Ex Parte KobrinDownload PDFPatent Trial and Appeal BoardDec 27, 201613416716 (P.T.A.B. Dec. 27, 2016) Copy Citation United States Patent and Trademark Office 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. 13/416,716 03/09/2012 Boris Kobrin RO-OOl-DIV 5560 27652 7590 12/29/2016 TOSHTTA D TSF.NRF.Rn EXAMINER JDI PATENT ANGEBRANNDT, MARTIN J 809 CORPORATE WAY FREMONT, CA 94539 ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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): josh@jdipatent.com jessica@jdipatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BORIS KOBRIN Appeal 2015-002866 Application 13/416,716 Technology Center 1700 Before PETER F. KRATZ, ROMULO H. DELMENDO, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals the Examiner’s final rejection of claims 1, 5, 6, and 9-15. 35U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE. 1 In this decision, we refer to the Final Office Action appealed from, mailed April 8, 2014 (“Final Act.”); the Advisory Action dated June 16, 2014 (“Adv. Act.”); the Appeal Brief dated September 8, 2014 (“App. Br.”); and the Examiner’s Answer to the Appeal Brief dated October 24, 2014 (“Ans.”). 2 Appellant identifies Rolith, Inc. as the Real Party in Interest. App. Br. 2. Appeal 2015-002866 Application 13/416,716 The Claimed Invention Appellant’s disclosure relates to methods and apparatus used for the nanopatteming of large area substrates, where a rotatable mask is used to image a radiation-sensitive material. Abstract. The disclosed nanopatteming methods make use of near-field photolithography, where the mask used to pattern the substrate is in contact or close proximity with the substrate. Id. Claims 1 and 5 are illustrative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 20) (emphasis added to identify key limitations in dispute): 1. An apparatus to carry out near-field lithography, comprising: a) a rotatable mask having a nanopattem on an exterior surface of said mask, wherein said nanopattem is formed from a conformable material; and b) a radiation source which supplies radiation of a wavelength of 436 nm or less from said nanopattem, while said nanopattem is in contact with a radiation-sensitive layer of material, wherein said rotatable mask is a cylinder, wherein said rotatable mask is transparent, and wherein said rotatable mask is a phase-shifting mask. 5. An apparatus to carry out near-field lithography, comprising: a) a rotatable mask having a nanopattem on an exterior surface of said mask, wherein said nanopattem is formed from a conformable material; and b) a radiation source which supplies radiation of a wavelength of 436 nm or less from said nanopattem, while said nanopattem is in contact with a radiation-sensitive layer of material, wherein said rotatable mask includes a rigid cylinder, wherein the conformable material is a transparent film on an outer surface of the rigid cylinder, and wherein said rotatable mask further includes a metal layer on the transparent film, wherein said rotatable mask is configured to employ radiation 2 Appeal 2015-002866 Application 13/416,716 generated using surface plasmon techniques to produce photochemical or photophysical changes in a layer below the metal layer. The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Tompkin et al., US 6,060,143 May 9, 2000 (hereinafter “Tompkin”) Hojo et al., US 2003/0129385 Al July 10, 2003 (hereinafter “Hojo”) Jeans US 2004/0219246 Al Nov. 4, 2004 (hereinafter “Jeans” or “Jeans ’246) Kiriya US 2006/0033896 Al Feb. 16, 2006 Jongerius WO 2006/043244 Al Apr. 27, 2006 Maria et al., Nanopatterning with conformable phase masks, J. Photochem. and Photobiol. A: Chem. 166 (2004) 149—154 (hereinafter “Maria 2004”). Maria et al., Experimental and computational studies of phase shift lithography with binary elastomeric masks, 828 J. Vac. Sci. Technol. B 24(2) 828-835 (2006) (hereinafter “Maria 2006”). Han et al., Fabrication of complex nanoscale structures on various substrates, Appl. Phys. Lett. 91, 123118 (2007) (hereinafter “Han”). 3 Appeal 2015-002866 Application 13/416,716 The Rejections On appeal, the Examiner maintains the following rejections:3 1. Claims 5, 6, and 9-11 are rejected under 35 U.S.C. § 112(a) or 35U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Ans. 2. 2. Claims 1 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jeans and Maria 2006, in view of Maria 2004. Ans. 3. 