Ex Parte Lin

Patent Trial and Appeal Board

Jun 3, 2015

12215628 (P.T.A.B. Jun. 3, 2015)

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.
12/215,628 06/28/2008 Wallace W. Lin 6447
7590 06/03/2015
WALLACE W. LIN
1451 TURRIFF WAY
SAN JOSE, CA 95132
EXAMINER
JUNG, MICHAEL
ART UNIT PAPER NUMBER
2895
MAIL DATE DELIVERY MODE
06/03/2015 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 WALLACE W. LIN
____________

Appeal 2013-004675
Application 12/215,6281
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL2

Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
decision finally rejecting claims 12–15 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement, and
second paragraph, as being indefinite. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM. 3

1 Appellant self-identifies as the Real Party in Interest. Appeal Br. 3.
2 Our decision refers to Appellant’s Appeal Brief (Appeal Br.) filed July 12,
2012, the Examiner’s Answer (Ans.) mailed November 13, 2012, and
Appellant’s Reply Brief (Reply Br.) filed January 10, 2013.
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STATEMENT OF THE CASE
Appellant discloses that an interconnect wire layer must be planarized
before deposition of the next dielectric layer. Spec. ¶ 5. According to
Appellant, in order to improve the planarization process, it is important to
monitor interconnect wire thickness, the amount of wire dishing, and the
amount of dielectric erosion occurring during planarization. Id. at ¶ 6.
Among the commonly used methods for characterizing these parameters are
electrical methods including Current-Voltage (I-V) and Capacitance-Voltage
(C-V). Id. However, Appellant teaches that the accuracy of these methods
depends strongly on the design of the structures to be characterized. Id. In
addition, Appellant discloses that interconnect wire dishing and inter-wire
dielectric erosion have not been characterized directly and simultaneously by
these methods. Id. Therefore, Appellant discloses that the invention relates
to a method of simultaneously extracting the amount of wire dishing and
dielectric erosion of an interconnect wire and inter-wire dielectrics in
integrated circuits. Id. at 7. The method uses a set of interconnect wire
structures having one physical parameter varied in one structure from the
remaining structures. Id.
Claim 12, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal:

3 We note the Appeal Brief pages are all labeled as number “1” at the bottom
of each page. However, as the Appeal Brief was filed via facsimile, the
receiving facsimile machine labeled the pages at the top left of each page
beginning with the title page labeled as number “2.” In order to provide a
consistent reference to the correct page of the Appeal Brief, we adopt these
facsimile page numbers as our standard of reference throughout this
Decision.
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12. A method of simultaneously extracting amount of wire
dishing and dielectric erosion of an interconnect wire/dielectric
system in integrated circuits, comprising:
forming a design structure comprising a first structure, a
second structure and a third structure physically via an
integrated-circuit planarization process, with a designed
interconnect wire width of the second structure slightly
perturbed from that of the first structure while keeping a
designed interconnect wire length of the first and second
structure the same, and with a designed interconnect wire length
of the third structure slightly perturbed from that of the second
structure while keeping a designed interconnect wire width of
the second and third structure the same;
measuring current-voltage characteristics on the first and
second structure, and measuring capacitance-voltage
characteristics on the first, second and third structure, yielding
total five sets of electrical data; and
extracting amount of interconnect wire dishing and
dielectric erosion from the five sets of electrical data.

ANALYSIS
In each of the grounds of rejection on appeal, Appellant does not
argue the claims separately. Our decision focuses on the limitations of sole
independent claim 12.

