SUSS MICROTEC PHOTOMASK EQUIPMENT GMBH & CO. KG

Patent Trials and Appeals Board

Dec 1, 2021

2021000509 (P.T.A.B. Dec. 1, 2021)

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.
14/863,523 09/24/2015 Davide Dattilo WG-024829-PRI 9132
26294 7590 12/01/2021
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
BLAN, NICOLE R
ART UNIT PAPER NUMBER
1759
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte DAVIDE DATTILO, UWE DIETZE, and
SHERJANG SINGH
____________
Appeal 2021-000509
Application 14/863,523
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 4–10, and 12–24 of Application
14/863,523, which constitute all of the pending claims in this appeal.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
14/863,523 (“the ’523 Application”) filed Sept. 24, 2015; the Final Office
Action dated Sept. 13, 2019 (“Final Act.”); the Appeal Brief filed June 17,
2020 (“Appeal Br.”); the Examiner’s Answer dated Aug. 26, 2020 (“Ans.”);
and the Reply Brief filed Oct. 26, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies SUSS MicroTec Photomask Equipment
GmbH & Co. KG as the real party in interest. Appeal Br. 2.
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Application 14/863,523
2
Claims 3 and 11 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
For the reasons set forth below, we REVERSE.
STATEMENT OF THE CASE
The ’523 Application describes methods for treating substrates with
an aqueous liquid medium exposed to UV-radiation. Spec. 1:5–6. The
methods are focused mainly on the treatment of photomasks, semiconductor
substrates, or other substrates, which need to be clean without any foreign
particles or organic contaminants during photolithography. Id. at 1:16–25;
2:1–3.
Claim 1, representative of the ’523 Application’s claims, is
reproduced below from Appendix A of the Appeal Brief.
1. A method for treating a EUV mask having an exposed
ruthenium layer, comprising:
flowing an aqueous liquid medium through a flow channel
and at least one outlet slit onto a substrate to be treated;
exposing the aqueous liquid medium to UV-radiation of a
specific wavelength at least in a portion of the flow channel
immediately adjacent the at least one outlet slit and after the
aqueous liquid medium has flown through the outlet opening
towards the substrate and thus prior to and while applying the
aqueous liquid medium to the surface of the substrate to be
treated;
adjusting the electrical conductance of the aqueous liquid
medium to be in the range of 20 to 2000μS, by the addition of an
additive to the aqueous liquid medium, the aqueous liquid
medium prior to the addition of the additive having an electrical
conductance below 20μS prior to or while exposing the same to
the UV-radiation; and further comprising shifting the pH of the
aqueous liquid medium to a range of 8 to 11 by the addition of
the additive to the aqueous liquid medium prior to or while
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Application 14/863,523
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exposing the same to the UV-radiation, the aqueous liquid
medium prior to the addition of the additive having a pH in the
range of 6 to 8, the additive comprising a base.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Bergman US 2005/0133067 A1 June 23, 2005
Hirae et al.
(“Hirae”)
US 2005/0229946 A1 Oct. 20, 2005
Kume et al.
(“Kume”)
US 2008/0113518 A1 May 15, 2008
Dobbyn US 2011/0036145 A1 Feb. 17, 2011
Dietze et al.
(“Dietze”)
US 2012/0211024 A1 Aug. 23, 2012
Tu et al.
(“Tu”)
US 2013/0193565 A1 Aug. 1, 2013
Field et al.
(“Field”)
US 2013/0327353 A1 Dec. 12, 2013
Erickson et al.
(“Erickson”)
US 2014/0261546 A1 Sept. 18, 2014
Yamamoto3 JP 2004-241726A Aug. 26, 2004
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 4–10, 15–18, and 20–24 under 35 U.S.C. § 103 as
unpatentable over Tu in view of Dietz, Bergman, and Erickson.
Final Act. 3–8.

