Ex Parte Gao et al

Patent Trial and Appeal Board

Jun 29, 2013

11950196 (P.T.A.B. Jun. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/950,196 12/04/2007 Wei Gao SLA2221 6102
55286 7590 07/01/2013
SHARP LABORATORIES OF AMERICA, INC.
C/O LAW OFFICE OF GERALD MALISZEWSKI
P.O. BOX 270829
SAN DIEGO, CA 92198-2829
EXAMINER
JELSMA, JONATHAN G
ART UNIT PAPER NUMBER
1721
MAIL DATE DELIVERY MODE
07/01/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEI GAO,
BRUCE D. ULRICH and YOSHI ONO
____________

Appeal 2012-002635
Application 11/950,196
Technology Center 1700
____________

Before CHUNG K. PAK, HUBERT C. LORIN, and BEVERLY A.
FRANKLIN, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “Appellants”)1 appeal under 35
U.S.C. § 134 from the Examiner’s final rejection of claims1 through 24, all
of the claims pending in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a grayscale mask
comprised of multiple semi-transparent film layers, and to an associated

1 Appellants identify the real party in interest as Sharp Laboratories of
America. (See Appeal Brief filed September 15, 2011 (“App. Br.”) at 3.)
Appeal 2012-002635
Application 11/950,196
2
mask fabrication process.” (Spec. 1, ll. 5-8.) The grayscale mask is said to
be advantageously fabricated “using patterned layers of thin semi-
transparent film as a light attenuating material” and using “conventional
thin-film IC deposition/photo/etching/ashing steps.” (Spec. 1, ll. 22-27.)
The grayscale mask is “used to expose light-sensitive photoresist (PR) or
resin materials” and has “application in the fabrication of image sensors,
displays, microelectromechanical systems (MEMS), and optical devices.”
(Spec. 1, ll. 10-16.) Details of the appealed subject mattered are recited in
illustrative claims 1 and 14 reproduced below:
1. A method for forming a grayscale mask from semi-transparent film
layers, the method comprising:
providing a transparent substrate with a surface;
forming a first layer of a semi-transparent film having a surface with a
first surface area overlying the substrate surface, and a light transmission
characteristics greater than 19% at wavelengths in a range greater than 400
nanometers (nm) and less than 700 nm; and,
forming a second layer of the semi-transparent film having a surface
with a second surface area greater than the first surface area overlying the
first layer, and a light transmission characteristic greater than 19% at
wavelengths in the range greater than 400 and less than 700 nm.

14. A grayscale mask of semi-transparent film layers, the mask
comprising:
a transparent substrate with a surface;
a first layer of a semi-transparent film having a surface with a first
surface area overlying the substrate surface, and a light transmission
characteristic of greater than 19% at wavelengths in a range greater than
400 nanometers (nm) and less than 700 nm; and
a second layer of the semi-transparent film having a surface with a
second surface area greater than the first surface area overlying the first
layer, and a light transmission characteristic of greater than 19% at
wavelengths in the range greater than 400 nm and less than 700 nm.

(App. Br. 25, 28, and 29 (Claims App’x)).
Appeal 2012-002635
Application 11/950,196
3
Appellants seek review of the following grounds of rejection set forth
by the Examiner in the Examiner’s Answer mailed November 1, 2011
(“Ans.”):
1. Claims 1-24 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement;
2. Claims 1-5, 7, 8, 12-19, 22, and 24 under 35 U.S.C. § 103(a) as
unpatentable over PCT Application WO 2007/034930 A1 published in the
name of Fujikawa et al. on March 29, 2007 (“Fujikawa”)2 in view of U.S.
Patent Application Publication US 2008/0254376 A1 in the name of Lin et
al. on October 16, 2008(“Lin”);
3. Claims 6 and 23 under 35 U.S.C. § 103(a) as unpatentable over
Fujikawa, Lin and U.S. Patent 5,972,543 issued to Yokoyama et al. on
October 26, 1999 (“Yokoyama”);
4. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Fujikawa, Lin and U.S. Patent 6,846,729 B2 issued to Andoh et al. on
January 25, 2005 (“Andoh”);
5. Claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable
over Fujikawa, Lin, Andoh, and U.S. Patent 5,786,114 issued to Hashimoto
on July 28, 1998 (“Hashimoto”); and
6. Claims 20 and 21 under 35 U.S.C. § 103(a) as unpatentable
over Fujikawa, Lin, and Hashimoto. (App. Br. 6.)