3. Claims 1 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jeans, Maria 2006, and Maria 2004, in view of Han and Hojo. Ans. 5.4 4. Claims 1, 12, and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Jeans, Maria 2006, and Maria 2004, in view of Jongerius and Kiriya. Ans. 6. OPINION Rejection 1 Claims 5, 6, and 9-11 stand rejected for failing to comply with the written description requirement. Ans. 2. The Examiner concludes that adequate written descriptive support is not provided in the Specification for claim 5’s recitation “wherein said rotatable mask further includes a metal 3 The Examiner has withdrawn the rejections of claims 1 and 12 under 35 U.S.C. § 103(a) over the combination of Maria 2006, Jeans, Maria 2004, Schmid, and Inao; and the combination of Maria 2006, Jeans, Maria 2004, Schmid, Inao, Han, and Hojo, respectively. Ans. 7, 8. 4 The Examiner appears to have been inadvertently omitted the Tompkin reference from the Statement of Rejection, which the Examiner cites and discusses on page 7 of the Answer and page 8 of the Final Office Action. 4 Appeal 2015-002866 Application 13/416,716 layer on the transparent film.” Id. at 2. In particular, the Examiner contends that “it is not clear that the specification describes the nanopattemed conformal layer being coated with a metal layer.” Id. Appellant argues that the Examiner’s rejection should be reversed because “there is ample support in the description for claims directed to a plasmonic mask formed from a layer of metal on a patterned conformable material.” App. Br. 7 (relying on Spec. Tflf 25, 26, 43, 53, 59). We agree with Appellant’s argument and are persuaded that the claim recitation: “includes a metal layer on the transparent film” is adequately supported by the as-filed, Specification. We note that paragraph 26 of the Specification explicitly discloses that “a metal layer or film is laminated or deposited onto the outer surface of the rotatable mask, which is typically a transparent cylinder.” Moreover, we are persuaded that paragraph 26 read along with the other portions of the Specification identified by Appellant and the Specification as a whole provide sufficient written descriptive support for the disputed limitation, such that the skilled artisan would have understood that the inventor was in possession of and had actually invented the rotatable mask as claimed. AriadPharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.”). Accordingly, we reverse the Examiner’s rejections of claims 5, 6, and 9—11 for failing to comply with the written description requirement. 5 Appeal 2015-002866 Application 13/416,716 Rejection 2 The Examiner determines that the combination of Jeans, Maria 2006, and Maria 2004 suggests a near-field lithography apparatus satisfying all of the limitations of claim 1 and that the prior art combination would have rendered claim 1 obvious. Ans. 3—5. In particular, the Examiner finds that Jeans discloses an apparatus for embossing a flexible substrate with an optically transparent compliant media. Id. at 3. The Examiner finds further Jeans teaches radiation passing through a transparent embossing cylinder into a photopolymer, which is formed by providing the cylinder with the optically transparent compliant media; and that the optically transparent compliant media can be made of “Polydimethyl Siloxane (PDMS).” Id. at 4. The Examiner also finds that Maria 2006 and Maria 2004 each teaches elastomeric binary phase masks formed of polydimethylsiloxane and the use of the masks to expose resist. Ans. 3^4. Each of the Maria references teaches the use of high resolution, near field photolithography as the method for generating the phase masks. See Maria 2006, Abstract, Fig. 2 (disclosing “near field optical imaging and photolithographic use of PDMS phase masks”); Maria 2004, Abstract (disclosing “near field phase shift lithography”). Based on the above findings regarding the teachings of the prior art, the Examiner concludes that It would have been obvious to one skilled in the art to modify the apparatus of Jeans ’246 by utilizing a elastomeric binary phase mask such as those taught by [Maria 2006] and Maria [2004] and to tension the mask and photoresist so that close contact is made with minimal physical embossing of the resist to form high resolution features in the resist based upon the criticality of the contact taught by [Maria 2004], Ans. 