§ 112, first paragraph, rejection for lack of enablement
Enablement is question of law based on underlying factual inquiries.
Enzo Biochem Inc. v. Calgene Inc., 188 F.3d 1362, 1369 (Fed. Cir. 1999).
Wands factors (predictability, amount of direction, etc.) are factual inquiries
underlying the enablement conclusion. In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988). When rejecting a claim under the enablement requirement
of section 112, the Examiner bears an initial burden of setting forth a
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reasonable explanation as to why a claim lacks enablement in the
Specification. In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993).
The Examiner identifies two reasons for maintaining the lack of
enablement rejection. See generally Ans. 4–6. In particular, the Examiner
finds Appellant’s algorithm for extracting the amount of wire dishing and
dielectric erosion from the measured sets of electrical data is flawed. Id. at
4.
First, the Examiner finds Appellant’s Equation (10) (from Spec. ¶ 21),
shows the sidewall-fringing capacitance C2f is indirectly inversely
proportional to (L2/L1) minus 1, where L2 is the length of the second wire
structure and L1 is the length of the first wire structure. Id. The Examiner
finds that where the wire lengths are the same, the ratio L2/L1 equals 1 and
the value of C2f is infinite. Id. at 4–5. The Examiner notes that an infinite
C2f leads to non-enabling values for capacitance of the third wire C3 and
miscellaneous capacitance CMisc. Id. at 5.
Second, the Examiner finds that Appellant’s algorithm is based on a
concentric cylinder model for the wire structures, whereas Appellant’s
claims recite and Figures 1–3 show “beam-like wires” that do not resemble
concentric cylinders. Id.
Appellant contends that the Examiner mischaracterizes the disclosed
algorithm. Appeal Br. 11. In this regard, Appellant notes that because
Equation (10) compares the capacitances of the second and third wire
structures, the values of L1 and L2, while close, are not the same and
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therefore, the calculated value of C2f is finite. Id.4 We are persuaded that
the Examiner has not established a prima facie case of lack of enablement
based on the record before us. A careful review of Appellant’s Equation
(10) reveals that this equation is derived from the difference between the
capacitances of the second and third wire structures. Spec. ¶ 21 (Eq. (10)
includes C2 and C3, the capacitances of the second and third wire structures,
respectively.) Moreover, Equation (10) includes the ratio, L2/L1, where L1
and L2 are defined to be different lengths. Id. at ¶¶ 17 and 21 (defining L2 <
L1). Therefore, subtracting one from the ratio, L2/L1, provides a positive,

4 In this regard, Appellant submits the results of several paper experiments
based on Chen 1997 (James C. Chen, et al., “An On-Chip, Interconnect
Capacitance Characterization Method with Sub-Femto-Farad Resolution”,
Proc. IEEE 1997, Int. Conference on Microelectronic Test Structures, vol.
10, March 1997). Appeal Br. at 12–15. The Examiner takes exception to
Appellant’s reliance on extrinsic information to establish enablement,
holding that enablement requires that the intrinsic record teach how to make
and use the claimed invention. While this issue is not dispositive, we note
that there is no express prohibition of the use of extrinsic evidence to rebut
an Examiner’s determination that the claimed invention lacks enablement.
Although extrinsic evidence will not substitute for a basic enabling
disclosure, it can be used to show what was well known in the art or prove
that undue experimentation was not required. See ALZA Corp. v. Andrx
Pharm., LLC, 603 F.3d 935, 940 (Fed.Cir.2010) (“the rule that a
specification need not disclose what is well known in the art is merely a rule
of supplementation, not a substitute for a basic enabling disclosure.”); In re
Strahilevitz, 668 F.2d 1229, 1232 (Fed. Cir. 1982) (finding that the appellant
properly relied on literature citations to establish both the level of ordinary
skill in the art and the fact that the techniques necessary to practice his
invention were known in the art.); In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988) (holding that declaratory evidence showing experimentation was not
undue effectively rebutted the examiner’s enablement challenge).

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non-zero result, contrary to the Examiner’s position (which assumed in error
that L2 = L1).
As to the Examiner’s finding that Appellant’s algorithm is based on a
concentric cylinder model for the wire structures, Appellant argues that the
expression for the capacitance of concentric cylinders has the same form as
that of the capacitance of twin conductor transmission. Reply Br. 19.
Appellant explains that the capacitance of twin conductors can reduce to the
capacitance of a single conductor over a conductor plate by multiplying by a
factor of 2. Id., citing Johnson.5 Likewise, Appellant explains that the
capacitance of concentric cylinders reduces to the capacitance of a single
conductor over a conductor plate where the radius of the outer conductor
becomes very large. Id. As such, the capacitance of twin conductors and
concentric cylinders reduce to the same form. Given that the Examiner has
not provided any scientific reasoning other than the finding that Appellant’s
algorithm includes an equation having the same form as concentric
cylinders, which Appellant demonstrates has the same form as twin
conductors, we find that the Examiner has failed to establish a prima facie
case of lack of enablement.
Accordingly, we will not sustain the Examiner’s rejection for lack of
enablement.

