Ex Parte Lee et al

Patent Trial and Appeal Board

Apr 27, 2016

12510894 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/510,894 07/28/2009 Kim Yang Lee
105639 7590 04/27/2016
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
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.
10-14844-00-us 2713
EXAMINER
LE,NINHV
ART UNIT PAPER NUMBER
1744
MAILDATE DELIVERY MODE
04/27/2016 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 PA TENT TRIAL AND APPEAL BOARD
Ex parte KIM YANG LEE, 1
David S. Kuo, and Zhaoning Yu
Appeal2014-005095
Application 12/510,894
Technology Center 1700
Before ROMULO H. DELMENDO, MARK NAGUMO, and
WESLEY B. DERRICK, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Kim Yang Lee, David S. Kuo, and Zhaoning Yu ("Seagate") timely
appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 7-10
and 17-24.3 We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is listed as Seagate Technology LLC ("Seagate").
(Appeal Brief, filed 4 November 2013 ("Br."), 2.)
2 Office action mailed 23 April 2013 ("Final Rejection"; cited as "FR").
3 Remaining copending claims 1-6 have been withdrawn from
consideration in response to a restriction requirement (FR 1, § 5a), and are
not before us.
Appeal2014-005095
Application 12/510,894
A. Introduction4
OPINION
The subject matter on appeal relates to imprint lithography. Imprint
lithography is described as impressing a pattern into a thin film of a
moldable resist supported on a substrate by pressing a mold (imprint
template) into the film. (Spec. 1, 1. 25 to 2, 1. 13.) Subsequently, the
compressed regions are said to be removed selectively, thereby forming the
desired features, (id. at 2, 11. 13-17), which can have dimensions less
than 10 nm. (Id. at 11. 19-20.) Two problems in particular are said to arise
from the use of conventional imprint templates. First, it is known that the
resist layer will be "etched faster in the patterned region than in the non-
patterned (field) region," resulting in re-deposition of sputtered material on
the sidewalls of the thin film layer bordering the patterned region (the so-
called "fencing" problem. (Id. at 3, 11. 4-7.) Second, when planarizing
materials are applied after the etching step, "[ d]ue to the difference in filling
ratios, a 'step' profile is usually formed at the pattern/field transition
region." (Id. at ll. 15-17.)
These problems are said to be avoided by the claimed imprint
template by providing a "recessed field region." (Spec. 1, 11. 12-15.)
Pattern transfer is said to be improved "by minimizing material re-deposition
during ion milling and by producing a flat surface in a planarization/etch-
back process." (Id. at ll. 15-17.)
4 Application 12/510,894, Profile control utilizing a recessed imprint
template, filed 28 July 2009. We refer to the '"894 Specification," which we
cite as "Spec."
2
Appeal2014-005095
Application 12/510,894
A comparison of the prior art and inventive templates, and the
resulting fencing and uneven filling problems is provided by Figures 4
and 5, reproduced below.
M8Wr!al Scul~t.imd ~1nr.5 ~~~·•jt.-t.·::>Sl~Lld Du~;:-w km·tf3111
!?~;~~~{:~
FIG. 4
FIG. 5
{Fig. 4, compares the prior art process of imprinting resist layer 4045 with
template 400 (left) with the inventive process (right).
{Fig. 5, compares the thicker deposition of planarizing material in the
unstructured peripheral region than in the patterned interior region (left) with
the planar filling achieved via the claimed mold (right)}
Claim 7 is representative of the dispositive issues and reads:
An imprint template suitable for utilization in imprint
lithography,
the imprint template being formed from a
template master substrate having a planar surface,
the imprint template comprising:
5 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
3
Appeal2014-005095
Application 12/510,894
an interior region of the template master substrate having a
pattern formed therein that includes one or more features
that extend to
a first depth below the planar surface; and
a peripheral field region of the template master substrate
that extends to
a second depth below the planar surface that is less than
the first depth,
thereby providing an imprint template having a recessed
field region.
(Claims App., Br. 9; some indentation, paragraphing, and emphasis added.)
The somewhat complicated prosecution history of this application is
set out infra, for context.
Following the Final Rejection, issued 23 April 2013, Seagate filed an
Amendment After Final on 24 June 2013, requesting reconsideration in light
of proposed amendments to claims 17 and 22-24.
The Examiner refused to enter the proposed amendments and
maintained the rejections of record. (Advisory, entered 5 July 2013.)