4. The Examiner further concludes that 6 Appeal 2015-002866 Application 13/416,716 Alternatively, it would have been obvious to modify the apparatus of [Maria 2006] by forming the phase mask as a coating onto a cylinder as taught by Jeans ’246 to facilitate continuous processing and using the tensioning means taught by Jeans ’246 to maintain close contact is with minimal physical embossing of the resist to form high resolution features in the resist based upon the criticality of the contact taught by [Maria 2004], Id. at 4—5. Appellant argues that the Examiner’s rejection should be reversed because the Examiner has failed to establish a prima facie case of obviousness. App. Br. 10. In particular, Appellant argues that the Examiner’s analysis and obviousness conclusion are erroneous because “the primary reference (Jeans) is incompatible with the modification suggested by the secondary references (Maria 2006 and Maria 2004).” Id. at 8. That is, the Examiner’s conclusion lacks rational underpinning and is unsupported by a preponderance of the evidence. Id. at 10. We agree with Appellant’s argument. Based on the record before us, we are not persuaded that the Examiner has provided an adequate technical explanation or identified sufficient evidence to support the conclusion that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Jeans’ embossing apparatus to form phase masks using the Maria references’ near field photolithography process. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “reasoning with some rational underpinning to support the legal conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial burden of establishing a prima facie case of obviousness). 7 Appeal 2015-002866 Application 13/416,716 The Examiner does not adequately explain why one of ordinary skill would have had reason to modify or combine the teachings of the prior art references to arrive at the claimed invention. As Appellant correctly points out (App. Br. 8, 9), Jeans’ embossing apparatus requires applying pressure to a liquid resist with a curved belt or cylinder mask. Jeans, 50—59, Figs. 38, 42, 43, 44. In contrast, the Maria references’ near field phase photolithography method requires conformal contact between a flat mask and a flat layer of solid resist. Maria 2006, Abstract, pp. 828—830; Maria 2004, Abstract, pp. 149-150. The Examiner also does not identify sufficient evidence in the record that a skilled artisan would have had a reasonable expectation of success in modifying Jeans’ embossing apparatus to form the Maria references’ phase masks. In particular, the Examiner does not meaningfully respond to Appellant’s argument regarding the incompatibility between Jeans’ apparatus and the Maria references’ phase lithography methods or direct us to any teaching or suggestion in the prior art regarding the technical feasibility of using an embossing apparatus to produce high resolution phase masks, and why one of ordinary skill in the art would have had a reasonable expectation of success in modifying Jeans’ apparatus to do so. The Examiner’s assertions that the “use of the same material in these references provides a reasonable expectation of success in forming a useful mask” and “the use of these techniques to pattern photoresist material clearly establish them as analogous and within the skill set of one of ordinary skill in the art” (Ans. 10, 11) are conclusory and, without more, insufficient to sustain the Examiner’s obviousness conclusion and findings in this regard. Kahn, 441 F.3d at 988 (holding “rejections on obviousness grounds cannot be sustained by mere conclusory statements”); Oetiker, 977 F.2d at 1445. 8 Appeal 2015-002866 Application 13/416,716 Accordingly, we reverse the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jeans, Maria 2006, and Maria 2004. Because claim 12 depends from claim 1, we also reverse the Examiner’s rejection of claim 12. Rejections 3 and 4 The foregoing deficiencies in the Examiner’s findings and conclusions regarding the combination of Jeans, Maria 2006, and Maria 2004 are not remedied by the Examiner’s findings regarding the additional references or combinations of references cited in support of the third and fourth grounds of rejection. Accordingly, we also reverse Rejections 3 and 4. DECISION/ORDER The Examiner’s rejections of claims 1, 5, 6, and 9-15 are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation