Ex Parte Laermer

Patent Trials and Appeals Board

Jun 19, 2019

14783464 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/783,464 10/09/2015
10800 7590 06/19/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Franz Laermer
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.
2178-1380 9439
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
06/19/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte FRANZ LAERMER
Appeal2018-006808
Application 14/783,464
Technology Center 1700
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1 and 3-12. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 Appellant is the Applicant, Robert Bosch GmbH, which is identified in the
Appeal Brief as the real party in interest. Appeal Br. 2.
2 Our Decision refers to the Specification ("Spec.") filed October 9, 2015,
Appellant's Appeal Brief ("Appeal Br.") filed February 19, 2018, the
Examiner's Answer ("Ans.") dated April 17, 2018, and Appellant's Reply
Brief ("Reply Br.") filed June 15, 2018.
Appeal2018-006808
Application 14/783,464
STATEMENT OF THE CASE
The invention relates to a method of masking a substrate surface by
locally selective formation of colloidal silicon oxide. Spec. 1:6-13; 2:7-17.
Appellant discloses that the substrate surface can preferably comprise silicon
oxide, aluminum, or silicon. Id. at 2:26-35. Appellant further discloses that
colloidal silicon oxide is silicon oxide formed on the surface in a very fine
structural size upon drying and concentration of a saturated or supersaturated
fluorosilicic acid solution. Id. at 4: 10-14. The colloidal silicon oxide may
optionally contain fluorine and/or bound water. Id. at 4: 14--17. The colloids
can form by reaction of fluorosilicic acid to silicon oxide clusters with the
liberation of HF acid, a process known as "staining" and feared in the
semiconductor industry because its formation leads to defects in
semiconductor gate oxides. Id. at 4:22-30. However, according to
Appellant, the inventive method permits the simple and inexpensive creation
of a mask that is extremely stable towards a large number of etching media,
such as hydrofluoric acid. Id. at 2:19-22.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A method for masking a surface, comprising:
locating a substrate having a surface to be masked, the
surface comprising silicon oxide, aluminum, or silicon; and
producing a defined masking pattern by local selective
formation of colloidal silicon oxide on the surface, the
formation resulting from spatially selective and successive
application and drying of fluorosilicic acid (H2SiF6) on the
surface.
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Appeal2018-006808
Application 14/783,464
Claim 9 similarly recites a method for masking a surface by the same
step of producing a defined masking pattern by local selective formation of
colloidal silicon oxide on the surface by spatially selective and successive
application and drying of fluorosilicic acid on the surface.
REJECTIONS
The Examiner maintains, and Appellant requests review of, the
following rejections under 35 U.S.C. § I02(a)(l):
1. Claims 1 and 3-12 as anticipated by Hieda (US 5,262,282, issued
Nov. 16, 1993);
2. Claims 1 and 3-12 as anticipated by Lur (US 5,453,395, issued
Sept.26, 1995); and
3. Claims 1, 3-7, and 9-11 as anticipated by Chen (US
2002/0106865 Al, published Aug. 8, 2002).
ANALYSIS
The Examiner finds that each of Hieda, Lur, and Chen anticipates
independent claims 1 and 9. In particular, the Examiner finds Hieda, Lur,
and Chen teach methods for masking a surface wherein the local selective
formation of colloidal silicon oxide on the substrate surface is performed by
spatially selective and successive application and drying of fluorosilicic acid
on the surface. The Examiner finds that the application would be successive
because the application is a continuous growth process, and the drying
occurs in air at room temperature because there is no disclosed protective
extraction environment. In addition, the Examiner states that the
semiconductor fabrication art involves numerous application and removal
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Appeal2018-006808
Application 14/783,464
steps, wherein intermediate steps such as drying are so conventional that
"they go without needing to be stated." Ans. 3-5; Final Act. 2---6.
Appellant argues that none of Hieda, Lur, and Chen discloses
formation of colloidal silicon oxide by drying fluorosilicic acid. Appellant
contends that Hieda, Lur, and Chen precipitate Si02 from a supersaturated
