Ex Parte Thompson et al

Patent Trial and Appeal Board

Jun 20, 2017

13616903 (P.T.A.B. Jun. 20, 2017)

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):
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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).
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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).
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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
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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
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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
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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).
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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
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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
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