Ex Parte Raravikar et al

Patent Trial and Appeal Board

Sep 27, 2016

11731524 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111731,524 03/30/2007
45209 7590 09/29/2016
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
c/o CPA Global
900 2nd A venue South, Suite 600
Minneapolis, MN 55402
Nachiket R. Raravikar
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.
42P25359 8372
EXAMINER
CHEN, DAVID Z
ART UNIT PAPER NUMBER
2815
NOTIFICATION DATE DELIVERY MODE
09/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
inteldocs _ docketing@cpaglobal.com
Database_ Group@bstz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NACHIKET R. RARA VIKAR, SUMANT P ADIY AR, and
NEHAPATEL
Appeal2015---005181
Application 11/731,524
Technology Center 2800
Before BEYERL YA. FRANKLIN, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1, 2, 6, 14, 17, 18, 21-25, 27, and 28.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
Appeal2015-005181
Application 11/731,524
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A microelectronic die comprising a die substrate
including a base and a die passivation layer disposed on the
base, the die passivation layer comprising a nanocomposite
compnsmg:
a matrix;
a plurality of catalyst nanoparticles dispersed in the
matrix, the plurality of catalyst nanoparticles for initiating ring-
opening metathesis polymerization (ROMP); and
a plurality of self-healing capsules dispersed in the
matrix, the plurality of self-healing capsules comprising a self-
healing agent for undergoing ROMP, wherein the passivation
layer is photo-definable for forming contact openings
therein by a wavelength of light and each self-healing
capsule is smaller than the wavelength of light.
App. Br. 14 (Appendix A: Claims).
The Examiner relies on the following prior art references as evidence
of unpatentability:
Keser et al.
(hereafter "Kesar")
Braun et al.
hereafter "Braun")
6,458,622 Bl
2007 /0166542 Al
THE REJECTIONS
Oct. 1, 2002
July 19, 2007
1. Claims 1, 2, 6, 14, 17, 18, 21-25, 27 and 28 are rejected under
35 U.S.C. § 112 (pre-AIA), second paragraph (indefiniteness).
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Application 11/731,524
2. Claims 1, 2, 6, 14, 17, 18, 21-25, 27 are rejected under 35 U.S.C.
§ 103(a) as being obvious over Kesar in view of Braun.
ANALYSIS
We select claim 1 as representative of all the claims on appeal, based
upon Appellants' presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014).
Rejection 1
It is the Examiner's positon that, as to claims 1 and 14, the limitation
"wherein the passivation layer is photo-definable by a wavelength of light
and each self-healing capsule is smaller than the wavelength of light" does
not specifically claim what is the exact breadth of the phrase "photo-
definable" and the phrase "wavelength of light." Final Act. 2-3.
Appellants argue that the terms "photo-definable" and "wavelength of
light" are well understood in the art, and set forth in the Specification.
Appellants state that the term "photo-definable" is used to refer to a material
layer in which openings may be formed upon implementation of a lithograph
process. Appeal Br. 6-7 (citing Spec. para. [0021 ]). Appellants state that
the term "wavelength of light" is used to refer to the wavelength of the light
used in the lithographic process. Id. at 7 (citing Spec. para. [0021 ]).
The Examiner's reply is set forth on pages 2--4 of the Answer.
Therein, the Examiner states that it is not clear whether any layer that has
"openings" formed therein or is capable of having "openings" formed
therein is "photo-definable." However, as pointed out by Appellants, the
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Application 11/731,524
Specification gives context to this phrase, and when read in light of the
Specification, we agree with Appellants that the phrase is well understood
for the reasons stated in the record. Likewise, with respect to the phrase
"wavelength of light," the Specification gives context to this phrase (Spec.
11 ), and when read in light of the Specification, we agree with Appellants
that the phrase is well understood. A claim satisfies the definiteness
requirement of 35 U.S.C. § 112, second paragraph, when one skilled in the
art understands the claim parameters as read in light of the specification. BJ
Servs. Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368, 1372 (Fed. Cir.
2003). The Examiner sets forth reasons in support of the rejection (Final
Act. 2-3). However, we are not convinced that one of ordinary skill in the
art would not have been reasonably apprised of the scope of these claim
terms. In making the prior art rejection, the Examiner gives an interpretation
to these terms as one would understand them to mean when read in light of
the Specification. Ans. 4---6.
In view of the above, we reverse Rejection 1.
Rejection 2
The Examiner's position is set forth on pages 4--12 of the Final Office
Action (which we do not repeat herein).
Appellants argue that "since a wide range of diameters are disclosed
for the polymerizer capsules of Braun, there is no suggestion in Braun that
the capsule size should be less than a wavelength of light used for photo-
defining a passivation layer including such polymerizer capsules." Appeal
Br. 11. Appellants also argue that Keser discloses use of UV light for
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Appeal2015-005181
