Ex Parte Thompson et alDownload PDFPatent Trial and Appeal BoardJun 20, 201713616903 (P.T.A.B. Jun. 20, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/616,903 09/14/2012 David Thompson 016776/USA/ALD/ALD/PJT 6810 67251 7590 06/22/2017 SERVILLA WHITNEY LLC/AMT 33 WOOD AVE SOUTH SUITE 830 ISELIN, NJ 08830 EXAMINER TUROCY, DAVID P ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 06/22/2017 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 @ dsiplaw. com j escobar @ dsiplaw. com lmurphy @ dsiplaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID THOMPSON and JEFFREY W. ANTHIS Appeal 2016-005222 Application 13/616,90s1 Technology Center 1700 Before ROMULO H. DELMENDO, GEORGE C. BEST, and SHELDON M. McGEE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1,3,4, 7—14, 16, and 17.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Appellants state that the real party in interest is “Applied Materials, Inc.” (Appeal Brief filed October 10, 2015, hereinafter “Appeal Br.,” 3). 2 Appeal Br. 5, 10-32; Reply Brief filed April 18, 2016, hereinafter “Reply Br.,” 2—15; Final Office Action entered May 7, 2015, hereinafter “Final Act.,” 3—9; Examiner’s Answer entered February 18, 2016, hereinafter “Ans.,” 2—19. Appeal 2016-005222 Application 13/616,903 BACKGROUND The subject matter on appeal relates to methods of depositing metal- aluminum films using metal amidinate precursors and aluminum precursors (Specification, hereinafter “Spec.,” 12 and Abstract). Representative claim 1 is reproduced from page 33 of the Appeal Brief (Claims Appendix), with key disputed limitations highlighted in italicized text, as follows: 1. A method of depositing a metal-aluminum layer, the method comprising: exposing a substrate surface sequentially to alternating pulses of a metal amidinate precursor and an aluminum precursor to form a metal-aluminum layer on the substrate surface, wherein the amidinate precursor comprises a p or f-block metal and the aluminum precursor comprises an alkyl aluminum precursor or an amine alane, wherein the metal-aluminum layer comprises a metal aluminum carbide layer, a metal aluminum nitride layer, or a metal aluminum carbonitride layer, and the metal-aluminum layer has less than 0.1% oxygen. REJECTIONS ON APPEAL On appeal, the Examiner maintains several rejections under pre-AIA 35 U.S.C. § 103(a): I. Claims 1, 3, 4, 7—14, 16, and 17 as unpatentable over Pallem et al.3 (hereinafter “Pallem”) alone or Pallem and Dong et al.4 (hereinafter “WO ’332”); II. Claims 8—10, 16, and 17 as unpatentable over Pallem alone or Pallem, WO ’332, and Gordon5; and 3 US 2009/0302434 Al, issued December 10, 2009. 4 WO 2009/129332 A2, published October 22, 2009. 5 US 2014/0120256 Al, published May 1, 2014 (based on Application 13/996,485 filed December 16, 2011). 2 Appeal 2016-005222 Application 13/616,903 III. Claims 8—10, 16, and 17 as unpatentable over Pallem and Liu et al.6 7(hereinafter “Liu”). (Ans. 2—19; Final Act. 3—9.) DISCUSSION Rejection I In their opening brief, the Appellants rely on the same arguments for all claims subject to Rejection I (Appeal Br. 11—26). Therefore, we confine our discussion to claim 1, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided by this rule, all other claims stand or fall with claim 17 The Examiner finds that Pallem discloses, or would have suggested to a person having ordinary skill in the art, a method for depositing a lanthanide-aluminum layer including all the limitations recited in claim 1 (Ans. 2^4; Final Act. 3—6). Regarding the disputed claim limitations highlighted in reproduced claim 1 above, the Examiner provides three bases for finding that Pallem discloses, or would have rendered obvious, these limitations (Ans. 3^4; Final Act. 4—5). The Appellants contend that “Pallem requires additional steps and precursors to form a metal aluminum carbide layer, a metal nitride layer, or a metal aluminum carbonitride layer[,]” whereas “[t]he presently claimed 6 Y. Liu et al., “Effects of Low Temperature O2 Treatment on the Electrical Properties of Amorphous LaAlCE Films Made by Atomic Layer Deposition,” 16 ECS Transactions 471—478 (2008). 7 In their Reply Brief (Reply Br. 10), the Appellants provide some additional arguments under separate headings for claims 3 and 4, claim 7, and claims 11—14. We decline to consider these additional arguments because they do not comply with 37 C.F.R. § 41.41(b)(2). 3 Appeal 2016-005222 Application 13/616,903 process eliminates the additional steps and precursors” (Appeal Br. 17). According to the Appellants, “the omission of an element and retention of its function is an indicia of unobviousness” {id.) (citing In re Edge, 359 F.2d 896 (CCPA 1966)). We discern no persuasive merit in the Appellants’ arguments. As the Examiner correctly points out (Ans. 3 (item 1), 8), the Appellants’ arguments do not accurately reflect claim l’s scope. Nothing in claim 1 excludes the presence or use of additional nitrogen or carbon sources, such as those disclosed in Pallem. Nor does the claim limit the specified “metal aluminum carbide layer, [the] metal aluminum nitride layer, or [the] metal aluminum carbonitride layer” to be formed exclusively from the metal amidinate precursor and the alkyl aluminum or amine alane precursor. Indeed, claim 1 recites the transitional phrase “comprising” and, therefore, is open to unrecited reactions. In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as one of the monomers in the reaction is propylene, any other monomer may be present, because the term ‘comprises’ permits the inclusion of other steps, elements, or materials.”). Moreover, we are in complete agreement with the Examiner’s additional or alternative findings and analyses (Ans. 3—4). Specifically, Pallem does not require an additional nitrogen source or carbon source, as the Appellants would have us believe. Instead, Pallem teaches that “[w]hen the desired lanthanide-containing film also contains nitrogen, such as, for example and without limitation, erbium nitride or erbium carbo-nitride, the reactant species may include a nitrogen source” (171; emphasis added). Similarly, “[w]hen the desired lanthanide-containing film also contains carbon, such as, for example and without limitation, erbium carbide or 4 Appeal 2016-005222 Application 13/616,903 erbium carbo-nitride, the reactant species may include a carbon source” (172; emphasis added). Thus, a person having ordinary skill in the art would have drawn a reasonable inference that Pallem discloses embodiments in which the substrate is exposed sequentially to alternating pulses of a lanthanide-containing precursor (e.g., a tris-acetamidinate or tris- formamidinate compound) and trimethyl aluminum only 56, 69, 75). Under those suggested reaction conditions, a “metal-aluminum layer compris[ing] a metal aluminum carbide layer, a metal aluminum nitride layer, or a metal aluminum carbonitride layer” having “less than 0.1% oxygen” would necessarily be formed as required by claim 1. In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (“[The prior artj’s express teachings render the claimed controlled release oxymorphone formulation obvious, and the claimed ‘food effect’ adds nothing of patentable consequence.”). The Appellants argue that “the extrinsic evidence does not make clear that the descriptive matter [i.e., the disputed limitations recited in claim 1] was known or recognized by a person of ordinary skill in the art” (Appeal Br. 19). According to the Appellants {id. at 23), “[t]he Examiner does not explain how a person of ordinary skill in the art would know that layers deposited using the same material will necessarily result in a film with the same results, when Applicants’ own teachings cannot be used against them to show unpatentability.” These arguments are also unpersuasive. First, the mere fact that a prior art reference does not disclose a property or result recited in a claim does not preclude an obviousness conclusion. Cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“[T]he statement that a prima facie obviousness rejection is not supported if no reference shows or suggests the 5 Appeal 2016-005222 Application 13/616,903 newly-discovered properties and results of a claimed structure is not the law.”). Second, it is entirely proper for an examiner to consider the description in the Appellants’ Specification to ascertain a claim’s scope or to assess whether a claimed property or result would be necessarily present in the prior art. Kao, 639 F.3d at 1070 (rejecting the arguments that (1) the Board improperly relied on the applicants’ specification to determine whether a claimed property would be inherent and (2) “there [was] no evidence in the record that anyone recognized the claimed food effect”). The Appellants argue that WO ’332 does not cure the perceived deficiencies in Pallem (Appeal Br. 20). According to the Appellants (id. ), WO ’332 relates to a different chemical system because it discloses the use of metal halides such as TaCT, HfCU, or TaBrs, which are different from those disclosed in Pallem. The Appellants’ argument is unpersuasive. As the Examiner finds (Ans. 11—12), WO ’332 does not place any particular limitation on the metal precursor that can