Ex Parte Hwu

Board of Patent Appeals and Interferences

May 31, 2007

10104900 (B.P.A.I. May. 31, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte RUEY-JEN HWU
______________

Appeal 2006-2780
Application 10/104,900
Technology Center 1700
_______________

Decided: May 31, 2007
_______________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 1, 4-8, and 11-27, all
of the claims in the Application, in the Office Action mailed June 1, 2005.
35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2005).
We affirm the decision of the Primary Examiner with respect to
claims 1, 4, 7, and 11, and reverse the decision with respect to all other
claims.
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Claims 1, 4, and 7 illustrate Appellant’s invention of a method of
making a micro-optic element and a product of that method, and are
representative of the claims on appeal:
1. A method of making a micro-optic element, wherein the method
comprises:
disposing at least one photo-resistant element on at least one surface
of a substrate;
forming a top surface of the photo-resistant element to a curved form;
solidifying the formed photo-resistant element;
exposing the substrate and the formed photo-resistant element to a
reactive ion etch chamber; and
etching the substrate and the formed photo-resistant element such that
the etching of the substrate produced the micro-optic element on the
substrate, wherein the etching process involves the control of the selectivity
between the substrate and the formed photo-resistant element so as to
produce a predetermined curved surface on the micro-optic element, wherein
the predetermined curved surface comprises one of an elliptical or parabolic
curved surface.
4. The method of claim 1, wherein the substrate is made of silicon
and the photo-resistant element is made of AZ9260 photo-resist.
7. The micro-optic element made by the method of Claim 1.
The Examiner relies on the evidence in these references:
Mersereau US 5,370,768 Dec. 6, 1994
Dietrich US 5,705,025 Jan. 6, 1998
Lawandy US 5,737,126 Apr. 7, 1998
Tran US 5,853,960 Dec. 29, 1998
Nguyen US 6,013,399 Jan. 11, 2000
Akkaraju US 6,411,754 B1 Jun. 25, 2002
Deane US 6,627,305 B1 Sep. 30, 2003
Appellant requests review of the following grounds of rejection all
advanced on appeal (Supp. Br. 8-9):
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claims 4 and 11 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention (Answer 3);
claims 1 and 7 under 35 U.S.C. § 103(a) as being unpatentable over
Mersereau in view of Dean (id. 4-5);
claims 1 and 7 under 35 U.S.C. § 103(a) as being unpatentable over Tran in
view of Lawandy (id. 5-6);
claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Tran in view of
Lawandy and further in view of Akkaraju (id. 6);
claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Tran in view of
Lawandy and further in view of Nguyen (id. 7);
claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Tran in view of
Lawandy and further in view of Dietrich (id. 7-8);
claims 8, 12 through 16, 18, and 20-27 under 35 U.S.C. § 103(a) as being
unpatentable over Tran in view of Lawandy and further in view of Nguyen
(id. 8-10);
claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Tran in view
of Lawandy and Nguyen and further in view of Akkaraju (id. 10); and
claims 17 and 19 under 35 U.S.C. § 103(a) as being unpatentable over Tran
in view of Lawandy and Nguyen and further in view of Dietrich (id. 10-11).
Appellant argues the claims in the first ground of rejection as a group;
the claims in the second ground of rejection based on claim 1; and the claims
in the grounds of rejection based on the combined teachings of Tran and
Lawandy principally on the method encompassed by claim 1 (Supp. Br. 9-
27). Thus, we decide this appeal based on claim 1 with respect to the
grounds of rejection under § 103(a) and on claim 4 with respect to the
grounds of rejection under § 112, second paragraph. 37 C.F.R.
§ 41.37(c)(1)(vii) (2005).
Considering first the ground of rejection of claim 4 under 35 U.S.C.
§ 112, second paragraph, the Examiner contends the claim is indefinite
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because the claim scope is uncertain since “AZ9260 photo-resist” is a
trademark and thus, “cannot be used properly to identify any particular
material or product” (Answer 3 and 11-12).
Appellant relies on the practice with respect to the use of trademarks
in an application set forth in Manual of Patent Examining Procedure (MPEP)
§ 608.01(v) (Supp. Br. 9-10). In this respect, Appellant contends
[t]he term “AZ9260” refers to a type of photoresist having fixed
and definite meaning and that is well known in the literature,
particularly with regard to micro electro mechanical systems
(MEMS) technology. Applicant is not aware of any generic or
chemical name for the AZ9260 photoresist material or photo-
resistant element, other than by its identification “AZ9260.”
Id. at 10. Appellant contends there are “at least six U.S. Patents using the
term, ‘AZ9260,’” one of which is Akkaraju, and “the source and
characteristics of ‘AZ9260’ photoresist are disclosed in the specification”
(id., citing Specification p. 5, ll. 3-8, and p. 7, ll. 9-14).
The issue in this ground of rejection is whether claim 4 satisfies the
requirements of § 112, second paragraph, in view of the claim language
“AZ9260 photo-resist.”
The plain language of independent claim 1 specifies a method in
which any manner of photo-resistant element is formed in a curved form and
selectively etched along with the substrate by a reactive ion etch (RIE) in a
controlled manner to produce any manner of predetermined elliptical or
parabolic curved surface on a substrate. The plain language of dependent
claim 4 specifies an embodiment within claim 1 wherein the substrate is
prepared from silicon and the photo-resistant element is prepared from
“AZ9260 photo-resist.”
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The Specification contains the disclosures “[f]or instance, in one
embodiment, a suitable photo-resist is AZ9260, from the Shipley Company
of Marlborough, Massachusetts” which “promotes the formation of a micro-
optic element having an elliptical or parabolic profile,” and “[t]he selectivity
of 5:1 is achieved by the utilization of a silicone substrate and a photo-resist
material referred to as AZ9260” (Specification p. 5, ll. 3-8, and p. 7,
ll. 9-14).
We find from information readily available on any website through
any search engine, that AZ® 9260 is a trademark for a photoresist material
that is a member of AZ® 9200 thick film photoresist materials of the AZ
Electronic Materials (USA) Corp. of Branchburg, New Jersey. We find no
information readily available on any websites through any search engine
which establishes the chemical formulation of this specific material; the
information describing only certain physical characteristics of resists formed
therewith using certain methods. Indeed, we find no information readily
available on any websites through any search engine which establishes that
“AZ9260” is a trademark for a photoresist material of the “Shipley Company
of Marlborough, Massachusetts.”
The six United States Patents cited by Appellant are listed in a search
result from the USPTO Patent Full Text and Image Database attached to the
Brief, which listing includes Akkaraju .1 In none of these patents does the

1 These patents should have been included in the Evidence Appendix with
the notation that the same are submitted in response to the ground of
rejection under 35 U.S.C. § 112, second paragraph, entered for the first time
in the Office Action mailed June 1, 2005, from which the appeal was taken.
In this instance, we will not remand the application to the Examiner to obtain
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term “AZ® 9260” or the term “AZ9260” appear in claim language, and all
merely cite this material in the specification as “AZ9260” photoresist
material without listing source or chemical formulation.
The term “AZ9260 photo-resist” in claim 4 is used to identify a
particular photoresist material per se and not as a trademark. The
specification provides no specific chemical or physical definition of this
term. All that is apparent from the claim language and the disclosure in the
specification is the material so identified on the date the application was
filed was capable of being shaped into a curved shape in forming the photo
resistant element on the surface of the substrate, and the formed photo
resistant element was controllably etched along with the substrate to form a
particular curved surface on the substrate. The mere reference to “AZ9260”
as photoresist material in different methods in the six United States Patents
provides even less pertinent information.
However, defining “AZ9260” in terms of certain performance
characteristics is not sufficient to avoid a holding of indefiniteness under §
112, second paragraph. The chemical constituency of AZ® 9260 can change
from what it was as of the date the present application was filed and still
exhibit the performance characteristics required by claim 1 even though the
material so identified is materially different than the material claimed as
“AZ9260 photo-resist” in claim 4 on said date. Indeed, on this record, there
is no assurance that chemical constituency of AZ® 9260 now identified only

compliance with 37 C.F.R. § 41.37(c)(ix) (2005). We leave it to the
Examiner to make the five unentered patents of record.
