Ex Parte Hacker et al

Board of Patent Appeals and Interferences

Jun 21, 2012

11287992 (B.P.A.I. Jun. 21, 2012)

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.
11/287,992 11/28/2005 Nigel P. Hacker 50320030 DIV1 -4780 3406
128 7590 06/22/2012
HONEYWELL INTERNATIONAL INC.
PATENT SERVICES
101 COLUMBIA ROAD
P O BOX 2245
MORRISTOWN, NJ 07962-2245
EXAMINER
CHACKO DAVIS, DABORAH
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
06/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NIGEL P. HACKER, MICHAEL THOMAS, and
JAMES S. DRAGE
____________________

Appeal 2010-008533
Application 11/287,992
Technology Center 1700
____________________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and KAREN M.
HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 17-21, 23-28, and 31-37. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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The claims are directed to a method of restoring the hydrophobicity of
a silica dielectric film after hydrophobicity is lost due to etching and/or
ashing treatments (see, e.g., claim 17; Spec. 3-6), and a semiconductor
device made by the method (see, e.g., claims 20 and 37).
The Examiner maintains the following rejections:
A. Claim 20 is rejected under 35 U.S.C. § 112, ¶ 1 as failing to
comply with the written description requirement;
B. Claims 20, 21, 31, 32, and 35-37 are rejected under 35 U.S.C.
§ 102(e) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
obvious Smith1;
C. Claims 17-19, 23-25, 27, and 28 are rejected under 35 U.S.C.
§ 103(a) over Smith in view of Ikakura2;
D. Claim 26 is rejected under 35 U.S.C. § 103(a) over Smith in view
of Ikakura, and further in view of Hendricks3; and
E. Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) over Smith
in view of Yang4.

OPINION
A. REJECTION OF CLAIM 20 FOR LACK OF WRITTEN
DESCRIPTIVE SUPPORT
The Examiner rejects claim 20 under 35 U.S.C. § 112, ¶ 1, as lacking
written descriptive support for the portion of step (b) of claim 20 requiring
“contacting said silica dielectric film and features . . . with both an etchant

