Ex Parte Lai

Board of Patent Appeals and Interferences

Nov 23, 2004

10293545 (B.P.A.I. Nov. 23, 2004)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte LAURENCE MC LAI

Appeal No. 2005-0077
Application No. 10/293,545

ON BRIEF

Before KIMLIN, GARRIS and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-12,
all the claims pending in the present application. Claim 1 is
illustrative:
1. A method of preparing a modified trace design having at
least one trace for use in effecting selective demetallization of
a metal-containing web in a continuous submersion bath etch
process, the method comprising:
preparing an original trace design;
translating the original trace design for placement on the
web, wherein at least some segments of the original trace design
are transverse to a direction of elongation of the web; and
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Application No. 10/293,545
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widening at least some of the segments of the original trace
design that are transverse to the direction of elongation of the
web to obtain the modified trace design.
In addition to the admitted prior art, the examiner relies
upon the following references as evidence of obviousness:
Whittle 4,082,632 Apr. 4, 1978
Stanley Wolf and Richard Tauber (hereinafter "Wolf"), 1 Silicon
Processing for the VLSI Era 520-24 (Lattice Press, 1986)
Appellant's claimed invention is directed to a method of
preparing a modified trace design that is to be translated on a
web in a continuous etching process of the web. Appellant has
found that the over-etching of features on the web were greater
in the transverse section of the web relative to over-etching of
the features in the longitudinal direction. The longitudinal
direction is the direction of travel of the web through the
continuous etching bath. Appellant's solution to the problem is
widening the original trace design in the transverse direction to
compensate for the over-etching in the transverse direction.
Appealed claims 1-12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the admitted prior art in view of Wolf
and Whittle.
Appellant submits at page 5 of the principal brief that
claims 1 and 6 stand and fall together but that claims 2-5 and
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Application No. 10/293,545
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7-12 are separately patentable. However, we agree with the
examiner that the appellant has not set forth a substantive
argument for any of the claims that are asserted to be separately
patentable. As explained by the examiner, appellant simply
recites the various limitations in the separate claims without
advancing an argument why the features of the claims would have
been unobvious to one of ordinary skill in the art, other than
for the reasons set forth for independent claims 1 and 6.
Accordingly, all the appealed claims stand or fall together with
claim 1. In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462,
1465 (Fed. Cir. 2002).
We have thoroughly reviewed each of appellant's arguments
for patentability. However, we are in complete agreement with
the examiner that the claimed subject matter would have been
obvious to one of ordinary skill in the art within the meaning of
§ 103 in view of the applied prior art. Accordingly, we will
sustain the examiner's rejection for essentially those reasons
expressed in the Answer, and we add the following primarily for
emphasis.
There is no dispute that it was known in the art to
translate trace designs on a web continuously moving through an
etching bath. It is appellant's contention that none of the
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Application No. 10/293,545
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prior art references teaches the claimed step of widening the
segments of the original design that are transverse to the
direction of elongation of the web in order to compensate for
over-etching in the transverse direction. However, the examiner
correctly points out that Wolf evidences that it was known in the
art to specifically modify the mask dimensions of a pattern to be
translated in the direction of the observed over-etching (page
523, second paragraph). Also, Whittle provides additional
evidence that over-etching may be compensated for by modifying
the dimensions of the mask which translates a pattern to the
substrate to be etched (see column 2, lines 45-50). Accordingly,
although appellant urges that neither of Wolf nor Whittle teaches
the problem of over-etching being greater in the transverse
direction, we agree with the examiner that one of ordinary skill
in the art would have found it obvious to apply the principles of
mask modification disclosed by Wolf and Whittle to solve the
problem of over-etching in any direction, including the
transverse direction particularized by appellant. We are
confident that the recognition of the problem of over-etching in
the transverse direction, and its solution by applying the
principles articulated by Wolf and Whittle, would have been
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readily apparent to one of ordinary skill in the art. In re
Ludwig, 353 F.2d 241, 243-44, 147 USPQ 420, 421 (CCPA 1965).
As a final point, we note that appellant bases no argument
upon objective evidence of nonobviousness, such as unexpected
results, which would serve to rebut the inference of obviousness
established by the examiner.
In conclusion, based on the foregoing and the reasons well-
stated by the examiner, the examiner's decision rejecting the
appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
ECK:clm
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