Ex Parte Duerig et al

Patent Trial and Appeal Board

Apr 26, 2016

12363389 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/363,389 0113012009
80330 7590
Kunzler Law Group/ ARC
50 Broadway
10th Floor
Salt Lake City, UT 84101
04/28/2016
FIRST NAMED INVENTOR
Urs T. Duerig
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.
CH920080l65US1 1874
EXAMINER
JIANG, LISHA
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
jeff@kunzlerlaw.com
lauren@kunzlerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte
URS T. DUERIG, BERND W. GOTSMANN,
JAMES LUPTON HEDRICK,
ARMIN W. KNOLL, and DAVID SANTOS PIRES 1
Appeal2014-007254
Application 12/363,389
Technology Center 1700
Before BRADLEY R. GARRIS, MARK NAGUMO, and N. WHITNEY
WILSON, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4, 6, 8-14, and 21-30. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 International Business Machines Corporation is identified as the Real Party
in Interest. App. Br. 4.
Appeal2014-007254
Application 12/363,389
Appellants claim a probe-based method for patterning a surface of a
material comprising the steps of providing a film of a molecular glass
material and patterning the film with a heated, nano-scale dimensioned
probe (independent claims 1 and 21 ).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A probe-based method for patterning a surface of a
material, the method comprising:
providing a film with a network of molecules
cross-linked via intermolecular, non essentially covalent
bonds, wherein the network of molecules comprises a
molecular glass material with a random arrangement of
chains below a glass transition temperature; and
patterning the film by desorbing molecules from
the network with a heated, nanoscale dimensioned probe.
Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable:
claims 1, 2, 4, 6, 8-14, and 21-30 as unpatentable over Ober
(Christopher K. Ober, Phenolic Based Molecular Glass Resists for Next
Generation Lithography, Cornell NanoScale Science & Technology Facility:
2006-2007 Research Accomplishments, 86-87) in view of Hua (Hua et al.,
Direct Three Dimensional Nanoscale Thermal Lithography at High Speeds
using Heated Atomic Force Microscope Cantilevers, 6517 PROC. OF SPIE
(2007)) alone or in combination with additional prior art references.
Appellants do not present separate arguments specifically directed to
the dependent claims under rejection (App. Br. 6-17). Therefore, the
dependent claims will stand or fall with their parent independent claims of
which claim 1 is representative.
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Appeal2014-007254
Application 12/363,389
For the well stated reasons given in the Final Action and in the
Answer, the Examiner has established a strong prima facie case of
obviousness for the proposition that it would have been obvious to pattern
the molecular glass film of Ober using heated probe lithography, rather than
extreme ultraviolet light lithography, in view of Hua (Final Action 6-8, Ans.
2--4).
Appellants argue that there is no prima facie case because it is not
rational to believe the heated probe technique used by Hua on cross-linked
polymer would have been applicable to the molecular glass material of Ober
(App. Br. 9-11). 2
Appellants' argument is not persuasive. As explained by the
Examiner, an artisan would have had a reasonable expectation that the
heated probe of Hua would successfully break the non-covalent bonds of,
and thereby pattern, Ober's molecular glass material in light of Hua's
teaching that the heated probe successfully breaks the covalent bonds of, and
thereby patterns, cross-linked polymer (Ans. 2--4).
Appellants also contend that any prima facie case of obviousness is
effectively rebutted by the Declaration of record (i.e., by Urs T. Duerig (one
of the inventors)) showing unexpected results (App. Br. 11-12). According
to Appellants, the Declaration shows that using a heated probe for patterning
a molecular glass surface in comparison with a cross-linked polymer surface
2 For completeness and clarification, we emphasize that Appellants' claimed
glass material also is a cross-linked polymer (see, e.g., independent claim
21, Spec. i-f 13), although the record reflects the claimed cross-linked
polymer of molecular glass possesses different bonds than the cross-linked
polymer of Hua.
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Appeal2014-007254
Application 12/363,389
unexpectedly results in no contamination of the probe tip, no contamination
of the surface, and faster writing (i.e., patterning) speeds (id.).
However, we agree with the Examiner that the Declaration does not
show unexpected results reasonably commensurate in scope with the claims
because "[A ]ppellant[ s] ha[ ve] not shown, using data, any particular
patterning condition and the results thereof' (Ans. 5). Instead of data,
Appellants present in their Declaration uncorroborated testimony that the
above-mentioned results were unexpectedly achieved using a thermal probe
to pattern molecular glass materials compared to cross-linked polymers
without any specifics regarding the materials, the polymers, or the patterning
conditions.
As correctly indicated by the Examiner, without such specifics, it is
not possible to meaningfully assess whether Appellants' showing establishes
unexpected results that are reasonably commensurate in scope with claim 1
(id.). Due to the lack of factual corroboration, the opinions expressed in the
Declaration are entitled to little weight such that Appellants' showing of
unexpected results is very weak. See In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004) (explaining that the Board is entitled to
weigh declarations and conclude the lack of factual corroboration warrants
discounting the opinions expressed in the declarations).
The Examiner also correctly points out that a showing of unexpected
results may not overcome a strong showing of obviousness (Ans. 6 (citing
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007)). Here, the
Examiner has established a strong prima facie case of obviousness whereas
Appellants' showing of unexpected results is weak. Under these
circumstances, we agree with the Examiner that Appellants' showing of non-
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Appeal2014-007254
Application 12/363,389
obviousness does not outweigh the Examiner's showing of obviousness (id.
at 6-7).
The decision of the Examiner 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
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