There came a time when Seagate filed its principal Brief on Appeal,
contesting all the rejections, as well as certain objections. The Claims
Appendix attached to the Brief includes the claims as proposed in the
Amendment After Final, i.e., amended claims 17 and 22-24, which were
denied entry by the Examiner. These amended claims are not part of the
Record on Appeal. 37 C.F.R. § 31.30.6
6 37 C.F.R. § 41.30 (Final Rule published 76 Fed. Reg. 72270, 72296
(22 November 2011), effective 23 January 2012), reads in most relevant
part, "Record means the items listed in the content listing of the Image File
4
Appeal2014-005095
Application 12/510,894
In due course, the Examiner entered the Examiner's Answer, in
which:
the Examiner withdraws the following grounds of rejection7' 8 :
A. Claims 23 and 24, rejected under 35 U.S.C. § 112(2);
B. Claims 23 and 24, rejected under 35 U.S.C. § 112(1) for lack
of written description;
the Examiner maintains the following grounds of rejection9:
C. Claims 7, 17, 18, and 22 stand rejected under
35 U.S.C. § 102(b) in view ofTokita10;
Cl. Claims 10 and 21 stand rejected under 35 U.S.C. § 103(a) in
view of Tokita;
C2. Claims 8, 9, 19, and 20 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Tokita and either Ro 11 or Yoneda12;
Wrapper of the official file of the application ... excluding amendments,
Evidence, and other documents that were not entered." (Underscore added).
7 Ans. 12-14.
8 We discourage strongly the confusing presentation of the withdrawal,
which includes a complete recitation of the rejection (Ans. 12-14). The
confusion is magnified by the re-statement of these rejections in the section
of the Examiner's Answer headed "Grounds of Rejection to be Reviewed on
Appeal." (Id. at 2--4.) The inclusion of objections to the drawings (id. at 5)
and "Claim Objections" (id. at 6), which the Examiner recognizes are not
appealable matters (id. at 14, ,-i 40) similarly have no place in the Answer.
These extraneous matters serve only to dilute and obscure the Examiner's
findings and conclusions in this Appeal.
9 Examiner's Answer mailed 30 December 2013 ("Ans.").
10 Toshinobu Tokita et al., Pattern transferring mold, pattern transferring
apparatus and device manufacturing method using the same, U.S. Patent
Application Publication 2006/0192320 Al (2006).
11 Myong-do Ro et al., Photo-curable composition . .. , U.S. Patent
Application Publication 2008/0176049 Al (2008).
5
Appeal2014-005095
Application 12/510,894
and the Examiner enters the following new grounds of rejection13 :
D. Claims 17 and 22 stand rejected under 35 U.S.C. § 112(2);
E. Claims 23 and 24 stand rejected under 35 U.S.C. § 102(b) in
view of Tokita.
Seagate filed a Reply, 14 in which Seagate continues to argue that:
1. Claims 23 and 24 satisfy the written description requirement
of 35 U.S.C. § 112(1 ). (Reply 2);
2. the drawings are proper (id. at 3);
3. Claims 17 and 22 are patentable as amended (id. at 4 );
4-6. The prior art rejections C-C2 should be reversed;
Seagate does not address the new grounds of rejection.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
We begin by dismissing Issues 1, 2, and 3, presented in the Brief at
pages 2--4. In each "Issue," Seagate urges that the amendments presented
after the Final Rejection should be entered. (Br. 3--4.) However, review of
an Examiner's action (or refusal to take action), is by way of petition to the
Director. 15 Accordingly, we do not have jurisdiction over these "Issues."
12 Ikuo Yoneda, Pattern forming template and pattern forming method, U.S.
Patent Application Publication 2008/0090170 Al (2008).
13 Ans. 10-11.
14 Reply Brief filed 28 February 2014 ("Reply").
15 37 C.F.R. § 1.181-1.183; see also 37 C.F.R. § 41.37(c)(2) ("Review of an
examiner's refusal to admit an amendment or Evidence is by petition to the
Director.").
6
Appeal2014-005095
Application 12/510,894
On the merits of the rejections over prior art, we find first that Seagate
presents arguments for patentability based on limitations recited in claim 7.
The remaining claims thus stand or fall with claim 7.
The Examiner finds (FR 7) that Tokita illustrates an imprint template,
as shown in the version of Figure 2 annotated by the Examiner and
reproduced below.
1e
FIG. 2A
~ " ~terior .region . . . . .. . . . I LEGEND
-.. ~ 1e·awremuterrnost protrus1ori 1av1ng 11rsv1nner aepm
····• ~ pedµ~ieral (rectJS~el!) field region havir:g
secorid/t::uter dept~
__,. ~ planai s~tfoce
- ~ outermost protrusioi
{Annotated Fig. 2 shows an imprint template (extra label line omitted)}
Briefly, the Examiner finds that the planar surface indicated by the
solid plain arrow in area lb corresponds to a feature in the interior region
extending to a first depth below the surface of the planar surface of the
template master substrate. (Id.) The Examiner finds further that the outer
shoulder, indicated by the dashed arrow, corresponds to a peripheral field
region that extends to a second depth below the planar surface that is less
than the first depth. (Id.) The Examiner concludes that the imprinting
template described by Tokita anticipates claim 7. (Id.)
