Ex Parte Blees

Board of Patent Appeals and Interferences

Mar 23, 2007

09759179 (B.P.A.I. Mar. 23, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte MARTIN HILLEBRAND BLEES
______________

Appeal 2006-2571
Application 09/759,179
Technology Center 1700
_______________

Decided: March 23, 2007
_______________

Before CHARLES F. WARREN, PETER F. KRATZ , and
LINDA M. GAUDETTE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 3, 5 through 7, and 11 through
14, all of the claims in the Application, in the Office action mailed
November 3, 2004. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2005).

Appeal 2006-2571
Application 09/759,179
We affirm the decision of the Primary Examiner with respect to
claims 6 and 11 through 14, and reverse the decision with respect to all other
claims.
Claims 1, 6, and 7 illustrate Appellant’s invention of a stamp and a
method of manufacturing the same, and are representative of the claims on
appeal:
1. A stamp for use in a lithographic process, which stamp comprises a
stamp body with a printing face, said stamp body having a first recess with
an [sic] first aperture in the printing face, wherein
the first recess becomes narrower as its distance to the printing face
increases, and
cross-sections of the first recess parallel to the printing face, when
projected perpendicularly on the printing face, lie within the first aperture,
and a third recess with an [sic] third aperture in the printing face and a depth
perpendicular to the printing face that is greater than the depth of the first
recess is present in the stamp body,
which third recess has cross-sections parallel to the printing face and
becomes substantially narrower as its distance to the printing face increases,
said cross-sections, when projected perpendicularly on the printing face,
lying within the third aperture,
the aperture of the third recess and the aperture of the first recess each
have a dimension in a first direction in the printing face, and
said dimension of the aperture of the third recess is at least five times
the dimension of said aperture of the first recess, wherein at least one of the
first and third recesses has a triangular shape in a plane perpendicular to the
printing face;
wherein the stamp body has a Young modulus greater than 106 N/m2,
and the stamp body further has an elastic layer disposed therein.
6. A method of manufacturing a stamp for use in a lithographic
process, which stamp has a stamp body with a surface which coincides
partly with the printing face, comprising the steps of:
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anisotropic etching of a surface of a mold into a patterned mold
surface, such that a first recess and a second recess are created in the mold
with apertures in the original surface, which first recess and a second recess
become narrower as its distance to the original surface increases and has
cross-sections parallel to the original surface which, when projected
perpendicularly on the original surface, lie within the aperture, and wherein
the first and second recesses have different apertures;
disposing an unmolded agent between the mold and a first body; and
making a replica of the patterned mold surface in the first body with a
patterned surface, wherein the replica contains structures of different sizes.
7. A method as claimed in claim 6, characterized in that a replica is
made of the patterned surface of the first body in a second body which has a
patterned surface.
The Examiner relies on the evidence in these references:
Hawkins US 5,201,987 Apr. 13, 1993
Biebuyck US 5,817,242 Oct. 6, 1998
Whitesides US 5,900,160 May 4, 1999
Maracas US 5,937,758 Aug. 17, 1999
Choquette US 6,245,412 B1 Jun. 12, 2001

Younan Xia and George M. Whitesides (Xia), “Soft Lithography,”
37 Angew. Chem. Int. Ed., 550-75 (1998).
Appellant requests review of the following grounds of rejection under
35 U.S.C. § 103(a) (Br.1 4), the grounds all advanced on appeal:
claims 1, 2, and 5 as unpatentable over Whitesides in view of Biebuyck as
evidenced by Hawkins (Answer 3-4);
claim 3 as unpatentable over Whitesides in view of Biebuyck as evidenced
by Hawkins as applied to claim 1 and further in view of Maracas (id. 5);
claims 6 and 11 through 13 as unpatentable over Whitesides in view of
Biebuyck (id. 5-6);

