Ex Parte EDELSTEIN et al

Patent Trial and Appeal BoardFeb 28, 2019

15151260 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/151,260 05/10/2016 DANIEL EDELSTEIN 68397 7590 02/28/2019 THE LAW OFFICES OF ROBERT J. EICHELBURG HODAFEL BUILDING, SUITE 200 196 ACTON ROAD ANNAPOLIS, MD 21403 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. YOR920121040US3 (14-40-02 EXAMINER SABUR,ALIA 9400 ART UNIT PAPER NUMBER 2812 MAIL DATE DELIVERY MODE 02/28/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL EDELSTEIN, ALFRED GRILL, SETH L. KNUPP, SON NGUYEN, TAKESHI NOGAMI, V AMSI K. P ARUCHURI, HOSADURGA K. SHOBHA, and CHIH-CHAO YANG Appeal2018-001580 Application 15/151,260 Technology Center 2800 Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 16 and 17 of Application 15/151,260 under 35 U.S.C. Â§Â§ 103 and 112. Final Act. (Dec. 28, 2016) 4-- 8. Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6. For the reasons set forth below, we AFFIRM. 1 The Appellant, International Business Machines Corporation, is identified as the real party in interest. Appeal Br. 5. Appeal2018-001580 Application 15/151,260 STATEMENT OF THE CASE The present application, filed May 10, 2016, is a divisional of Application No. 14/298,938, filed June 8, 2014. See Application Data Sheet. The divisional application as filed included original claims 1-20. A preliminary amendment was filed concurrently with the divisional application canceling claims 1-15. See 3 7 CPR Â§ 1.116 Preliminary Amendment ( dated May 10, 2016). On July 14, 2016, the Examiner issued a non-final action rejecting claims 16-20 as indefinite and claims 16 and 17 as obvious. Non-Final Action (July 14, 2016). The rejection of claims 18-20 as indefinite was predicated only on a lack of antecedent basis. Id. at 3. On October 14, 2016, Appellant submitted amendments to the claims leaving original claims 16 and 17 unchanged, amending claims 18-20, and adding new claims 21-25. See 37 CPR 1.111 Amendment (dated Oct. 14, 2016). Appellant stated that it "amend[ s] claims 18-20 to provide the antecedent basis for these claims." Id. at 10. On December 28, 2016, the Examiner determined that "newly submitted claims 18-25" are directed to inventions that are independent or distinct from the originally claimed invention. Final Act. 2. The Examiner determined that "[ s ]ince applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 18-25 are withdrawn from consideration as being directed to a non- elected invention." Id. On March 7, 201 7, Appellant submitted a response after final action. See 3 7 C.F .R. Â§ 1.13 3 Record of Interview and Â§ 1.116 Amendment (March 2 Appeal2018-001580 Application 15/151,260 7, 2017). There, Appellant sought to cancel claims 16 and 17 and requested the Examiner to "pass claims 18-25 to issue." Id. at 6. By Advisory Action dated March 16, 2017, the Examiner determined not to enter the proposed amendments because such amendments were not "deemed to place the application in better form for appeal by materially reducing or simplifying the issues for appeal." See Advisory Action (March 16, 2017). BACKGROUND The present application indicates that it teaches articles of manufacture and processes to "reduce or substantially eliminate EM [electromigration] and/or stress migration, and/or TDDB [time-dependent- dielectric breakdowns] in copper interconnects in microelectronic devices and circuits ... by means of an ultra thin layer or layers of Mn alloys containing Wand/or Co." Spec. ,r 12. Claim 16 is illustrative of the subject matter on appeal and is reproduced below with certain text bolded for emphasis: 16. A deposition tool comprising: a load/unload chamber; a mechanism for transferring a substrate between said load/unload chamber and a deposition chamber, said deposition chamber connected to said load/unload chamber by a port; and wherein said deposition chamber is (i) configured to selectively form a metal layer or layers on copper by chemical vapor deposition or by atomic layer deposition and (ii) is configured to form a dielectric layer by chemical vapor deposition, and additionally comprising further downstream chambers selected from at least one of a UV and a Low rf stream plasma or thermal cure means in at least one of a reducing environment ambient to enhance the reaction/intermixing between said layer or layers and said copper. Appeal Br. 32 (Claims App.) ( emphasis added). 3 Appeal2018-001580 Application 15/151,260 REJECTIONS The Examiner maintains the following rejections: 1. Claims 16 and 172 are rejected under 35 U.S.C. Â§ 112(b) for failure to particularly point out and distinctly claim the subject matter of the invention. Final Act. 4--5. 2. Claims 16 and 17 are rejected under 35 U.S.C. Â§ 103 as obvious over Smith et al. (US 2008/0202892 Al, published Aug. 28, 2008) ("Smith"). Id. at 7-8. DISCUSSION As a preliminary matter, Appellant asserts that "[t]he Rejection that [r]estricted and withdrew claims 18-25 from further prosecution is a clear error of law that appellants ask the Board to reverse." Appeal Br. 20. Appellant further asserts that the Office is estopped from imposing a restriction requirement by virtue of not having imposed such requirement prior to the final rejection. Id. at 21-23. Appellant further disputes the Examiner's determination that Appellant elected a single class of statutory invention by original presentation. Id. at 23-25. Appellant asserts that "the application did in fact originally present process claims 18-19 and structure claim 20 as the claims of the invention." Id. at 23. We decline to address Appellant's arguments regarding the restriction requirement. 2 The Final Rejection indicates that the indefiniteness rejection is applicable to claims 16-20; however, the text of the rejection is applicable only to claims 16 and 17. See Final Act. 4--5. 4 Appeal2018-001580 Application 15/151,260 Decisions of patent examiners relating to examination are subject to review either by petition to the Director or appeal to the Board. The proper avenue of review depends upon the subject matter at issue. The Court of Customs and Patent Appeals offered guidance as follows in this regard: Decisions of the examiner directly relating to the rejection of claims are subject to appeal. These questions generally deal with the merits of the invention, involving factual determinations and the legal conclusions drawn therefrom regarding the application disclosure, the claims and the prior art. The examiner's rulings dealing with procedural matters, such as whether an affidavit or amendment is untimely, and formal requirements, such as whether a new application title will be required, are reviewable upon petition. Application of Searles, 422 F.2d 431,435 (C.C.P.A. 1970). Patent Office regulations provide that a restriction requirement is reviewable by petition. 37 CPRÂ§ 1.144; see also Application ofHengehold, 58 C.C.P.A. 1099, 1109 (1971) (restriction requirement reviewable by petition); see also In re Watkinson, 900 F.2d 230, 233 (Fed. Cir. 1990) ("neither this court nor the board has jurisdiction in this proceeding to review the merits of a requirement for restriction"). Appellant seems to argue that Title 37 of the Code of Federal Regulations forbids imposition of a restriction requirement in a final office action, that such rule has the force of law, and that the Board is obliged to enforce Title 37. See Appeal Br. 20 ( quoting a statement from Issidores v. Lew, 4 U.S.P.Q.2d 1854, 1858 (Bd. of Pat. App. and Intf. 1987) that "37 CPR has the effect of law ... [and] they must be enforced by us."); Reply Br. 3. This is not persuasive. Any number of rules applicable to examination procedure are found in Title 37; they are not all appealable. See Application of Searles, 422 F.2d at 435 (holding that various issues which may be 5 Appeal2018-001580 Application 15/151,260 "determinative of the rejection" are reviewable only by petition); see also MPEP Â§ 1002.02(c) (9th ed., Rev. 08.2017, Jan. 2018) (petitions and requests decided by the Technology Center Directors). Rejection 1. The Examiner rejected claims 16 and 17 as indefinite. The Examiner determined that the claim terms "further downstream chambers" and "selected from at least one of a UV and a Low rf stream plasma or thermal cure means in at least one of a reducing environment" render claim 16 indefinite. The Examiner determined that "further downstream chambers" is ambiguous because no indication is given in the claim or specification what "downstream" indicates structurally. Final Act. 4. The Examiner further determined that the use of the plural term "chambers" creates ambiguity as to the number of further chambers required by the claim. Id. Appellant briefly responds that one of ordinary skill in the art would understand such term to mean "chambers after those initially set out in claim 16." Appeal Br. 6. In the Answer, the Examiner indicated that such response is inadequate as it is unclear what structure is defined by the term "after." During prosecution, a claim is examined for compliance with 3 5 U.S.C. Â§ 112, ,r 2 by determining whether the claim meets threshold requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009) ( quoting MPEP Â§ 2173.02). A claim should be rejected as indefinite when it is amenable to two or more plausible claim constructions. In re Packard, 751 F.3d 1307, 1309-10 (Fed. Cir. 2014) (a pending claim is indefinite if it "contains words or phrases whose meaning is unclear."). "There are good reasons why unnecessary incoherence and ambiguity in claim constructions should be disapproved." Id. at 1324. 