Ex Parte Herrin et al

Patent Trial and Appeal Board

Apr 20, 2016

12690312 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/690,312
134359 7590
Gibb & Riley, LLC
844 West Street
Suite 200
FILING DATE
01/20/2010
04/22/2016
Annapolis, MD 21401
FIRST NAMED INVENTOR
Russell T. Herrin
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.
BUR920090062US 1 7579
EXAMINER
WEI, ZHONGQING
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
04/22/2016 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):
gfsupport@gibbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte RUSSELL T. HERRIN, EDMUND J. SPROGIS, and
ANTHONHYK. STAMPER
Appeal2014-006671
Application 12/690,312
Technology Center 1700
Before CHUNG K. PAK, KAREN M. HASTINGS, and
CHRISTOPHER C. KENNEDY Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-25. We have jurisdiction over the appeal under
35 U.S.C. §6(b).
We AFFIRM.
1 Appellants identify that the real party in interest as "International Business
Machines Corporation" (Appeal Brief filed January 15, 2014 ("App. Br.") 1.
Appeal2014-006671
Application 12/690,312
Claim 1 is illustrative (emphasis added):
1. A photomask that comprises a light filter in an
exposure system, said photomask comprising:
at least one layer of material comprising one or more
transparent regions and one or more non-transparent regions, a
difference between said one or more transparent regions and said one
or more non-transparent regions defining features that will be
illuminated by said exposure system onto a photoresist exposed using
said exposure system,
said features comprising one or more device shapes and at least
one sub-lithographic shape,
said at least one sub-lithographic shape having a sub-
lithographic shape size,
and said sub-lithographic shape size being limited such that
said sub-lithographic shape size causes a physical change only in a
surface of said photoresist and such that said sub-lithographic shape
size avoids forming an opening through said photoresist after said
photoresist is developed.
Claim Appendix (App. Br. 21-27).
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1-5, 7-11and20-24 are rejected under 35 U.S.C. §102(e) as
anticipated by, or in the alternative under§ 103(a) as obvious over, Jahnke
(US 2009/0075178 Al, published March 19, 2009).
II. Claims 13-17 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Jahnke in view of Lin (U.S. 5,472,814, issued December 5, 1995).
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Appeal2014-006671
Application 12/690,312
III. Claims 6, 12, 18 and 25 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Jahnke, Lin and in further in view of Singh (U.S.
6,898,781 B2, issued May 24, 2005).
For the first ground of rejection, Appellants state that independent
claims 1, 7, 13 and 20 stand or fall together (App. Br. 10), and that the
dependent claims stand or fall with their respective independent claims
(App. Br. 15).
ANALYSIS
We have reviewed each of Appellants' arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner's finding that the claimed subject matter of each independent
claim is anticipated, or alternatively obvious, within the meaning of§ 102 or
§ 103 in view of the applied prior art. Accordingly, we will sustain the
Examiner's rejections for essentially those reasons expressed in the Answer,
including the Examiner's Response to Argument section, and we add the
following primarily for emphasis.
Appellants only dispute is that the registration marks (i.e., sub-
lithographic shape size) of Jahnke's photomask do not function as recited in
each independent claim since Jahnke explicitly states that its registration
marks are "not to be transferred into a resist layer" (App. Br. 11-13, citing
Jahnke abstract and i-fi-113, 21 ). The Examiner urges that Jahnke's
illumination diagrams in Figs. 3A and 3B depict regions having
combinations of line widths and exposure doses teaching and/ or suggesting
registration marks that result in the mask printing a feature on only the
surface of the resist layer (Ans. 12, 13).
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Appeal2014-006671
Application 12/690,312
It is well established that when there is a reason to conclude that the
structure of the prior art is capable of performing the claimed function, the
burden shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. See, e.g., In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). It is also well settled
that when a claimed product reasonably appears to be substantially the same
as a product disclosed by the prior art, the burden is on the applicant to
prove that the prior art product does not necessarily or inherently possess
characteristics attributed to the claimed product, and that it is of no moment
whether the rejection is based on§ 102 or§ 103 since the burden is on the
applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellants' contention that one would not use registration marks that
function as recited in the claims since Jahnke "goes to great lengths ... to
specify the wavelengths that can be utilized so that the [registration] marks
are not imaged into the resist layer (App. Br. 11; Reply Br. 5) appears
misdirected. Although Jahnke teaches using a particular process parameter,
i.e., an exposure dose/wavelength, to avoid the recited function, it does
imply that in the absence of using such process parameter, Jahnke's
registration marks that correspond to the recited sub-lithographic shape
cannot avoid the recited function (e.g., Ans. 12, 13). In other words, the
functional capability recited in the claims is dependent on the size of the
registration marks and the exposure dose. The size of the lines in the marks
in Jahnke (e.g., 280 to 400 nanometers as exemplified in Jahnke i-f 34) appear
to be on the same order as encompassed by the claims (e.g., Spec. i-f 34
implicitly disclosing 300 to 400 nanometers). Indeed, Appellants admit the
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Appeal2014-006671
Application 12/690,312
Examiner's position "might be reasonable" except for the fact that Jahnke
explicitly discusses states its marks are not imaged into the resist layer (App.
Br. 11; Reply Br. 5). Notably, the claims, which are drawn to a photomask,
rather than to a process for using a photomask, do not recite any specific size
for their sub-lithographic shape, nor do they require that the capability of
their sub-lithographic shape occur within specified radiation exposure doses,
such as that disclosed in Jahnke. Accordingly, the Examiner has presented a
prima facie case of unpatentability of the photomask as claimed.
Appellants have not provided any persuasive reasoning or credible
evidence to refute the Examiner's determination that the registration marks
(sub-lithographic shape) of the photomasks taught and suggested in Jahnke
are capable of causing a physical change as recited in each independent
claim in a given radiation exposure dose outside of that disclosed in Jahnke
because this capability is dependent on size and exposure dose, not size
alone (e.g., Ans. 11 (the Examiner urges that Appellants have not rebutted
the inherent "capability" of the sub-lithographic mark taught by Jahnke to
function as recited in the claim)). Stated differently, Appellants have not
shown that the recited function would have rendered the sub-lithographic
shape of the claimed photomask structurally different from the registration
marks of the photomask taught by Jahnke. See In re Michlin, 256 F .2d 317,
320 (CCPA 1958) ("It is well settled that patentability of apparatus claims
must depend upon structural limitations and not upon statements of
function."). Attorney's arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellants' do not present any additional arguments for the § 103
rejections II, III (App. Br. 15-19).
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Appeal2014-006671
Application 12/690,312
Accordingly, the Examiner's§§ 102 and 103 rejections are affirmed
with respect to all of the claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
ORDER
AFFIRMED
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