3 The Examiner relies on a machine translation of Yamamoto, to which
Appellant does not object. Final Act. 15.
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2. Claim 2 under 35 U.S.C. § 103 as unpatentable over Tu in view
of Dietz, Bergman, Erickson, and further in view of Field.
Final Act. 8–9.
3. Claims 8, 9, and 19–24 under 35 U.S.C. § 103 as unpatentable
over Tu in view of Dietz, Bergman, Erickson, and further in
view of Hirae. Final Act. 9–14.
4. Claim 12 under 35 U.S.C. § 103 as unpatentable over Tu in
view of Dietz, Bergman, Erickson, and further in view of
Kume. Final Act. 14.
5. Claims 13 and 14 under 35 U.S.C. § 103 as unpatentable over
Tu in view of Dietz, Bergman, Erickson, and further in view of
Yamamoto. Final Act. 14–16.
DISCUSSION
Rejection 1: Obviousness of claims 1, 4–10, 15–18, and 20–24 as
obvious over Tu in view of Dietz, Bergman, and Erickson
Because we consider the evidence insufficient to establish a prima
facie case of obviousness with regard to limitations recited in the sole
independent claim 1, we need only address claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Tu teaches an extreme ultraviolet (EUV)
semiconductor mask having an exposed ruthenium layer. Final Act. 3. The
Examiner finds that Dietze teaches a method for cleaning EUV masks for
the manufacture of semiconductors. Id. at 3–4. The Examiner finds
Bergman discloses that adding base to ozone water improves photoresist
stripping capabilities on a semiconductor wafer. Id. at 4. The Examiner
finds that the combined teachings of Tu, Dietze, and Bergman do not
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Application 14/863,523
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explicitly disclose “adjusting the electrical conductance of the aqueous
liquid medium to be in the range of 20 to 2000μS,” as required by claim 1.
Id.
The Examiner finds Erickson teaches that “electrical conductance is a
result effective variable.” Id. The Examiner finds that Erickson teaches
“modifying the equilibrium of an aqueous liquid medium to control the
concentration of the components” based on the use of “conductivity to
monitor [a] use solution.” Id. (citing Erickson ¶ 20). The Examiner
determines that it would have been obvious to one of ordinary skill in the art
at the time of the invention “to optimize the adjusted electrical conductance
through routine experimentation for optimum result” because Appellant fails
to show evidence of any criticality for the claimed electrical conductance
range. Id. at 5 (citing MPEP § 2144.05 II).
Appellant argues that Erickson merely “recognized that electrical
conductivity in a use solution could be controlled to produce the desired
result of enhancing food preparation/storage surfaces.” Appeal Br. 10
(citing Erickson ¶ 132). Appellant contends that there is no teaching or
suggestion as to why one of ordinary skill in the art would have been
motivated to optimize the electrical conductivity of Tu’s aqueous liquid
medium, as modified by Dietz and Bergman, because Erickson’s recognized
result “has absolutely nothing to do with EUV mask lithography or
semiconductor treatments.” Appeal Br. 10–11.
“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980); see also In re Aller, 220 F.2d 454, 456 (CCPA
1955) (“where the general conditions of a claim are disclosed in the prior art,
it is not inventive to discover the optimum or workable ranges by routine
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experimentation.”). It is well settled that, generally speaking, it would have
been obvious for an artisan with ordinary skill to develop workable or even
optimum ranges for result-effective parameters. However, the law requires
“[a] recognition in the prior art that a property is affected by the variable” to
find the variable result-effective. In re Applied Materials, Inc., 692 F.3d
1289, 1297 (Fed. Cir. 2012).
Although optimization of a variable known to be result effective is
generally prima facie obvious, as the predecessor to our reviewing court
explained over thirty years ago, where “the parameter optimized was not
recognized to be a result-effective variable” is an exception. See In re
