Ex Parte Nelson et alDownload PDFBoard of Patent Appeals and InterferencesSep 29, 200910832640 (B.P.A.I. Sep. 29, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CURT NELSON and GREG LONG ____________ Appeal 2009-002359 Application 10/832,640 Technology Center 1700 ____________ Decided: September 29, 2009 ____________ Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and JEFFREY B. ROBERSTON, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-9, 21-43, 67-78, and 86-108. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claims 1, 21, 67, and 86 are representative of the subject matter on appeal and are set forth below: Appeal 2009-002359 Application 10/832,640 2 1. An etching method, comprising: applying a first electromagnetic radiation to an area of a structure, thereby altering a characteristic of the structure in the area, wherein the area is a subset of the structure; and applying a second electromagnetic radiation to the structure, the second electromagnetic radiation configured to selectively ablate the structure based on the characteristic of the structure. 21. A selective etching method, comprising: applying a first laser to a target area of a structure, thereby altering a characteristic of the structure in the target area, wherein the target area is a subset of the structure; and applying a second laser to the structure, the second laser configured to selectively ablate the structure based on the characteristic. 67. A selective etching method, comprising: exposing a target area of a structure to a first laser, thereby altering a surface characteristic of the structure in the target area; and exposing the structure to a second laser configured to ablate a surface layer of the structure only where the surface characteristic is unaltered. 86. A selective etching method, comprising: applying a first laser beam to a target area of a structure, the first laser beam selected to alter a surface characteristic in the target area; and applying a second laser beam to the structure, the second laser beam configured to selectively ablate a surface layer of the structure based on whether the surface characteristic has been altered. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Appeal 2009-002359 Application 10/832,640 3 Yamazaki 4,786,358 Nov. 22, 1988 Balz 5,509,556 Apr. 23, 1996 Mitwalsky 5,843,363 Dec. 1, 1998 Engelsberg 5,958,268 Sep. 28, 1999 Uzi Landman et al., (Physical Review B, vol. 37, November 9 – March 15, 1988, pages 4637-4646). Bonse et al., (Applied Physics A. Material Science and Processing, 74, 19- 20 (2002)). THE REJECTION(S)1 1. Claims 1-4, 7, 8, 21-24, 27, 28, 86-89, 92 and 93 stand rejected under 35 U.S.C. § 103(a) over Mitwalsky in view of Bonse. 2. Claims 5, 25, and 90 stand rejected under 35 U.S.C. § 103(a) over Mitwalsky in view of Bonse as applied to claims 1-4, 7, 8, 21-24, 27, 28, 86- 89, 92, and 93, and further in view of Balz. 3. Claims 6, 26, and 91 stand rejected under 35 U.S.C. § 103(a) based on Mitwalsky in view of Bonse as applied to claims 1-4, 7, 8, 21-24, 27, 28, 86- 89, 92, and 93, and further in view of Engelsberg. 4. Claims 9, 29-38, 40-43, 67, 68, 72-75, 77, 78, 94-103, and 105-107 stand rejected under 35 U.S.C. § 103(a) over Mitwalsky in view of Bonse as 1 Appellants do indicate that 69 and 70 are on appeal and rejected. Br. 1-2. The Examiner agrees with Appellants’ “Status of Claims”. Ans. 2. The Examiner does not list claims 69 and 70 in the grounds of rejection. Our disposition of the issues with regard to claim 67 renders moot any issue of whether claims 69 and 70 are properly rejected and on appeal. Appeal 2009-002359 Application 10/832,640 4 applied to claims 1-4, 7, 8, 21-24, 27, 28, 86-89, 92, and 93, and further in view of Landman. 