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by trademark and performance information on websites, is the same as that
of “AZ9260 photo-resist” as claimed on said date.
Accordingly, on this record, one of ordinary skill in the art would not
be able to determine the scope of the claimed invention from the claim
limitation “AZ9260 photo-resist.” Indeed, claim 4 sets forth a trademark
which does not identify any particular material. Therefore, the claim does
not set out and circumscribe a particular area with a reasonable degree of
precision and particularity, see In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971), such that “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” See The Beachcombers, Int’l Inc. v. WildeWood Creative
Prods. Inc., 31 F.3d 1154, 1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994)
(quoting Orthokinetics, Inc v. Safety Travel Chairs Inc., 806 F.2d 1565,
1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986)); see also In re Warmerdam,
33 F.3d 1354, 1360, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994); Ex parte
Simpson, 218 USPQ 1020, 1021-22 (Bd. App. 1982).
Appellant’s reliance on MPEP § 608.01(v) is misplaced as this section
is concerned with the disclosure of the invention in the Specification and not
with the claimed invention encompassed by claims 4 and 11 which is in
issue. See, e.g., Ex parte Simpson, 218 USPQ at 1021-22; MPEP §
2173.05(u) (8th ed., Rev. 5, Aug. 2006). Indeed, the information supplied in
the written description in the Specification provides only the trade name of a
resist material, which is no more information than that provided in the six
United States Patents.
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Accordingly, we affirm the ground of rejection of claims 4 and 11
under 35 U.S.C. § 112, second paragraph.
Turning now to the ground of rejection of claim 1 under § 103(a) over
the combined teachings of Mersereau and Dean, the Examiner finds
Mersereau would have disclosed forming a curved photo-resistant element
on a substrate and differentially etching the substrate and the photo-resistant
element using RIE to form dome shapes on the substrate (Answer 4, citing
Mersereau col. 3, ll. 2-12). The Examiner determines the method of
Mersereau differs from the claimed method of making a micro-optic element
by not disclosing a curved lens having an elliptical curved surface (id.). The
Examiner finds Deane discloses a method of forming curved spherical or
elliptical microlenses (id., citing Deane col. 3, ll. 26-28). The Examiner
concludes prima facie one of ordinary skill in this art would have modified
the method of Mersereau to form elliptical curved surfaces on the substrate
because Deane discloses that microlens elements can be “varied and of any
known shape” including elliptical (id. 5).
Appellant contends there is no suggestion or motivation to combine
Mersereau and Dean because Deane does not disclose a process recited in
appealed claim 1 (Supp. Br. 11-12). In this respect, Appellant contends
Deane discloses a different method for forming a photoresist element than
the method of claim 1 and further is not “the reflow photosensitive resist
technique” of Mersereau (id. 12). Appellant further contends there is no
reasonable expectation of success because of this difference in the
photoresist element formation (id.).
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The Examiner responds Deane is applied to show that the forms of
microlens elements may be varied and of any shape, and thus, one of
ordinary skill would modify the shape of the microlens formed by the
method of Mersereau to provide any shape microlens, including spherical or
elliptical, without otherwise modifying the method of Mersereau by the
specific method steps of Deane (Answer 12-13).
The issue in this ground of rejection is whether the Examiner has
carried the burden of establishing a prima facie case of obviousness under
§ 103(a) over the combined teachings of Mersereau and Deane.
We add to our interpretation of claim 1 (see above pp. 4-5) by
determining the steps of “forming a top surface of the photo-resistant
element to a curved form” and then “solidifying” the same, encompass any
manner of formation of any manner of curved photoresist surface, including
a reflow technique and a masking process (see Specification, e.g., page 2,
ll. 18-21, and page 4, l. 30, to page 5, l. 2). The claimed method results in a
“predetermined curved surface on the micro-optic element . . . [which]
comprises one of an elliptical or parabolic curved surface,” which can
include “micro-lenses, micro-lens arrays (MLA), micro-reflectors, and
micro-mirrors” (Specification page 1, ll. 4-7).
