Ex Parte Wakamatsu et al

Patent Trial and Appeal Board

Jun 1, 2017

13638839 (P.T.A.B. Jun. 1, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/638,839 10/01/2012 Satoshi Wakamatsu 8024-1033-1 1747
466 7590 06/05/2017
YOUNG fr THOMPSON
EXAMINER
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NOTIFICATION DATE DELIVERY MODE
06/05/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI WAKAMATSU and TADASHI OMATSU
Appeal 2016-006999
Application 13/638,8391
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision to reject claims 21—26.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 The Applicants (hereinafter “Appellants”) state that the real party in
interest is “Fujifilm Corporation” (Appeal Brief filed on October 30, 2015,
hereinafter “Appeal Br.,” 1).
2 Appeal Br. 3—18; Reply Brief filed on July 5, 2016, hereinafter “Reply
Br.,” 2—11; Examiner’s Answer (notice emailed on May 4, 2016),
hereinafter “Ans.,” 2—9.
Appeal 2016-006999
Application 13/638,839
BACKGROUND
The subject matter on appeal relates to nano imprinting methods using
a pattern of protrusions and recesses that transfer a pattern onto a resist layer
that has been coated on an object so that fluctuations in the thickness of the
resist layer and defects in the resist layer due to residual gas are suppressed.
Specification, hereinafter “Spec.,” p. 1,11. 7—10, 18—23; p. 3,11. 21—27.
Representative claim 21 is reproduced from page 20 of the Appeal Brief
(Claims Appendix), as follows (emphasis added):
21. A nanoimprinting method, comprising:
coating a substrate with a plurality of droplets of resist
material by an inkjet method; and
pressing a linear pattern of protrusions and recesses of a
mold onto the surface of the substrate which is coated with the
droplets, to spread the droplets on the substrate, to form a resist
film constituted by bonds among the spread plurality of droplets
and to transfer the linear pattern of protrusions and recesses onto
the resist film;
the droplets being coated on the substrate such that the
spaces among droplets in an A direction substantially parallel to
the direction of the lines of the linear pattern of protrusions and
recesses are longer than the spaces among droplets in a B
direction substantially perpendicular to the A direction within a
line transfer region of the substrate that faces the linear pattern
of protrusions and recesses when the linear pattern of protrusions
and recesses is pressed against the substrate.
REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections, which are as
follows (Ans. 2—5):
I. Claims 21 and 23 under pre-AIA 35 U.S.C. § 102(b) as
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Application 13/638,839
being anticipated by Lad et al.3 (hereinafter “Lad”);
II. Claims 21 and 23 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Lad;
III. Claims 22 and 24 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Lad; and
IV. Claims 25 and 26 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Lad in view of Schram et al.4
(hereinafter “Schram”).
DISCUSSION
Rejection I
The Examiner rejects claims 21 and 23 under § 102(b) over Lad. Ans.
2—3. Because the Appellants argue these claims together, we select claim 1
as representative of the issues discussed below. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds Lad discloses a nano-scale imprint lithography
method in which, among other things, a substrate is coated with droplets of
material via an inkjet and a mold including a linear pattern of protrusions
and recesses is pressed on the droplets. Ans. 2. The Examiner finds the
equations disclosed in paragraphs 23—26 of Lad include situations in which
Li < L2, and thus Si < S2 when ni = n2.5 Id. The Examiner finds Figure 6
3 US 2005/0270312 Al, published on December 8, 2005.
4 US 2008/0018875 Al, published on January 24, 2008.
5 According to Lad, Li is a length of region 40 along a first direction, L2 is a
length of region 40 along a second direction, Si is a spacing of droplets 36
along the first direction, S2 is a spacing of droplets 36 along the second
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depicts a situation in which Li < L2. Id. In view of this, the Examiner finds
the droplets of Lad along the L2 direction (i.e., the A direction) have a
greater spacing than droplets along the Li direction (i.e., B direction), with
the droplets along the A direction being oriented substantially parallel to the
lines of the linear pattern of the protrusions and recesses depicted in Figure 2
of Lad. Id. at 2—3.
The Appellants contend Lad does not disclose droplets having a
spacing in an A direction that is greater than the spacing of droplets in a B
direction, as recited in claim 21. Appeal Br. 5—6. The Appellants argue Lad
is silent with regard to whether Li is less than L2 and it is improper for the
Examiner to rely upon Figure 6 for dimensions. Id. at 9—10. The Appellants
assert that “while Fig. 6 of Lad appears to disclose that L2>Li, this
appearance is due to the fact that the lengths of the margins at the ends differ
greatly, and the droplet intervals are the same.” Id. at 12—13.
The Appellants’ arguments are unpersuasive. In determining whether
a reference anticipates the subject matter recited in a claim, “it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.” In rePreda, 401 F. 2d 825, 826 (CCPA 1968).
Here, Lad discloses equations in paragraphs 22—26 that relate the
number of droplets, the length of a droplet region, and the spacing of
droplets. As the Examiner finds in the rejection,* * 6 a person having ordinary
skill in the art would have drawn a reasonable inference from these
direction, ni is a total number of droplets 36 along the first direction, and n2
is a total number of droplets along the second direction. Lad 21—26.
6 Ans. 2.
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equations that Lad describes—with sufficient specificity—situations in
which Li < L2, and thus droplet spacing Si < droplet spacing S2 when the
number of droplets equal each other in the two directions (i.e., ni = n2). Ans.
2. Although Lad assumes a square array of droplets in paragraph 22 to
illustrate an embodiment, Lad does not limit its disclosure to a square array
of droplets because Lad discloses “droplets 36 may be arranged in virtually
any two-dimensional arrangement on substrate 30.” Lad 121. Indeed, the
overlap between the Appellants’ claimed subject matter and Lad’s disclosure
constitutes a significant portion of the prior art disclosure as a whole. See In
re Schaumann, 572 F.2d 312, 317 (CCPA 1978) (In order to anticipate, a
reference must identify something falling within the claimed subject matter
with sufficient specificity to constitute a description thereof within the
purview of § 102.). Further, it is well established that specific examples of
the claimed subject matter are not necessary to establish anticipation.
Rather, to anticipate, one skilled in the art must be able to “at once envisage”
the claimed subject matter in the prior art disclosure. In re Petering, 301
F.2d 676, 681 (CCPA 1962).
Regardless of whether the droplet spacings Si and S2 are the same or
different, Figure 6 reasonably discloses or suggests an embodiment in which
L2 > Li, as conceded by the Appellants. Appeal Br. 12—13. As shown in
Figure 6, there is an equal number of droplets along the Li direction and
along the L2 direction. Using the equations disclosed by Lad, one can
readily determine that the spacing of droplets along the Li direction would
be greater than the spacing of droplets along the L2 direction when L2 > Li
and the number of droplets ni, n2 are equal in the two directions. Therefore,
the disclosure of Lad, when considered in its totality, discloses or suggests
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the spacing of droplets along the A direction and B direction recited in claim
21.7
The Appellants further dispute the Examiner’s finding that Lad
discloses a linear pattern of protrusions and recesses, as recited in claim 21.
Appeal Br. 7. Specifically, the Appellants contend Figure 6 of Lad depicts a
top down view of droplets, not a linear pattern of protrusions and recesses,
and that although the mold 28 depicted in Figure 2 of Lad includes
recessions 28a and protrusions 28b, Lad does not disclose that the recessions
28a and protrusions 28b are arranged in a linear pattern. Id.', Reply Br. 3^4.
The Appellants’ arguments are unpersuasive. As the Examiner states
on page 6 of the Answer, Figure 2 of Lad depicts a mold 28 that includes
recessions 28a and protrusions 28b. Lad 115. The Examiner further
compares Figure 2 to the cross-sectional view depicted in Figure 4A of the
Appellants’ disclosure, which depicts a mold with a linear pattern of
protrusions and recesses,8 and finds them to have the same pattern of
protrusions and recesses. Ans. 6. The Examiner’s findings and explanation
are reasonable in view of Lad’s disclosure, including its disclosure that
droplets fill the recessions 28a of the mold 289 and the depiction of droplets
(which must fill the recessions 28a) arranged in rows and columns in Figure
7 Figure 13A of the Appellants’ disclosure is described at page 42, lines 27—
35, of the Specification as depicting a relationship between resolution and a
droplet arrangement pattern for a conventional method, with L denoting
droplet locations. Figure 13A appears to disclose a pattern in which droplet
spacing (i.e., spacing between droplet locations L) is greater along one
direction (i.e., the vertical direction of Figure 13 A) than along another
direction (i.e., the horizontal direction of Figure 13 A).
