Ex Parte JIN et al

Board of Patent Appeals and Interferences

Jul 16, 2003

09178249 (B.P.A.I. Jul. 16, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHANGMING JIN,
RICHARD SCOTT LIST,
and
JOSEPH D. LUTTMER
__________

Appeal No. 2002-1330
Application No. 09/178,249
___________

ON BRIEF
___________

Before GARRIS, TIMM, and DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2002) from the examiner’s final rejection of claims 1, 2, 5,
and 6 (final Office action mailed Jul. 2, 2001, paper 10) in the
above-identified application. Claims 3, 4, and 7, which are the
only other pending claims, have been “objected to as being
dependent upon a rejected base claim” but indicated as allowable
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Application No. 09/178,249

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“if rewritten in independent form including all of the
limitations of the base claim and any intervening claims.”
(Final Office action, page 4.)
The subject matter on appeal relates to a dielectric layer
fabrication method. Further details of this appealed subject
matter are recited in representative claims 1 and 5 reproduced
below:
1. A dielectric layer fabrication method,
comprising the steps of:
(a) applying a layer of dielectric precursor on
a body;
(b) flowing a precursor reaction catalyst over
said layer; and
(c) completing a precursor reaction to form a
dielectric layer.

5. The method of claim 1, wherein:
(a) said body of step (a) of claim 1 is within a
circular cylindrical chamber; and
(b) said flowing of step (b) of claim 1 is into
said chamber at the circular periphery of
said chamber, is radial over said precursor
layer to a central axis, and is out of said
chamber at said central axis.

The examiner relies on the following prior art references
as evidence of unpatentability:
Radhakrishnan 5,650,361 Jul. 22, 1997

Smith et al. 5,955,140 Sep. 21, 1999
(Smith) (filed Nov. 14, 1996)

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Application No. 09/178,249

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The appealed claims stand rejected as follows:
I. claims 1, 2, and 6 under 35 U.S.C. § 102(e) as
anticipated by Smith (examiner’s answer mailed
Mar. 26, 2002, paper 13, page 3); and
II. claim 5 as under 35 U.S.C. § 103(a) unpatentable
over Smith in view of Radhakrishnan (id.).1
We affirm both rejections.2
Smith describes a method for forming a nanoporous
dielectric layer on a semiconductor substrate comprising:
(a) applying a nanoporous aerogel precursor sol on the
substrate, the precursor sol comprising specified
amounts of a metal-based aerogel precursor reactant
and a specified amount of a first solvent comprising
glycerol; and
(b) gelling (i.e., reacting) the precursor sol and drying
to form a dry nanoporous dielectric layer.

1 The appellants’ statement of the issues (appeal brief
filed Dec. 3, 2001, paper 12, p. 2) is erroneous.

2 The appellants submit: “The claims are treated as single
group [sic] in each rejection.” (Appeal brief, p. 2.) However,
the appellants present only one set of arguments against both
prior art rejections and only with respect to claim 1. (Id. at
p. 3.) Although the examiner rejected claim 5 separately over
the combined teachings of Smith and Radhakrishnan, the
appellants deliberately chose to rely on the same arguments for
both grounds of rejection. Under these circumstances, we
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Application No. 09/178,249

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(Column 6, lines 10-60.) Smith further describes the
introduction of a vapor-phase catalyst such as ammonia to
further activate the sol and promote rapid cross-linking.
(Column 8, lines 46-50; column 30, line 62 to column 31, line
8.)
The appellants’ only discernible argument is that
“Smith...does not suggest any flowing of the catalyst over the
precursor layer as required by claim 1.” (Appeal brief, page
3.) We disagree.
To start, we note that Smith’s catalyst is described as
performing the same function (i.e., catalyze the gelation
reaction) as the appellants’ recited catalyst. (Specification,
page 6, lines 21-23; Smith’s column 8, lines 40-53.) Also,
while a preferred embodiment of the invention includes
“continuously flowing” the catalyst through the “gel aging
chambers,” this feature of the invention is not specified in
appealed claim 1.
As pointed out by the examiner (answer, page 4), the
introduction of Smith’s catalyst vapor into closed chamber 32
(Figure 19C) to catalyze the reaction (i.e., gelation) of the
precursor sol film would necessarily result in the movement of

confine our discussion to claim 1. 37 CFR §§ 1.192(a), c(7) and
c(8) (1995, 1997).
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Application No. 09/178,249