be used together with the aluminum hydrocarbon precursor (Abstract; H 11, 43). WO ’332 discloses metal halides as typical—but by no means exclusive—precursors that are inexpensive and relatively stable (| 44). Therefore, a person having ordinary skill in the art would have understood reasonably from WO ’332 that a metal carbide film comprising aluminum would be formed, as required by claim 1, when vapor phase pulses of a metal precursor and aluminum hydrocarbon compound are exposed to a substrate in a sequential manner, as in Pallem. Although the Appellants urge that “the results of different reaction conditions are not predictable even for the combination of reactants disclosed in WO ’332” (Appeal Br. 20), obviousness does not require absolute predictability but 6 Appeal 2016-005222 Application 13/616,903 rather only a reasonable expectation of success. In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). The Appellants also argue that the “rejection fails to provide any references supporting the proposition that the method of forming the alloy films would have an oxygen content below 0.1%” (Appeal Br. 23). We disagree. The Examiner correctly finds that Pallem reasonably discloses embodiments in which oxygen is not present during film formation (Ans. 4). Specifically, Pallem teaches that “the reactant species may include an oxygen source” but does not require it (| 70). Therefore, it would reasonably appear that the resulting prior art metal-aluminum layer would have less than 0.1% oxygen, as required by claim 1. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). For these reasons and those given by the Examiner, we sustain Rejection I. Rejection II With respect to Rejection II, the Appellants rely on the same arguments offered against Rejection I (Appeal Br. 27). As we discussed above, these arguments are not persuasive. Furthermore, the Appellants argue that a person having ordinary skill in the art would not have combined Gordon, the additionally-cited reference, with Pallem and WO ’332 because Pallem is directed to using particular heteroleptic lanthanide compounds (Appeal Br. 27—28). In addition, the Appellants argue that Gordon fails to teach depositing a nitride film using only a metal precursor and an aluminum reactant (id. at 28). 7 Appeal 2016-005222 Application 13/616,903 The Appellants’ arguments are unpersuasive. As the Examiner explains (Ans. 17), the “mere fact that non-homoleptic compounds have some degree of uniqueness is not persuasive as the prior art reference clearly establishes the predictability of using homoleptic compounds.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[C]ase law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide [the] motivation [or reason] for the current invention.”). As for the argument that Gordon teaches additional reactants, we agree with the Examiner that “the claims are not so limited and can include additional reaction species and thus the claims themselves do not limit a layer to a metal precursor and aluminum reactant as argued by the Appellants]” (Ans. 17). For these reasons, we sustain Rejection II. Rejection III The Appellants argue that “Fiu fails to remedy the deficiencies of Pallem alone or with WO ’332 previously discussed” (Appeal Br. 30). As we discussed above, we discern no reversible error in the Examiner’s rejection based on Pallem alone or Pallem and WO ’332. The Appellants argue that Fiu teaches FaA103 films and, therefore, such oxide films are excluded by the claim limitation “less than 0.1% oxygen” in claim 1 (Appeal Br. 31). But as the Examiner correctly finds (Ans. 18), Pallem suggests that oxygen need not be present during film formation (Pallem, 170). As stated by the Examiner (id. ), the relevant inquiry is whether the claimed subject matter would have been obvious to 8 Appeal 2016-005222 Application 13/616,903 those ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Lastly, the Appellants also argue that Liu would not have been combined with Pallem because Pallem discloses that particular heteroleptic lanthanide compounds offer unique physical and chemical properties relative to homoleptic compounds (Appeal Br. 31). Again, “case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide [the] motivation [or reason] for the current invention.” Fulton, 391 F.3d at 1200. For these reasons, we sustain Rejection III. SUMMARY Rejections I—III are affirmed. Therefore, the Examiner’s final decision to reject claims 1,3,4, 7—14, 16, and 17 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)(1). AFFIRMED 9 Copy with citationCopy as parenthetical citation