recited in claim 1.

ORDER
We reverse the Examiner’s decision rejecting claims 1-10, 12-16, and
20 under 35 U.S.C. § 103(a) as being unpatentable over AAPA in view of
Bowerman.

REVERSED

Appeal 2009-014290
Application 11/433,713

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