Ex Parte Verschuuren et alDownload PDFPatent Trials and Appeals BoardMay 30, 201914443181 - (D) (P.T.A.B. May. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/443,181 05/15/2015 Marcus Antonius Verschuuren 24737 7590 06/03/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2012P00449WOUS 1011 EXAMINER SHEW AREGED, BETELHEM ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 06/03/2019 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): patti. demichele@Philips.com marianne.fox@philips.com katelyn.mulroy@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARCUS ANTONIUS VERSCHUUREN and REMCO VAN BRAKEL Appeal2018-005868 Application 14/443,181 Technology Center 1700 Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting claims 1-27. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). WeAFFIRM. 2 1 Appellant is the Applicant, Koninklijke Philips N.V., which is identified in the Appeal Brief as the real party in interest (Appeal Br. 3). 2 Our Decision refers to the Specification ("Spec.") filed May 15, 2015, Appellant's Appeal Brief ("Appeal Br.") filed September 20, 2017, the Examiner's Answer ("Ans.") dated March 20, 2018, and Appellant's Reply Brief ("Reply Br.") filed May 18, 2018. Appeal2018-005868 Application 14/443,181 STATEMENT OF THE CASE The invention relates to a composition for forming an imprinting ink that can be used in imprint lithography applications. Spec. 1 :2-3. Appellant's composition comprises a dissolved condensation product of at least one silane compound of Formulae 1 and 2 (set forth below), a compound of Formula 3 (set forth below), a protic acid such that the composition has a pH in the range of 3-5, and an organic solvent system comprising a primary or secondary alcohol and water. Formula 1: Ri I H40-r-OR;;: OR::; Formula 2: Formula 3: In the above Formulae 1-3, R1-R9 are individually selected from the group consisting of C1---C6 linear or branched alkyl groups and a phenyl group, and n is a positive integer having a value of at least 2. Id. at 2:32-3: 17. Appellant discloses that the alcohol ether of the Formula 3 compound acts as an inhibitor of the polycondensation of the Formulae 1 and 2 compounds 2 Appeal2018-005868 Application 14/443,181 when the pH of the composition is controlled at the defined pH. Id. at 3: 18- 21. As a result, Appellant discloses that the polycondensation process can be restarted by the addition of an acid generator to further lower the pH, thereby solidifying the imprinting ink. Id. at 3:26-4:5. Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. 1. A composition for forming an imprinting ink, the composition compnsmg: a dissolved condensation product of: at least one of a first silane compound of Formula I and a second silane compound of Formula 2; and a compound of Formula 3: Formula 1 R, , I R.10-Si-OR? I -- OR:, Formula 2 OR~ J "' R"O-Si-OR~ . I V ORr . and ' Formula 3 .or········Rfl " HO n wherein R1-R9 are individually selected from the group consisting of C1--C6 linear or branched alkyl groups and a phenyl group, and wherein n is a positive integer having a value 3 Appeal2018-005868 Application 14/443,181 of at least 2; the composition further comprising: a protic acid such that the composition has a pH in the range of 3-5; and an organic solvent system comprising a primary or a secondary alcohol and water. Independent claim 14 recites an imprinting ink comprising a composition as in claim 1 and at least one of a photo-acid generator, a photo- initiator, and a thermal acid generator. Claim 18 recites a method of forming a patterned layer on a substrate using the imprinting ink of claim 14. Independent claim 20 recites a use of an imprinting ink as in claim 1. 3 Claim 24 recites a substrate comprising a patterned layer obtainable by performing a method similar to claim 18 using the ink of claim 14. REJECTIONS The Examiner maintains, and Appellant requests review of, the following grounds of rejection under 35 U.S.C. § I03(a): 1. Claims 1---6, 8-12, 14, and 17-26 as unpatentable over Verschuuren4 in view ofKato; 5 2. Claim 7 as unpatentable over Verschuuren and Kato, further in view of Takeuchi; 6 and 3 We note claim 20 merely recites the use of an imprinting ink for an imprinting process, without reciting any process steps. The Examiner and Appellant should consider whether this claim is proper under 35 U.S.C. §§ 101 and 112. See MPEP 2I 73.05(q). 4 Verschuuren, US 2010/0075108 Al, published Mar. 25, 2010. 5 Kato et al., US 2011/0073977 Al, published Mar. 31, 2011 ("Kato"). 6 Takeuchi, US 2009/0186203 Al, published July 23, 2009. 4 Appeal2018-005868 Application 14/443,181 3. Claims 13, 15, 16, and 27 as unpatentable over Verschuuren and Kato, further in view of Van Bommel. 7 ANALYSIS Appellant relies on the same arguments for each of the above rejections, and does not separately argue the claims. See generally Appeal Br. and Reply Br. In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as representative and claims 2-27 stand or fall with this representative claim. After review of Appellant's and the Examiner's opposing positions, the applied prior art, and Appellant's claims and Specification disclosures, we determine that the Appellant's arguments are insufficient to identify reversible error in the Examiner's obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the stated obviousness rejections for substantially the fact findings and the reasons set forth by the Examiner in the Examiner's Answer and the Final Office Action, which we adopt as our own without repetition. We offer the following for emphasis. Appellant argues that Kato is non-analogous prior art because Kato' s coating materials are not in the same field of endeavor as Appellant's claimed invention nor is Kato reasonably pertinent to the particular problem addressed by Appellant. Appeal Br. 12-16. In particular, Appellant contends that Kato' s clear coating films, which focus on an amino group, base catalyzed reaction for polymer preparation, are not from the same field 7 Van Bommel et al., US 2011/0064925 Al, published Mar. 17, 2011 ("Van Bommel''). 5 Appeal2018-005868 Application 14/443,181 of endeavor as either Appellant's invention nor of Verschuuren. Id. at 13. Appellant urges that the Examiner's definition of the field of endeavor as the composition art is extraordinarily broad and unwarranted because "Verschuuren and Kato have different purposes, and are clearly directed to different problems in separate fields (relief layer formation vs. clear coat formation) using different methods in an attempt to solve those disparate problems." Id. Appellant also urges that Kato is also clearly not directed to the same field of endeavor as Appellant's claimed invention because Kato is directed to rigid, fully-polymerized varnish sealants while Appellant's disclosure is directed to imprinting inks. Id. at 13-14. Appellant's arguments are unpersuasive of reversible error. Two criteria have evolved for determining whether prior art is analogous: "(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted); see also In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992), and In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). The same field of endeavor test "for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention's subject matter in the patent application, including the embodiments, function, and structure of the claimed invention." Bigio, 3 81 F.3d at 1325 (citations omitted). As the Examiner finds, Kato is directed to a composition containing silane compounds undergoing a condensation reaction and applied to a silicon substrate similar to Verschuuren and as recited in Appellant's claims. 6 Appeal2018-005868 Application 14/443,181 Ans. 3. Specifically, the Examiner finds Verschuuren's condensation reaction involves a composition containing silane compounds applied to a silicon substrate. Id. at 4. Likewise, Appellant's claimed composition similarly undergoes a condensation reaction and contains silane compounds applied to a substrate such as silicon. Spec. 2:33-3:17, 16:4. Thus, although the Examiner initially found that the field of endeavor was to the composition art, the Examiner appropriately clarified that the field of endeavor is directed to condensation reaction compositions containing silane for application to silicon substrates. Appellant fails to dispute or otherwise address the Examiner's clarification of the field of endeavor as set forth in the Examiner's Answer. Therefore, Kato is directed to this same field of endeavor. 8 Appellant next argues that the Examiner's rejections are based on circular reasoning because the proposed basis for motivation amounts to asserting that it would have been obvious to incorporate Kato' s feature because the resulting combination would then have that feature. Appeal Br. 17. Appellant argues that the basis for motivation for combining Takeuchi and Van Bommel with Verschuuren and Kato rely on similar circular reasoning. Id. This argument is not persuasive of reversible error because it mischaracterizes the Examiner's articulated reasoning for modifying V erschuuren' s composition in view of Kato' s teaching, and for modifying the resulting composition further in view of Takeuchi and Van Bommel. 8 Because we find that Kato is in the same field of endeavor as Verschuuren and Appellant, we need not address whether this reference is reasonably pertinent to the particular problem with which the inventor is involved. 