Antonie, 559 F.2d 618, 620 (CCPA 1977) (holding that the prior art did not
recognize that treatment capacity is a function of the tank volume to
contactor ratio, and therefore optimization of this claimed parameter was not
recognized in the art to be a result effective variable.)
On the facts before us, the Examiner may be correct in stating that
Erickson’s conductivity monitoring of a use solution teaches modification of
“the equilibrium of an aqueous liquid medium to control the concentration of
the components.” Ans. 6. However, Tu’s aqueous liquid medium, as
modified by Dietz and Bergman, lack the components whose concentrations
are controlled by Erickson, namely enzymes and surfactants. Erickson ¶ 132
(disclosing that “monitoring the conductivity created by the ionizable
materials in the aqueous solution” results in the close control of “the
concentration of the enzyme component and other surfactants and other
ingredients.”).
Furthermore, the Examiner does not provide convincing evidence or
adequate technical reasoning to explain how using a solution comprising
enzymes and surfactants to enhance surfaces for food preparation/storage is
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germane to reducing ruthenium metal damage during EUV mask
lithography. Ans. 6–7; Reply Br. 5; Spec. 24:20 (disclosing that “electrical
conductance adjustments may lead to surface preservation.”). We are thus
persuaded by Appellant that it would not have been obvious to have arrived
at the claimed range of electrical conductance based on the cited references
through routine experimentation. Reply Br. 5.
On this basis, the Examiner erred reversibly in determining claim 1 to
be obvious over Tu in view of Dietz, Bergman, and Erickson. Therefore, we
do not sustain the rejection of claim 1. For the same reasons, we do not
sustain the rejection of claims 4–10, 15–18, or 20–24 over these references.
Rejection 2: Obviousness of claim 2 over over Tu, Dietz, Bergman,
Erickson, and Field
The additional Field reference relied on by the Examiner in rejecting
claim 2, dependent on claim 1, does not cure the deficiencies in the
combination of Tu, Dietz, Bergman, and Erickson discussed above.
Therefore, we do not sustain the rejection of claim 2 under 35 U.S.C. § 103
over the cited references.
Rejection 3: Obviousness of claims 8, 9, and 19–24 over over Tu,
Dietz, Bergman, Erickson, and Hirae
The additional Hirae reference relied on by the Examiner in rejecting
claims 8, 9, and 19–24, dependent on claim 1, does not cure the deficiencies
in the combination of Tu, Dietz, Bergman, and Erickson discussed above.
Therefore, we do not sustain the rejection of claims 8, 9, and 19–24 under 35
U.S.C. § 103 over the cited references.
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Rejection 4: Obviousness of claim 12 over Tu, Dietz, Bergman,
Erickson, and Kume
The additional Kume reference relied on by the Examiner in rejecting
claim 12 does not cure the deficiencies in the combination of Tu, Dietz,
Bergman, and Erickson discussed above. Therefore, we do not sustain the
rejection of claim 12 under 35 U.S.C. § 103 over the cited references.
Rejection 5: Obviousness of claims 13 and 14 over Tu, Dietz,
Bergman, Erickson, and Yamamoto
The additional Yamamoto reference relied on by the Examiner in
rejecting claims 13 and 14 does not cure the deficiencies in the combination
of Tu, Dietz, Bergman, and Erickson discussed above. Therefore, we do not
sustain the rejection of claims 13 and 14 under 35 U.S.C. § 103 over the
cited references.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
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Application 14/863,523
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Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 4–10, 15–
18, 20–24
103 Tu, Dietz, Bergman,
Erickson
1, 4–10, 15–
18, 20–24
2 103 Tu, Dietz, Bergman,
Erickson, Field
2
8, 9, 19–24 103 Tu, Dietz, Bergman,
Erickson, Hirae
8, 9, 19–24
12 103 Tu, Dietz, Bergman,
Erickson, Kume
12
13, 14 103 Tu, Dietz, Bergman,
Erickson, Yamamoto
13, 14
Overall
Outcome
1, 2, 4–10,
12–24

REVERSED