8 Spec. p. 16,11.5-6, 10-11.
9 Lad 118.
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6. In addition, Lad does not disclose that the recessions 28a and protrusions
28b extend in any other direction than one normal to the page of Figure 2.
The Appellants argue Figure 2E of the Appellants’ disclosure is
equivalent to Figure 2 of Lad and state, as a comparison, that the patterns
depicted in Figures 2A—2D of the Appellants’ disclosure provide examples
of linear patterns of protrusions and recesses. Appeal Br. at 7—8; Reply Br.
2—6. This argument is unpersuasive because the Appellants do not explain
how the mold depicted in Figure 2 of Lad would have the same pattern as
Figure 2E of the Appellants’ disclosure. Further, the Appellants’
Specification states the linear patterns of Figures 2 A—2D cause anisotropy to
occur in the spreading of droplets. Spec. p. 24,11. 16—25. In contrast, the
Specification states Figure 2E depicts a pattern that does not result in the
anisotropy. Id. at p. 24,1. 34, to p. 25,1. 5. In view of this, the Appellants
appear to consider Figure 2E as lacking a linear pattern of protrusions and
recesses because it does not produce anisotropic behavior in the spreading of
droplets, as explained at page 4, lines 26—31, of the Specification. However,
such anisotropy is not recited in claim 21. Moreover, Lad discloses the
process of claim 21 and the structures used in the claimed method.
Therefore, it is reasonable that the mold of Lad would provide the anisotropy
described in the Appellants’ Specification.
In addition, the Appellants assert Lad does not disclose that the
droplets arranged along the A direction are substantially parallel to the lines
of the linear pattern of protrusions and recesses, as recited in claim 21.
Appeal Br. 10-11. Specifically, the Appellants argue Figure 6 does not
indicate how the deposited droplets would be oriented with respect to Lad’s
mold, Lad does not describe how the first and second directions of Figure 6
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relate to the mold of Figure 2, and Lad does not disclose what direction the
grooves of Lad’s mold extend in. Id. at 10-12.
The Examiner finds the droplet pattern depicted in Figure 6 of Lad are
related to the imprint pattern of the mold 28 in Figure 2 of Lad, which the
Examiner finds to have a linear pattern of protrusions and recesses (e.g.,
extending in and out of the page of Figure 2), and interpreting Lad another
way would require rotation between the droplet pattern of Figure 6 and the
mold of Figure 2, which is not described by Lad. Ans. 8. The Appellants’
arguments do not direct us to a reversible error in the Examiner’s findings.
The Appellants further argue that the recessions 28a in Figure 2 of
Lad would be aligned with the Li direction of Figure 6, not the L2 direction,
so one would have to rotate the mold 28 so the recessions 28a are
substantially parallel to the L2 direction. Reply Br. 6—8. This interpretation
of Lad’s disclosure is unpersuasive because it relies upon the positioning of
components in Figure 2 that are depicted schematically. Therefore, Lad’s
disclosure does not support Appellants’ argument that the mold 28 of Lad
would need to be rotated so its recessions 28a are substantially parallel with
the droplets arranged along the L2 direction of Figure 6.
The Appellants do not argue claim 23 separately from claim 21.
Appeal Br. 3—15.
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s § 102(b) rejection of claims 21 and 23.
Rejection II
In any extent claims 21 and 23 are not anticipated by Lad, claims 21
and 23 are also rejected under pre-AIA 35 U.S.C. § 103(a) over Lad. Ans.
4—5. The Examiner concludes it would have been obvious to a person
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having ordinary skill to employ any of the finite set of conditions (i.e., Li <
L2, Li = L2, or Li > L2) that would have been envisaged from the disclosure
of Lad. Id. Further, the Examiner concludes it would have been obvious to
align the substrate of Figure 6 of Lad so the axis between the top and bottom
of the page of Figure 6 is arranged parallel to the grooves in the mold of
Figure 2 because such an orientation is one of a finite set selectable by one
of ordinary skill in the art. Id. at 5.
