Ex Parte Kolesnychenko et al

Patent Trial and Appeal Board

Oct 11, 2016

11025600 (P.T.A.B. Oct. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111025,600 12/30/2004
909 7590 10/13/2016
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
Aleksey Yurievich Kolesnychenko
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.
081468-0314351 7944
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
10/13/2016 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKLEKSY YURIEVICH KOLESNYCHENKO,
HELMAR VAN SANTEN, YVONNE KRUIJT-STEGEMAN, and
ERIK ROELOF LOOPSTRA 1
Appeal2015-005157
Application 11/025,600
Technology Center 2800
Before BRADLEY R. GARRIS, MARK NAGUMO, and CHRISTOPHER
C. KENNEDY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-5, 10, 14--28, 30, 31, 33-39, 63---68, 73, 77-85,
87, 88, 91, 92, and 95. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 ASML Netherlands B. V. is identified as the real party in interest. App.
Br. 2.
Appeal2015-005157
Application 11/025,600
Appellants claim an imprinting method comprising heating an
imprintable medium on a substrate from a non-flowable to a flowable state,
pressing a template into the medium to form an imprint, cooling the medium
to a substantially non-flowable state, and separating the template from the
medium, wherein the medium comprises a non-polymer, crystalline imprint
material including a microcrystalline wax and further comprises a nucleating
species (e.g., aluminum oxide) (independent claim 1; see also remaining
independent claim 65).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. (Previously Presented) An imprinting method, comprising:
heating an imprintable medium on a substrate from a non-flowable
state to a flowable state in 1 minute or less such that the medium is at a first
temperature up to 10°C above the melting point temperature of the medium,
the imprintable medium comprising a non-polymer, crystalline imprint
material including a microcrystalline wax and comprising a nucleating
species selected from the group consisting of: an oxide, a nitride, a halide
and a hydroxide;
pressing a template into the medium to form an imprint in the
medium;
cooling the medium to a second temperature up to 10°C below the
melting point temperature of the medium prior to separation between the
contacting template and medium such that the medium is in a substantially
non-flowable state while the medium is contacted by the template; and
separating the template from the medium while in the substantially
non-flowable state within 5 minutes after the medium is cooled into the
substantially non-flowable state.
2
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Application 11/025,600
Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable: 2
claims 1--4, 10, 14, 16-18, 20-28, 30, 31, 33-39, 63----67, 73, 77, 79-
81, 83-85, 87, 88, 91, 92, and 95 over Chen et al. (US 2007/0290387 Al,
published Dec. 20, 2007; hereinafter "Chen") in view of Liu et al.
(Thermochimica Acta 366, pp. 135-147 (2001); hereinafter "Liu") (Non-
final Action 3-13);
claims 5 and 68 over Chen, Liu, and Appellants' Admitted Prior Art
(AAPA) (i.e., as described at Spec. i-f 63) (id. at 13-14);
claims 15, 18, 78, and 81 over Chen, Liu, and Choi et al. (US
2002/0093122 Al, published Jul. 18, 2002; hereinafter "Choi") (id. at 14--
15); and
claims 19 and 82 over Chen, Liu, and Xu et al. (US 2005/0100830
Al, published May 12, 2005; hereinafter "Xu") (id. at 15).
We will sustain these rejections for the reasons expressed in the
rejections (id. at 3-15) and below.
The Independent Claims
In rejecting the independent claims, the Examiner finds that Chen
teaches an imprinting method "using both a microcrystalline and paraffin
wax in combination as the PCC [i.e., phase change composition] (paragraph
43)" (Non-final Action 6) but not the claimed nucleating species (e.g., an
oxide) (id.). Regarding this deficiency, the Examiner finds that Liu teaches
2 The Examiner erroneously omitted claims 14, 18, and 81 from the
statements of rejection although these claims were discussed in the bodies of
their rejections (see non-final Action 12, 15). Because Appellants correctly
understand the rejections of these omitted claims (App. Br. 4), the
Examiner's error is harmless.
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Application 11/025,600
adding Ah03 (i.e., aluminum oxide or alumina) to paraffins when used for
their phase change characteristics thereby resulting in reduced melting
temperature (id.) and concludes that it would have been obvious "to add
Ah03 to the paraffins used in the method of Chen ... in order to reduce the
temperature required to melt the paraffins ... [with the concomitant] result
of reducing the energy costs in the system" (id.).
In support of their position that Liu is non-analogous art, Appellants
argue "Liu is not reasonably pertinent to the particular problem with which
the inventor was involved [because] Liu is directed to evaluating materials
for use as a thermally conductive material (see, e.g., Liu, pages 136 and
137), whereas the claimed invention involves a material suitable for
imprinting" (App. Br. 9; see also id. at 28-29). According to Appellants, "it
is not apparent why a person of ordinary skill in the art would consider a
document that has no apparent mention of imprinting or of the suitability of
materials to imprinting" (id. at 9; see also id. at 29).
Appellants' argument lacks persuasive merit. Liu discloses phase
change materials, such as paraffin and microcrystalline waxes with and
without additives such as aluminum oxide, as well as the phase change
behavior of such materials including their melting temperatures (e.g., close
to room temperature), solidification temperatures and heats of fusion (Liu
Abst.). Similarly, Appellants disclose the claimed imprint media and
materials in terms of their phase transitions between solid and liquid states
(Spec. i-f 11) and melting point temperatures (e.g., close to room
temperature) (id. at i-f 37) wherein the materials include paraffin wax,
microcrystalline wax, and additives such as aluminum oxide (id. at i-fi-1 41-
43) to act as nucleating agents or to adjust physical and/or chemical
properties such as the heat of fusion (id. at i-f 88).
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These commonalities in the disclosures of Liu and Appellants support
a determination that the Liu reference, because it deals with phase change
materials and their behavior (e.g., melting and solidification temperatures),
logically would have commended itself to an inventor's attention in
considering problems relating to a suitably imprintable medium and material
for an imprinting method. See In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992) ("A reference is reasonably pertinent if ... it is one which, because of
the matter with which it deals, logically would have commended itself to an
inventor's attention in considering his problem."); see also Wyers v. Master
Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) ("The Supreme Court's
decision in KSR Int 'l Co. v. Teleflex, Inc. directs us to construe the scope of
analogous art broadly ... ").
Appellants also argue that Liu teaches against use of microcrystalline
wax by describing it as not suitable and difficult to use (App. Br. 9; see also
id. at 29).
As indicated above, the Examiner proposes adding the aluminum
oxide of Liu, not to microcrystalline wax by itself but rather, to the
combination of paraffin and microcrystalline waxes disclosed by Chen. In
this regard, we emphasize that Appellants' claims encompass a combination
of imprint materials including paraffin and microcrystalline waxes (Spec. i-fi-1
41--42, 88) "in any desirable ratio" (id. at i188) such as a ratio wherein the
paraffin wax is dominant. We further emphasize that Liu expressly
discloses a mixture of paraffin and microcrystalline waxes wherein "the
mixture had a shape of DSC [i.e., differential scanning calorimetry] curves .
. . close to that of paraffin wax if paraffin wax in the mixture was dominant"
(139 right-hand column). This disclosure reinforces the Examiner's
conclusion that it would have been obvious to add Liu's aluminum oxide to
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Chen's paraffin/microcrystalline combination "in order to reduce the
temperature required to melt the paraffins" (Non-final Action 6), particularly
when paraffin is the dominant wax in the combination.
For these reasons, Appellants fail to show error in the Examiner's
rejection by arguing that Liu teaches against use of microcrystalline wax.
Appellants dispute the Examiner's obviousness conclusion by arguing
that the above quoted reason for providing Chen with Liu' s aluminum oxide
is improper because "it is not apparent why a person of ordinary skill in the
art is interested in 'reducing the melting temperature"' (App. Br. 12; see also
id. at 31-32).
As explained by the Examiner in the rejection, an artisan would have
been interested in reducing the melting temperature so as to obtain "the
obvious result of reducing the energy costs in the system" (Non-final Action
6). Moreover, a reduction in melting temperature would be consistent with
melting at or around room temperature as disclosed by Chen (i-f 33), Liu
(Abst.), and Appellants (Spec. i137). In addition, we emphasize that the
Examiner's obviousness conclusion is reinforced by Chen's express
disclosure of providing the phase change composition with thermally
conductive fillers such as aluminum oxide (i-f 76) which is Liu's above-
discussed additive and is disclosed as having attractive thermal conductivity
(Liu 137 right-hand column).
In rejecting the independent claims, the Examiner finds that Chen fails
to teach the specific times and temperatures recited in the claims but that
such parameters are result-effective variables whose optimization would
have been obvious (Non-final Action 4---6).
Appellants contend that the cited portions of Chen are silent regarding
the claimed times and temperatures and that "it would have been impossible
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Application 11/025,600
for one of ordinary skill in the art to optimize or refine parameters which are
not even recognized by the cited art" (App. Br. 13; see also id. at 33).
However, Chen's Examples 1 and 2 cited by the Examiner (Non-final
Action 4) evince a recognition that the imprinting method of Chen
necessarily is affected by process variables such as time and temperature
which is sufficient to find these variables result-effective. See In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective."). Furthermore, while the claims recite multiple
variables, "[t ]he mere fact that multiple result-effective variables were
combined does not necessarily render their combination beyond the
capability of a person having ordinary skill in the art." Id., 692 F.3d at 1298.