We agree with the Examiner’s findings with respect to the teachings
of Mersereau and of Deane. We further find Mersereau would have
disclosed to one of ordinary skill in this art the reflow method of forming
curved or dome shaped photoresist elements 28 on the substrate, the curved
or dome shaped configuration replicated in silica substrate 11 by RIE
(Mersereau, e.g., col. 1, ll. 11-27, col. 2, l. 45, to col. 3, l. 9, and Fig. 5). The
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method provides “curved lens portions” 29 which “microlenses having a
circular outer periphery . . . suitable for individual use, for example in
photonic packages,” such as “coupling light to or from an optical fiber, a
laser, or a photodetector” (id. col. 3, ll. 10-27, and Fig. 6). We further find
Deane would have disclosed to one of ordinary skill in this art electronic
devices that include microlens arrays on separate glass plates and methods of
preparing the same, wherein “[t]he form of the microlens elements may be
varied and of any known shape, for example spherical or elliptical . . .
depending on their intended purpose” (Deane, e.g., col. 1, ll. 6-9, col. 2,
ll. 58-67, and col. 3, ll. 26-39).
We find Appellant discloses that it was known in the art to use
microlenses and microlens arrays for such purposes as “coupling light from
a laser to an optical fiber and coupling light from an optical fiber to a photo-
detector” (Specification page 1, ll. 8-14).
We determine the combined teachings of Mersereau and Deane, the
scope of which we determined above, provide convincing evidence
supporting the Examiner’s case that the claimed invention encompassed by
claim 1, as we interpreted this claim above, would have been prima facie
obvious to one of ordinary skill in the micro-optic elements arts familiar
with methods of making the same. Indeed, we determine that this person
would have been aware of the different curved shapes of microlenses for
different purposes, as evinced by Mersereau, Deane and Appellant’s
acknowledged state of the art. Thus, this person would have adjusted the
photoresist reflow steps and the differential etch steps of Mersereau’s
process according to the curved microlens shaped desired in the predictable
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expectation of obtaining that shape, including the claimed elliptical or
parabolic curved surfaces.
We are not persuaded otherwise by Appellant’s contentions. We
determine one of ordinary skill in this art would have combined Mersereau
and Deane as both are in the same field of micro-optic elements. The fact
that the method of Deane is not the method of Mersereau would not have
dissuaded one of ordinary skill in this art from considering the shape of the
microlenses disclosed in Dean or otherwise known in the art as Appellant
acknowledges, and would not have indicated to this person that no other
method can be successfully used to obtain microlenses having that shape.
See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (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.”).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Mersereau and Deane with Appellant’s
countervailing evidence of and argument for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 1 and 7 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).
We now consider the combined teachings of Tran and Lawandy alone
with respect to the remaining grounds of rejection under § 103(a), all based
on this combination of references. The Examiner contends in Tran’s
method, the step of “selectively etching the substrate by the RIE . . . (col. 7,
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lines 57-60, col. 8, lines 28-35) . . . reads on the etching process [which]
involves the control of the selectivity between the substrate and the curved
photoresist to produce a predetermined curves [sic, curved] surface”
(Answer 5). The Examiner relies on Lawandy only for the disclosure of
parabolic or spherical microlense shapes (id. 5-6).
Appellant contends Tran’s method includes the steps of forming
photoresist mask 36 on substrate 24, the mask is removed after selective
etching of surface 22 of the substrate leaving an array of peaks 40 on the
surface of the substrate, the peaks are wet-etched to smooth the surface
thereof, thus forming an array of lenses (Supp. Br. 14, citing Tran cols. 7-8
and Figs. 1a-f). Appellant contends Tran, thus, does not disclose a method
which controls the selective etching of the substrate and the photo-resistant
element (id. 14-17).
The Examiner responds that Tran etches the substrate using RIE “to
begin the formation of the” microlenses (Answer 14).
The issues in these grounds of rejection are whether the Examiner has
carried the burden of establishing a prima facie case of obviousness by
applying the combined teachings of Tran and Lawandy.
We have interpreted claim 1 (see above pp. 4-5 and 9).
