Ex Parte D et al

Board of Patent Appeals and Interferences

May 22, 2009

10702909 (B.P.A.I. May. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN J. D'URSO,
JAYNAL A. MOLLA, and
KELLY W. KYLER
____________

Appeal 2009-002824
Application 10/702,909
Technology Center 1700
____________

Decided:1 May 22, 2009
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002824
Application 10/702,909

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 17-22, 25-28, 38-42, and 44-52. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
I. STATEMENT OF THE CASE
The invention relates to a method for forming a magnetoelectronics
device that includes depositing a nickel-iron (NiFe) metal layer by
electroless plating using a deposition solution which is substantially free of
alkali metal ions. (Spec. ¶¶ 1-2; claim 17). Claims 17, 27, and 28 are
illustrative of the subject matter on appeal:
17. A method for fabricating a flux concentrating system for use in a
magnetoelectronics device, the method comprising the steps of:

providing a work piece;

forming an insulating material layer overlying said work piece;

removing a portion of said insulating material to form a trench in said
insulating layer;

depositing a barrier layer within said trench; and

depositing a NiFe cladding layer overlying said barrier layer using
electroless deposition utilizing an electroless deposition solution formed
from a nickel ion source, a ferrous iron ion source, a complexing agent, a
reducing agent, and a pH adjusting agent, wherein the electroless deposition
solution is substantially free from alkali metal ions,

wherein, after the step of depositing a NiFe cladding layer, said
insulating material layer proximate to said trench has a concentration of
alkali metal ions less than about 1 x 1011 atoms/cm2.

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27. The method for fabricating a flux concentrating system for use in
a magnetoelectronics device of claim 17, wherein the step of depositing a
NiFe cladding layer comprises the step of depositing said NiFe cladding
layer to a thickness in the range of about 50 to about 400 angstroms.

28. The method for fabricating a flux concentrating system for use in
a magnetoelectronics device of claim 17, wherein the step of depositing a
NiFe cladding layer comprises the step of depositing said NiFe cladding
layer having a composition of about 70 to about 90 atomic weight percent of
nickel, about 10 to about 30 atomic weight percent of ferrous iron and about
1 to about 15 atomic weight percent of at least one of boron and
phosphorous.

Appellants request review of the sole rejection maintained by the
Examiner, namely the rejection of claims 17-22, 25-28, 38-42, and 44-52
under 35 U.S.C. § 103(a) as obvious over U.S. Patent No. 6,413,788 B1,
issued July 2, 2002, to Tuttle (“Tuttle”), in view of U.S. Patent No.
6,426,289 B1, issued July 30, 2002, to Farrar (“Farrar”), U.S. Patent No.
3,496,014, issued February 17, 1970, to Koretzky et al. (“Koretzky”), and
U.S. Patent No. 5,203,911, issued April 20, 1993, to Sricharoenchaikit et al.
(“Sricharoenchaikit”).
II. Claims 17-22 and 25-26
Initially, Appellants present arguments directed towards claims 17-22
and 25-26 as a group. Accordingly, we select independent claim 17 to
represent this group. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple
claims subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of claims that
are argued together to decide the appeal with respect to the group of claims
as to the ground of rejection on the basis of the selected claim alone.”).
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Application 10/702,909

A. ISSUE ON APPEAL
Appellants’ contentions raise the following issue: did the Examiner
reversibly err in concluding that it would have been obvious to one of
ordinary skill in the art to deposit a NiFe layer over a barrier layer
specifically using electroless plating deposition, and, in doing so, using an
electroless plating deposition solution that is substantially free of alkali
metal ions as evidenced by the teachings of Tuttle, Farrar, Koretzky and
Sricharoenchaikit? (See Br. 10-12 and 14-15).
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Tuttle teaches a number of embodiments of forming a magnetic
memory device including, among other layers, a magnetic material layer 54
of, for instance, permalloy (NiFe) deposited over a barrier layer 52. In
several embodiments, Tuttle discloses that the layers may be deposited “by
any suitable method,” and states that, in the illustrated embodiment or as a
preference, the layers are deposited by physical vapor deposition (PVD).
(Tuttle, col. 1, ll. 6-9; col. 6, ll. 26-29; col. 6, l. 67 to col. 7, l. 6; see, e.g.,
Fig. 5A showing reference numeral 54).
2. Farrar teaches a variety of benefits to using electroless plating
to deposit a metal layer 13, which includes, for example, low processing
costs and high quality metal deposits. These benefits are not specific to the
deposition of any particular metal. (Farrar, col. 4, ll. 9-20).
3. Farrar teaches an embodiment in which the metal layer 13 is
copper doped with zirconium. (Farrar, col. 4, ll. 27-28).
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4. Koretzky teaches controlling the nickel/iron ratio, and thus the
magnetic properties, of NiFe metal layers deposited by electroless plating by
altering the complexing agent used in the plating solution. (Koretzky, col. 1,
ll. 15-18; col. 2, ll. 50-55).
5. Koretzky teaches that a number of alternative complexing
agents may be used other than the conventional sodium-potassium tartrate
(which would add alkali metal ions to the plating solution), including
ammonia, glycine, malic acid and lactic acid. (Koretzky, col. 1, ll. 64-66,
col. 2, l. 71-col. 3, l. 17, col. 4, ll. 21 and 26).
6. Sricharoenchaikit teaches that, for integrated circuit
manufacturing, alkali metal ions diffuse readily into a silicon substrate, and
thus it is preferable to use an electroless plating solution that is essentially
free of such ions. (Sricharoenchaikit, col. 4, ll. 42-47).
C. PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103).
A reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art, including non-preferred
embodiments. Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir.
1989). Disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure or non-preferred embodiments.
In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. “[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” Id. at 417.
D. ANALYSIS
For the reasons well stated by the Examiner in her Answer, we agree
with the Examiner that Appellants’ contentions ignore the broad teachings of
the references. We also find that the Appellants fail to address the
Examiner’s particularly stated findings of fact, analysis, and conclusions of
law presented in the rejection.
As noted by the Examiner, Tuttle broadly teaches that the NiFe layer
may be deposited over a barrier layer “by any suitable method.” (FF 1).
The teachings of Tuttle are not limited to forming the layer by physical
vapor deposition (PVD). (FF 1).
Similarly the teachings of Farrar are not limited to depositing copper.
(FF 2). A copper-containing layer is but one embodiment in a broader
teaching (FF 2-3). The Examiner clearly relies on the broader teachings of
Farrar directed towards the benefits of using electroless plating for
depositing metals, without referencing any particular metal. (Ans. 6; FF 2).
The Examiner also relies on the specific teaching of depositing NiFe
by electroless plating taught by Koretzky. (FF 4). The teachings of Farrar
and Koretzky together provide sufficient evidence that one of ordinary skill
in the art would have used electroless plating as the “suitable method” to
deposit the NiFe layer taught by Tuttle.
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Similarly, the Examiner relies on Sricharoenchaikit as evidence that
one of ordinary skill in the art would have known that alkali metal ions
diffuse readily into a silicon substrate, and thus it is preferable to use an
electroless plating solution that is essentially free of such ions. (Ans. 7; FF
6). Further, Koretzky provides specific examples of NiFe layers deposited
by electroless plating in which alkali metal ions are not included in the
deposition solution. (FF 5). Accordingly, in electrolessly plating a NiFe
layer, as taught by Farrar and Koretzky, onto the structure taught by Tuttle,
it would have been obvious to one of ordinary skill in the art to avoid using
alkali metal ions in the solution.
Appellants have not shown that the Examiner reversibly erred in
determining that it would have been obvious to one of ordinary skill in the
art to deposit a NiFe layer over a barrier layer specifically using electroless
plating deposition, and, in doing so, using an electroless plating deposition
solution that is substantially free of alkali metal ions based on the teachings
of Tuttle, Farrar, Koretzky, and Sricharoenchaikit.
III. Claims 38-42, 44, and 47-50
With respect to these claims, Appellants state that “the discussion
above regarding the combination of Tuttle, Farrar, Koretzky, and
Sricharoenchaikit failing to teach or suggest similar elements recited in
claim 17 is equally applicable to elements recited in claim claim [sic] 38
(and dependent claims 39-42, 44, and 46-52).” (Br. 16). Accordingly,
Appellants present no separate arguments with respect to this group of
claims over those presented with respect to claim 17. Accordingly,
Appellants have not shown that the Examiner reversibly erred in rejecting
this group of claims.
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IV. Claims 27 and 45
Appellants present arguments with respect to claims 27 and 45 as
a group. Accordingly, we select claim 27 to represent this group. See
37 C.F.R. § 41.37(c)(1)(vii).
A. ISSUE ON APPEAL
Appellants’ contentions raise the following issue: did the Examiner
reversibly err in determining that it would have been obvious to one of
ordinary skill in the art to deposit the NiFe layer taught by Tuttle to a
thickness of 50 to 400 angstroms using electroless plating, as recited in
claim 27? (Br. 17).
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
7. Tuttle teaches a NiFe film deposited onto a barrier layer to a
thickness of between 10 and 200 angstroms. (Tuttle, col. 6, ll. 24-25).