2 Appellants have not questioned the Examiner’s reliance on US
2009/0220867 A1 published in the name of Fujikawa et al. on September 3,
2009 as the corresponding English translation of WO 2007/034930 A1.
(Compare Ans. 6 with App. Br. 7-23.) Thus, our reference to Fujikawa is to
the English version of WO 2007/034930 A1, namely US 2009/0220867 A1
published in the name of Fujikawa et al.
Appeal 2012-002635
Application 11/950,196
4
DISCUSSION
1. WRITTEN DESCRIPTION
As our reviewing court stated in Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991):
“The purpose of the ‘written description’ requirement [under 35
U.S.C. § 112, first paragraph,] is broader than to merely explain
how to ‘make and use’; the applicant must also convey with
reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention. The
invention is, for purposes of the ‘written description’ inquiry,
whatever is now claimed.”
“One shows that one is ‘in possession’ of the invention by describing the
invention, with all its claimed limitations, not that which makes it obvious.”
Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(emphasis added; original emphasis not reproduced). “Although the exact
terms need not be used in haec verba,. . . the specification must contain an
equivalent description of the claimed subject matter.” Id.
Here, as correctly found by the Examiner at page 5 of the Answer, the
application disclosure as originally filed does not convey with reasonable
clarity to those skilled in the art that Appellants had possession of using first
and second transparent films having a light transmission characteristic
greater than 19% at wavelengths in a range greater than 400 nanometers and
less than 700 nanometers as recited in the claims on appeal. The
Specification, as originally filed, is limited to employing titanium films
having a light transmission varying from 19% to 23% at wavelengths in a
range of 400 to 700 nanometers or using other semi-transparent film
materials having characteristics similar to titanium films or characteristics
that can be adapted for use in the present invention grayscale mask as found
Appeal 2012-002635
Application 11/950,196
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by the Examiner at page 5 of the Answer. (See also Spec. 10-13.) The
Examiner correctly found that the Specification does not indicate employing
first and second transparent films having the light transmission characteristic
greater than 23%, namely 24% to 100%, at wavelengths in a range between
400 nanometers and 700 nanometers embraced by the claims on appeal. In
re Wertheim, 541 F.2d 257, 263-64 (CCPA 1976) (“By pointing to the fact
that claim 1 [‘at least 35%’] reads on embodiments outside the scope of the
description [25-60%], the PTO has satisfied its burden. Appellants thus
have the burden of showing that the upper limit of solids content described,
i.e., 60%, is inherent in ‘at least 35%,’ as that limitation appears in claim
1.”). Although Appellants assert that “[i]t would be obvious to a practitioner
that a 1 nm thick layer of Ti would have a greater transmission characteristic
than a 10 nm thick layer,” they have not demonstrated that the Ti films
having such a thinner thickness or any other specific thicknesses disclosed in
the Specification, as originally filed, necessarily or inherently have a light
transmission characteristic of 24% to 100%. (See Reply Brief filed
November 17, 2011(“Reply Br.”) at 2.) Nor have Appellants identified any
part of the original disclosure of the application that contains an equivalent,
inherent or implied description of first and second transparent films having a
light transmission characteristic greater than 23%, namely 24% to 100%, at
the specific wavelengths recited in the claims on appeal.
Accordingly, on this record, we affirm the Examiner’s decision
rejecting claims 1 through 24 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
II. OBVIOUSNESS
Establishing a prima facie case of obviousness of an invention
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comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed.” KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)
Here, we concur with Appellants that the Examiner reversibly erred in
determining that one of ordinary skill in the art would have had an apparent
reason to modify the first light shield film of the graduated photomask
taught by Fujikawa to have a light transmission characteristic of greater than
19% based on the phase shift and attenuating films of the phase shifting
mask taught by Lin. (Compare App. Br. 7-18 and Reply Br. 2-6 with Ans.
8.) In particular, as correctly stated by Appellants at pages 8-9 of the Appeal
Brief and pages 2-4 of the Reply Brief, Fujikawa requires employing a light
shield film 102 to provide a light transmission to 0.1% or lower and a
semitransparent film 109 to provide a light transmission in the range of 15%
to 85% in forming its graduated photomask. (See also Fujikawa, ¶ 0047,
0052, 0057, and 0068.) Although Lin teaches employing phase shift and
attenuating films having a light transmission characteristic inclusive of that
claimed to form its phase shifting mask as found by the Examiner, the
Examiner did not demonstrate that Lin’s light transmission characteristics
applicable to its phase shift and attenuating films are useful for the light
shielding purpose of the light shield film of the graduated photomask taught
by Fujikawa. To modify the light shield film of the graduated photomask
taught by Fujikawa in the manner proposed by the Examiner would destroy
the invention on which Fujikawa is based. Ex parte Hartman, 186 USPQ
366, 367 (Bd. App. 1974) (“Reynolds cannot properly be combined with
Graham et al. relative to the employment of continuous monofilaments,
since to do so would destroy that on which the invention of Graham et al. is
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Application 11/950,196
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based, namely, the use of very short fibers.”); see also In re Fritch, 972 F.2d
1260, 1265-66 n. 12 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984) (“This court has previously found a proposed
modification inappropriate for an obviousness inquiry when the modification
rendered the prior art reference inoperable for its intended purpose.” ).
The Examiner did not rely on Yokoyama, Andoh, and Hashimoto to
remedy the above-discussed deficiencies in his or her proposed combination
of Fujikawa and Lin.
Accordingly, we are constrained to reverse the Examiner’s decision
rejecting claims 1 through 24 under 35 U.S.C. § 103(a).

ORDER
Upon consideration of the record, and for the reasons given above, it
is
ORDERED that the decision of the Examiner rejecting claims 1
through 24 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement, is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 1 through 24 under 35 U.S.C. § 103(a) is REVERSED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a) (2010).
AFFIRMED

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