Application 11/731,524
photo lithography (e.g., possibly 10 nanometers to 400 nanometers).
Appellants point out that in Braun, however, the range of diameters
disclosed for the polymerizer capsules is 10 nanometers to 1,000,000
nanometers (I mm). Id. As such, Appellants state that it is only a small
portion of the range of diameters for the polymerizer capsules disclosed in
Braun that could possibly be less than a wavelength of the UV light
disclosed in Keser. Id. Appellants also argue that although Braun discloses
more narrow ranges as being preferable, Appellants do not understand Braun
as disclosing why such ranges are preferable. Id. Appellants argue that
there is no indication in Braun that the narrower ranges of Braun as being
disclosed relative to a wavelength of light. Id. Appellants also argue that
there is no indication in Keser or Braun of sizing self-healing capsules less
than the wavelength of light used for photolithography such that the self-
healing capsules do not scatter the light during the lithographic process, as
•, 1 • .i1 1 • T 1 recnea m me crn1ms. 1a.
In reply, the Examiner finds that the limitation "wherein the
passivation layer is photo-definable for forming contact openings therein by
a wavelength of light and each self-healing capsule is smaller than the
wavelength of light" is a product-by-process limitation that does not
structurally distinguish the claimed invention over the prior art. 1 Ans. 5.
1 The Examiner explains that even though a photosensitive layer may be
curable only over a certain wavelength depending on the material of the
photosensitive layer, patterning or defining can be done with a resist that no
longer is part of the claimed final device, or the layer could have been
patterned by laser removal, there would be no way to know, by looking that
the claimed device, how the applied wavelength during the manufacturing
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Application 11/731,524
The Examiner finds that the claimed product shown in Appellants' Figure 4
is met by Figure 2 of Keser with the catalyst nanoparticles and capsules
applied from Braun. Ans. 5. Appellants do not dispute this point made by
the Examiner regarding the product-by-process limitation. See generally,
Appeal Br. and Reply Br. Furthermore, the idea that Braun's reasons are
unknown for preferring the more narrow ranges is not material. In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) ("Although the motivation to
combine here differs from that of the applicant, the motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness."). See also KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 419 (2007) ("What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103. ").
Also, the Examiner makes a compelling point that even if the
comparison is made, Braun specifies that the capsule can have an average
diameter of 10 nm (Braun, i-f 0046). Ans. 6. The Examiner correctly
concludes that therefore Keser in view of Braun meet the claimed limitation
in this regard.
process was implemented. Ans. 5. The Examiner further explains that the
parameter "a wavelength of light" was applied during one of the
manufacturing steps and thus is not a physical structure remaining in the
claimed final device. The Examiner states that thus the comparison cannot
be made as the "wavelength of light" does not even exist after "forming
contact openings therein". Ans. 5---6.
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Finally, the Examiner states that it would have been obvious to have
optimized or reduced the capsule size because technology has been trending
toward a smaller scale to obtain high density and high integration. Ans. 6.
The Examiner states that thus when the claimed passivation layer is in the
nanometer scale, the capsules have to be of an even smaller scale so that the
capsules can well disperse within the passivation layer without significant
aggregation. Ans. 6. The Examiner also states that it was also well known
in the art that additives or fillers within a layer subjected to light
transmission/absorption, the additives or fillers have to be smaller than the
wavelength of light to avoid light scattering. Ans. 6. Thus, such
relationships are well known in the art and one would expect to establish
such relationship to avoid light scattering. Ans. 6.
In reply, Appellants argue that
It could only be through hindsight, based on the teachings of the
Appellants, that the Examiner could possibly suggest to add the self-
healing capsules of Braun to the material layer of Keser in a manner
involving appropriate sizing of the self-healing capsules of Braun to
arrive at Appellants' claim limitation, "the passivation layer is photo-
definable for forming contact openings therein by a wavelength of
light and each self-healing capsule is smaller than the wavelength of
light." The rejection made by the Examiner using the above hindsight
based on Appellants' teachings is impermissible.
Reply Br. 2.
The aforementioned reply does not adequately address all the
compelling points raised by the Examiner (discussed, supra).
In view of the above, we affirm Rejection 2.
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Rejection 1 is reversed.
Rejection 2 is affirmed.
DECISION
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
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