6 Appeal2018-001580 Application 15/151,260 Here, the claim explicitly requires a "load/unload chamber" and a "deposition chamber." Appeal Br. 32 (Claims App.). Appellant seems to argue that the term "downstream" is a temporal limitation. That is, a "downstream chamber" is argued to be one where some function occurs that is temporally subsequent to loading and deposition. This is somewhat ambiguous at least because it is unclear whether such limitation would be applicable to a chamber where one of the recited functions was ( or could be) performed prior to loading/unloading or deposition. Accordingly, Appellant has not shown error in the Examiner's determination that "further downstream chambers" renders claim 16 indefinite. The Examiner further determined that the phrase "selected from at least one of a UV and a Low rf stream plasma or thermal cure means in at least one of a reducing environment" render claim 16 indefinite. Final Act. 5. The Examiner determined that use of the word "means" suggests that the limitation is a means-plus-function term, but that the Specification does not teach corresponding structure. In response, Appellant indicates "that the examiner as a person with ordinary skill in the art, has placed one reasonable interpretation on the claim, inter alia, and therefore the claim is not indefinite." Appeal Br. 26. Appellant's argument is not persuasive. First, Appellant misstates the legal test. Being susceptible of "one reasonable interpretation" does not render a limitation definite if other reasonable interpretations are possible. In re Packard, 751 F.3d at 1309-10. Additionally, Appellant does not address the Examiner's finding regarding the claim term being a means- plus-function limitation. Construing a means-plus-function claim term is a two-step process. First, one must identify the claimed function. Noah Sys., Inc. v. Intuit Inc., 7 Appeal2018-001580 Application 15/151,260 675 F.3d 1302, 1311 (Fed. Cir. 2012). Second, one must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). Here, the claimed function appears to be "to enhance the reaction/intermixing between said layer or layers and said copper." With regard to corresponding structure, the Specification teaches as follows regarding the UV, low RF stream plasma or thermal cure means: The invention comprises, among other things ... UV or/and Low rf/down stream plasma or thermal cure treatment in reactive hydrogen or other reducing environments (H2, NH3,CO and art-known equivalents) or inert gas (N, Ar, He, .Ne, Kr, Xe and art-known equivalents) ambient to enhance the reaction/intermixing between each layer and between Cu/Metal alloy interfaces. Spec. ,r 26. This is substantially redundant of the claim term at issue. The Specification includes certain additional teachings regarding the appropriate gaseous environment. This portion of the Specification is, however, inadequate to define the structure associated with the function stated in the claim. Additionally, even if not construed as a means-plus-function limitation, the phrase at issue remains ambiguous. It is unclear if the term UV modifies "plasma," "stream plasma," or neither. Moreover, it is not clear what is required by a "reducing environment ambient to enhance." In view of the foregoing, we conclude that Appellant has not shown reversible error in the Examiner's determination that claim 16 is indefinite. Claim 1 7 depends from claim 16 and further requires, inter alia, that the tool have "from about 4 to about 5 chambers." Appeal Br. 32 (Claims App.). The Examiner notes that the Specification states that the "terms 8 Appeal2018-001580 Application 15/151,260 'about,' 'substantial,' or 'substantially' as applied to any claim or any parameters herein, such as a numerical value, including values used to describe