5. Claims 39, 41, 71, 76, 104, and 107 stand rejected under 35 U.S.C. § 103(a) over Mitwalsky in view of Bonse in view of Landman as applied to claims 9, 29-36, 38, 40, 67, 68, 72-75, 77, and 78, and further in view of Yamazaki. ISSUE Have Appellants shown reversible error in the Examiner’s determination that the combination of Mitwalsky in view of Bonse suggests the argued limitation of applying a second electromagnetic radiation to the structure, the second electromagnetic radiation configured to ablate only the area not exposed to the first electromagnetic radiation (unaltered area)? PRINCIPLES OF LAW Evidence must be reasonably commensurate in scope with the claimed invention. See, e.g., In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). When determining whether a claim is obvious, an Examiner must make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added). FINDINGS OF FACT The Examiner does not make findings that Bonse teaches to expose a first area (subset of the structure) with a first electromagnetic radiation, and Appeal 2009-002359 Application 10/832,640 5 then expose the substrate to a second electromagnetic radiation, such that only the area not exposed to the first electromagnetic radiation is ablated [emphasis added]. See Answer, generally. ANALYSIS As an initial matter, we limit our consideration to subject matter addressed by Appellants, which consists of claims 1, 2, 3, 21, 22, 23, 67, 86, and 87. These claims are rejected under the combination of Mitwalsky in view of Bonse. The Examiner relies upon other secondary references in rejecting dependent claims. These other secondary references are not relevant in addressing the issue in this case. Appellants argue these secondary references by stating that each does not cure “the features absent” from Mitwalsky in view of Bonse. See, for example, pages 14 or 15 or 18 of the Brief. 37 C.F.R. § 41.37(c)(1)(vii). The Examiner acknowledges that Mitwalsky is silent about altering the characteristic of the material (structure) with a first electromagnetic radiation and then selectively etching the material with a second electromagnetic radiation. See, for example, page 16 of the Answer. The Examiner relies upon Bonse for teaching this aspect of Appellants’ claims. Id. The Examiner explains his position by stating: The examiner considers “the second electromagnetic radiation” as the second, third or other pulses following the first pulse of Bonse. Bonse clearly teaches "The thresholds of modification and ablation depend on the number of applied laser pulses" (page 20) as recited in the office action. In figure 1, Bonse Appeal 2009-002359 Application 10/832,640 6 shows ablation occurs when and where laser fluence is higher than a threshold value. On page 21, Bonse teaches the values of the threshold fluence for multi-pulses (figure 4) are significantly lower than the single pulse threshold, because the thresholds of modification and ablation depend on the number of applied laser pulses, see also figure 11 which summarizes silicon modification as the laser fluence/laser pulse number are varied. Ans. 16-17. The Examiner also refers to Figure 11 of Bonse for teaching that ablation is obtained after the annealing phase and the amorphization phase, when laser fluence is increased, which suggests ablation will be selective to the annealed phase when fluence is slightly increased over the ablation threshold, “which makes it a selective process”. Ans. 18. Appellants’ arguments are best represented by their discussion made on page 4 of the Reply Brief, including their comments on their Figure 1. Therein, Appellants state that the subject matter of their invention is illustrated in Figure 1 whereby the first electromagnetic radiation 24 is applied to only area 42 of structure 40 (where area 42 is a subset of structure 40). The second electromagnetic radiation 34 is applied to structure 40 whereby the second electromagnetic radiation selectively ablates the structure, such that only area 46 (which was not exposed to the first electromagnetic radiation [emphasis added]) is ablated and trace 44 is formed. Appellants argue that Bonse, “at best, discloses applying a first laser pulse to only area 42 of structure 40, and then applying a second laser pulse to only area 42 to ablate that area.” Reply Br. 4. Appeal 2009-002359 Application 10/832,640 7 We agree with Appellants that the Examiner does not make findings that Bonse teaches to expose a first area (subset of the structure) with a first electromagnetic radiation, and then expose the substrate to a second electromagnetic