Charles Winter et al.

Patent Trials and Appeals Board

Apr 23, 2021

2020003246 (P.T.A.B. Apr. 23, 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.
14/130,987 04/14/2014 Charles H. Winter WSU0217PUSA 6217
22045 7590 04/23/2021
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
HERNANDEZ-KENNEY, JOSE
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
04/23/2021 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@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES H. WINTER, THOMAS J. KNISLEY,
and THILOKA ARIYASENA
Appeal 2020-003246
Application 14/130,987
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–27. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Wayne State
University. Appeal Br. 2.
Appeal 2020-003246
Application 14/130,987

2
CLAIMED SUBJECT MATTER
The claims are directed to an atomic layer deposition of transition
metal thin films. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of forming a metal film on a substrate, the method
comprising a deposition cycle including:
a) contacting a substrate with a vapor of a metal-containing
compound described by formula 1 for a first predetermined pulse time to
form a first modified surface, the substrate being at a temperature at which
atomic layer deposition occurs:
MLn (1)
wherein:
n is 1 to 8;
M is a transition metal;
L is a ligand;
b) contacting the first modified surface with an acid for a second
predetermined pulse time to form a second modified surface, the acid being
selected from the group consisting of HX, H3PO4, and H3PO2; formic acid,

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and where X is N3', NO3', and halide; R is
hydrogen, C1-4 alkyl, C6-12 aryl, Si(R3)3, or vinyl; R3 is C1-8 alkyl; and n is an
integer from 1 to 6; and
c) contacting the second modified surface with a reducing agent for
a third predetermined pulse time to form a metal layer.

Independent claim 19 recites a method similar to that of claim 1, and
adds that “the pKA of the conjugate acid to L is larger than the pKA of the
acid used in this step [step b]” (Appeal Br. Claims Appendix 4, 5).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Doppelt US 2006/0121709 A1 June 8, 2006
Dominguez US 2007/0099420 A1 May 3, 2007
Norman US 2009/0114874 A1 May 7, 2009
Oudart US 2009/0143224 A1 June 4, 2009
Lim Lim et al. Atomic layer
deposition of transition
metals." Nature. Vol. 2
November 2003, pages 749–
754
November 2003
Ripin Ripin. Chem 206 pKa's of
Inorganic and Oxo-Acids,
found online at
http://evans.harvard.edu/pdf/
evans_pKa_table.pdf
(11/4/2005)
2005
d’Alnoncourt d’Alnoncourt et al. "The
preparation of Cu/Al2O3
catalysts via CVD in a
fluidized bed reactor"
Surface and Coatings 201
(2007) pp. 9035–9040
2007
Pettinari Pettinari et al. "Copper and
Silver derivatives of
scorpionates and related
ligands." Polyhedron Vol.
23 (2004) pp. 451-469
2004

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REJECTIONS
The following rejections under pre-AIA 35 U.S.C. 103(a) are on
appeal:
Claims 1–6, 8–11, 13–15, 17, 18, 21, 24, 25, and 27 as unpatentable
over Lim in view of Norman.
Claims 7, 19, and 20 as unpatentable over Lim, Norman and Ripin.2
Claim 12 as unpatentable over Lim, Norman, and d’Alnoncourt.
Claim 16 as unpatentable over Lim, Norman, and Pettinari.
Claim 22 as unpatentable over Lim, Norman, and Dominguez.
Claim 23 as unpatentable over Lim, Norman, and Oudart.
Claim 26 as unpatentable over Lim, Norman, and Doppelt.

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer. We add the following
for emphasis.

