Ex Parte Choi et al

Patent Trial and Appeal Board

Dec 27, 2012

11328789 (P.T.A.B. Dec. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/328,789 01/10/2006 Yang-Kyu Choi 11746-7 6497
81900 7590 12/27/2012
Klaus P. Stoffel
475 Park Avenue South
15th Floor
New York, NY 10016
EXAMINER
ALANKO, ANITA KAREN
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
12/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YANG-KYU CHOI and JU-HYUN KIM
____________

Appeal 2011-010099
Application 11/328,789
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH and
MARK NAGUMO, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010099
Application 11/328,789

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 3, 5, 6, and 8 through 10. We have jurisdiction under
35 U.S.C. § 6.
Appellants’ claimed invention relates to a method of making a
nanogap for a biosensor. App. Br. 4. Claim 1 is illustrative:
1. A method of forming a planar nanogap for a bio-
sensor, consisting of the steps of:

(a) forming sequentially an insulating layer, a first metal
layer and a hard mask on a silicon substrate;

(b) etching partially the first metal layer using a mask
pattern as a mask;

(c) forming a self-assembled monolayer (SAM) on a side
of the first metal layer to form a nanogap on the silicon
substrate so that the SAM is not covered by the hard mask;

(d) depositing metal only on the silicon substrate and the
hard mask to form a second metal layer, whereby the hard mask
prevents the second metal layer from covering the SAM;

(e) by etching the mask formed in step (a), removing the
metal deposited on the hard mask by using a lift-off process;
and

(f) etching the SAM formed in step (c) to form the
nanogap.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Jackson US 2002/0168810 A1 Nov. 14, 2002
Krivokapic US 6,534,399 B1 Mar. 18, 2003
Appeal 2011-010099
Application 11/328,789

3
Lee US 2005/0136419 A1 Jun. 23, 2005
Schulz US 2007/0075351 A1 Apr. 5, 2007
Shinozaki JP 56-138938 A Oct. 29, 1981

Appellants request review of the following rejections (App. Br. 7)
from the Examiner’s final office action:
1. Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lee, Jackson, Schulz, and Shinozaki.
2. Claims 5, 6, and 8-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Jackson, and Krivokapic.

OPINION
Prior Art Rejections
The dispositive issue for this appeal is: Did the Examiner err in
determining that Lee discloses a method of forming a nanogap comprising
the step of depositing metal only on the silicon substrate and the hard mask
to form a second metal layer, whereby the hard mask prevents the second
metal layer from covering the self-assembled monolayer (SAM) as required
by the subject matter of independent claim 1?1
We answer this question in the negative and AFFIRM for the reasons
presented by the Examiner and add the following for emphasis.

1 We limit our initial discussion for this rejection to independent claim 1.
Appellants rely on the same arguments in addressing both rejections on
appeal. See App. Br. generally. Accordingly, all rejections stand or fall
together. The Examiner relied upon Jackson, Krivokapic, Schulz, and
Shinozaki for describing features not related to the dispositive issue.
Consequently, a discussion of these references is unnecessary for disposition
of this appeal.

Appeal 2011-010099
Application 11/328,789

4
The Examiner found that Lee forms a nanogap by forming
sequentially a first metal layer and a photoresist on a silicon substrate:
partially etching the first metal layer using the photoresist pattern as a mask;
forming a self-assembled monolayer (SAM) on a side of the first metal
layer; forming a second metal layer ([0165]) over the photoresist; removing
the photoresist and the metal deposited on the mask by using a lift-off
process; and etching the SAM to form the nanogap. Ans. 3-4.
As argued by Appellants, Lee does not specifically teach a step of
depositing metal on the silicon substrate and the hard mask so that the SAM
is not covered by the second metal layer as required by the subject matter of
independent claim 1. App. Br. 10-11. According to Appellants, there is no
reason to expect from the teachings of Lee that the SAM should not be
covered by the second metal layer as is required in the present invention. Id.
at 11.
We are unpersuaded by these arguments. The Examiner found that
Lee uses the same deposition method as Appellants to form the metal layers.
Ans. 10; Spec. ¶ [20]; Lee ¶ [0162]. Based on Lee’s disclosure, one skill in
the art would conclude that Lee is applying the second layer over the
assembly so that the SAM is not covered. Ans. 10. Appellants have not
adequately refuted this finding by the Examiner. App. Br. 13.
While Appellants argue that the views of Figure 20 appear to be
inconsistent (id. at 12), we note that Lee’s disclosure is reasonably clear that
the first metal layer is etched in plane with the patterned photoresist. Lee ¶
[0163]. Thus, Lee’s disclosure resolves any apparent inconsistencies.
Accordingly, we sustain the Examiner’s rejection of claims 1-3 under
35 U.S.C. § 103(a) as obvious over Lee, Jackson, Schulz, and Shinozaki.
Appeal 2011-010099
Application 11/328,789

5
Appellants rely on the same arguments in addressing the separate
rejection of claims 5, 6, and 8-10 under 35 U.S.C. § 103(a) as unpatentable
over Lee, Jackson, and Krivokapic. App. Br. 16-20. Therefore, we also
sustain this rejection for the reasons given above.

ORDER
The rejection of claims 1-3 under 35 U.S.C. § 103(a) as unpatentable
over Lee, Jackson, Schulz, and Shinozaki is affirmed.
The rejection of claims 5, 6, and 8-10 under 35 U.S.C. § 103(a) as
unpatentable over Lee, Jackson, and Krivokapic is affirmed.

TIME PERIOD
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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