1 We consider the Brief filed January 10, 2006.
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claim 7 as unpatentable over Whitesides in view of Biebuyck as applied to
claim 6 and further in view of Xia (id. 6); and
claim 14 as unpatentable over Whitesides in view of Biebuyck as applied to
claim 13 and further in view of Choquette (id. 6-7).
Appellant argues the claims in the first ground of rejection as a group
and argues claims 6, 11, and 12 in the third ground (Br. 5 and 7). Thus, we
decide this appeal based on appealed claims 1, 3, 6, 7, 11, 12, and 14 as
representative of the grounds of rejection and Appellant’s groupings of
claims. 37 C.F.R. § 41.37(c)(1)(vii) (2005).
With respect to independent claim 1 and the first ground of rejection,
the Examiner contends Whitesides discloses the stamp illustrated in Fig. 3a
for use in a lithographic process, which has recesses with apertures 24, “the
recess having a triangular shape (Fig 10 and Col 15 lines 39-49)” (Answer
3). The Examiner contends Whiteside does “not expressly disclose recesses
of different apertures and or different depths, especially third recess having
an aperture at least five times the aperture of the first recess and a greater
depth,” but concludes “in the real world applications the recesses would be
of different sizes, in order to pattern features of different sizes” (id. 3-4).
The Examiner contends Biebuyck discloses in FIG. 2D “a stamp with
different sized apertures” (id. 4). The Examiner contends recess depth
would be greater with an anisotropic etch in making the stamp in
Whitesides, which “fact is disclosed by [Hawkins] who teach (Fig 6 and Col
5 lines 19-23) that in a single isotropic etch varying depths will be obtained
for different size of vias” (id.). The Examiner concludes that it would have
been obvious to one of ordinary skill in the art “to have a stamp with varying
number of recesses and varying recess apertures” (id.).
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Appellant contends
[t]he Examiner proposes a result that is not supported by the
[Whiteside] method which is directed to creating a stamping
surface having a pattern of closely-spaced features. See Col. 7,
lines 10-18. The Examiner’s proposal to modify this pattern to
include different sized apertures would destroy the closely-
spaced relationship of the [Whitesides] features in the stamping
pattern. For example, by providing a larger aperture in a pattern
seemingly defined by closely-spaced protrusions, the protrusions
defining the larger apertures are no longer closely spaced;
therefore, the larger aperture destroys the close spacing which is
intended to define the pattern, thereby undermining the method
of the [Whitesides] reference. See Col. 7, lines 10-18.
Br. 7. Appellant further contends the Examiner does not present evidence
establishing that Hawkins’ bath etch “applies to the claimed stamp
fabrication” (id.).
The Examiner responds Whitesides’ disclosure that “‘The stamping
pattern includes closely spaced features’ . . . does not exclude larger spaced
features” (Answer 7). The Examiner contends Hawkins “is used to show
that typically a larger aperture would result in a deeper etch compared to a
smaller aperture” (id.). Appellant replies the Examiner’s reliance on
Hawkins “is based on the narrow assumption that a certain etching technique
‘would result in a deeper etch’” which is incorrect “as many etching
techniques for making a larger aperture would result in a shallower etch,”
and for the Examiner’s position to be supported, “the corresponding etching
technique that created the result would also have to be relied upon” (Reply
Br. 7).
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With respect to claim 3, dependent on claim 1, and the second ground
of rejection, the Examiner contends Whitesides does “not expressly disclose
feature size to be less than 1 µm,” and finds Maracas would have disclosed a
stamp with micron and submicron feature size (Answer 5; citing Maracas
col. 3, ll. 22-25 and col. 8, ll. 17-18). The Examiner concludes that “[a]s