2 Although the Examiner separately treated claim 7 from claims 19 and 20,
the rejections are essentially the same (Final Act. 10, 13–17). For brevity,
we combine these rejections.
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The § 103 Rejections of Claims 1‒6, 8‒18, 21‒27
The Examiner finds that Lim teaches a method of forming a metal
film on a substrate comprising a deposition cycle that includes steps a) and
c) as set forth in claim 1 (Ans. 3‒4). The Examiner finds Lim does not
disclose the intermediate step of contacting the modified surface with an
acid. Id. The Examiner relies on Norman to teach the introduction of a
second reagent in between the metal precursor and the reducing agent (Ans.
5‒6). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to contact the first modified surface with Norman’s
additional reducing agents, including both halides and acids (e.g., formic
acid), prior to Lim’s step of applying a reducing agent (i.e., hydrogen)
because such a step will provide a smooth film while also leaving hydrogen
on the surface to continue the atomic layer deposition (i.e., ALD) cycle. Id.
Appellant presents three main arguments: 1) Norman does not teach
the use of a halide acid having a formula as claimed (Appeal Br. 5); 2)
Norman does not disclose reacting a first modified surface with an acid to
form a second modified surface (id.); and 3) there is no motivation to modify
Lim with Norman as each stands alone in teaching processes for forming
metal films (id. at 8‒10). Appellant further contends that the Examiner is
relying on the inventor’s disclosure as a blueprint to arrive at the claimed
invention from the combined teachings of the cited art (Reply Br. 3‒4).
These arguments fail to persuade us of reversible error in the Examiner’s
obviousness rejection for the reasons detailed by the Examiner (Ans. 23‒33),
and because they fail to appreciate the breadth of the claim language and the
inferences that one of ordinary skill would have made from the applied prior
art.
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Specifically, with respect to argument (1) above, the argued claim 1
limitation is present as one of several options for the acid used in step (b).
Thus, the claim is not limited to just the argued limitation. Cf. In re Self,
671 F.2d 1344, 1348 (CCPA 1982)(stating that limitations not appearing in
the claims cannot be relied upon for patentability). Nor does Appellant
explain adequately why the argued limitation limits the scope of the claim.
Dependent claim 8 also recites this limitation, albeit again with “halide” as
an alternative (Appeal Br. Claims Appendix 2 (reciting that “the acid
comprises a component is selected from the group consisting of: HX, H3PO4,
and H3PO2, and X is N3-, NO3-, and halide”). Nonetheless, the Examiner
relies upon Norman’s teaching of halides, generally, to meet the limitation,
and states that where Norman teaches halides as oxidants, hydrogen halides
are understood to be included (Ans. 8‒9; 25‒26). In any event, while the use
of HX, where X is halide, is optional, Norman also teaches ammonia as a
reducing agent, which meets the claimed HX where X is N3-. Ans. 25; see
Norman ¶ 60.
With regard to Appellants’ argument (2), the Examiner explains that
Lim that is relied upon to teach the claimed steps a) and c), as well as the
disclosure of using two or more different vapour phase reactants (Ans. 26‒
27). The Examiner relies upon Norman as describing a typical ALD process
as including alternating pulses of organometallic precursor and reagent gas
(Ans. 27 referring to Norman ¶ 7). Appellant’s arguments fail to appreciate
the breadth of the claim language and the inferences that one of ordinary
skill would have made from the applied prior art. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (“the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
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claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”); see also In re Fritch, 972
F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the
specific teachings thereof as well as the inferences one of ordinary skill in
the art would have reasonably been expected to draw therefrom). Further, it
is well settled that "the test for obviousness is what the combined teachings
of the references would have suggested to [a PHOSITA]." In re Mouttet, 686
F.3d 1322, 1333 (Fed. Cir. 2012); In re Merck & Co., Inc., 800 F.2d 1091
(Fed. Cir. 1986). Therefore, Appellant’s arguments directed to the failure of
Norman to teach reacting the first modified surface to form a second
modified surface are not persuasive (Appeal Br. 5) because they do not
adequately address the rejection the Examiner presents, including the two
alternative modifications of Lim detailed by the Examiner (Ans. 24; Final
Act. 22). Appellant has not shown that the claims encompass any more than
a combination of known ALD steps for their known purpose. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
at 416. “If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417.
Addressing Appellant’s argument (3) above, the Examiner responds
that Lim’s solution does not preclude one of ordinary skill from further
optimizing the ALD process, given that Lim and Norman disclose
advantages of the different reactants claimed (Ans. 29‒30). Appellant has
not provided any persuasive technical reasoning or directed us to evidence
that sequential use or pulsing of known ALD reactants produces any more
than predictable results. Cf. In re Kerkhoven, 626 F.2d 846, 850 (CCPA
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1980) (“It is [generally considered] prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the
same purpose, in order to form a third composition which is to be used for
the very same purpose.”). Appellant has not directed us to any specific
reason for, or criticality of, the claimed process (Spec. ¶ 5 merely states the
invention “solves one or more problems of the prior art” without any
explanation of these problems). Cf. In re Burhans, 154 F.2d 690, 692
(CCPA 1946) (selection of any order of performing process steps is prima
facie obvious in the absence of new or unexpected results).
Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol and Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(citation omitted). One of ordinary skill would have readily appreciated
from the combined applied prior art that the use of an additional reducing
agent (e.g., acid) as taught by Norman, as an intermediate step in the ALD
process of Lim, would have been within the skill and creativity of one of
ordinary skill in the art.
One of ordinary skill in the art would have readily appreciated that
Norman’s teachings of treatment with an additional reagents, including acids
and halides (see Norman ¶¶ 63, 66), may be combined with the teaching of
the hydrogen reducing agent taught by Lim to arrive at a process as claimed.
On this record, Appellant has not explained sufficiently why the claimed
subject matter is “more than the predictable use of prior art elements [or
steps] according to their established functions.” KSR, 550 U.S. at 417.
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Appellant asserts that the Examiner is relying on the instant
“disclosure as a blueprint” to construct the rejection (Reply Br. 4).
However, it has been established that "[a]ny judgment on obviousness is in a
sense necessarily a reconstruction based on hindsight reasoning, but so long
as it takes into account only knowledge which was within the level of
ordinary skill in the art at the time the claimed invention was made and does
not include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971). The Examiner is relying on known ALD processing steps and
reagents to arrive at the claimed invention (generally Ans.). Lim and
Norman are each directed to ALD methods, and Appellant has not provided
any persuasive technical reasoning or sufficient evidence to show that the
combination of claimed steps provide more than a predictable result. Thus,
Appellant has not shown reversible error in the Examiner’s determination
that one of ordinary skill in the art, using no more than ordinary creativity,
would have used the reagent of Norman (e.g., acid or halide) intermediate to
the first metal-containing contact step and the reducing agent (i.e., hydrogen)
step in the ALD process of Lim. In re Kubin, 561 F.3d 1351, 1360 (Fed.
Cir. 2009) (obviousness only requires a reasonable expectation of success).
See also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”).
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Accordingly, we sustain the Examiner’s rejections of independent
claim 1, as well dependent claims 2‒6, 8‒18, and 21‒27, noting that claims
2‒6, 8‒18 and 21‒27 are not separately argued, even though rejected
separately (Appeal Br. 12‒14).

The § 103 Rejection of Claims 7, 19, and 20
Dependent claim 7 depends from claim 1 and adds “the pKA of the
conjugate acid to L is larger than the pKA of the acid used in step b).”
(Appeal Br. Claims Appendix 2). Independent claim 19 recites a method
similar to that of claim 1, and, as with claim 7, adds that “the pKA of the
conjugate acid to L is larger than the pKA of the acid used in this step [step
b]” (Appeal Br. Claims Appendix 4, 5).
In response to Appellant’s assertion that the Examiner relies on
impermissible hindsight to arrive at the claimed invention (Appeal Br. 11,
13), hindsight is impermissible only when the sole reason for combining the
teachings of the references is the applicant’s disclosure. In re
McLaughlin, 443 F.2d at 1395. Rather than using hindsight, the Examiner
points to the teachings of formic acid and ligands in Norman and Lim,
respectively (Ans. 12, 20‒21). Therefore, the Examiner’s reasoning takes
into account only knowledge within the level of ordinary skill in the art at
the time the claimed invention was made.
Appellant argues that the ligand-metal compounds of Lim are very
different from diketonate discussed in Ripin, such that the Examiner’s
analogy regarding respective pKas “is not proper” (Appeal Br. 11).
However, the Examiner relies on Ripin to demonstrate a trend in pKas (not
to teach a specific pKa), and establishes that one of ordinary skill would
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have reasonably expected the pKa of the conjugate acid to L would be larger
than the pKa of formic acid (Ans. 32). Notably, Appellant has not produced
any factual evidence rebutting the Examiner’s findings and conclusions. In
re Best, 562 F.2d 1252, 1255 (CCPA 1977) (Once the Examiner presents
evidence or reasoning tending to show inherency, the burden of production
shifts to the Appellant.) It is also note that there is no minimum amount that
the pKa must be higher such that the claims encompass a pKa of the
conjugate acid to L of the slightest larger value than the pKa of the acid used
in step b.
Accordingly, we sustain the Examiner’s rejection of claims 7, 19, and
20 for the reasons set out by the Examiner and above.
CONCLUSION
The Examiner’s rejections are AFFIRMED.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–11,
13–15, 17,
18, 21, 24,
25, 27
103(a) Lim, Norman 1–6, 8–11,
13–15, 17,
18, 21, 24,
25, 27

7, 19, 20 103(a) Lim, Norman,
Ripin
7, 19, 20
12 103(a) Lim, Norman,
d'Alnoncourt
12
16 103(a) Lim, Norman,
Pettinari
16
22 103(a) Lim, Norman,
Dominguez
22
23 103(a) Lim, Norman,
Oudart
23
26 103(a) Lim, Norman,
Doppelt
26
Overall
Outcome
1–27

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 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED