Ex parte THACKERAY

Board of Patent Appeals and Interferences

Jul 31, 2000

07792482 (B.P.A.I. Jul. 31, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES W. THACKERAY
and GEORGE W. ORSULA
__________
Appeal No. 1997-0106
Application 07/792,482
___________
ON BRIEF
___________
Before DOWNEY, HANLON, and PAK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and
70, all the claims pending in the application. The claims on
appeal are directed to a method for treating a substrate, such
as a microelectronic wafer or a liquid crystal display
substrate. Claim 36 is illustrative and reads as follows:
36. A method for treating a substrate comprising:
Appeal No. 1997-0106
Application 07/792,482
Additionally, the examiner rejected claim 36 under 35 U.S.C. § 112, second1
paragraph, for failing to provide antecedent basis for the "annihilation layer" of step
(g) and claim 66 under 35 U.S.C. § 112, second paragraph, in view of several
misspellings. However, these rejections have been withdrawn by the examiner. See
Answer, p. 3.
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(a) applying a layer of an antihalation composition on
the substrate, the antihalation composition comprising an
alkali soluble thermoplastic phenolic resin binder selected
from the group consisting of novolak resins and polyvinyl
phenols in an amount of from 50 to 90 weight percent of the
composition on a dry solids basis and a thermal crosslinker
compound in an amount sufficient to crosslink the composition;
(b) in the absence of a photoimaging step, at least
partially thermally crosslinking the antihalation composition
layer;
(c) applying a layer of a photoresist composition over
the antihalation composition, the photoresist composition
comprising an alkali soluble thermoplastic phenolic resin
binder selected from the group consisting essentially of
novolak resins and polyvinyl phenols in an amount sufficient
to form a film and a radiation sensitive component in an
amount sufficient to enable development of the photoresist
following exposure to activating radiation;
(d) exposing the photoresist composition to patterned
activation radiation;
(e) baking the exposed photoresist layer to cause a
crosslinking reaction between the photoresist and antihalation
layers;
(f) developing the baked, exposed photoresist layer; and
(g) in the absence of a photoimaging step, removing the
bared antihalation layer, and
(h) altering the underlying substrate.
The following rejections are at issue in this appeal:1
(1) Claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70
are rejected under 35 U.S.C. § 112, first paragraph, based on
written description.
Appeal No. 1997-0106
Application 07/792,482
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(2) Claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70
are rejected under 35 U.S.C. § 112, first paragraph, based on
enablement.
(3) Claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70
are rejected under 35 U.S.C. § 112, second paragraph.
A. Rejection under 35 U.S.C. § 112, second paragraph
Claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70 are
rejected under 35 U.S.C. § 112, second paragraph, for failing
to particularly point out and distinctly claim the subject
matter which applicants regards as the invention. According
to the examiner (Answer, p. 6):
Step (g) of claims 36, 56, and 66 recites "in the
absence of a photoimaging step, removing the bared
antihalation layer" however, Applicant previously
recites photoimaging steps in the process, steps
(d)-(f). It is not clear how step (g) can be
performed in the absence of a photoimaging step when
the process contains photoimaging steps recited
prior to the removal of the bared photoimaging
layer.
Appellants argue (Brief, p. 12):
From the claim format and the language used, it
would be abundantly clear to one skilled in the art
that the step of removing the antihalation layer in
step (g) in the absence of a photoimaging step meant
that the antihalation layer is not imaged in step
(g) to assist in its removal.
Appeal No. 1997-0106
Application 07/792,482
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We agree. Furthermore, appellants' interpretation of the
claim language at issue is consistent with the specification.
See Specification, p. 23, lines 6-19.
The examiner further argues that "[i]t is not clear what
is meant by 'altering the underlying substrate' in claims 36,
56,
and 66." Answer, p. 7. However, the specification explains
the phrase "altering the underlying substrate" as follows (see
Brief, p. 13):
[Subsequent to the photolithographic process of
the invention, t]he developed substrate may then be
selectively processed on those substrates areas
bared of photoresist, for example chemically etching
or plating substrate areas bared of photoresist in
accordance with procedures well known in the art.
[Specification, p. 22, lines 26-31].
Reading the claim language at issue in light of the
specification, one having ordinary skill in the art would have
understood "altering the underlying substrate" to mean
effecting a change to that portion of the substrate bared of
photoresist. See In re Prater, 415 F.2d 1393, 1404-05, 162
USPQ 541, 550-51 (CCPA 1969) (claims cannot be read in a
Appeal No. 1997-0106
Application 07/792,482
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vacuum but instead must be read in the light of the
specification).
For the reasons set forth above, the subject matter
defined by the claims is particular and definite. Therefore,
the rejection of claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68
and 70 under 35 U.S.C. § 112, second paragraph, is reversed.
B. Rejection under 35 U.S.C. § 112, first paragraph
1. Enablement
According to the examiner, "the disclosure is enabling
only for claims limited to the disclosed methods of altering
the
surface of the underlying substrate, such as etching."
Answer, pp. 5-6. Presumably, the relevant claim language is
the phrase "altering the underlying substrate" recited in
subparagraph (h) of claims 36, 56 and 66.
Appellants argue that "[t]he art is fully aware of how a
substrate is altered following photolithographic mask
formation" (Brief, p. 11) and rely on several publications in
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Application 07/792,482
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support thereof. See Appendices B and C attached to the
Brief.
The Court explains the burden in a rejection based on
enablement in In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d
1510, 1513 (Fed. Cir. 1993), as follows:
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial
burden of setting forth a reasonable explanation as
to why it believes that the scope of protection
provided by that claim is not adequately enabled by
the description of the invention provided in the
specification of the application; this includes, of
course, providing sufficient reasons for doubting
any assertions in the specification as to the scope
of enablement. If the PTO meets this burden, the
burden then shifts to the applicant to provide
suitable proofs indicating that the specification is
indeed enabling.
The sole basis set forth by the examiner in support of
the enablement rejection is that "[a]ltering a substrate can
mean most anything, including weathering, which is not taught
in Applicant's specification." Paper No. 25, p. 3; Answer, p.
6. While all possible methods of altering a substrate may not
have been disclosed in appellants' specification, the examiner
has failed to establish that undue experimentation would be
required to make and use the full scope of the claimed
invention. See Wright, 999 F.2d at 1561, 27 USPQ2d at 1513
Appeal No. 1997-0106
Application 07/792,482
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(to be enabling, a specification must teach those skilled in
the art how to make and use the full scope of the claimed
invention without "undue experimentation"). Therefore, the
examiner's statement fails to rise to the level of a
"reasonable explanation" as to why the claims are not
adequately enabled by the description of the invention
provided in the specification.
Based on the record before us, the examiner has failed to
satisfy his initial burden. For this reason, the rejection of
claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70 under 35
U.S.C. § 112, first paragraph, based on enablement, is
reversed.
2. Written description
Claims 36-39, 44-47, 49-58, 60, 61, 63, 66-68 and 70 are
also rejected under 35 U.S.C. § 112, first paragraph, based on
written description. According to the examiner, the
specification, as originally filed, fails to provide
descriptive support for the phrase "in the absence of a
photoimaging step" recited in subparagraphs (b) and (g) of
claims 36, 56 and 66. See Answer, pp. 4-5.
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Application 07/792,482
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Subparagraph (b) of claims 36, 56 and 66 reads as
follows:
(b) in the absence of a photoimaging step, at least
partially thermally crosslinking the antihalation
composition layer[.]
Appellants argue that the phrase "in the absence of a
photoimaging step" recited in subparagraph (b) establishes
that the thermal cross-linking step in step (b) is not a
curing step caused by exposure to imaging radiation. See
Brief, p. 8. Appellants further argue that the specification
describes the thermal cure embodiment of step (b) and in
support thereof, rely on several portions of the
specification, including the following (Brief, pp. 8-9):
On page 5, lines 26 to 31, it is stated that the
antihalation composition in general comprises a
resin binder and a compound capable of causing a
thermally induced crosslinking reaction of the resin
binder. . . . On page 7, line 30 to page 8, line 9,
it is stated that the antihalation composition is
one that cures or hardens on thermal treatment.
Similarly, subparagraph (g) of claims 36, 56 and 66 reads
as follows:
(g) in the absence of a photoimaging step, removing
the bared antihalation layer[.]
Appellants argue that the phrase "in the absence of a
photoimaging step" recited in subparagraph (g) establishes
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Application 07/792,482
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that the step of removing the bared antihalation layer in step
(g) is not a consequence of an imaging step. See Brief, p. 8.
Appellants further argue that the specification describes this
limitation and in support thereof, rely on page 23, lines 6 to
19 of the specification, wherein it states:
For example, an acid-hardening photoresist used in
combination with a preferred antihalation
composition of the invention comprising a phenol-
based resin binder and an amine-based crosslinker as
described above, is readily stripped with a single
stripper solution after selective substrate
treatment. For removing such coating layers, a
preferred stripper solution contains about 90 weight
percent dimethylsulfoxide and 10 weight percent
para-toluenesulfonic acid. Preferably this
composition is used at about 70 to 90EC.
We agree with appellants that the portions of the
specification identified above reasonably establish written
description for the claim language at issue. See In re
Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978)
("To comply with the description requirement it is not
necessary that the application describe the claimed invention
in ipsis verbis . . .; all that is required is that it
reasonably convey to persons skilled in the art that, as of
the filing date thereof, the inventor had possession of the
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Application 07/792,482
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subject matter later claimed by him."). Therefore, the
rejection of claims 36-39, 44-47, 49-58,
60, 61, 63, 66-68 and 70 under 35 U.S.C. § 112, first
paragraph, based on written description is reversed.
REVERSED
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
)
) APPEALS AND
ADRIENE LEPIANE HANLON )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
ALH/kis
Appeal No. 1997-0106
Application 07/792,482
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Robert L. Goldberg, Esq.
P. O. Box 556
Marlborough, MA 01752