7
Appeal2014-005095
Application 12/510,894
Seagate's criticisms appear to be based on functional characteristics of
the "interior region of the template master substrate" and of the "peripheral
field region of the template master substrate." For example, Seagate urges
that, according to Tokita, "non-patterned area lb is an area corresponding to
a so-called scribe line." (Br. 5, 11. 4-5.) In contrast, Seagate argues, the
"claimed invention discloses a peripheral field region, which Tokita does not
disclose." (Id. at ll. 9-10.)
It is well-settled that during examination, in the absence of definitions
in the Specification, or evidence in the record indicating that certain words
or phrases are terms of art that have generally accepted meanings to persons
having ordinary skill in the art, the words in a claim are given the broadest
meaning of their general use, in light of the disclosure. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). It is equally well-settled that it is
improper to read limitations from preferred embodiments described in the
Specification into the claims. Irz re Am. Acad. Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004).
The claims, however, do not recite the functions that these regions
must be capable of performing in a template master substrate, or the
characteristics that they must be capable of imparting to the mold, aside
from the relative depths of the recited features. Nor has Seagate directed our
attention to definitions of these terms in the '894 Specification that might
impose requirements that the features in Tokita cannot meet. Our review of
the Specification indicates, at best, descriptions of certain embodiments of
the invention.
8
Appeal2014-005095
Application 12/510,894
In the present case, Tokita describes a pattern transferring mold that is
disclosed as being useful in photo-curing type nanoimprint lithography.
(Tokita, abstract and 1 [0001].) Moreover, as indicated in Tokita Fig. 2B,
reproduced below,
1 I '. I •;•'} • ~, :t.. • ' < •, .' •;: 0 '\ ' I ~ ~ 'o' ~ • ~ r I ~ > ~I'' ''II ~'I' 'I .. I ~ •/ ~ 1' '"'I.} '°'""I '. ll '•.I'• '• ' ' '
8
.. ,..,. .. .;.,:,. .. •,, . .; ....... .,.~-.•.; L'"'"'~"'"'r'.f••;.~.;.,.; ... ,· •. ;,,;,,·>.;: .. J.•lo~·"'' ~
.. ·.• . . ·;. '/,•·.•.•.' .'.".-;'. •;,· :::::; .·,:.-: ... .'.','.'.' . .'/,\'.'.'/.'t;'.".".'.'S;'.'>'.','.·;i.'.".'.": . .',:. ':
~ ' ' "'' •, ,0. ~ ~ '~ ,/-. 0 1', • <;- ~ ... ' • ~"" < ~ ''i' < ~ L"" ~·~ •, '.l ~ o ~ • ~ ' '· ' ~ 'T 0 ... ~ .jo, & 'o ~' ' > ,. •,
'"'' • .- .~ .•• ~ •• '~'·'"'""' 0 '"' 0 ,,., '"'-'~'••r•OU.6oo\o..,,,,-,.,,~.,~
' -~~~. ~:.:- :-:~: .. : ~;:-:-:·· ~·>:: :·~·=·~·~<·>~<--~ '~·:<·> :<· >:·:<.::": <": -: ~<.~:··~--:-~-:~:·:·:·:--~ ·:·:·:~:·>:;;--:~ :· \
~·1
2
{Tokita Fig. 2B shows mold 1 contacting resist 8 on wafer 2}
the feature labeled lb in Fig. 1 contacts and shapes the resist 8, and is clearly
in the interior region of mold 1. Moreover, the shoulder indicated by the
Examiner is on the periphery of the mold.
Accordingly, we are not persuaded of harmful error in the Examiner's
interpretation of the words of claim 7, or in the finding that Tokita describes
an imprint template suitable for utilization in imprint lithography that meets
all the limitations recited in claim 1.
The rejection for anticipation is affirmed.
Claims 10 and 21 require that the second depth be 10-90% of the first
depth. (Claims App., Br. 9, 10.) We have rejected Seagate's arguments that
mold 1 does not meet all the limitations of claim 7. Seagate argues further
that the function and operation of the mold disclosed by Tokita would be
destroyed if it were modified to provide a peripheral region as required by
the claims. (Br. 6, 11. 20-25.) This argument is inapposite because it does
9
Appeal2014-005095
Application 12/510,894
not address the Examiner's finding that the outer peripheral shoulder is the
recited "peripheral region."
Claims 8, 9, 19, and 20 recite specific materials of the template master
substrate. Seagate's arguments that Ro and Yoneda, which are cited as
evidence supporting the obviousness of using such materials for the template
master substrate, do not cure the defects of Tokita. These arguments are not
persuasive of harmful error because we have not found harmful error in the
rejection for anticipation by Tokita.
Finally, in the Reply, Seagate does not address the New Grounds of
Rejection set out in the Examiner's Answer. These rejections are therefore
affirmed summarily.
C. Order
It is ORDERED that the rejection of claims 7-10 and 17-24 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
10