solution of fluorosilicic acid by immersion of an aluminum plate in the
solution, rather than by drying of fluorosilicic acid on the surface.
Appellant asserts that precipitation is not the same as drying and requires a
very different process which results in a significantly different mask.
Moreover, Appellant asserts that Hieda, Lur, and Chen fail to disclose any
processing between the immersion and subsequent masking or photoresist
removal, whereas Chen's process terminates with the immersion and
precipitation of Si02. As such, Appellant contends that Hieda's, Lur's, and
Chen's silence does not support a finding that drying is inherent, especially
because the substrate just as easily could have been rinsed between
immersion and subsequent masking. Appellant invites the Board to take
judicial notice of Chou (US 5,506,006, issued Apr. 9, 1996), which teaches,
according to Appellant, a rinse step following Si02 precipitation onto a
substrate from a supersaturated hydrofluorosilicic acid solution. Appeal Br.
4--7, 10-14, 16-20; Reply Br. 2-5.
Thus, the issue before us on this appeal is whether Appellant has
identified error in the Examiner's findings that each of Hieda, Lur, and Chen
precipitates Si02 onto the substrate surface, at least in part by drying, either
expressly or inherently. We answer this question in the affirmative and will
not sustain the Examiner's anticipation rejections.
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Appeal2018-006808
Application 14/783,464
A claim is anticipated only where "each and every limitation is found
either expressly or inherently in a single prior art reference." Celeritas
Techs., Ltd. v. Rockwell Int'l. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998);
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). "[A] prior art reference
without express reference to a claim limitation may nonetheless anticipate
by inherency." In re Omeprazole Patent Litig., 483 F.3d 1364, 1373 (Fed.
Cir. 2007). In general, a limitation is inherent "if it is the 'natural result
flowing from' the explicit disclosure of the prior art." Schering Corp. v.
Geneva Pharm., 339 F.3d 1373, 1379 (Fed. Cir. 2003) (quoting Eli Lilly &
Co. v. Barr Labs., Inc., 251 F.3d 955,970 (Fed. Cir. 2001)). The inherent
feature inevitably must result from the disclosed steps; "[i]nherency ... may
not be established by probabilities or possibilities." In re Montgomery, 677
F.3d 1375, 1380 (Fed. Cir. 2012); In re Oelrich, 666 F.2d 578,581 (CCPA
1981 ). "The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." MEHL/Biophile Int'! Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting Oelrich, 666 F.2d at 581).
As we understand the Examiner's anticipation findings, in each of the
prior art processes, once the substrate upon which the precipitated Si02 has
been deposited is removed from the supersaturated fluorosilicic acid
solution, some solution would remain and would inevitably and, therefore,
inherently begin drying to thereby add some Si02 to the already deposited
Si02. The problem with these findings is that the references are silent as to
what specifically happens to the substrate after it is removed from the
immersion solution. The Examiner fails to direct our attention to any
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Appeal2018-006808
Application 14/783,464
evidence that the solution is allowed to remain on the substrate at least long
enough for some precipitation to occur by drying, nor do we find any. 3
On the contrary, Appellant challenges the Examiner's position that at
least some drying would be inherent by discussing the possibility that the
solution could be rinsed or washed from the substrate upon removal from the
immersion solution and directing our attention to evidence (Chou) that
rinsing has been performed in the same immersion process as the applied
prior art. We, therefore, cannot accept as fact the Examiner's inherency
findings, specifically that at least some drying is inherent in the processes of
Hieda, Lur, and Chen. Absent such, the Examiner has not established that
any one of Hieda, Lur, and Chen teaches expressly or inherently each and
every limitation of the claimed invention.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1 and 3-12 is reversed.
REVERSED
3 We are not persuaded by Appellant's argument that precipitation and
drying are substantively different processes. As the Specification makes
clear, deposition by drying is precipitation onto the substrate surface. Spec.
4:10-30.
6