Ex Parte Nelson et al

Board of Patent Appeals and Interferences

Sep 29, 2009

10832640 (B.P.A.I. Sep. 29, 2009)

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
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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:
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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:
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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.

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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
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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
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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.
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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.

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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.
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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

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Application 10/832,640

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