radiation, such that only the area not exposed to the first electromagnetic radiation is ablated [emphasis added]. However, with respect to claims 1, 21, and 86, we are not convinced by this argument because this argument is not commensurate in scope with these claims. That is, these claims do not indicate that only the area not exposed to the first electromagnetic radiation is ablated (i.e., only the unaltered area is ablated). These claims encompass ablation of the altered area when the structure is subjected to the second electromagnetic radiation, and Bonse teaches this aspect of the claimed invention, as discussed, supra. Hence, we agree with the Examiner’s rejection of these claims.2 In re Kulling, 897 F.2d at 1149; In re Grasselli, 713 F.2d at 743. With regard to claim 67, this claim recites that the structure is exposed “to a second laser configured to ablate a surface layer of the structure only where the surface characteristic is unaltered” [emphasis added]. That is, only the unaltered area is ablated when the structure is subjected to the second electromagnetic radiation. As discussed, supra, the Examiner does not make findings that Bonse does not teach this kind of selectivity. Hence, 2 Claims 3, 23, and 88 each similarly recites that the second radiation ablates the structure where the characteristic is altered. As discussed, supra, Bonse teaches ablation of an altered structure. Hence, we agree with the Examiner’s rejection of claims 3, 23, and 88. Appeal 2009-002359 Application 10/832,640 8 we do not agree with the Examner’s rejection of claim 67 (and any dependent claims thereof).3 In re Ochiai, 71 F.3d at 1572. CONCLUSIONS OF LAW Appellants have not shown reversible error in the Examiner’s determination that the combination of Mitwalsky in view of Bonse suggests the argued limitation of applying a second electromagnetic radiation to the structure, the second electromagnetic radiation configured to ablate only the area not exposed to the first electromagnetic radiation with respect to claims 1, 21, and 86. Appellants have shown reversible error in the Examiner’s determination that the combination of Mitwalsky in view of Bonse suggests the argued limitation of applying a second electromagnetic radiation to the structure, the second electromagnetic radiation configured to ablate only the area not exposed to the first electromagnetic radiation as required by claim 67. DECISION The rejection of claims 1, 3, 4, 7, 8, 21, 23, 24, 27, 28, 86, 88, 89, 92, and 93 under 35 U.S.C. § 103(a) over Mitwalsky in view of Bonse is affirmed. However, the rejection of claims 2, 22, and 87 is reversed. 3 Claims 2, 22, and 87 each similarly recites that the second electromagnetic radiation ablates the structure where the characteristic is unaltered. As discussed, supra, the Examiner does not make findings that the applied art teaches this type of selectivity. Hence, we do not agree with the Examiner’s rejection of claims 2, 22, and 87. Appeal 2009-002359 Application 10/832,640 9 The rejection of claims 5, 25, and 90 under 35 U.S.C. § 103(a) over Mitwalsky in view of Bonse as applied to claims 1-4, 7, 8, 21-24, 27, 28, 86- 89, 92, and 93, and further in view of Balz is affirmed. The rejection of claims 6, 26, and 91 under 35 U.S.C. § 103(a) based on Mitwalsky in view of Bonse as applied to claims 1-4, 7, 8, 21-24, 27, 28, 86-89, 92, and 93, and further in view of Engelsberg is affirmed. The rejection of claims 9, 29-38, 40-43, 94-103, and 105-107 under 35 U.S.C. § 103(a) over Mitwalsky in view of Bonse as applied to claims 1- 4, 7, 8, 21-24, 27, 28, 86-89, 92, and 93, and further in view of Landman is affirmed. The rejection of claims 39, 41, 104, and 107 under 35 U.S.C. § 103(a) over Mitwalsky in view of Bonse in view of Landman as applied to claims 9, 29-36, 38, 40, 67, 68, 72-75, 77, and 78, and further in view of Yamazaki is affirmed. All the rejections against claims 67 and its dependent claims are reversed. 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)(v). AFFIRMED-IN-PART Appeal 2009-002359 Application 10/832,640 10 Pl initial sld HEWLETT PACKARD COMPANY P.O. 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