Ex Parte Herrin et al

Patent Trial and Appeal BoardApr 20, 2016

12690312 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/690,312 134359 7590 Gibb & Riley, LLC 844 West Street Suite 200 FILING DATE 01/20/2010 04/22/2016 Annapolis, MD 21401 FIRST NAMED INVENTOR Russell T. Herrin 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. BUR920090062US 1 7579 EXAMINER WEI, ZHONGQING ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 04/22/2016 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): gfsupport@gibbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUSSELL T. HERRIN, EDMUND J. SPROGIS, and ANTHONHYK. STAMPER Appeal2014-006671 Application 12/690,312 Technology Center 1700 Before CHUNG K. PAK, KAREN M. HASTINGS, and CHRISTOPHER C. KENNEDY Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 1-25. We have jurisdiction over the appeal under 35 U.S.C. Â§6(b). We AFFIRM. 1 Appellants identify that the real party in interest as "International Business Machines Corporation" (Appeal Brief filed January 15, 2014 ("App. Br.") 1. Appeal2014-006671 Application 12/690,312 Claim 1 is illustrative (emphasis added): 1. A photomask that comprises a light filter in an exposure system, said photomask comprising: at least one layer of material comprising one or more transparent regions and one or more non-transparent regions, a difference between said one or more transparent regions and said one or more non-transparent regions defining features that will be illuminated by said exposure system onto a photoresist exposed using said exposure system, said features comprising one or more device shapes and at least one sub-lithographic shape, said at least one sub-lithographic shape having a sub- lithographic shape size, and said sub-lithographic shape size being limited such that said sub-lithographic shape size causes a physical change only in a surface of said photoresist and such that said sub-lithographic shape size avoids forming an opening through said photoresist after said photoresist is developed. Claim Appendix (App. Br. 21-27). The Examiner maintains, and Appellants appeal, the following rejections: I. Claims 1-5, 7-11and20-24 are rejected under 35 U.S.C. Â§102(e) as anticipated by, or in the alternative underÂ§ 103(a) as obvious over, Jahnke (US 2009/0075178 Al, published March 19, 2009). II. Claims 13-17 and 19 under 35 U.S.C. Â§ 103(a) as unpatentable over Jahnke in view of Lin (U.S. 5,472,814, issued December 5, 1995). 2 Appeal2014-006671 Application 12/690,312 III. Claims 6, 12, 18 and 25 stand rejected under 35 U.S.C. Â§103(a) as unpatentable over Jahnke, Lin and in further in view of Singh (U.S. 6,898,781 B2, issued May 24, 2005). For the first ground of rejection, Appellants state that independent claims 1, 7, 13 and 20 stand or fall together (App. Br. 10), and that the dependent claims stand or fall with their respective independent claims (App. Br. 15). ANALYSIS We have reviewed each of Appellants' arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner's finding that the claimed subject matter of each independent claim is anticipated, or alternatively obvious, within the meaning ofÂ§ 102 or Â§ 103 in view of the applied prior art. Accordingly, we will sustain the Examiner's rejections for essentially those reasons expressed in the Answer, including the Examiner's Response to Argument section, and we add the following primarily for emphasis. Appellants only dispute is that the registration marks (i.e., sub- lithographic shape size) of Jahnke's photomask do not function as recited in each independent claim since Jahnke explicitly states that its registration marks are "not to be transferred into a resist layer" (App. Br. 11-13, citing Jahnke abstract and i-fi-113, 21 ). The Examiner urges that Jahnke's illumination diagrams in Figs. 3A and 3B depict regions having combinations of line widths and exposure doses teaching and/ or suggesting registration marks that result in the mask printing a feature on only the surface of the resist layer (Ans. 12, 13). 3 Appeal2014-006671 Application 12/690,312 It is well established that when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). It is also well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based onÂ§ 102 orÂ§ 103 since the burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants' contention that one would not use registration marks that function as recited in the claims since Jahnke "goes to great lengths ... to specify the wavelengths that can be utilized so that the [registration] marks are not imaged into the resist layer (App. Br. 11; Reply Br. 5) appears misdirected. Although Jahnke teaches using a particular process parameter, i.e., an exposure dose/wavelength, to avoid the recited function, it does imply that in the absence of using such process parameter, Jahnke's registration marks that correspond to the recited sub-lithographic shape cannot avoid the recited function (e.g., Ans. 12, 13). In other words, the functional capability recited in the claims is dependent on the size of the registration marks and the exposure dose. The size of the lines in the marks in Jahnke (e.g., 280 to 400 nanometers as exemplified in Jahnke i-f 34) appear to be on the same order as encompassed by the claims (e.g., Spec. i-f 34 implicitly disclosing 300 to 400 nanometers). Indeed, Appellants admit the 4 Appeal2014-006671 Application 12/690,312 Examiner's position "might be reasonable" except for the fact that Jahnke explicitly discusses states its marks are not imaged into the resist layer (App. Br. 11; Reply Br. 5). Notably, the claims, which are drawn to a photomask, rather than to a process for using a photomask, do not recite any specific size for their sub-lithographic shape, nor do they require that the capability of their sub-lithographic shape occur within specified radiation exposure doses, such as that disclosed in Jahnke. Accordingly, the Examiner has presented a prima facie case of unpatentability of the photomask as claimed. Appellants have not provided any persuasive reasoning or credible evidence to refute the Examiner's determination that the registration marks (sub-lithographic shape) of the photomasks taught and suggested in Jahnke are capable of causing a physical change as recited in each independent claim in a given radiation exposure dose outside of that disclosed in Jahnke because this capability is dependent on size and exposure dose, not size alone (e.g., Ans. 11 (the Examiner urges that Appellants have not rebutted the inherent "capability" of the sub-lithographic mark taught by Jahnke to function as recited in the claim)). Stated differently, Appellants have not shown that the recited function would have rendered the sub-lithographic shape of the claimed photomask structurally different from the registration marks of the photomask taught by Jahnke. See In re Michlin, 256 F .2d 317, 320 (CCPA 1958) ("It is well settled that patentability of apparatus claims must depend upon structural limitations and not upon statements of function."). Attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellants' do not present any additional arguments for the Â§ 103 rejections II, III (App. Br. 15-19). 5 Appeal2014-006671 Application 12/690,312 Accordingly, the Examiner'sÂ§Â§ 102 and 103 rejections are affirmed with respect to all of the claims on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136. ORDER AFFIRMED 6