§ 112, second paragraph, rejection for indefiniteness
The second paragraph of 35 U.S.C. § 112 requires the specification
“conclude with one or more claims particularly pointing out and distinctly

5 Gary L. Johnson, “Chapter 2–Ideal Capacitors”, Solid State Tesla Coil,
Kansas State University, October 2001.
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claiming the subject matter which the applicant regards as his invention.”
35 U.S.C. § 112 ¶ 2. This portion of the statute requires the claims “be cast
in clear—as opposed to ambiguous, vague, indefinite—terms.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Although exact precision is
not required, the claim language must be as reasonably precise as the subject
matter permits. Id.; see also In re Moore, 439 F.2d 1232, 1235 (CCPA
1971) (The first inquiry “is merely to determine whether the claims do, in
fact, set out and circumscribe a particular area with a reasonable degree of
precision and particularity.”).
The Examiner identifies two reasons for maintaining the
indefiniteness rejection. See generally Ans. 6–7. First, the Examiner finds
claim 12 is incomplete for omitting essential steps between the measurement
step and the extraction step. Id. at 6. In support of this position, the
Examiner reasons that measuring the second and third capacitances is
insufficient because C2f is infinite when L2 equals L1. Id. at 7. The
Examiner therefore concludes that there must be some other step, missing
from claim 12, to “bootstrap” from the measured capacitance-voltage data to
extracting the amount of wire dishing and dielectric erosion. Id.
However, as Appellant previously demonstrated with regard to the
lack of enablement rejection, C2f for the second and third capacitances is
finite because L2 never equals L1. Appeal Br. 20; also see discussion above.
As such, the Examiner has not established that claim 12 is incomplete.
The Examiner also finds that the phrase “slightly perturbed” is a
relative term rendering the claims indefinite. Ans. 7. The Examiner finds,
and Appellant does not rebut, that neither the claims nor the Specification
provides a definition or a standard for ascertaining the requisite degree for
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the phrase. Id. Moreover, the Examiner finds there is no art-recognized
customary meaning for the phrase “slightly perturbed.” Id. at 16.
Appellant contends that the phrase “slightly perturbed” is language
designers and engineers in the industry would understand given their
training and culture in their professional community. Appeal Br. 21.
However, Appellant fails to provide any evidence in support of this
contention. Instead, Appellant merely provides an example of a perturbation
in width of 0.02 µm based on the minimum design rules of “some process
technologies” (id.), and a perturbation in length of 1–10 µm based on the
usual design of interconnect wires (id. at 22). Appellant provides no
evidence that these examples provide a standard by which an ordinary
artisan would determine the degree of perturbation that would be considered
“slight.”
Appellant further argues that the Specification sets forth that the
widths and length perturbations “do not differ much (i.e., close to each
other).” Reply Br. 26–27. This language, however, does not provide greater
clarity as to the standard for evaluating how “slight” a perturbation would be
to fall within the scope of the claims because the Specification does not
define how close the widths and lengths must be in order to be “slightly
perturbed.” Moreover, though Appellant used the example width and length
perturbations as set forth above to demonstrate that dishing and erosion
values could be calculated, such data fails to establish with reasonable
certainty what values for “slight” perturbations in width and length would
and would not fall within the scope of the claims.
For these reasons, we cannot agree with Appellant that the claims are
sufficiently definite using the phrase “slightly perturbed” within the meaning
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of the second paragraph of § 112. Accordingly, we will sustain the
Examiner’s indefiniteness rejection.

DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 12–15 under 35
U.S.C. § 112, second paragraph as indefinite is affirmed.
However, for the reasons given above and in the Appeal and Reply
Briefs, the decision of the Examiner rejecting claims 12–15 under 35 U.S.C.
§ 112, first paragraph as failing to comply with the enablement requirement
is reversed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

KRH