1 Smith et al., US 6,395,651 B1, patented May 28, 2002.
2 Ikakura et al., US 6,255,230 B1, patented Jul. 3, 2001.
3 Hendricks et al., US 6,410,149 B1, patented Jun. 25, 2002.
4 Yang et al., US 6,042,994, patented Mar. 28, 2000.
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and an ashing reagent to thereby etch the trenches” (Ans. 3). Claim 20
recites:
20. A semiconductor device produced by a process
comprising:
(a) forming a hydrophobic silica dielectric film on a
substrate that is patterned with features and suitable for the
manufacture of a semiconductor device,
(b) contacting said silica dielectric film and features with
an etchant or with both an etchant and an ashing reagent to
thereby etch trenches, vias or both trenches and vias, into said
dielectric film and in such a way as to remove previously
existing hydrophobicity of said dielectric film or to
substantially damage and remove previously existing
hydrophobicity of said dielectric film;
(c) treating said etched silica dielectric film by contacting
the etched silica dielectric film with a surface modification
composition at a concentration and for a time period effective to
render the etched silica dielectric film hydrophobic; and
removing unreacted surface modification composition, reaction
products and mixtures thereof from the etched silica dielectric
film, wherein the surface modification composition comprises
at least one surface modification agent suitable for removing
silanol moieties from the etched silica dielectric film; wherein
steps (a) and (b) are conducted in any order, and step (c) is
conducted after step (b), and wherein step (c) is repeated after
each step (b).
In the Response to Argument section of the Answer, the Examiner
explains that there is no support in the original disclosure because the
Specification does not disclose or teach contacting the silica dielectric with
both an etchant and an ashing agent to thereby etch trenches (Ans. 8).
According to the Examiner, ashing is only performed after forming trenches
and/or vias; ashing does not etch trenches (Ans. 10-11).
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Appellants contend that Example 10, as informed by what was known
in the art, as well as Figures 1A, Figure 2, and Example 3 provide support
(Br. 6-7).
There is no real dispute over what the Specification teaches with
regard to etching and ashing (compare Br. 6-7 with Ans. 8-11). The
Specification discloses fabricating damascene trench structures in Example
10. In this method, photoresist is processed in the customary manner to
form a pattern of lines and spaces (50) in the layers on the wafer as shown in
Figure 1A (Spec. 24:2-15). Trenches (60) are created by etching (right side
of Fig. 1A) and then the photoresist layer is removed by ashing to create the
structure (70) shown in Figure 1B (Spec. 24:7-22).
Example 10 provides support for contacting a silica dielectric film and
features with both etchant and an ashing reagent. However, in Example 10
ashing only occurs after the trenches are formed, ashing does not etch
trenches.
Appellants contend that the claim does not require that trenches and/or
vias be etched with an ashing reagent (Reply Br. 4). However, the plain
language of the claim “contacting . . . with both an etchant and an ashing
reagent to thereby etch trenches” places the prepositional phrase “to thereby
etch trenches . . . ” such that it modifies “both an etchant and an ashing
reagent.” Reading the claim in accordance with English grammar requires a
conclusion that both etching and ashing etch trenches. See HTC Corp. v.
IPCom GmbH & Co., KG, 667 F.3d 1270, 1274-75 (Fed. Cir. 2012)
(modifiers should be placed next to the words they modify, and a reader may
assume that the claim words follow this rule).
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A preponderance of the evidence supports the Examiner’s rejection of
claim 20 as lacking written descriptive support.
B. ANTICIPATION AND/OR OBVIOUSNESS OF CLAIMS 20, 21, 31,
32, AND 35-37 OVER SMITH
With respect to the rejection of claims 20, 21, 31, 32, and 35-37 over
Smith, Appellants focus their arguments on claims 20 and 37. Therefore, we
select those claims are representative.
Both claims 20 and 37 are directed to semiconductor devices made by
a particular process. “In order to be patentable, a product must be novel,
useful and unobvious. In our law, this is true whether the product is claimed
by describing it, or by listing the process steps used to obtain it.” In re
Brown, 459 F.2d 531, 535 (CCPA 1972). “[I]t is the patentability of the
product claimed and not of the recited process steps which must be
established.” Id. Therefore, “[w]here a product-by-process claim is rejected
over a prior art product that appears to be identical, although produced by a
different process, the burden is upon the applicants to come forward with
evidence establishing an unobvious difference between the claimed product
and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
Claim 20 recites steps of forming a hydrophobic silica dielectric film
on a substrate that is patterned with features. Step (b) of claim 20 requires
that trenches and/or vias be formed in the silica dielectric film.
With regard to claim 20, the Examiner finds that Smith describes
etching with ammonium hydroxide (Ans. 4). The Examiner alternatively
finds that Smith inherently forms trenches and/or vias because the silica film
is deposited on a wafer with raised lines and the wafers are suitable for
forming integrated circuits (Ans. 12-13).
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The issue is: Has the Examiner reversibly erred in finding that Smith
includes trenches and/or vias within the silica dielectric film of that
reference?
We answer this question in the affirmative.
Smith discloses a low dielectric constant nanoporous silica film. The
film can be formed by depositing a nanoporous silica film onto a patterned
wafer (Abstract; col. 2, ll. 3-6 and 46-51; col. 5, ll. 63-67). Electronic
elements and conduction pathways may be placed under, over, and/or
adjacent the nanoporous silica film (col. 6, ll. 1-3). Smith does not disclose
forming trenches and/or vias within the silica dielectric film.
Smith silyates the nanoporous silica film to obtain the required
hydrophobicity (col. 3, l. 65 to col. 4, l. 2). Smith then ages the nanoporous
silica or its precursor by, for instance, treating with ammonia and water
vapor, before or after conducting the silylation (col. 4, ll. 23-29; col. 6, ll.
46-48).
The Examiner cites to Example 7 of Smith for the teaching of
ammonium hydroxide as an etchant (Ans. 4). This example discloses
depositing a nanoporous silica precursor onto a silicon wafer, gelling and
aging the precursor with ammonium hydroxide, and rendering the resulting
nanoporous silica film hydrophobic by silylating with hexamethyldisilazane
(Example 7 at col. 21-22).
We agree with Appellants that ammonium hydroxide is taught as
acting as a catalyst to gel and age the silica film (Br. 8-10). The Examiner
has not established that ammonium hydroxide as applied by Smith results in
trenches and/or vias in the silica dielectric film.
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We agree with Appellants that the Examiner has not established that
Smith describes within the meaning of anticipation, or otherwise suggests
within the meaning of obviousness, a semiconductor device having trenches
and/or vias within the silica dielectric film as required by claim 20.
Claim 37 does not require the presence of trenches. Claim 37 reads:
37. A semiconductor device produced by a process
comprising:
(a) forming a hydrophobic silica dielectric film on a
substrate,
(b) contacting said silica dielectric film with an ashing
reagent in such a way as to substantially damage said dielectric
film and to remove previously existing hydrophobicity of said
dielectric film;
(c) treating said damaged silica dielectric film by
contacting the damaged silica dielectric film with a surface
modification composition at a concentration and for a time
period effective to render the damaged silica dielectric film
hydrophobic; and removing unreacted surface modification
composition, reaction products and mixtures thereof from the
damaged silica dielectric film, wherein the surface modification
composition comprises at least one surface modification agent
suitable for removing silanol moieties from the damaged silica
dielectric film; wherein steps (a) and (b) are conducted in any
order, and step (c) is conducted after step (b), and wherein step
(c) is repeated after each step (b).
Appellants contend that Smith produces a semiconductor device that
is structurally different from the device of claim 37 because the process
forming the semiconductor is different (Br. 10). Appellants point out that
their claimed semiconductor device comprises a hydrophobic silica
dielectric film that is initially physically altered by contact with an ashing
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agent to damage and remove existing hydrophobicity and thereafter rendered
again hydrophobic by treating the damaged silica dielectric film with a
surface modification composition (id.). However, Appellants have not
established that damaging and then re-establishing hydrophobicity results in
a different structure than a hydrophobic film that was never damaged in the
first place. As Smith does not describe etching or ashing, there is no
convincing evidence that this undamaged hydrophobic film is patentability
different than the film made by the process of claim 37.
A preponderance of the evidence supports the Examiner’s finding of
anticipation and conclusion of obviousness based upon the teachings of
Smith.
C. OBVIOUSNESS OF CLAIMS 17-19, 23-25, 27, AND 28 OVER
SMITH AND IKAKURA
With regard to the rejection of claims 17-19, 23-25, 27, and 28 as
obvious over Smith in view of Ikakura, Appellants’ arguments focus on
claim 17. Therefore, we select claim 17 as representative for resolving the
issue on appeal for this rejection.
Claim 17 is directed to a method in which a silica dielectric film is
contacted with a plasma to make the film hydrophobic. Claim 17 reads:
17. A method of imparting hydrophobic properties to a
silica dielectric film present on a substrate, the method
comprising
(a) contacting a silica dielectric film with a plasma
comprising at least one surface modification composition, at a
concentration, and for a time period, effective to render the
silica dielectric film hydrophobic; and
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(b) removing unreacted surface modification
composition, reaction products and mixtures thereof, wherein
the surface modification composition comprises at least one
surface modification agent suitable for removing silanol
moieties from the silica dielectric film.
Smith applies the surface modification agent, e.g., silylating agent in
either the vapor phase or in a liquid solution (Smith, col. 2, ll. 9-17). Smith
does not describe exciting the silylating agent into a plasma form. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to use Smith’s vapor phase composition in a plasma and perform
the plasma irradiation on the dielectric film as suggested by Ikakura because
Ikakura discloses that plasma irradiating the silica film causes the moisture
from the film surface to be removed rendering the surface hydrophobic, and
prolonging the hydrophobic characteristics of the film surface so as to
perform further film forming steps on the hydrophobized surface (Ans. 6).
Appellants contend that Ikakura does not teach or suggest the removal
of silanol moieties from a silica dielectric film by contacting the film with a
plasma comprising at least one surface modification composition (Br. 16).
However, Appellants’ argument does not address the Examiner’s rejection,
which is based upon the teachings and suggestions of the combination of
references, not just upon the teaching of Ikakura.
We cannot say that Appellants have identified a reversible error in the
Examiner’s factual findings, application or the law, or obviousness
conclusion.

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D. OBVIOUSNESS OF CLAIM 26 OVER SMITH, IKAKURA, AND
FURTHER IN VIEW OF HENDRICKS.
Claim 26 depends from claim 17 and limits the silica dielectric film to
a methylhydridosiloxane film. The Examiner acknowledges that Smith does
not specifically teach that the nanoporous silica film of that reference is a
methylhydridosiloxane film (Ans. 7). The Examiner relies upon Hendricks
as evidence that is was known in the art to form nanoporous silica films
from methylhydridosiloxane (id.). Appellants disagree, stating that
Hendricks discloses producing an organohydridosiloxane (Br. 17-18).
As pointed out by the Examiner, Hendricks teaches that the organo
group can be an alkyl group having from 1 to 4 carbon atoms (Ans. 23;
Hendricks, col. 13, ll. 27-40).
An alkyl group with one carbon atom is a methyl group. Hence, we
agree with the Examiner that Hendricks discloses methylhydridosiloxane.
Appellants’ arguments are otherwise the same as those addressed
above with regard to claim 17. Those arguments are not convincing for the
reasons presented above.

E. OBVIOUSNESS OF CLAIMS 33 AND 34 UNDER OVER SMITH IN
VIEW OF YANG.
With regard to the rejection of claims 33 and 34 over Smith in view of
Yang, the Examiner relies upon Yang to teach the specific etchant of claim
32 from which claims 33 and 34 depend. However, claims 32-34 depend
from claim 20. As we pointed out above, the Examiner has not established
that Smith describes or suggests forming trenches in the silica dielectric
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film. Yang is not relied upon in a capacity that cures the deficiency of the
rejection of claim 20.
CONCLUSION
We sustain the rejection of claim 20 under 35 U.S.C. §112, ¶ 1.
We do not sustain the rejection of claims 20, 21, 31, 32, 35, and 36
under 35 U.S.C. § 102(a), nor the rejection of those claims under 35 U.S.C.
§ 103(a).
We sustain the rejection of claim 37 under 35 U.S.C. § 103(a).
We sustain the rejection of claims 17-19, 23-25, 27, and 28 under
35 U.S.C. § 103(a).
We sustain the rejection of claim 26 under 35 U.S.C. § 103(a).
We do not sustain the rejection of claims 33 and 34 under 35 U.S.C.
§ 103(a).
DECISION
The Examiner’s decision is affirmed-in-part.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED-IN-PART
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