Ex Parte Wago et al

Board of Patent Appeals and Interferences

Mar 28, 2007

09972159 (B.P.A.I. Mar. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KOICHI WAGO
and GENNADY GAUZNER
____________

Appeal 2006-2899
Application 09/972,159
Technology Center 1700
____________

Decided: March 28, 2007
____________

Before THOMAS A. WALTZ, CATHERINE Q. TIMM and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 7-10 and 13, the only claims pending in
this application.
Appeal 2006-2899
Application 09/972,159

BACKGROUND
The invention relates to a stamper for forming sub-micron sized
features and patterns in substrate surfaces using imprint lithography. The
invention is used, for example, in the formation of servo patterns in the
surfaces of substrates used in information storage and retrieval media.
(Specification [02]). According to Appellants, they have discovered that
“degradation of pattern replication arising from resist damage, loss of
dimensional accuracy, peeling, sticking, etc., can be eliminated, or at least
minimized by the use of a thin lubricating coating on the imprinting surface
of the stamper.” (Specification [24]).
Claim 7 is illustrative of the invention and is reproduced below:
7. A method of fabricating a coating on a stamper that is suitable
for sub-micron imprint lithography, the method comprising:

dipping a stamper suitable for thermal imprint lithography having an
imprinting surface thereon and having submicron features in a solution
containing a lubricant; and

removing the stamper from the solution to apply a lubricant coating
having a thickness of no more than about the smallest feature height on the
stamper.

The Examiner relies on the following prior art references to show
unpatentability:
Horigome US 5,330,880 Jul. 19, 1994
Flynn US 5,663,127 Sep. 2, 1997
Meldrum US 5,853,506 Dec. 29, 1998

2
Appeal 2006-2899
Application 09/972,159

The Examiner made the following grounds of rejection:
1. Claims 7-10 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Horigome in view of Meldrum.
2. Claims 10 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Horigome in view of Meldrum and further in view of Flynn.

ISSUE
The Examiner contends that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have modified
Horigome’s method by dipping Horigome’s stamper into a lubricant as
taught by Meldrum. (Answer 4). Appellants argue that the Examiner has
failed to explain why one of ordinary skill in the art would have been led to
modify Horigome’s method based on Meldrum, which is directed to an
unrelated process. (Br. 7). The issue is: Has the Examiner properly
identified a reason, suggestion, or motivation to combine Horigome and
Meldrum in the manner claimed?
For the reasons discussed below, we answer this question in the
negative.
FINDINGS OF FACT
1) Horigome discloses “a process for producing optical disks comprising
the steps of subjecting the photoresist layer on a substrate . . . to light
exposure, developing and etching treatments to obtain a stamper and then
duplicating an information pattern for an optical disk from the stamper.”
(col. 3, ll. 21-26).

3
Appeal 2006-2899
Application 09/972,159

2) Horigome teaches that the surface of the stamper (made of silicon,
quartz, glass or a metal) is preferably treated with at least one releasing
agent or lubricant selected from fluorine-containing organic compounds
and silicon-containing organic compounds to facilitate the peeling of the
replicated substrate off the stamper. (col. 4, ll. 21-26).
3) Horigome teaches that the function of the stamper releasing agent is to
reduce the peeling force by lowering the surface energy of the stamper.
(col. 5, ll. 20-22).
4) In Horigome Example 1, a fluorine containing organic compound is
chemically bonded to the silicon surface by spin-coating or evaporating
to cover the surface with the molecules of the compound and then heat-
treating at 100oC for 10 minutes. (col. 7, ll. 20-24).
5) Meldrum is directed to a method of enhancing the working life of cold
working die surfaces. (col. 1, ll. 6-7).
6) Meldrum teaches that when a metal work piece is deformed as it is
forced against a die surface, micro particles of the work piece may be
transferred to the die surface causing scratching or grooving in
subsequent work pieces prepared with the same die. (col. 1, ll. 25-29).
7) According to Meldrum, unsatisfactory prior art solutions to this
problem include applying a lubricant to the exterior of the die working
surface (col. 1, ll. 29-33) and adhering layers to the die surface (col. 1, ll.
58-67).
8) Meldrum’s method of treating metal working dies includes the steps
of a) forming a metal working die part from a particulate material such as
sintered alloys, ceramics, carbidic or metallic powder (col. 2, ll. 37-39),
b) immersing the metal working die part in a lubricant, c) raising the
4
Appeal 2006-2899
Application 09/972,159

pressure and temperature of the lubricant for a time sufficient to allow the
lubricant to migrate and be trapped within the micro pores of the die part,
and c) removing the die part from the lubricant in order to place it into
use. (col. 2, ll. 8-20).
9) Meldrum states that the lubricants have a chemistry that promotes
impregnation under the specified temperature (i.e., 80-120°C) and
pressure (i.e. 1000-3500 psi) parameters, and an ambient temperature
viscosity that allows for flow to the surface of the tool if the exterior film
of lubricant is wiped or scratched away during use. (col. 3, ll. 67- col. 4,
l. 2 and col. 4, ll. 16-21).
10) Meldrum states that where a chlorinated paraffin/ester was used as the
lubricant, temperature and pressure conditions were retained for about
90-100 hours. (col. 4, ll. 2-6).

ANALYSIS AND CONCLUSIONS
The Examiner maintains that:
It would have been obvious to one of ordinary skill in the art at
the time the applicant's invention was made to modify
Horigome et a1 by providing a lubricant layer onto the stamper
by dipping it into the lubricant as taught by Meldrum, because
when the stamper is dipped into the lubricant batch, the
lubricant would contact the stamper evenly from all sides to
form a uniform lubricant layer. (Answer 4).

The Examiner attempts to support this finding of motivation to combine
Horigome and Meldrum by pointing out that Horigome’s stamper and
Meldrum’s mold parts are both made of metal and that both references are
directed to solving problems in the molding art. (Answer 6).
5
Appeal 2006-2899
Application 09/972,159

As noted by Appellants, the mere fact that Horigome could have been
modified by dipping Horigome’s stamper into a lubricant as taught by
Meldrum does not make the modification obvious unless the prior art
suggested the desirability of the modification. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). Appellants argue,
and we agree, that the Examiner has simply not provided the requisite
evidentiary support for a finding of motivation to combine the applied prior
art. (Br. 4). In particular, the Examiner has not identified any teaching or
suggestion in the prior art which would have led one of ordinary skill in the
art to conclude that dipping Horigome’s stamper into a lubricant as taught by
Meldrum would produce the desired lubricant layer. See In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Where, as here, the
Examiner does not explain the motivation, suggestion, or teaching that
would have led the skilled artisan at the time of the invention to the claimed
combination as a whole, we infer that the Examiner relied on improper
hindsight reasoning to conclude that the invention was obvious. See In re
Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).
In view of the foregoing, the rejection of claims 7-10 and 13 under
35 U.S.C. § 103(a) as unpatentable over Horigome in view of Meldrum is
reversed.

6
Appeal 2006-2899
Application 09/972,159

The Examiner’s reliance on Flynn is limited to the reference’s
disclosure of a perfluoropolyether coating layer which could includes Z-
Tetraol. Accordingly, the rejection of claims 10 and 13 under 35 U.S.C. §
103(a) as unpatentable over Horigome in view of Meldrum and further in
view of Flynn is also reversed.

REVERSED

Sld/ls
MCDERMOTT, WILL & EMERY
600 13TH STREET, N.W.
WASHINGTON, DC 20005-3096
7