8. Sricharoenchaikit teaches that temperature and catalyst
selection can be used to control the thickness of nickel metal films and
nickel alloy films deposited by electroless plating, which can be deposited to
thickness of 50 to 200 angstroms. (Sricharoenchaikit, col. 5, ll. 1-8; col. 7,
ll. 4-10).
9. Sricharoenchaikit also teaches several specific examples of
nickel films deposited by electroless plating to thicknesses within the
claimed range. (Sricharoenchaikit, col. 8, ll. 42-43 and 59-69).
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C. PRINCIPLES OF LAW
In addition to the Principles of Law presented above with respect to
claim 17, the following principles are also relevant to the present issue
regarding claim 27.
The Federal Circuit has recognized that a “claimed invention is
rendered prima facie obvious by the teachings of a prior art reference that
discloses a range that touches the range recited in the claim.” In re Geisler,
116 F.3d 1465, 1469 (Fed. Cir. 1997)(citing In re Malagari, 499 F.2d 1297,
1303 (CCPA 1974)). The burden then shifts to the Appellants to “establish
‘the existence of unexpected properties in the range claimed’” or to “show
‘that the art in any material respect taught away’ from the claimed
invention.” Id.
D. ANALYSIS
The Examiner cogently explains how Tuttle teaches depositing a NiFe
film to a thickness that overlaps the claimed range (FF 7), which renders the
claimed range prima facie obvious. (Ans. 19). The Examiner also explains
that Sricharoenchaikit teaches that electroless plating can be used to deposit
a nickel alloy film within the range taught by Tuttle. (Ans. 19; FF 8-9).
Sricharoenchaikit, therefore, provides evidence that it was within the
capabilities of those of ordinary skill in the art to electrolessly deposit layers
within the thickness range sought by Tuttle. As such, the Examiner has
provided sufficient evidence establishing that depositing a NiFe layer to a
thickness of between 50 and 400 angstroms would have been no more than
the routine use of electroless plating to deposit a NiFe film to a thickness
taught to be desirable by Tuttle thus shifting the burden to Appellants so
show that the claimed range is critical such that it provides unexpected
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results. Appellants do not rely upon any evidence of unexpected results.
Accordingly, Appellants have not established that the Examiner reversibly
erred in determining that it would have been obvious to one of ordinary skill
in the art to deposit the NiFe layer taught by Tuttle to a thickness of 50 to
400 angstroms using electroless plating, as recited in claim 27.
V. Claims 28, 46, and 51
Appellants present arguments with respect to claims 28, 46, and 51
as a group. Accordingly, we select claim 28 to represent this group. See
37 C.F.R. § 41.37(c)(1)(vii).
A. ISSUE ON APPEAL
Appellants’ contentions raise the following issue: did the Examiner
reversibly err in determining that it would have been obvious to one of
ordinary skill in the art to deposit a NiFe layer taught by Tuttle having about
10 to about 30 atomic weight percent ferrous iron, as recited in claim 28?
(Br. 18-19).
B. FACTUAL FINDINGS
The following additional Finding of Fact is relevant to deciding the
above identified issue on appeal:
10. Koretzky states that the deposited NiFe films will generally
have a composition with 9 to 37% Fe, or a nickel/iron ratio of between 6/4 to
about 10/1. (Koretzky, col. 2, ll. 56-60).
C. PRINCIPLES OF LAW
In addition to the Principles of Law presented above with respect to
claim 17, the following principles are also relevant to the present issue
regarding claim 28.
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“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch,
617 F.2d 272, 276 (CCPA 1980); see also In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”).
A factual finding not shown by Appellants to be erroneous may be
accepted as fact. In re Kunzmann, 326 F.2d 424, 426 n. 3 (CCPA 1964).
D. ANALYSIS
The Examiner’s Answer clearly states that the Examiner is relying on
the broad teaching in Koretzky of an overlapping range of iron content in a
NiFe layer (FF 10), which would render the claimed range prima facie
obvious. (Ans. 10 and 20).
Appellants attack the Examiner’s reliance on the broad teachings of
Koretzky by noting that the broad teaching is merely a general summary of
the results of Koretzky’s method. According to Appellants, Koretzky’s
examples do not support the Examiner’s finding of overlapping ranges. This
is because the examples indicate that deposits with iron content less than
30% (Examples 1, 6, and 7) use solutions containing alkali metals in
contradiction to the requirements of “substantially free from alkali metal
ions” limitation of the claims, and the only alkali free examples (Examples 8
and 9) deposit a layer with 33.4% iron, a concentration outside the claimed
range. (Br. 18-19).
We find Appellants’ reliance on the Examples unpersuasive since
Koretzky broadly teaches that other complexing agents, without the use of
alkali metals, can be used to finely control the iron content of a NiFe layer
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(FF 4-5), a fact which the Examiner uses to show that the iron content is a
result effective variable which can be optimized by routine experimentation.
(Ans. 21). Appellants are in a better position to provide the type of
experimental evidence that would show that the claimed concentrations
would have been outside the capabilities of those of ordinary skill in the art.
Appellants have not presented such evidence. Therefore, we accept the
Examiner’s finding as fact and agree that the evidence supports a finding
that one of ordinary skill in the art would vary the iron concentration via
routine experimentation to arrive at an optimum amount to achieve the
desired properties of the NiFe film taught by Tuttle.
Accordingly, Appellants have not established that the Examiner
reversibly erred in determining that it would have been obvious to one of
ordinary skill in the art to deposit a NiFe layer taught by Tuttle having about
10 to about 30 atomic weight percent ferrous iron, as recited in claim 28.
VI. CONCLUSION
For the reasons stated above and for the reasons cogently expressed
by the Examiner in the Answer, we sustain the Examiner’s rejection of
claims 17-22, 25-28, 38-42, and 44-52 under 35 U.S.C. § 103(a) as obvious
over Tuttle, in view of Farrar, Koretzky, and Sricharoenchaikit.
VII. DECISION
We affirm the Examiner’s decision.
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VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v)(2008).

AFFIRMED

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