Ex Parte Chang

Board of Patent Appeals and Interferences

Dec 20, 2010

11324588 (B.P.A.I. Dec. 20, 2010)

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.
11/324,588 01/03/2006 Ching-Yu Chang 2005-0545 / 24061.713 7593
42717 7590 12/20/2010
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
WALKE, AMANDA C
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
12/20/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHING-YU CHANG
____________

Appeal 2010-000155
Application 11/324,588
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-13. We have jurisdiction under 35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000155
Application 11/324,588

We REVERSE.
Appellant claims a “coating material disposed over a photosensitive
layer” (claims 1, 11), the coating material comprising “an acid that
substantially neutralizes a base quencher diffusing into the coating material
from the photosensitive layer” (claim 1) or comprising “a chelate compound
that bonds a quencher diffusing into the coating material from the
photosensitive layer” (claim 11).
Further details regarding the claim subject matter are set forth in
representative claims 1 and 11, the sole independent claims on appeal, which
read as follows:
1. A coating material disposed over a photosensitive layer and for
use during an immersion lithography process, the coating material
comprising:

an acid that substantially neutralizes a base quencher diffusing into the
coating material from the photosensitive layer; and

a polymer that is substantially a carrier of the acid and is substantially
insoluble to an immersion fluid used in the immersion lithography process.

11. A coating material disposed over a photosensitive layer and for
use during an immersion lithography process, the coating material
comprising:

a chelate compound that bonds a quencher diffusing into the coating
material from the photosensitive layer;

a polymer that is substantially insoluble to an immersion fluid used in
the immersion lithography process.

Under 35 U.S.C. § 103(a), the Examiner rejects claims 1-3, 5-9, and
11-13 as unpatentable over Endo (US 2006/0154170 A1, pub. July 2006)
2
Appeal 2010-000155
Application 11/324,588

and respectively rejects claims 4 and 10 as unpatentable over Endo in
combination with Harada (US 2005/0106499 A1, pub. May 2005) or
Houlihan (US 2005/0202351 A1, pub. Sept. 2005).
All of the § 103 rejections on appeal are based on the Examiner’s
position that the independent claims are satisfied by Endo’s disclosure of a
material for use in immersion lithography which comprises a polymer
containing the claimed acid or chelate compound (Ans. 3-4). In this regard,
the Examiner states that “the instant claims are drawn to a coating material”
and that “[t]he intended use of applying the coating over a photosens[i]tive
layer in an immersion lithography process is not given patentable weight”
(id. at 5). Therefore, the Examiner interprets claims 1 and 11 as defining the
recited coating material per se rather than the coating material in
combination with the recited photosensitive layer.
In opposition to the Examiner’s claim interpretation, Appellant argues
that “[i]ndependent claim 1 provides a photosensitive layer and a coating
material disposed over the photosensitive layer” (App. Br. 10) and
correspondingly that “[i]ndependent claim 11 provides a photosensitive
layer and a coating material disposed over the photosensitive” (id. at 13).
Appellant’s argument is persuasive.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification, and claim words are given
their plain meaning. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
Appellant’s interpretation of the appealed claims is unquestionably
reasonable and consistent with the Specification. Further, the wording of
these claims, when given its plain meaning, would convey to those skilled in
this art that the claims define the combination of a coating material and a
3
Appeal 2010-000155
Application 11/324,588

photosensitive layer. This is because claims 1 and 11 initially recite “a
photosensitive layer” but subsequently refer to this layer with positive
recitation, namely, “the photosensitive layer” thereby connoting the presence
of a claim feature. In addition, to the extent the claim phrase “disposed over
a photosensitive layer” (claims 1, 11) is considered to be a preamble, this
phrase is necessary to give life, meaning, and vitality to the claims and
accordingly should be construed as a limitation of the claims. Pitney Bowes,
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
For these reasons, there is convincing merit in Appellant’s argument
that the appealed claims are directed to the combination of a coating material
and a photosensitive layer. On the other hand, the Examiner has provided no
reasoned explanation for the statement that “the instant claims are drawn to a
coating material.” Accordingly, we regard this unsupported statement as
conclusory and unpersuasive.
Because the Examiner’s § 103 rejections do not address the claimed
combination of a coating material and a photosensitive layer, these rejections
cannot be sustained.
The decision of the Examiner is reversed.

REVERSED

Ssl

HAYNES AND BOONE, LLP
IP SECTION
2323 VICTORY AVENUE
SUITE 700
DALLAS, TX 75219
4