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catalyst vapor (e.g., by diffusion) molecules over the precursor
sol film, thus satisfying the here claimed limitation of
“flowing a precursor reaction catalyst over said layer.”3 In
this regard, the fundamentals of mass-transfer dictate that
“[w]hen a homogeneous material - either gas, liquid, or solid -
contains two or more components whose concentrations vary from
point to point, there is a tendency for transfer of mass to take
place in such a way as to cause the concentrations to become
uniform.” See Chemical Engineers’ Handbook 14-3, 14-4 (Robert
H. Perry & Cecil H. Chilton eds., 5th ed. 1973), copy attached.
Absent any special definition in the appellants’ specification
for the term “flowing,”4 we must uphold the examiner’s
determination that Smith discloses, either expressly or
inherently, each and every limitation of appealed claim 1.
The appellants’ arguments regarding Radhakrishnan as they
relate to appealed claim 1 are irrelevant, because this claim
has been rejected under 35 U.S.C. § 102(e) as anticipated by

3 For completeness, we attach a copy of Webster’s Third New
International Dictionary 875, for the definition of the root
term “flow.” The examiner’s definition of the term (answer, p.
4) is consistent with the meaning of the term as set forth in
the dictionary.

4 In re Morris, 127 F.3d 1048, 1054, 1056, 44 USPQ2d 1023,
1027, 1029 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989).

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Smith. In any event, the appellants do not dispute the
examiner’s apparent determination that when the teachings of
Smith and Radhakrishnan are combined, one of ordinary skill in
the art would have been led to arrive at a method encompassed by
appealed claim 1.5 Rather, the appellants argue that
Radhakrishnan does not suggest any “flowing” of a catalyst over
a precursor layer. (Appeal brief, page 3.)
We are not persuaded by the appellants’ argument. When
properly construed, the claim limitation “flowing a precursor
reaction catalyst over said layer” includes the type of catalyst
vapor movement as described in Smith. The examiner’s rejection
is based not on Radhakrishnan alone but instead on the
collective teachings of both applied prior art references. In
re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The
test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference...Rather, the test is what the combined

5 In the event of continued examination, the examiner
should provide a detailed explanation on how the combined
teachings of Smith and Radhakrishnan would have suggested to one
of ordinary skill in the art a method in which “(b) said flowing
of step (b) of claim 1 is into said chamber at the circular
periphery of said chamber, is radial over said precursor layer
to a central axis, and is out of said chamber at said central
axis,” as recited in appealed claim 5.
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teachings of the references would have suggested to those of
ordinary skill in the art.”).
The appellants further argue that Radhakrishnan describes
cleaning a substrate prior to deposition of the dielectric layer
and does not relate to dielectric layer formation. (Appeal
brief, page 3.) According to the appellants (id.),
Radhakrishnan does not teach the use of a catalyst and “has no
suggestion of either a precursor layer or a catalyst.” Again,
the appellants incorrectly focus on the teachings of
Radhakrishnan alone rather than the collective teachings of both
prior art references. For this reason, the appellants’ argument
fails.
In summary, we affirm the examiner’s rejections under: (i)
35 U.S.C. § 102(e) of appealed claims 1, 2, and 6 as anticipated
by Smith; and (ii) 35 U.S.C. § 103(a) of appealed claim 5 as
unpatentable over Smith in view of Radhakrishnan.
The decision of the examiner is affirmed.

Appeal No. 2002-1330
Application No. 09/178,249

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Bradley R. Garris )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Catherine Timm )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )

RHD/kis

Appeal No. 2002-1330
Application No. 09/178,249

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