Ex Parte Dieu et al

Board of Patent Appeals and Interferences

Mar 23, 2011

10457315 (B.P.A.I. Mar. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAURENT DIEU and MATTHEW M. LAMANTIA
____________

Appeal 2009-005807
Application 10/457,315
Technology Center 1700
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Before CHUNG K. PAK, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 12-33. We have jurisdiction pursuant to
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 2009-005807
Application 10/457,315

2

Appellants’ claimed invention is directed to a photomask, a
photomask assembly, and a method of forming a photomask. Claim 21 is
illustrative and reproduced below:
21. A photomask, comprising:

a substrate;

a buffer layer formed on at least a portion of the substrate;

a nontransmissive layer formed on the buffer layer;

the buffer layer comprising one or more materials selected to enhance an
optical characteristic of the patterned nontransmissive layer; and

the buffer layer operable to prevent the substrate from being damaged
during a repair process associated with the nontransmissive layer.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Adams 4,970,099 Nov. 13, 1990
Carcia (‘977) 5,897,977 Apr. 27, 1999
Carcia (‘509) US2002/0197509 A1 Dec. 26, 2002
Liang US 2003/0000921 A1 Jan. 2, 2003
Iwamura US 6,562,445 B2 May 13, 2003

The Examiner maintains the following grounds of rejection:
Claim 16 is rejected under 35 U.S.C. § 112, second paragraph as
being indefinite.2 Claims 21, 22, 24, 26, 28, and 32 stand rejected under 35
U.S.C. § 102(e) as being anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Liang. Claims 12, 13, 15, 17, 19, 20, and

2 This is a new ground of rejection (Ans. 2-4). Claim 16 was subject to this
rejection; however, the appeal is dismissed as to claim 16 as set forth infra.
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31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Liang
in view of Adams. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Liang in view of Adams and Iwamura. Claims 16
and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Liang in view of Adams and Carcia ‘509.3 Claim 23 stands rejected under
35 U.S.C. § 103(a) as being unpatentable over Liang in view of Iwamura.
Claims 25 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Liang in view of Carcia ‘509. Claims 29, 30, and 33 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Liang in view
of Carcia ‘977, and Carcia ‘921.
We affirm the stated rejections for substantially the reasons set forth
in the Examiner’s Answer and as further explained below.
At the outset, we note that the Application file record reflects that
Appellants have not submitted a timely reply to the new ground of rejection
of claim 16 as was required to avoid dismissal of the appeal as to the
affected claim 16 (Ans. 2-4, 24). Accordingly, the appeal stands dismissed
as to claim 16.

Anticipation/Obviousness Rejection over Liang
Appellants argue the rejected claims together as a group (App. Br. 6-
9). Accordingly, we select claim 21 as the representative claim.4

3 Claim 16 was subject to this rejection; however, the appeal is dismissed as
to claim 16 as set forth infra.
4 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
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The Examiner has found, without dispute, that Liang describes a
photomask that includes: (a) a substrate (1100; Fig. 2); (b) a buffer layer
(1300, Fig. 2) formed on at least a portion of the substrate; and (c) an
absorber (non-transmissive) layer on the non-substrate side of the buffer
layer (1400, Fig. 2) (Ans. 4, 5, 14, and 15; see generally App. Br.). The
Examiner has found that Liang describes selecting materials including
carbon or silicon dioxide for use in the buffer layer (Ans. 5; Liang, paras.
0023, 0035, and 0043). Appellants do not dispute these findings of the
Examiner (see generally App. Br.). The absorber (non-transmissive) layer
of Liang’s photomask is patterned as illustrated, for instance, in drawing
Figure 2(d) (Liang, para. 0028).
Appellants do not dispute that Liang’s buffer layer possesses the
functional characteristic of being “operable to prevent the substrate from
being damaged during a repair process associated with the nontransmissive
[absorber] layer”, as required for the buffer layer by representative claim 21
(Ans. 5-6; Liang, para. 0029; see generally App. Br.).5 Rather, Appellants
present a dispositive issue with respect to this appeal by arguing that Liang
does not teach or disclose the representative claim 21 materials requirement
for the buffer layer; that is, “the buffer layer comprising one or more
materials selected to enhance an optical characteristic of the patterned
nontransmissive layer” (App. Br. 7-9).

decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.”).
5 The Examiner has reasonably determined, without argument to the
contrary, that the claimed substrate layer encompasses the ML mirror (1200)
covered substrate (1100) (“underlying layers”) of Liang (Ans. 5, ll. 13-16;
see generally App. Br.).
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Application 10/457,315

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Appellants’ Specification discloses that carbon type materials are
preferably used in forming the buffer layer (Spec.16).

