Ex Parte Davis

Patent Trial and Appeal Board

Aug 10, 2016

14035478 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/035,478 09/24/2013
20551 7590 08/12/2016
THORPE NORTH & WESTERN, LLP.
P.O. Box 1219
SANDY, UT 84091-1219
FIRST NAMED INVENTOR
Mark Davis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
00546-32581.NP.CON 9151
EXAMINER
LEI, JIE
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
08/12/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@tnw.com
rich@tnw.com
annette.fields@tnw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK DA VIS
Appeal2015-002365
Application 14/035,478
Technology Center 2800
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-20 of Application 14/035,478
under 35 U.S.C. § 102(b) as anticipated. Final Act. (May 16, 2014).
Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM-IN-PART. We
designate the portion of our opinion affirming the rejection of claims 12-16
as a NEW GROUND OF REJECTION.
1 Moxtek, Inc., is identified as the real party in interest. Br. 3.
Appeal2015-002365
Application 14/035,478
BACKGROUND
The '478 Application describes a fine pitch wire grid polarizer.
Spec. 1. The Specification explains that the performance of nanometer-size
devices, such as wire grid polarizers, can be limited by the distance between
adjacent features, also known as the pitch of one feature to the next. Id. For
example, a wire grid polarizer most effectively polarizes electromagnetic
radiation when the pitch between adjacent features is less than half of the
wavelength of the electromagnetic radiation. Id. Thus, as the wavelength of
the electromagnetic radiation decreases, the pitch of the wires in the wire
grid polarizer must also decrease. Id. Furthermore, wire grid polarizers that
polarize a broad spectrum of electromagnetic radiation are desired. Id. A
wire grid polarizer having wires with variable wire heights can serve this
purpose because the polarizer' s performance can be tuned by changing the
wire height. Id.
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1-20 are rejected under 35 U.S.C. § 102(b) as anticipated by
Nishida. 2 Final Act. 2.
DISCUSSION
We address the Examiner's rejection of each of the independent
claims separately.
Claim 1. Appellant argues that Nishida does not describe each
limitation of the subject matter of claim I. Br. 10-13. Claim I of the '478
2 US 2009/0009865 Al, published January 8, 2009.
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Application 14/035,478
Application is reproduced below with the limitation that is the focus of
Appellant's arguments italicized:
1. A polarizer, comprising:
a. a substrate;
b. a repeated pattern of groups of parallel, elongated,
polarizing wires disposed over the substrate;
c. each group of wires comprising at least three
wires;
d. a wire at an interior of each group is taller by
more than 10 nanometers (nm) than outermost wires of each
group; and
e. a distance between the outermost wires in each
group is less than 1 micrometer.
Br. 16 (Claims App.) (emphasis added).
The Examiner found that Nishida describes the polarizer of claim 1.
Final Act. 2-3 (citing Nishida Fig. 4B). In particular, the Examiner found
that the polarizer depicted in Nishida's Figure 4B has at least one wire in the
interior of each group of wires that is taUer than the outermost wires of the
group by more than 10 nm. Id. We reproduce Nishida's Figure 4B below:
FIG. 48
403
l
~l
~I~
I I . '
I I
.........,................,..., -·~ ....... ---t'-'-, -
I : I
t I
402 404 .._! : .....
s
Figure 4B is a perspective view of an exemplary wire grid structure. See
Nishida ,-r 54.
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Application 14/035,478
Figure 4B shows light transmitting substrate 401. Light transmitting
members 404 have been formed on the upper surface of substrate 401 using
photolithography or some other pattern-forming method. The thickness of
light transmitting members 404 in a direction normal to the upper surface of
substrate 401 is D. Figure 4B further shows two groups of metal wires that
comprise the wire grid structure. The first group of metal wires 402 is
formed directly on the upper surface of substrate 401. The second group of
wires 403 are formed over the light transmitting members 404. Thus, first
group of wires 402 can be said to be formed on a plane while the second
group of wires 403 are formed on a second plane. The first and second
planes are parallel and offset by distance D. See Nishida i-fi-169--75.
The Examiner found that, in Figure 4B, the second group of wires 403
is taller than the first group of wires 402 by D. Final Act. 3; see also
Answer 11-12.
We agree with Appellant that Examiner erred by so finding. We
begin by construing the claim term "taller." During prosecution, the PTO
gives the language of the proposed claims "the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054--55 (Fed. Cir. 1997).
We begin by noting that the claim term "taller" is the comparative
form of the adjective "tall." In the context of the '478 Application's
Specification, a person of ordinary skill in the art would understand that the
adjective "tall" is being used in the sense of "long from bottom to top." See,
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Appeal2015-002365
Application 14/035,478
e.g., Webster's Ninth New Collegiate Dictionary 1204 (1985). 3 The claim
term "taller," therefore, requires a comparison between the length from the
bottom to the top of a wire at an interior of each group with the length from
the bottom to the top of the outermost wires of each group. The balance of
the claim limitation specifies that the specified length of the interior wire
exceeds the specified length of the outermost wire by more than 10 nm.
In view of this claim construction, we cannot affirm the Examiner's
rejection of claim 1 as anticipated by Nishida. Figure 4B appears to show
that the first group of wires 402 and the second group of wires 403 have the
same height. Furthermore, the portions ofNishida's Specification that
described the wire grid polarizer shown in Figure 4 B do not describe the
relative heights of the first and second groups of wires. See Nishida i-fi-1 69-
75. Rather, this portion of Nishida merely states that "the thickness b of the
metal wires is assumed to be 50 nm to 800 nm." Id. i175. Thus, we
determine that the Examiner erred by finding that Nishida describes each
1. • ' ' • • ' 1 • 1 • -1 nmnauon recnea m cia1m l .
3 We note that the Examiner interpreted the word tall as meaning "of great or
more than average height." See Answer 11. The Examiner's error arose
from the interpretation of the term "height" as meaning elevation above
ground or a recognized level." See id. Although the Examiner refers to
"Oxford Dictionaries" as the source of these definitions, proper citation
information is not provided. We believe that the Examiner was relying upon
the website "Oxford Dictionaries" (http://www.oxforddictionaries.com/us/).
This source also defines the word "height" as meaning "[ t ]he measurement
from base to top or (of a standing person) from head to foot." See height:
definition of height in Oxford dictionary (American English) (US), Oxford
Dictionaries (August 3, 2016),
http://www.oxforddictionaries.com/us/ definition/ american_english/height.
We conclude that, in the context of the '478 Application's Specification, this
would have been the appropriate definition of the term "height."
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Application 14/035,478
Because the Examiner erred by finding that Nishida anticipates
claim 1, the rejection of claims 2-11, which depend from claim 1, must also
be reversed.
Claim 12. Appellant argues that Nishida does not describe each
limitation of the subject matter of claim 12. Br. 13-14. Claim 12 is
reproduced below with the limitation that is the focus of Appellant's
arguments italicized:
12. A polarizer, comprising:
a. a substrate;
b. a repeated pattern of groups of parallel, elongated,
polarizing wires disposed over the substrate;
c. the polarizing wires are etch redeposition wires,
comprising a material that is a byproduct of an etch reaction.
Br. 17 (emphasis added).
We begin by noting that claim 12 is a product-by-process claim. In
determining the validity of such a claim, the focus is on the product and not
on the process of making it. Amgen Inc. v. F. Hoffmann-LaRoche Ltd., 580
F.3d 1340, 1369 (Fed. Cir. 2009). Thus, "a product-by-process claim can be
anticipated by a prior art product that does not adhere to the claim's process
limitation." Id. at 1370. In determining whether a product-by-process claim
has been anticipated, the process limitations are not given patentable weight
unless the claimed process results in structural and functional differences
between the prior art and the claimed product. See Greenliant Sys., Inc. v.
Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012); In re Garnero, 412 F.2d
276, 279 (CCPA 1969) (finding that certain process limitations can be
construed as structural limitations).
In this case, we find that claim 12 is anticipated by Nishida. As
shown in Figure 4B, Nishida describes a substrate (401). A repeated pattern
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Application 14/035,478
of parallel, elongated polarizing wires ( 402, 403) is disposed over the
substrate. See also Nishida i-fi-1 69--7 5. Although Nishida does not describe
the manufacture of the polarizing wires by etch redeposition, this process
limitation is not given patentable weight because our review of the '478
Application's Specification does not reveal any structural or functional
distinction between etch redeposition wires and wires produced by other
methods in the context of wire grid polarizers.
