Ex Parte Yotsuya et al

Board of Patent Appeals and Interferences

Nov 20, 2007

10412323 (B.P.A.I. Nov. 20, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHINICHI YOTSUYA,
KAZUSHIGE UMETSU and
DAISUKE SAWAKI
____________

Appeal 2007-2667
Application 10/412,323
Technology Center 1700
____________

Decided: November 20, 2007
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-8.
Claim 1 is illustrative:
1. A method of manufacturing a mask including formation of a
plurality of penetrating holes in a substrate, each of the penetrating holes
connecting one of first openings and one of second openings that are larger
than the first openings respectively, the method comprising:
Appeal 2007-2667
Application 10/412,323

(a) forming an etching resistant film on a first surface of the substrate
avoiding areas in which the first openings will be formed, and exposing
regions in each of which two or more of the penetrating holes will be formed
in a second surface of the substrate opposite to the first surface so as to
continuously expose areas for forming two or more of the second openings
in each of the regions;

(b) forming smaller holes than the penetrating holes at positions in
which the penetrating holes will be formed; and

(c) etching the first and second surfaces of the substrate with crystal
orientation dependence.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Drake 4,961,821 Oct. 9, 1990
Nakasuji 6,059,981 May 9, 2000
Beatty 6,365,058 B1 Apr. 2, 2002
Yotsuya 6,893,575 B2 May 17, 2005

Appellants' claimed invention is directed to a method of
manufacturing a mask by forming a plurality of holes in a substrate. First
and second openings are formed on opposite surfaces of the substrate with
the second openings being larger than the first openings. The first and
second openings are formed by using an etching resistant film on both
surfaces of the substrate, and during formation of the second openings a
portion of the surface is not covered with etch resistant film, i.e., the so-
called "exposing regions" in claim 1, paragraph (a). The appealed claims
require exposing regions of the second surface of the substrate in which at
least two of the larger, second openings are formed such that these regions
are not covered with etching resistant film.
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Appeal 2007-2667
Application 10/412,323

Appealed claims 1, 4, 5, 7, and 8 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Nakasuji. Claims 1, 2, 4, 5, 7, and 8 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Drake. Claims
3 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Drake in view of Beatty. In addition, claims 1 and 4 stand rejected under the
judicially created doctrine of obviousness-type double patenting over claim
1 of the patent to Yotsuya.
We have thoroughly reviewed the respective position advanced by the
Appellants and the Examiner. In so doing, we find that we cannot sustain
the Examiner's rejections.
We consider first the Examiner's rejection under § 102 over Nakasuji.
Appellants urge that Nakasuji does not describe within the meaning of
§ 102 the claimed step of "exposing regions in each of which two or more of
the penetrating holes would be formed in a second surface of the substrate
opposite to the first surface so as to continuously expose areas for forming
two or more of the second openings in each of the regions." The Examiner
states that "Nakasuji also teaches that exposing regions in each of which two
or more openings are formed …" and cites Figures 5(b) and 6(c) of the
reference. The Examiner offers no further commentary or explanation how
the reference figures can be interpreted to meet the argued claim limitation.
However, our review of Nakasuji brings us in agreement with Appellants
that the reference does not describe an exposed region for forming two or
more of the second openings that are larger than the first openings. Looking
at Figure 6(c) of Nakasuji, it can be seen that area 33 exposes two or more
openings on the upper surface of layer P, but these openings are not larger
than the openings on the opposite surface of layer P. On the other hand, the
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Appeal 2007-2667
Application 10/412,323

exposed regions on the opposite or bottom surface of layer P expose only
singular apertures. Hence, we cannot agree with the Examiner that Nakasuji
meets every limitation of claim 1 on appeal.
The Examiner's § 103 rejection over Drake has the same deficiency
discussed above, i.e., Drake provides no teaching or suggestion of the claim
1 (a) recitation "exposing regions in each of which two or more of the
penetrating holes will be formed in a second surface of the substrate …."
The Examiner maintains that although Drake does not explicitly teach the
claim limitation the reference does "teach exposing at least two areas in both
the first and second surface of the substrate in order to continuously form at
least two penetration holes in the substrate," referencing Figures 10A – 10C
(Ans. 4, penultimate para.). However, the Examiner confuses Drake's
continuous formation of at least two holes with the claim requirement for a
continuously exposed area for forming two or more of the second openings.
While Figures 10A – 10C of Drake depict two through holes, the figures do
not depict an exposed area of substrate devoid of etching resistant film over
a surface in which two or more second openings are formed.
As for the rejection of claims 3 and 6 under § 103 over Drake in view
of Beatty, Beatty does not remedy the deficiency of Drake outlined above.
We will also not sustain the Examiner's obviousness-type double
patenting rejection of claims 1 and 4 over claim 1 of U.S. '575. While we
agree with the Examiner that claim 1 of the patent expressly recites that "the
second openings are smaller than the first openings," we concur with
Appellants that the "patent fails to disclose forming an etching resistant film
'so as to continuously expose areas for forming two or more of the second
openings in each of the regions,' as recited in claim 1" (Br. 9, para. 4). The
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Application 10/412,323

Examiner does not address this argued limitation and fails to meet the
burden of establishing why such a claimed feature would have been obvious
to one of ordinary skill in the art within the meaning of § 103. Manifestly,
this constitutes reversible error.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner's rejections.
REVERSED

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