Ex parte DAO

Board of Patent Appeals and Interferences

Aug 22, 1997

07952061 (B.P.A.I. Aug. 22, 1997)

Application for patent filed September 25, 1992.1
1
Paper No. 18
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte GIANG T. DAO
______________
Appeal No. 95-3017
Application 07/952,0611
_______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and BARRETT, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner’s
final rejection of claims 1 to 12, and 15 to 31.
Pages 4 and 5 of the final rejection indicate that claims
13 and 14 are objected to as being dependent upon rejected base
claims but would be allowable if rewritten in independent form
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Application 07/952,061
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including all the limitations of the base claims and any
intervening claims.
Representative claim 1 is reproduced below:
1. A reticle blank for use in fabricating a reticle to
pattern a radiation sensitive layer in a lithographic printer,
said reticle blank having a region comprising a pattern of
features, said features having a size that is below the
resolution of said printer, wherein said region transmits a
reduced portion of radiation incident thereon, said reduced
portion of radiation being relatively uniform underneath said
pattern.
The following references are relied on by the examiner:
Smith et al. (Smith) 4,890,309 Dec. 26, 1989
Pease et al. (Pease) 5,135,609 Aug. 4, 1992
Claims 1 to 6, 9 to 12, 15 to 25 and 28 to 31 stand rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite. In
a new rejection under this statutory basis in the answer, the
examiner included claims 7, 8, 22, 23, and 25 in this rejection.
As such, the claims on appeal under this statutory basis remain
claims 1 to 12, 15 to 25 and 28 to 31.
Claims 1 to 6 stand rejected under 35 U.S.C. § 102(a) as
being anticipated by Pease.
Claims 7 to 12 and 19 to 31 stand rejected under 35 U.S.C.
§ 103 as being obvious over the collective teachings of Pease in
view of Smith. The examiner incorrectly includes dependent claim
25 in this grouping, which claim depends directly from claim 13
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which, as indicated earlier, is an objected to claim. As such,
the claims at issue under 35 U.S.C. § 103 remain claims 7 to 12,
19 to 24 and 26 to 31. There is no outstanding rejection under
any statutory basis as to the objected to claims 13 and 14.
Rather than repeat the positions of the appellant and the
examiner, reference is made to the briefs and the answers for the
respective details thereof.
OPINION
Turning first to the rejection of claims 1 to 12, 15 to 25
and 28 to 31 under the second paragraph of 35 U.S.C. § 112, it is
to be noted that to comply with the requirements of the cited
paragraph, a claim must set out and circumscribe a particular
area with a reasonable degree of precision and particularity when
read in light of the disclosure and the teachings of the prior
art as it would be by the artisan. Note In re Johnson, 558 F.2d
1008, 1016, 194 USPQ 187, 194 (CCPA 1977); In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
We have reviewed and considered the examiner’s reasons in
support of the rejection, but are not convinced that the cited
claims fail to comply with the second paragraph of 35 U.S.C.
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Application 07/952,061
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§ 112. At the outset, we note that the breadth of the claims is
not equated with indefiniteness of the claims. See In re Miller,
441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971). It is
perfectly permissible for appellant to claim his invention in
terms as broad as his application disclosure will support.
It appears that the examiner’s basic position is that the
word “relatively” and the word “approximately” as appropriate
modifiers render indefinite the respective phrases questioned
by the examiner. The respective phrases in their entirety as
questioned by the examiner are, in our view, set forth with a
reasonable degree of precision and particularly when read in
light of the disclosure and the teachings of the prior art as
they would be by an artisan. Each of the questioned phrases
mirrors the manner in which the respective ranges or relative
uniformity are set forth in the specification as filed. We do
not perceive that the phrases as a whole would deceive the
artisan as to discerning what is or what is not encompassed by
the claimed invention. The art as a whole does not, in our view,
exact the preciseness of a mathematical definition of uniformity
as urged by the examiner. Our understanding of the art is such
that the art tolerates some limited sense of relativeness of
ranges or terms because of manufacturing tolerances anyway. The
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respective ranges seem to us to be well known in the art from our
assessment of the prior art relied upon by the examiner, as well
as appellants’ assessment of the prior art in the early pages
of the specification of the disclosed invention. Therefore, we
reverse the outstanding rejection of certain claims under
35 U.S.C. 112, second paragraph.
On the other hand, we do sustain the rejection of claims
1 to 6 under 35 U.S.C. 102 as being anticipated by Pease essen-
tially for the reasons set forth by the examiner. The examiner’s
reference to column 3, lines 43 to 53 and column 4, line 64 to
column 5, line 31 is significant. We also extend this column 5
reference to the end of the sub-topic discussion at line 48.
The claimed blank/reticle in independent claim 1 is said at
column 2, lines 3 to 5 of Pease to directly correspond to the
term “mask” in Pease. Indeed, the non-customized masks are
generic or master masks in Pease. The entire background of the
invention at columns 1 and 2 of Pease corresponds to the use of
such reticle being used by lithographic printers for producing a
pattern on a radiation sensitive layer of an integrated circuit
structure. Claim 1 requires a “region” which comprises a
“pattern of features”, which as disclosed, may be more specifi-
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cally recited as a region 22 such as in Figure 2 comprising a
pattern of subresolution features. The pattern is made up in
the exemplary Figure 2 of subregions 22a and 22b. To the extent
claimed, it is clear to us from the above referenced portions of
columns 3 to 5 of Pease as relied upon by the examiner that it
is the disclosed trenches 118 in representative Figure 1 of this
reference which correspond to the claimed pattern of features
that are below the resolution of the printer set forth in claim
1 on appeal. This pattern is set forth in the generic/master
mask 11 at the bottom of Figure 2. This region is also pertinent
to the subject matter of dependent claim 2 on appeal.
Although it is clearly the intent of Pease in the above
noted referenced portions of this reference not to image the
trenches on the underlying die, it is revealed at column 5,
lines 27 to 31 that some light, “a small amount of light” may
be projected on the region of the die corresponding to the
positions of the trenches. This teaching clearly indicates
to the artisan that there is some attenuation of the light
corresponding to the trench location in such a manner as to
correspond to the reduced portion of radiation incidence upon
the die to the extent recited in claim 1 on appeal. As such,
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we conclude that to the extent broadly cited at the end of claim
1, the reduced portion of radiation corresponding to the small
amount of light reaching the die would have been “relatively
uniform” underneath the pattern of the trenches. Note again the
depiction of the generic/master mask 110 at the bottom of Figure
2.
In view of these teachings and findings, we also conclude
that appellant’s arguments in the brief and reply brief with
respect to this rejection of claims 1 to 6 under 35 U.S.C.
§ 102 are misplaced. Although we agree with appellant’s basic
premise that absolutely no part or purpose of Pease is such to
reproduce any transmission of light under the tiles (that is
tiles 112 and 114 in representative Figure 1 of Pease also
depicted at the bottom of Figure 2 in generic/master mask 110),
clearly there is a relatively uniform portion of radiation
transmitted through the subresolution trenches by the small
amount of light that may be imaged on the die in accordance with
the above noted portion of column 5. Even in a normal operation
sense of Pease, when there is no light at all transmitted through
the trenches, the trench position would still be indicated by
contrast in accordance with the showing at the bottom of Figure 2
for the generic/master mask 110 shown there. As such, there
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would be a total reduction of radiation incident there which
still would be consistent with the breadth of the language of “a
reduced portion of radiation incident thereon” of claim 1 on
appeal. It would therefore still be relatively uniform since it
would be totally uniform underneath the pattern.
Since there are no arguments presented in the brief and
reply brief as to the features of dependent claims 2 through 6 on
appeal, they fall with our consideration of independent claim 1
under 35 U.S.C. § 102.
Turning to the rejection of claims 7 to 12 and 19 to 24 and
26 to 31 under 35 U.S.C. § 103 in light of the collective
teachings of Pease in view of Smith, we affirm in part this
rejection as to certain claims as set forth in accordance with
our analysis to follow.
Initially, we conclude that Pease is properly combinable
with Smith under 35 U.S.C. § 103 at least for the reasons set
forth by the examiner at the sixth page of the answer, that
reason essentially being that Smith teaches the desirability
of reducing edge blurring that results from the effects of
diffraction, an obvious enhancement to the teachings in Pease.
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This feature argued by the examiner is a stated feature in the
abstract of the invention of Smith as well as one developed at
columns 1 and 2 of Smith.
There are, however, more compelling reasons for the combin-
ability of the references maintained within both references in a
complementary manner. The alternative embodiments heading at
the bottom of column 7 of Pease indicates its appropriateness to
masking utilizing masks appropriate to X-ray methodologies as
well as to the optical-light methodologies which are the basis
of the principal disclosure in Pease. In a complementary sense,
Smith’s teachings focus upon X-ray lithographic replication
approaches in most of the figures and columns. However, Figure
7 and the discussion beginning at column 5 to the end of this
patent focus upon optical and ultraviolet radiation approaches.
Note the discussion beginning at column 5, line 56 of Smith.
Thus, it is clear to us that the artisan would have considered
the teachings of Smith as applicable as an obvious enhancement
to those of Pease and vice-versa.
This combinability was necessary by the examiner to reach
the phase-shifting feature at the end of independent claim 7 on
appeal. Clearly, both embodiments of Smith teach that phase-
shifting is a normal part of the lithographic mask fabrication
Appeal No. 95-3017
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art in general. It is well taken that it is a given in the art
that according to appellant’s consideration of the prior art that
180E phase-shift is the desirable norm in the art to achieve
the type of non-blurring registration for the desired features.
The optical version in Smith’s figure 7 clearly shows that this
relative phase-shifting occurs by different thicknesses of the
underlying transparent quartz substrate, which is the same
approach taken by appellant in the disclosed invention as well
as the same approach recognized by appellant himself in his
own discussion of the prior art in the earlier pages of the
specification. Thus, as to this feature, it recites nothing
that the art does not recognize anyway.
The claimed second region of claim 7 corresponds to the
substance of claim 1. Therefore, it is met to the same extent
we have considered claim 1 to have been anticipated by Pease.
Moreover, the claimed first region of claim 7 would therefore
by inference correspond to the transparent underlying substrate
portion, which feature is taught to be common in both references.
As noted earlier with respect to our discussion of claim 2, the
subject matter of claim 8 is also met for the same reason.
Turning to the feature recited in claims 9 and 10, the
broadly defined “approximate" range in each of these claims is
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taught at least by the small amount of light referenced in the
above-identified portion of Pease at column 5, lines 26 to 31.
Note the 10 percent transmission in Smith at column 3, lines
35 to 38, the general reference in the summary of the invention
in Smith at column 2, lines 5 to 8 of a relatively low percentage
and a similar low percentage mentioned at column 5, line 69 to
column 6, line 3. Additionally, this percentage recited in these
claims is encompassed by the admitted prior art as mentioned at
the bottom of page 2 of the specification as filed.
As to the identical recitation in dependent claims 11 and
12 of the broadly defined “approximate” size of the pattern
features, note again the teachings with respect to them at
columns 3 to 5 as discussed with respect to the dimensions of
the trenches in Pease.
Appellant’s arguments with respect to the rejection under
Section 103 overemphasize Pease’s teachings, fail to consider all
of them and only passingly discuss those of Smith, while losing
sight of what he has admitted is in the art anyway. However, we
part company with the examiner’s views as to claims 19 to 31,
essentially agreeing with appellant’s arguments, with
respect to the features in these claims. Both the trenches and
tile regions of Pease are not reasonably taught or suggested to
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be subresolution even though the trench region may be a
subresolution transmitting region. Smith’s teachings and
suggestions do not appear to us to cure this defect of Pease.
Therefore, we reverse the rejection of claims 19 to 31 under
35 U.S.C. § 103.
New Issues Under 37 CFR § 1.196(b) and (d)
Claims 15 to 18 are rejected under 35 U.S.C. § 103 in light
of the collective teachings of Pease and Smith. As to these
claims, there is a feature commonly recited in these claims of
the phase-shifting capability as a function of the thickness of
the underlying base region which has been discussed earlier. We
note the specification page 2 admitted prior art discussion with
respect to this feature, the brief summary of the invention at
page 2 of the brief discussing the prior art, the specific phase
shifting capability of the optical embodiment in Smith with
respect to Figure 7 beginning at column 5, line 56 to the end of
Smith’s patent.
In light of these findings and in view of the provisions
of 37 CFR § 1.196(d), we make a recommendation to the primary
examiner that objected to/allowed claims 13 and 14 be rejected
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on the same basis as claims 15 to 18 since the subject matter of
each of these claims 13 and 14 is identical to the same subject
matter recited in each of claims 15 through 18.
SUMMARY
We have reversed the rejection of certain claims under the
second paragraph of 37 CFR § 112. We have sustained the
rejection of claims 1 to 6 under 35 U.S.C. § 102 and we have
sustained the rejection of claims 7 to 12 under 35 U.S.C. § 103.
We have reversed the rejection of claims 19 to 31 under 35 U.S.C.
§ 103. Therefore, the examiner’s decisions rejecting the claims
on appeal are affirmed-in-part.
Finally, we have instituted a new ground of rejection as to
claims 15 to 18 and recommended a new ground of rejection be made
by the primary examiner as to claims 13 and 14. As to this
latter recommended rejection under the provisions of 37 CFR
§ 1.196(d), we also hereby remand the application to the examiner
for consideration of a rejection of dependent claims 13 and 14.
A period of two months is set in which the appellant may
submit to the Primary Examiner an appropriate amendment, or a
showing of facts or reasons, or both, in order to avoid the
grounds set forth in the statement of the Board of Patent Appeals
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and Interferences under the provisions of 37 CFR § 1.196(d)
and/or prosecute further before the Primary Examiner by way of
amendment or showing of facts, or both, not previously of record
with respect to the new rejection under 37 CFR § 1.196(b) if the
appellant so elects.
Upon conclusion of the proceedings before the Primary
Examiner on remand, this case should be returned to the Board
by the Primary Examiner so that the Board may either adopt its
decision as final or render a new decision on all of the claims
on appeal, as it may deem appropriate. Such return for this
purpose is unnecessary if the application is abandoned expressly
or as the result of an unanswered Office action, allowed or again
appealed.
We note that 37 CFR § 1.196(b) provides that a new
ground of rejection pursuant to the rule is not considered final
for the purpose of judicial review under 35 U.S.C. §§ 141 or 145.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART and REMANDED
37 CFR § 1.196(b) and (d)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LEE E. BARRETT )
Administrative Patent Judge )

Appeal No. 95-3017
Application 07/952,061
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