Ex Parte Lee

Board of Patent Appeals and Interferences

Jul 29, 2011

11025123 (B.P.A.I. Jul. 29, 2011)

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.
11/025,123 12/28/2004 Jun Seok Lee OPP-GZ-2004-0068-US-00 3916
36872 7590 08/01/2011
THE LAW OFFICES OF ANDREW D. FORTNEY, PH.D., P.C.
215 W FALLBROOK AVE SUITE 203
FRESNO, CA 93711
EXAMINER
RAYMOND, BRITTANY L
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
08/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JUN SEOK LEE
________________

Appeal 2010-006396
Application 11/025,123
Technology Center 1700
________________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-20 as unpatentable over Lin (US
6,251,564, issued Jun. 26, 2001) in view of Watanabe (US 2003/0064300 A1, pub.
Apr. 03, 2003) and Smith (US 6,489,083 B1, issued Dec. 03, 2002).

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We REVERSE and make a NEW GROUND OF REJECTION.
Appellant claims an exposure method for an area which includes a dense
area and a sparse area comprising carrying out a first exposure on a photoresist
layer using a first photomask having patterns corresponding to the dense and
sparse areas and carrying out a second exposure on the photoresist layer using a
second photomask comprising a first halftone layer having a first transmissivity in
the dense area and a second halftone layer having a second transmissivity in the
sparse area (claim 1). Appellant further defines the claimed exposure method as
including the circumstance wherein the first transmissivity is greater than the
second transmissivity (claim 3) and more specifically wherein the first halftone
layer has a transmissivity of 95% and the second halftone layer has a transmissivity
of 90% (claim 10).
Representative claims 1, 3, and 10 read as follows:
1. An exposure method comprising:

defining a hole area for a plurality of holes into a dense area and a sparse
area;

coating a photoresist layer on a substrate having a plurality of elements
formed thereon;

carrying out a first exposure on the photoresist layer using a first photomask
having patterns corresponding to the dense and sparse areas, respectively; and

carrying out a second exposure on the photoresist layer using a second
photomask comprising a first halftone layer having a first transmissivity in dense
area and a second halftone layer having a second transmissivity in the sparse area.

3. An exposure method as defined by claim 1, wherein the first
transmissivity is greater than the second transmissivity.

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10. The method of Claim 3, wherein the first halftone layer has a
transmissivity of 95% and the second halftone layer has a transmissivity of 90%.

The § 103 Rejection
The Examiner finds that Lin discloses an exposure method comprising a first
exposure through a phase-edge mask and a second exposure through a halftone
mask (Ans. 4). The Examiner concedes that Lin fails to disclose conducting the
second exposure using first and second halftone layers having first and second
transmissivities in dense and sparse areas respectively as required by claim 1 or the
specific first and second transmissivities required by claims 3 and 10 (id.). To
supply these deficiencies, the Examiner relies on Watanabe (id. at para. bridging 4-
5) to support a conclusion that it would have been obvious, in view of Watanabe,
to practice Lin's second exposure using Appellant's claimed first and second
halftone layers having first and second transmissivities in dense and sparse areas
respectively (id. at para. bridging 5-6).
Watanabe discloses an exposure method wherein halftone films (i.e., layers)
of different thicknesses are used in dense and isolated (i.e., sparse) areas in order to
effect a phase difference in the transmitted light whereby the openings created in
the dense and isolated areas are the same size (Abstract, paras. [0019], [0026],
[0045], [0051]).
Appellant argues that the Examiner's rejection is based on speculation that
the different thicknesses of Watanabe's halftone films create different
transmissivities (App. Br. 12-13). We agree.
In response to Appellant's argument, the Examiner concedes that "Watanabe
does not state that the transmissivities of the different regions are different" (Ans.
para. bridging 7-8) but contends that "changing the thickness of the half tone film
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[of Watanabe] affects the transmissivity of the film in that area" (id.). However,
this contention is not supported by the Watanabe disclosures identified by the
Examiner in the Answer. In the record before us, the Examiner's contention is
unsupported by evidence and therefore conclusory.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
Because the Examiner's interpretation of Watanabe is conclusory and
without rational underpinning, we cannot sustain the § 103 rejection of claims 1-20
as unpatentable over Lin, Watanabe, and Smith.

The New Ground of Rejection
Claims 3 and 10 are rejected under the first paragraph of 35 U.S.C. § 112 for
failing to comply with the written description requirement.
Claim 3 requires that the first transmissivity (i.e., in the dense area) is
greater than the second transmissivity (i.e., in the sparse area), and correspondingly
claim 10 requires a first transmissivity of 95% and a second transmissivity of 90%.
As correctly indicated by the Examiner in the Answer and not disputed by
Appellant in the Reply Brief, paragraph [0026] of the Specification discloses a
90% transmitivity (note: the record reflects that "transmissivity" and
"transmitivity" are synonymous) in the dense area and a 95% transmitivity in the
sparse area which contradicts, and in fact is opposite to, the requirements of claims
3 and 10 (Ans. 10). The subject matter defined by claims 3 and 10 also is
contradicted by original claim 3 (which, like Specification paragraph [0026],
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recites a 95% transmitivity in the sparse area and a 90% transmittivity in the dense
area).
The test for written description sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date. Ariad
Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
Under the circumstances recounted above, the original disclosure of the
present application would convey to those skilled in the art that the subject matter
possessed by Appellant on the filing date is contrary, in fact opposite, to the
subject matter defined by claims 3 and 10. It follows that claims 3 and 10 fail to
comply with the written description requirement.
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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Summary
The decision of the Examiner rejecting claims 1-20 under 35 U.S.C. § 103(a)
is reversed, and a new rejection is made under 35 U.S.C. § 112, first paragraph,
against claims 3 and 10.
REVERSED
37 C.F.R. § 41.50(b)

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