Ex Parte Toth et al

Patent Trial and Appeal Board

Mar 17, 2017

13669195 (P.T.A.B. Mar. 17, 2017)

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.
13/669,195 11/05/2012 Milos Toth F635USCON 9893
121028 7590 03/21/2017
SrTieinhera Rr Asisinoiates; PP
EXAMINER
PO BOX 164140
Austin, TX 78716-4140
FORD, NATHAN K
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
patents @ scheinbergip.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MILOS TOTH and NOEL SMITH
Appeal 2016-001372
Application 13/669,195
Technology Center 1700
Before CATHERINE Q. TIMM, ELIZABETH M. ROESEL, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 In this decision, we refer to Appellants’ Specification filed November 5,
2012, the Final Office Action mailed September 26, 2014 (“Final Act.”), the
Appeal Brief filed March 20, 2015 (“App. Br.”), the Examiner’s Answer
mailed September 8, 2015 (“Ans.”), and the Reply Brief filed November 9,
2015 (“Reply Br.”).
2 Appellants identify the real party in interest as FEI Company. App. Br. 2.
Appeal 2016-001372
Application 13/669,195
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. An apparatus for etching a substrate to form microscopic
structures, comprising;
a gas injection system;
a first system including a beam generating column for
generating a fine beam, the gas injection system positioned to
direct a gas toward the substrate near an impact point of the fine
beam on the substrate to deposit a masking material in a pattern
on a surface of the substrate; and
a second system including a plasma chamber for
generating ions and an ion optical column for receiving the ions
from the plasma chamber, the ion optical column including one
or more lenses for focusing or collimating the ions from the
plasma chamber into an ion beam,
wherein the apparatus is configured to maintain a
difference in voltage between plasma in the plasma chamber and
the substrate to provide the ions with energies sufficient to react
chemically with an unmasked surface of the substrate but
insufficient to sputter the surface of the substrate.
App. Br. 7 (Claims Appendix).
DISCUSSION
The Examiner maintains the rejection under 35 U.S.C. § 102(b) of
claims 1, 2, 5—12, 14, and 16—19 as anticipated by Shichi et al.
(US 2006/0065854 Al, published March 30, 2006) (hereinafter “Shichi”).
In addition, the Examiner maintains the rejections under 35 U.S.C. § 103(a)
of claim 3 as unpatentable over Shichi in view of Bret et al. (US 7,670,956
B2, issued March 2, 2010) (hereinafter “Bret”), and claims 4, 15, and 20 as
unpatentable over Shichi in view of Keller et al. (US 2005/0183667 Al,
published August 25, 2005) (hereinafter “Keller”), and claim 13 as
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Application 13/669,195
unpatentable over Shichi in view of Yamaguchi et al. (US 4,609,809, issued
September 2, 1986) (hereinafter “Yamaguchi”). Final Act. 3—5.
Appellants argue the claims subject to the first ground of rejection as a
group. Appellants do not provide any separate substantive arguments
regarding separately rejected dependent claims 3,4, 13, 15, and 20, and
instead rely on the arguments presented for claim 1,3 We choose claim 1 as
representative, and the remaining claims will stand or fall with claim 1.
Regarding the anticipation rejection of claim 1, Appellants argue that
the recitation that “the apparatus is configured to maintain a difference in
voltage between plasma in the plasma chamber and the substrate to provide
the ions with energies sufficient to react chemically with an unmasked
surface of the substrate but insufficient to sputter the surface of the
substrate,” is a structural limitation not merely a recitation of intended use of
the claimed apparatus. See App. Br. 3. Appellants contend that Shichi’s
apparatus is not configured as recited in claim 1, and thus, there is no prima
facie case of anticipation. Id. at 4—5.
Appellants’ argument is not persuasive of reversible error in the
anticipation rejection of claim 1.
The Examiner finds, and Appellants do not dispute, that Shichi
discloses an apparatus with the structural elements recited in claim 1 except
3 Because we find Shichi teaches all the limitations of claim 1, Appellants’
arguments to the effect that the secondary references in combination with
Shichi fails to teach the functional limitation recited in the wherein clause of
claim 1 does not amount to a separate substantive argument with respect to
dependent claims 3, 4, 15, and 20 subject to the obviousness rejections.
App. Br. 5. Appellants do not present any substantive arguments with
respect to dependent claim 13. See id.
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Application 13/669,195
for the wherein clause, which Appellants argue is “structural.” Final Act. 3
(citing Shichi || 93—95; Fig. 11); App. Br. 3—5.
Contrary to Appellants’ contentions at page 4 of the Appeal Brief, the