feature size in integrated circuits is being required to be more and more
narrower it would have been obvious to one of ordinary skill . . . to make the
stamp of Hawker [sic, Whitesides] with sub micron feature size to be able to
pattern sub micron features” (id.).
Appellant contends the Examiner presents no evidence that
Whitesides’ teachings “could be further modified to include sub-micron
features” (Br. 8). Appellant argues Whitesides’ “teachings acknowledge the
resulting deformation of a stamp created and used in accordance with the
reference’s teachings. This deformation prevents spacing of apertures within
one micron as the deformation would destroy such spacing. See Figs. 3a-c
and Col. 10, lines 6-15” (id.).
The Examiner responds “[a]t Col 10 lines 6-15 [Whitesides] state that
the compressive force would deform and reduce feature size. This does not
mean that sub micron features may not be obtainable,” arguing “sub micron
feature size is obtained by design and not by using the stamp at high
compressive force thereby to deform the stamp” (Answer 8). Appellant
replies “[a] skilled artisan would not be motivated to modify [Whitesides’]
teachings to create an inoperable embodiment, e.g., the destruction of the
spacing due to deformation would render the stamp inoperable” (Reply
Br. 8).
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The issues are whether the Examiner erred in concluding it would
have been prima facie obvious to one of ordinary skill in the art to arrive at
the claimed stamp as encompassed by claim 1 from the combined teachings
of Whitesides, Biebuyck, and Hawkins, and as encompassed by claim 3 from
the combined teachings of Whitesides, Biebuyck, Hawkins, and Maracas.
The plain language of independent claim 1 specifies a stamp with at
least three recesses with apertures, “a dimension in a first direction in the
printing face” of the aperture of a “first” recess is at least five times the same
dimension of the aperture of another or “third” recess and at least one of
these two recesses “has a triangular shape in a plane perpendicular to the
printing face.” The plain language of dependent claim 3, describes the last
of the three recesses, that is, the “second” recess, which has an aperture that
“is present at a distance smaller than 1 µm from the aperture of the first
recess.” Thus, the apertures and recesses in the embodiments encompassed
by these claims are not uniform. An embodiment falling within these claims
is illustrated in Specification FIG. 1. This figure shows a vertical cross-
section of stamp 10 having triangular recesses 11,12,13 with respective
apertures 15,16,17, wherein recesses 11,12 are of the same dimensions and
recess 13 is substantially larger (Specification 10:23-31).
We find Whitesides would have disclosed to one of ordinary skill in
this art an embodiment of a method of etching articles via microcontact
printing resulting in a pattern with micron and submicron features
(Whitesides cols. 1-5). In this method, inter alia, a resist coated article is
contacted with a stamp to transfer to the article a self-assembled monolayer
of a molecular species in a pattern from which the molecular species spreads
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to unstamped areas in a controlled manner to result in regions that are very
closely spaced, as illustrated in FIGs. 1a-d (id. col. 7, l. 4, to col. 9, l. 30; see
also col. 3, l. 64, to col. 4, l. 7, and col. 4, l. 64, to col. 5, l. 15). The pattern
of stamp 20 shown in FIG. 1a is provided by a plurality of indentations 24
and stamping surfaces 26, and “includes closely-spaced features” wherein
“the indentations are closely-spaced and this results in the presence of
closely-spaced protrusions” and stamping surfaces 26 are “a plurality of
elongated ridges” (id., col. 7, ll. 10-18, and col. 8, l.. 66, to col. 9, l. 1). The
indentations 24 and stamping surfaces 26 are shown as having uniform
width and depth. The stamping surfaces 26 remain in contact with the
surface of the article to allow the molecular species to spread to uncontacted
areas of the surface to form an increasingly narrow uncoated gap 38 between
the areas of molecular species (id., col. 7, l. 32, to col. 8, l. 31, and FIGs. 1b-
c). The width between stamp indentations 24 separating protrusions
defining stamping surfaces 26 is 3 microns, and gap 38 between the adjacent
regions of the self-assembled monolayer that have spread toward each other
is 0.1 micron (id., col. 8, ll. 41-49, and FIG. 1d). Patterns formed with this
method are illustrated in FIGs. 1e-f (id. col. 8, l. 51-65). Patterns formed by
applying stamp 20 in several orientations are illustrated in FIGs. 2a-e (col. 9,
ll. 1-30).
We find Whitesides illustrates another embodiment in FIGs. 3a-c in
which stamp 20 is deformed by compressive forces 44,46 applied parallel
and perpendicular, respectively, to the printing surface prior to and/or during
transfer of the species to the surface, resulting in, inter alia, the reduction of
the dimensions of indentations 24 and the spacing between stamping
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surfaces 26 resulting in a smaller gap 38 available for etching (Whitesides
col. 9, l. 32, to col. 10, l. 18, and col. 22, ll. 19-24). The indentations 24 and
stamping surfaces 26 are shown as having uniform width and depth. Results
obtained with stamp deformation are illustrated in FIGs. 4a-d wherein
regions 50 represent etched surfaces and, according to the scale, are
extremely uniform and, in FIGs. 4c-d, narrow (id., col. 10, ll. 19-61).
We find Whitesides illustrates in FIGs. 5a-c a method of applying a
patterned, self-assembled monolayer to a nonplanar surface wherein
stamping surface 26 and accompanying indentations in stamp 20 are shown
as having uniform width and depth (Whitesides col. 10, l. 66, to col. 11, l.
54). Whitesides illustrates in FIGs. 6a-c a “stamping pattern [that] includes
features similar to those found in typical electronic circuitry” in which the
formed features of uniform width reasonably appear to result from a stamp
with stamping surfaces and indentions of uniform width and depth (id. col.
11, l. 55, to col. 12, l. 7).
We find Whitesides discloses that making article 74 includes etching a
pattern into a surface by any known method and using the etched surface as
a template on which to mold an article (Whitesides col. 14, ll. 21-28). The
process illustrated in FIGs. 9a-f forms article 60 (FIG. 9e) as a template to
form, inter alia, article 74 (FIG. 9f) having triangular projections 77 and
separating indentations of uniform width and depth, which “can be a stamp
used for microprinting, as described” (id. col. 14, ll. 28-66). Template 60
can be formed with grooves or pits by anisotropic etching, thus forming at
their deepest portions a ridge or point in article 74 (id. col. 15, ll. 3-19, and
col. 22, ll. 24-28). Article 74 illustrated in cross section in FIG. 9f has
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uniformly spaced triangular projections 77 with ridges forming stamping
surface 81.
We find Whitesides FIG. 10 is an atomic force microscope image of
projections 77 with stamping surface 81 of article 74 in FIG. 9f, showing
triangular projections and separating indentations of uniform width and
depth (Whitesides col. 10, ll. 39-49). Whitesides discloses that stamping
surface 81 can “include features having a lateral dimension of approximately
0.100 micron or less” as well as “small, isolated projections” that
“approximate a point,” all of which can be in “an ordered array” (id. col. 14,
ll. 28-66).
Contrary to the Examiner’s finding, article 74 of FIGs. 9f and 10 is
not stamp 20 of FIGs. 1a-d and 3a-c.
We find Biebuyck would have disclosed in FIG. 2D an elastomeric
stamp for use in a lithographic process which has deformable or elastic layer
24 for conformal contact and a second patterned layer 22 with rectangular
stamping surfaces and indentations with submicron features of non-uniform
width and depth (Biebuyck cols. 1 and 2, and col. 3, l. 28, to col. 4, l. 12).
We find Hawkins would have described in FIG. 6 the last step of a
fabrication process of a three dimensional structure from silicon substrate 12
in which the frontside surface 12A of the silicon substrate with mechanically
protective layer 16 and patterned masking layer 14 is anisotropically etched
to produce recesses 32 and remove layer 16, wherein vias 29 in layer 14 are
of different sizes to produce recesses of varying depths (Hawkins col. 5, ll.
1-23).
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We find Maracas would have disclosed in FIG. 2 a stamp with support
structure 102 and flexible layer 104. The flexible layer 104 includes
stamping face 105 having contact surfaces 108 separated by recessed
surfaces 107 which define depressions 106, the contact surfaces and recesses
of uniform width and depth as seen from the patterned surface 113 formed
by etched plate 112 in FIG. 3 (Maracas col. 3, ll. 5-28, and col. 3, l. 53, to
col. 4, l. 20). “[T]he stamping pattern has micron features and/or sub-micron
features” which can be less than one micrometer (id. col. 3, ll. 21-25).
Maracas discloses that the stamp with uniform features illustrated in FIG. 2
achieves “[u]niform pattern transfer . . . when . . . surfaces 108 makes [sic]
undistorted physical contact with the surface of the substrate” resulting in
the transfer of an “undistorted pattern” (id. col. 3, ll. 29-35).
On this record, we agree with Appellant. The Examiner has not
adduced either scientific explanation or evidence establishing that, prima
facie, one of ordinary skilled in this art would have been led by Whitesides
alone or by this reference combined with Biebuyck, Hawkins, and Maracas
as applied to modify the stamps used in the microprinting method disclosed
by Whitesides to arrive at the claimed stamps encompassed by claims 1 and
3. As Appellant contends, the evidence in Whitesides points to a uniform
pattern of features in the stamping surfaces in order to control the formation
of uniform regions of self-assembled monolayer of molecular species by
contacting the stamp or controlled deformation of the stamp in the disclosed
methods. There is no evidence in Whitesides that the features reflected in
stamping surfaces and indentations of the stamps illustrated in the figures
thereof do or can differ and that a stamp with non-uniform width and depth
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features can be useful in the disclosed processes. In this respect, we
determine one of ordinary skill would interpret the recitation in Whitesides
relied on by the Examiner, “[t]he stamping pattern includes closely-spaced
features . . . defining stamping surface 26” (Whitesides col. 7, ll. 10-18), as
specifically directed to the stamping pattern provided by stamping surfaces
26 on stamp 20. Thus, the word “includes” in context indicates a part of the
stamp as opposed to a class of stamps.2 Indeed, the Examiner states that
Whitesides does “not expressly disclose recesses of different apertures”
(Answer 5). Thus, while there may be “real world applications” that involve
etching non-uniform patterns in a substrate, the Examiner has not established
that one of ordinary skill would have modified Whitesides’ stamps in the
context of the reference process on that basis alone. See, e.g., B.F. Goodrich
Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d
1314, 1318 (Fed. Cir. 1996) (“When obviousness is based on a particular
prior art reference, there must be a showing of a suggestion or motivation to
modify the teachings of that reference. This suggestion or motivation need
not be expressly stated.” (citation omitted)).
The combinations of Whitesides with Biebuyck, Hawkins, and
Maracas as applied also do not support the Examiner’s position. The
Examiner does not explain why one of ordinary skill in this art would have
found in Whitesides’ disclosure a teaching that the microprinting processes
disclosed therein can be practiced with a stamp having non-uniform features
such as the stamp used in the different processes of Biebuyck. Further, one