numerical ranges, means slight variations in the parameter or the meaning ordinarily ascribed to these terms." Spec. ,r 64. The Specification further states that "[i]n another embodiment, the terms 'about,' 'substantial,' or 'substantially,' when employed to define numerical parameter include, e.g., a variation up to five per-cent, ten per-cent, or 15 per-cent, or somewhat higher." Id. The Examiner however, determines that such teaching does not provide adequate guidance for the interpretation of "about 4 to about 5 chambers." Final Act. 5. Appellant argues that a person of ordinary skill in the art would construe the limitation "as a whole number variation" rather than a percentage variation. Appellant further argues that the Examiner's construction of the limitation to mean 4 to 5 chambers is "one reasonable interpretation on the claim ... therefore the claim is not indefinite." Appeal Br. 27. A claim employing a "term[ ] of degree" may be definite "where it provide[s] enough certainty to one of skill in the art when read in the context of the invention." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). Where, however, a term of degree is "purely subjective" and depends "on the unpredictable vagaries of any one person's opinion," it is indefinite. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350-51 (Fed. Cir. 2005). Here, the Specification provides little guidance regarding construction of "about" in the present context. Further, Appellant has conceded that construing the limitation as "4 to 5 chambers," effectively reading "about" out of the claim, is "one reasonable interpretation." Appeal Br. 27. 9 Appeal2018-001580 Application 15/151,260 Claim terms are not read out of a claim. See In re Wilson, 424 F .2d 1382, 1385 (CCPA 1970) ("All words in a claim must be considered in judging the patentability of that claim against the prior art."). Thus, the term "about" is not properly read out of claim 17. It is unclear on this record how there can be some degree of whole number variation in the context of a chamber, e.g., four chambers with a variation up to 5 percent. For that reason, the claim limitation "from about 4 to about 5 chambers" is indefinite. In view of the foregoing, Appellant has not shown reversible error in the Examiner's determination that claim 17 is indefinite. Appellant additionally appears to argue that claims 18-20 are not indefinite because they find proper antecedent basis in claims 1 and 9. Id. at 27-28. We will not consider such argument as those claims are not presently of record nor are they subject to a standing rejection. Rejection 2. The Examiner rejected claims 16 and 17 as obvious over Smith. Final Act. 5-8. In support of the rejection of claim 16, the Examiner found that Smith teaches a deposition tool that includes "at least one further chamber (Fig. 1) comprising irradiation means ([0067]), rf generators ([0078]), or thermal treatment means ([0071], [0067], [0057]), wherein gases can be provided to the deposition chamber ([0072])." Id. at 7. Appellant argues that Smith does not teach a deposition tool "additionally comprising further downstream chambers selected from at least one of a UV and a Low rf stream plasma or thermal cure means." Appeal Br. 28. Specifically, Appellant argues that Smith does not teach "further downstream chambers." Id. at 28-29. For purposes of 10 Appeal2018-001580 Application 15/151,260 Examination, the Examiner construed such limitation to mean "at least one further chamber." Final Act. 5; Answer 7. We will not review the appeal of an obviousness rejection implicating a limitation determined to be indefinite. See In re Aoyama, 656 F.3d 1293, 1298-99 (Fed. Cir. 2011) (explaining that a claim cannot be both indefinite and anticipated and refusing to review an anticipation rejection); In re Steele, 305 F.2d 859, 862 (CCPA 1962) ("[W]e do not think a rejection under 35 U.S.C. Â§ 103 should be based on such speculations and assumptions."). Accordingly, the rejection of claims 16 and 17 is reversed on this procedural basis. This should not be construed as a substantive determination as to the merits of any rejection predicated upon obviousness in view of Smith. CONCLUSION The Board declines to consider the propriety of the restriction requirement issued December 28, 2016. The rejection of claims 16 and 17 as indefinite is affirmed. The rejection of claims 16 and 17 as obvious over Smith is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 11