Examiner does give patentable weight to the wherein clause of claim 1.
Compare App. Br. 4, with Final Act. 2; Ans. 2. Specifically, the Examiner
finds that the wherein clause in claim 1 recites a functional limitation of the
claimed apparatus “because it describes the manner in which the
components of an apparatus function.” Final Act. 2. To satisfy the
functional limitations in an apparatus claim, such as in claim 1, the
Examiner has the burden of identifying a structure taught or suggested by
the applied prior art that is inherently capable of performing the claimed
function. In re Schreiber, 128 F.3d 1473, 1477—1478 (Fed. Cir. 1997).
Only after the Examiner identifies such a structure does the burden shift to
applicants to show that the applied prior art does not meet the functional
limitations of the claim. Id.
Claim 1 recites an apparatus “configured to maintain a difference in
voltage between plasma in the plasma chamber and the substrate to provide
the ions with energies sufficient to react chemically with an unmasked
surface of the substrate but insufficient to sputter the surface of the
substrate.” This limitation is functional and subject to Schreiber’ s shifting
burdens. Contrary to Appellants’ contentions, the Examiner here is not
suggesting that Shichi’s apparatus requires reconfiguring to perform the
recited function. Reply Br. 2. Rather, the Examiner finds, and Appellants
do not dispute, that in Figure 11 and paragraphs 93—95, Shichi describes an
apparatus that is capable of maintaining a difference in voltage between
plasma in the plasma chamber and the substrate to provide ions generated in
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Application 13/669,195
the plasma with energies. Final Action 3. Appellants also do not dispute the
Examiner’s finding that Shichi’s disclosed apparatus allows the voltage to be
adjusted to any desired level, including a level such that the ion energies are
sufficient to react chemically with an unmasked surface of the substrate but
insufficient to sputter the surface of the substrate. Ans. 2; Final Act. 3. The
Examiner’s finding is supported by Shichi paragraph 95, which describes the
machine’s capability to modulate the voltage level applied to the
accelerating electrodes in the plasma column. Compare Shichi 195 with
Spec. 12 (original claim 1) (reciting that “one or more accelerating
electrodes . . . maintained at a voltage . . . provide the ions with an energy
sufficient to react chemically with the unmasked surface but insufficient to
sputter the surface.”).
The Examiner thus reasonably finds based on Shichi’s paragraph 95
that the apparatus disclosed in Shichi’s Figure 11 is “capable” of functioning
“to maintain a difference in voltage between plasma in the plasma chamber
and the substrate to provide the ions with energies sufficient to react
chemically with an unmasked surface of the substrate but insufficient to
sputter the surface of the substrate.” Ans. 2—3.4 When the Examiner
provides a sound basis for believing that the claimed apparatus and the
4 Appellants’ contention that the facts of the present case are analogous to
In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) is misplaced. App. Br. 4. In re
Alappat does not discuss how to treat functional claim limitations. Rather, it
discusses whether claims directed to a rasterizer for converting vector list
data representing sample magnitudes of an input waveform into anti-aliased
pixel illumination intensity data to be displayed on a display are entitled to
patent protection under 35 U.S.C. § 101. In re Alappat, 33 F.3d at 1545. In
addition, we note that In re Alappat is no longer good law as it was
overruled by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008).
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Application 13/669,195
apparatus disclosed by the prior art are the same, Appellants have the burden
of showing that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). On the record before us, Appellants have not provided any evidence
that the apparatus depicted in Shichi’s Figure 11 does not inherently possess
the functionally defined limitations of the apparatus recited in claim 1. For
example, Appellants provide no evidence that Shichi’s Figure 11 apparatus
would be incapable of applying voltages that result in ion energies that cause
chemical reaction without sputtering. Cf. Spec. 1 1030 (“[tjypical energies
lie in the range of 1 eV and 10 keV”). Accordingly, we sustain the
Examiner’s anticipation rejection of claims 1, 2, 5—12, 14, and 16—19.
Because Appellants do not present any substantive arguments
regarding separately rejected claims 3, 4, 13, 15, and 20, we also sustain the
Examiner’s obviousness rejections of those claims.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—20 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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