2 See, e.g., include, The American Heritage Dictionary Of The English
Language 887 (4th ed., Boston, Houghton Mifflin Company, 2000).
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of ordinary skill would not have a different view of Whitesides’ disclosure
simply because of the use of an anisotropic etch therein and in Hawkins, the
latter in fact etching a substrate to form a device which is not used as a
template for molding another article. This person also would not have found
further guidance to modify the stamp of Whitesides, which can have a ridge
or point of approximately 0.100 micron or less, by the disclosure in Maracas
of a feature of less than one micron in a stamp with uniform features. See,
e.g., In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)(“The test for obviousness is not whether . . . the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.”).
Accordingly, in the absence of scientific reasoning or evidence
supporting the Examiner’s conclusion of prima facie obviousness, we
reverse the grounds of rejection of claims 1 through 3 and 5 under 35 U.S.C.
§ 103(a). See e.g., In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453,
1458 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained).
With respect to independent claim 6 and claims 11, 12, and 14
dependent thereon, and the third and fifth grounds of rejection, the Examiner
contends Whitesides discloses “a method of manufacturing a stamp for use
in a lithographic process (Fig 8a[sic, 9a]-9f Col 14 line 28 to Col 15 line 19)
which includes anisotropic etching of a surface” (Answer 5). The Examiner
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contends Whitesides does “not expressly disclose recesses of different
apertures” but concludes “the method of manufacturing a stamp of different
apertures would be to use masking of different apertures” (id.). The
Examiner contends Whitesides does not disclose using an unmolding agent”
and Biebuyck discloses the unmolding agent perfluorinated silane (id. 5-6,
citing Biebuyck FIGs. 2A-2D and col. 4, ll. 7-9). The Examiner concludes
that it would have been obvious to one of ordinary skill in the art “to have a
stamp with varying recesses to micro print features of varying dimensions”
(id. 6).
Appellant contends that Whitesides does not disclose “making a
replica of the patterned mold surface in the first body with a patterned
surface, wherein the replica contains structures of different sizes” as
specified in claim 6 (Br. 5). In this respect, Appellant contends the
Examiner has not presented evidence “that different sized apertures may be
achieved merely by masking” (id.). Appellant contends as Biebuyck only
indicates “the separating agent is applied to master[, that is, mold,] substrate
20, this teaching cannot correspond to the limitations of both” claim 11,
wherein the unmolding agent is applied to the surface of the mold, and claim
12, wherein the unmolding agent is applied to the surface of the first body in
which the mold surface is replicated (id. 6). Appellant extends these
arguments to claim 14 (id. 8).
The Examiner responds the rejection of these claims “relies on the fact
that different sized apertures could be obtained by using mask with different
apertures” and “does not require larger depth for larger aperture” (Answer
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8).3 With respect to claims 11 and 12, the Examiner contends “[s]ince
unmolding (separating) agent helps to separate the mold from the first body
it could obviously [sic] applied to any of the separating surfaces” (id.).
Appellant replies “while [claim 6] may not require ‘larger depth for larger
aperture,’ it does require making a replica having ‘structures of different
sizes,’ to which the Examiner has not presented any corresponding
evidence” (Reply Br. 5). Appellant contends, with respect to claims 11 and
12, Biebuyck applies the separating agent only to master or mold substrate
20 and thus, ‘this teaching cannot correspond to the limitations of both
claims 11 and 12” (id. 6).
The issues are whether the Examiner erred in concluding it would
have been prima facie obvious to one of ordinary skill in the art to arrive at
the claimed method encompassed by claims 6, 11, 12, and 14 from the
combined teachings of Whitesides and Biebuyck.4
The plain language of independent claim 6 encompasses a method of
manufacturing a stamp comprising at least the steps of anisotropically
etching a mold to form a pattern therein having first and second recesses
with different apertures, disposing an unmolded agent between the mold and