The Appellants’ arguments do not identity a reversible error in the
Examiner’s rejection. Paragraph 21 of Lad states “droplets 36 may be
arranged in virtually any two-dimensional arrangement on substrate 30” and
paragraphs 22—26 do not exclude situations in which Li and L2 differ, which
would provide different droplet spacings Si, S2 when the number of droplets
ni and n2 are equal, as discussed above. Thus, one may draw a reasonable
inference from Lad’s disclosure that droplets may have a spacing such that
droplets along an A direction have a greater spacing than droplets along a B
direction, as recited in claim 21. Moreover, in view of Lad’s disclosure that
various droplet arrangements may be employed, it would have been obvious
for one of ordinary skill in the art to determine the workable ranges for
droplet spacing and alignment between the droplets and the mold of Lad.
We further note the Appellants do not submit any evidence of criticality for
the droplet spacing and/or orientation of the droplets to the linear pattern of
protrusions and recesses recited in claim 21.
For these reasons and those discussed in the Examiner’s Answer, we
uphold the Examiner’s § 103 rejection of claims 21 and 23.
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Rejection III
The Examiner rejects Claims 22 and 24 under pre-AIA 35 U.S.C.
§ 103(a) over Lad. Ans. 3. In the rejection of claim 22, the Examiner finds
Lad discloses the use of any desired thickness, that droplet volume is a
function of a desired thickness and area for a coating, and droplet spacing is
a function of region dimensions and the volume necessary to form a coating
layer of a desired thickness. Ans. 3. The Examiner finds Lad does not
disclose the spacing ratio recited in claim 22 but concludes it would have
been obvious to optimize droplet spacing through the course of routine
experimentation and thus deposit droplets that fall within the spacing ratio
range of claim 22. Id.
The Appellants argue “it has been found that extracting a ratio from
data or observations is insufficient” and cite several cases as support for this
argument. Appeal Br. 16. This argument does not direct us to a reversible
error in the Examiner’s rejection because the argument, as well as the cases
cited by the Appellants, do not address whether it would have been obvious
to determine workable ranges or optimize the spacing of droplets via routine
experimentation, as concluded by the Examiner, and deposit droplets with
spacings that fall within the ratio range recited in claim 22. Moreover, the
disclosure of Lad itself suggests a situation in which L2 > Li, which provides
droplet spacings of S2 > Si when ni = n2, as discussed above.
The Appellants further argue Lad teaches away from the claimed
droplet spacing because the objective of Lad is to minimize droplet spacing
Si and S2. Reply Br. 8—9. This argument is unpersuasive because, in a
determination of obviousness, a reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the
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art. Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). As
discussed above, paragraph 21 of Lad discloses that droplets may be
arranged in any two-dimensional arrangement. Therefore, although Lad
may desire minimal droplet spacing, Lad also suggests other droplet
arrangements, including those that may include non-optimal droplet spacing
but nonetheless provide successful results.
In the rejection of claim 24, the Examiner finds Lad discloses droplet
spacing is dependent upon the resolution of a droplet dispensing apparatus.
Ans. 3.
The Appellants assert Lad discloses altering droplet spacing to apply
droplets to an uneven surface and there is “no teaching or inference of
directional anisotropy (A vs. B direction) in Lad.” Appeal Br. 16—17. The
Appellants further contend Lad discloses a minimal spacing between
droplets and that any arrangement of Lad’s (e.g., the arrangement depicted
in Figure 6) in which droplet spacing is not minimized is not intentional.
Reply Br. 9—11.
The Examiner finds that paragraph 27 discloses droplet spacing as
dependent upon resolution of a droplet dispensing apparatus and determines
that resolution would decrease when droplet spacing increases. Ans. 9.
Paragraph 27 of Lad supports the Examiner’s finding and determination by
disclosing “that spacings Si and S2 are dependent upon the resolution, i.e.,
operational control of a droplet dispensing apparatus (not shown) employed
to form droplets 36.” Therefore, the prior art does disclose a relationship
between droplet spacing and resolution and Appellants’ arguments do not
identify a reversible error in the Examiner’s findings or rejection.
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For these reasons and those set forth by the Examiner, we uphold the
Examiner’s rejection of claims 22 and 24.
Rejection IV
For claims 25 and 26, the Appellants contend Schram does not cure
the deficiencies of Lad. Appeal Br. 17—18. For the reasons set forth above,
there are no deficiencies in the rejection of claim 1 that require curing by
Schram. We therefore uphold the Examiner’s rejection of claims 25 and 26
for the same reasons as for the rejection of claim 1.
SUMMARY
Rejections I—IV are affirmed. Therefore, the Examiner’s final
decision to reject claims 21—26 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)(l)(iv).
AFFIRMED
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