Ex Parte Kobrin

Patent Trials and Appeals Board

Dec 27, 2016

13416716 - (D) (P.T.A.B. Dec. 27, 2016)

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
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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”).
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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.
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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.
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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
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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).
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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.
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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
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