Next, we tum to claims 13-16, which depend from claim 12.
The Examiner found that the Nishida describes the additional
limitations recited in claim 13. Answer 6-7. These limitations require two
center wires, each of which is taller by more than 10 nm than the outermost
wires of the group of polarizing wires. The Examiner's findings are
premised upon the same erroneous claim construction that compelled us to
reverse the rejection of claim 1. For this reason, we also reverse the
rejection of claim 13.
The Examiner found that Nishida described each of the additional
limitations recited in dependent claims 14--16. See Answer 7. Appellant has
not argued that these factual findings are erroneous. We, therefore, adopt
them as our own. Thus, we find that Nishida also anticipates claims 14--16.
Because we have relied on facts and reasoning not raised by the
Examiner, we designate our affirmance of the rejection of claims 12 and 14--
16 as including new grounds of rejection. In re Leithem, 661 F.3d 1316,
1319 (Fed. Cir. 2011) ("Mere reliance on the same statutory basis and the
same prior art references, alone, is insufficient to avoid making a new
ground of rejection when the Board relies on new facts and rationales not
previously raised to the applicant by the examiner.").
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Application 14/035,478
Claim 17. Appellant argues that Nishida does not describe each
limitation of the subject matter of claim 17. Br. 14. Claim 17 is reproduced
below with the limitations that are the focus of Appellant's arguments
italicized:
17. A method for making a polarizer, the method comprising:
a. applying a resist over a base;
b. patterning the resist and creating resist widths;
c. performing an isotropic etch of the base and
etching both vertically into the base laterally outside the resist
and horizontally under the resist leaving a stem, having vertical
sidewalls, under the resist;
d. allowing etch redeposition along the vertical
sidewalls of the stem creating etch redeposition polarizing
wires as a byproduct of an etch reaction;
e. performing an anisotropic etch and etching
vertically into the base outside the resist leaving a bottom step,
having vertical sidewalls, in the base;
f. allowing etch redeposition along the vertical
sidewalls of the bottom step and creating etch redeposition
polarizing wires as a byproduct of an etch reaction.
Br. 18 (emphasis added).
Appellant argues that the rejection of claim 17 should be reversed
because Nishida does not "teach or suggest formation of wires by etch
redeposition." Br. 14.
The Examiner found that Nishida describes an etch redeposition
process:
Nishida teaches in i-f[Ol 13], i-f[Ol 14], fig. 9A to 9C that
"and the first aluminum film is selectively etched using the
mask, thereby forming a second group of metal wires 903.
Next, the dielectric film is etched using the mask left after the
formation of the second group of metal wires as a mask 905 to
form light-transmitting members 902". And "Next, when a
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Application 14/035,478
second aluminum film is formed by vapor deposition or
sputtering, as shown in FIG. 9B, metal films 906 are formed
over the mask 905, and a first group of metal wires 904 are each
formed between the light-transmitting members 902". The
metal wires 904 is formed by an etch- deposition process.
Therefore Nishida teaches the etch redeposition (etch-
deposition process) as disclosed in instant application.
Answer 13.
We determine that this finding is erroneous, as it is based upon an
unreasonably broad interpretation of the claim term "etch redeposition." See
id. (construing "etch redeposition" to mean any process involving a step that
removes material from desired areas-an etch step---and a redeposition step
that "deposits materials different from the material that had been removed,
not to deposit again material that had been removed"). The Examiner's
claim construction is inconsistent with the '4 7 8 Application's Specification.
Furthermore, the Examiner's finding ignores the requirement that the etch
redeposition polarizing wires are created "as a byproduct of an etch
reaction."
We, therefore, reverse the rejection of claims 17-20 as anticipated by
Nishida.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-
11, 13, and 17-20 of the '478 Application. We affirm the rejection of
claims 12 and 14-16. Because our reasoning differs from the Examiner's,
we designate our affirmance as constituting a new ground of rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
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Application 14/035,478
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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