Ex Parte Dieu et alDownload PDFBoard of Patent Appeals and InterferencesMar 23, 201110457315 (B.P.A.I. Mar. 23, 2011) Copy Citation 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 ____________ 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. Appeal 2009-005807 Application 10/457,315 3 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 Appeal 2009-005807 Application 10/457,315 4 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.). Appeal 2009-005807 Application 10/457,315 5 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: Appeal 2009-005807 Application 10/457,315 6 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 Appeal 2009-005807 Application 10/457,315 7 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 8 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 BAKER BOTTS L.L.P. PATENT DEPARTMENT 98 SAN JACINTO BLVD., SUITE 1500 AUSTIN TX 78701-4039 Copy with citationCopy as parenthetical citation