ISSUE
Does Liang describe a photomask buffer layer that includes one or
more materials that could reasonably be considered to possess the claimed
characteristic of being capable “to enhance an optical characteristic of the
patterned non-transmissive layer”?
We answer this question in the affirmative.

PRINCIPLES OF LAW
In order “[t]o anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or inherently.” In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); accord Glaxo, Inc. v.
Novopharm, Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995). However,
anticipation by a prior art reference does not require that the reference
recognize either the inventive concept of the claimed subject matter or the
inherent properties that may be possessed by the prior art reference. See
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633 (Fed. Cir.), cert.
denied, 484 U.S. 827 (1987).
As our reviewing court stated in In re Schreiber, 128 F.3d at 1478:
A patent applicant is free to recite features of an apparatus
either structurally or functionally. See In re Swinehart, 439
F.2d 210 (CCPA 1971) (“[T]here is nothing intrinsically wrong
with [defining something by what it does rather than what it is]
in drafting patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. As our
predecessor court stated in Swinehart, 439 F.2d at 213:
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where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to
be in the prior art does not possess the
characteristic relied on.

This is so because the recitation of a new intended use for an old apparatus
simply does not make a claim to that old apparatus patentable. Compare
Schreiber, 128 F.3d at 1477. The patentability of an apparatus claim
depends on the claimed structure, not on the use or purpose of that structure,
Catalina Marketing Int'l., Inc. v. Coolsavings.com Inc., 289 F.3d 801, 809
(Fed. Cir. 2002), or the function or result of that structure. In re Danly, 263
F.2d 844, 848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16 (CCPA
1948).

DISCUSSION
Here, as correctly found by the Examiner at pages 3-6 and 14-19 of
the Answer and as further outlined above, Liang, like Appellants, describes a
photomask that includes a buffer layer located between an absorber (non-
transmissive) layer and a substrate wherein carbon can be selected as
material for use in the buffer layer and the absorber (non-transmissive) layer
is patterned. Given the above and for the additional reasons stated in the
Examiner’s Answer, it is reasonable to expect that the materials selected for
the buffer layer of Liang would be capable of enhancing “an optical
characteristic of the patterned non-transmissive layer.” Appellants, who are
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in a better position than the PTO to test the operable capabilities of the
photomask of Liang, including the capabilities of the buffer layer materials,
have not proven that the buffer layer materials described by Liang for use in
their photomask do not have the argued characteristics as called for in
representative claim 21.
On this record, we affirm the Examiner’s anticipation rejection of
claims 21, 22, 24, 26, 28, and 32 over Liang.
We likewise affirm the alternative obviousness basis for the
aforementioned rejection presented by the Examiner. This is because a
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984). See
also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494
F.2d 1399, 1402 (CCPA 1974).

Other Obviousness Grounds of Rejection
For each of the additional obviousness grounds of rejection pertaining
to certain of the appealed claims, Appellants base their argument on the
same limitation and argument pertaining to a lack of teaching in Liang as to
the materials selected for the buffer layer having the afore-discussed
functionality (App. Br. 9-12). Consequently and on this appeal record, we
likewise affirm each of the additional obviousness grounds of rejection
maintained by the Examiner for reasons stated above and in the Examiner’s
Answer.

Appeal 2009-005807
Application 10/457,315

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CONCLUSION/ORDER
The appeal is dismissed as to claim 16.
The Examiner’s decision to reject the remaining appealed claims on
the prior art grounds maintained by the Examiner is affirmed.
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

sld

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