7 Appeal2018-005868 Application 14/443,181 The Examiner provides a reason why the ordinary artisan would have modified Verschuuren's composition. Specifically, the Examiner finds that Kato teaches that because an alcohol is generated when the organic solvent is subjected to a condensation polymerization with a hydrolysis product of a hydrolysable silane, it is desirable to use a solvent that is an alcohol or is compatible with alcohol. Final Act. 3. The Examiner finds Kato teaches diethylene glycol monomethyl ether ("DMME") and diethylene glycol monoethyl ether ("DMEE") are compatible with the alcohol generated in the silane polycondensation reaction. Ans. 5. Similarly, the Examiner provides a reason why the ordinary artisan would have modified Verschuuren's composition to include 1-ethoxy-2-(2-ethoxyethoxy)ethane in combination with propanol-that Takeuchi teaches this compound permits imprinting at a lower compression pressure. Final Act. 5. The Examiner also provides a reason why the ordinary artisan would have modified Verschuuren' s composition to include a luminescent compound-that Von Bommel teaches such compound facilitates functional modification of the semiconductor substrate by the formation of a patterned layer on light-emitting elements in the substrate-and to include an IRGACURE® photoinitiator and sensitizer-that Von Bommel teaches such materials control self-life and reproducibility of the patterned layer. Id. at 6, 9. Appellant fails to respond to or otherwise address the Examiner's findings and reasoning. Appellant next argues that Kato fails to teach that the Formula 3 compounds act as inhibitors of the condensation reaction. Appeal Br. 19; see also Reply Br. 2--4. Appellant contends that although Kato reports compounds that might be encompassed by the compound of Formula 3 within a listing of various alcohols that could be used as organic solvents in 8 Appeal2018-005868 Application 14/443,181 the polymerization reaction for forming polysiloxanes, Appellant's Formula 3 compounds, under the claimed conditions, act as inhibitors of the condensation reaction. Appeal Br. 19. Thus, Appellant urges that Kato teaches polymerization and fails to recognize the use of Formula 3 compounds as inhibitors. Id. at 19-20. Appellant also contends that neither Verschuuren nor Kato teaches the recited dissolved condensation product. Id. at 20. This argument is not persuasive of reversible error. It is well settled that a finding of obviousness does not require that the motivation or purpose of the skilled artisan be the same as an applicant's for practicing a claimed invention. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Indeed, the Supreme Court has articulated this same sentiment when emphasizing that the patentee's motivation and purpose do not control an obviousness determination: In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under§ 103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of [the] invention a known problem for which there was an obvious solution encompassed by the patent's claims. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). Here, the Examiner finds that Kato teaches a reason for selecting DMME and DMEE for use in Verschuuren's composition-that it is desirable to use an organic solvent compatible with the alcohol generated in 9 Appeal2018-005868 Application 14/443,181 the silane polycondensation reaction. Thus, although Kato does not recognize that these Fornmla 3 compounds would act as an inhibitor of the silane condensation reaction, Kato nonetheless provides a reason why the ordinary artisan would include these compounds in V erschuuren' s composition, thereby rendering obvious the claimed invention. 9 Appellant next argues that there is no motivation to combine Verschuuren and Kato and no reasonable expectation of success in doing so. Appeal Br. 21-22; see also Reply Br. 4---6. However, as set forth above, Kato is from the same field of endeavor as Verschuuren and provides a reason to include DMME and DMEE in Verschuuren's composition. We are, therefore, not persuaded that the Examiner reversibly erred in combining the teachings of Verschuuren and Kato. Accordingly, we sustain the Examiner obviousness rejection of claims 1-27. DECISION Upon consideration of the record, and for the reasons given above and in the Final Office Action and the Examiner's Answer, the decision of the Examiner rejecting claims 1-27 is 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)(l). AFFIRMED 9 We note that Appellant does not argue nor direct our attention to unexpected results. 10 Copy with citationCopy as parenthetical citation