Appellants further argue that Specification paragraphs 11 and 83 show
unexpected results (App. Br. 17-18; see also id. at 37-38).
These paragraphs of the Specification do not use the word
"unexpected" in describing the results achieved by Appellants' imprinting
method. Rather, the attorney who wrote the Appeal Brief states that the
results are "unexpected," and such an attorney-statement is insufficient to
establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71
(Fed. Cir. 1997) (unexpected results must be established by factual evidence
and statement by attorney that results were "surprising" was insufficient to
establish unexpected results).
In summary, Appellants do not show error in the Examiner's rejection
of the independent claims over Chen and Liu.
The Dependent Claims
Concerning the Examiner's rejections of the dependent claims (Non-
final Action 6-15), Appellants contest the rejections with respect to many,
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though not all, of the dependent claims (App. Br. 20-26, 41--47). However,
Appellants fail to show the Examiner erred in rejecting these claims.
For the reasons detailed in the rejection (Non-final Action 7-8), we
agree with the Examiner that the immediate heating feature of claims 3 and
67 and the solid phase feature of claims 10 and 73 would have been
suggested by Chen's paragraph 32 disclosure ("[T]he PCC may be applied to
a surface of a substrate before the patterned surface of the mold is contacted
with the substrate and before or after heating the PCC. "). Appellants'
arguments to the contrary (App. Br. 20-22) fail to explain with any
reasonable specificity why this disclosure does not broadly encompass and
would not have suggested the claimed features to one of ordinary skill in this
art. In this regard, we remind Appellants that "the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." KSR
Int 'l Co. v. Telej1ex Inc., 550 U.S. 398, 418 (2007).
Appellants argue that the Examiner has not provided evidence that the
imprint medium and material of the Chen/Liu combination necessarily
would possess the medium and material properties (e.g., melting point
temperatures) recited in claims 16 and 79, claim 17, claims 18, 81 and 95,
and claim 30 (id. at 22-25). Appellants are incorrect. The preponderance of
the evidence indicates that the Chen/Liu combination would have yielded
imprint medium and material indistinguishable from those claimed, thereby
evincing that the former necessarily possesses the same properties as the
latter. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where, as here,
the claimed and prior art products are identical or substantially identical, ...
the PTO can require an applicant to prove that the prior art products do not
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necessarily or inherently possess the characteristics of his claimed
product.").
Concerning the polycrystalline material limitation of claim 63, the
Examiner finds that the microcrystalline materials disclosed in Chen's
paragraph 43 "are, by definition, polycrystalline" (Non-final Action 11).
Appellants dispute this finding by arguing that "polycrystalline means a
material of many crystalline parts that are randomly oriented with respect to
each other[, and] [i]t is not apparent how the definition of microcrystalline
necessarily requires these features" (App. Br. 26). In presenting this
argument, Appellants fail to explain why the differing waxes encompassed
by Chen's disclosure of microcrystalline materials would not possess "many
crystalline parts that are randomly oriented" (id.). On the other hand, there
is reasonable support for the proposition that differing microcrystalline
materials would include differing crystalline parts with differing and
therefore random orientations.
With respect to the rejection of claims 5 and 68 over Chen, Liu, and
AAP A, Appellants argue that "the alleged AAP A is not proper prior art
[because] [c]ited paragraph [0063] is Appellant's [sic] disclosure of an
embodiment of the invention under the subtitle 'DETAILED
DESCRIPTION' (not the 'BACKGROUND')" (id. at 41). The record
before us evinces that the step and flash imprint lithography disclosed in
Specification paragraph 63 is prior art. Specifically, the step and flash
imprint lithography of this paragraph appears to be identical to the
conventional lithography process described by Chen as step and flash
imprint molding (i-f 3) which may be used in Chen's imprinting method (i-f
37).
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Application 11/025,600
Regarding the rejection of claims 15, 18, 78 and 81 over Chen, Liu,
and Choi and the rejection of claims 19 and 82 over Chen, Liu, and Xu, 3
Appellants' arguments do not address the combined teachings of the prior art
applied in these rejections but instead attack the Choi and Xu references
individually (App. Br. 43--47). Such arguments do not establish non-
obviousness. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) ("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.").
Under the circumstances recounted above, Appellants also fail to
show error in the rejections of the dependent claims on appeal.
Conclusion
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). See 37 C.F.R.
§ l.136(a)(l )(iv).
ORDER
AFFIRMED
3 The Examiner's obviousness conclusion regarding an imprint material
comprising silicon containing groups as recited in claims 19 and 82 is
reinforced by Chen's express disclosure of a phase change composition
comprising the combination of an organic wax and an organofunctional
silicone wax (i-f 44 ).
10