3 The Examiner’s reliance on Hawkins with respect to these grounds of
rejection is misplaced as this reference is not included in the statement of
these grounds of rejections. Thus, we will not consider Hawkins here. See
In re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n.3 (CCPA
1970); cf. Ex parte Raske, 28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int.
1993).
4 Appellant does not specifically contest the combination of Whitesides,
Biebuyck, and Choquette to claim 14 (see above p. 14), and accordingly, we
do not further consider claim 14 and the applied combination.
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a first body, and making a replica of the patterned mold surface in the first
body with a patterned surface, wherein the replica contains structures of
different sizes.” We interpret this language to encompass any difference in
the size of the structures of the replica. The plain language of dependent
claim 11 specifies the unmolding agent is applied to the surface of the mold,
and of dependent claim 12 specifies the unmolding agent is applied to the
surface of the first body.
We have considered Whitesides’ disclosure of the process of forming
stamp 74 by anisotropically etching mold 60 and forming the stamp thereon
as illustrated in FIGs. 9a-f, and of an atomic force microscope image of
stamp 74 in FIG. 10 (see above pp. 9-10). We find here that Whitesides
discloses the “pattern etched into article 60 . . . corresponds approximately to
a pattern of gaps between closely-spaced regions of self-assembled
monolayer 27 (FIG. 9a)” (Whitesides col. 14, ll. 50-56, and col. 15,
ll. 3-19). Whitesides discloses a hardenable fluid is applied to surface 62 of
article or mold 60 is hardened into article or stamp 74 (id. col. 14, ll. 56-66).
The image in FIG. 10 shows that the projections 77 on stamping surface 81
of stamp 71 are not precisely of equal dimensions.
We find Biebuyck would have disclosed the surface of master or mold
substrate prepared by conventional lithography methods is treated with
separating agent perfluorinated silane to which is applied a layer of, for
example, a pre-polymer of poly(dimethylsiloxane) which is cured to form
the features of the stamp (Biebuyck, e.g., col. 2, ll. 3-14, col. 3, ll. 44-47, col.
4, ll. 2-12, FIGS, 1A-E and 2A-D).
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We find in the combined teachings of Whitesides and Biebuyck
evidence supporting the Examiner’s position. We determine the stamp or
replica 74 prepared by the methods of Whitesides can have “structures of
different sizes” as required by claim 6 as seen from the image in FIG. 10.
We further determine that Biebuyck shows the application of the
perfluorinated silane to the surface of the mold which satisfies the limitation
of claim 11. We are of the opinion that one of ordinary skill in this art
would have applied the unmolding agent to the surface of moldable material
applied to the surface of the mold as this step constitutes the only other
option for inserting the unmolding agent between the mold and the moldable
material.
Therefore, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Whitesides and Biebuyck and of Whitesides,
Biebuyck, and Choquette with Appellant’s countervailing evidence of and
argument for nonobviousness, and conclude that the claimed invention
encompassed by appealed claims 6 and 11 through 14 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
With respect to claim 7, dependent on claim 6, and the fourth ground
of rejection, the Examiner contends Whitesides does not disclose a replica is
made of the patterned surface of the first body or stamp in a second body as
claimed (Answer 6). The Examiner contends Xia shows at “page 562-4.1A”
the “method of making [sic] replica of a rigid mold” (id.). The Examiner
concludes it would have been obvious to make “a replica of stamp body of
claim 6 . . . so as to be able to pattern with the same polarity as the original
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stamp” (id.). Appellant contends “none of the replica molding methods
shown in [Xia] Fig. 4.1 show the use of a second body, as claimed” (Br. 6).
The Examiner responds “[s]ince replica could be made from first body to
second body or even further the method of making replica reads on the
claim” (Answer 9). Appellant replies the Examiner has not identified
correspondence between evidence in the applied references and the
limitations of claim 7 and thus, relies on hindsight (Reply Br. 6-7).
The plain language of dependent claim 7 specifies the patterned
surface of the first body is replicated in a second body.
Xia shows in the procedure in steps “A) REM” illustrated in FIG. 17
at page 562, the same three steps illustrated in Whitesides FIGs. 9d-f.
We agree with Appellant that the applied references do not show the
step specified in claim 7. Indeed, there is no teaching in either Whitesides or
Xia which would have suggested to one of ordinary skill in this art that the
stamp or first body replicating the pattern of the mold would in turn be used
as a mold to replicate another stamp or second body. On this record, we
further agree with Appellant the Examiner employed hindsight in reaching
the conclusion of obviousness. See, e.g., Rouffet, 149 F.3d at 1358, 47
USPQ2d at 1458.
Accordingly, in the absence of scientific reasoning or evidence
supporting the Examiner’s conclusion of prima facie obviousness, we
reverse the grounds of rejection of claim 7 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed-in-part.

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Appeal 2006-2571
Application 09/759,179
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2005).
AFFIRMED-IN-PART

clj

Philips Electronics North America Corporation
Intellectual Property & Standards
1109 Mckay Drive, M/S-41SJ
San Jose, CA 95131
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