We agree with Appellant that Tran would have disclosed to one of
ordinary skill in this art a method of forming microlenses on a substrate
involving the following steps. First, a photoresist mask 36 is formed on
substrate 24 (Tran col. 7, ll. 46-56, and Figs. 1a-d). Next, “the substrate 24
is selectively etched in the areas surrounding the photoresist mask 36,”
wherein the “selective” etch of the substrate alone can be a wet-chemical or
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dry etch, resulting in etched peaks 40, and the lens shape depends on the
“depth/width ratio 38 [of etched peaks 40] attained during the etching
process” (id., col. 7, l. 57, to col. 8, l. 45, col. 8, ll. 61-64, and Fig. 1e; italics
emphasis provided). Next, “[t]he photoresist mask 36 is removed from the
surface 22 of the substrate wafer 24” with acetone, after which surface 22 is
cleaned (id., col. 8, ll. 45-60, and Fig. 1f). And, last, the entire surface 22 of
substrate 24 is etched using a wet-chemical etch to “form an array of lenses
by smoothing the surfaces of etches peaks 40” (id., col. 8, l. 61, to col. 9,
l. 6, and Figs. 1f-g).
We find Lawandy would have disclosed to one of ordinary skill in this
art a method of preparing refractive microlenses using a laser to form
parabolic or spherical shaped structures in a substrate (Lawandy, e.g.,
abstract and col. 2).
On this basis, we further agree with Appellant that Tran alone does
not satisfy the claim limitation of simultaneously etching the photo-resistant
element and the substrate using RIE in a controlled manner, and the
Examiner does not point to any teachings in Lawandy which would have led
one of ordinary skill in the art to modify Tran’s method to do so.
Accordingly, in the absence of a prima facie case of obviousness
provided by the principal combination of Tran and Lawandy, we reverse the
grounds of rejection of claims 1, 4 through 8, and 11 through 27 under
35 U.S.C. § 103(a) principally based on this combination of references.
In summary, we have affirmed the ground of rejection of claims 4 and
11 under 35 U.S.C. § 112, second paragraph, and the ground of rejection of
claims 1 and 7 under 35 U.S.C. § 103(a) over Mersereau and Deane, and
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reverse the grounds of rejection under 35 U.S.C. § 103(a) over Tran and
Lawandy alone and as combined with other references.
The Primary Examiner’s decision is affirmed-in-part.
REMAND
We decline to exercise our authority under 37 C.F.R. § 41.50(b)
(2006) and enter new grounds of rejection of the appealed claims over the
combined teachings of Mersereau and Deane alone, as we considered this
combination of references above, and further in view of one or more of
Akkaraju, Nguyen, and Dietrich. We do so in order so that the Examiner
can consider such new grounds of rejection as well as other grounds of
rejection which may apply over the United States Patents to Feldblum,
Derkits, and Haemmerle,2 and any other reference(s) deemed appropriate,
Indeed, each of Dietrich, Feldblum, Derkits, and Haemmerle can be applied
in combination with other prior art.
We note here that Dietrich would have taught one of ordinary skill in
the art the method of forming a spherical photo-resistant element on a
substrate and controlling the simultaneous etching of the photo-resistant
element and the substrate using, inter alia, a mixture of SF6 and O2 in a
manner to transfer the structure of the photo-resistant element to the
substrate to produce convex lens systems, including aspherical lens systems,
for use in fiber optics (Dietrich, e.g., abstract, and cols. 1-3). The
Examiner’s combination of Dietrich with Tran and Lawandy did not involve

2 Feldblum, Derkits, and Haemmerle are United States Patents 5,286,338;
5,079,130; and 5,439,782, respectively, which are incorporated-by-reference
or otherwise cited in Mersereau. Feldblum is of record and we leave it to the
Examiner to make the other patents of record.
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the issue of whether one of ordinary skill in the art would have modified the
method of Tran by the teachings of Dietrich with respect to the absence of
simultaneously etching the photo-resistant element and the substrate in the
method of Tran. Consideration of the combination of references in that
manner would have constituted a “new” ground of rejection to which
Appellant has not had an opportunity to respond. See In re Kronig,
539 F.2d 1300, 1302, 190 USPQ 425, 426 (CCPA 1976).
Accordingly, we remand this application to the Examiner to enter such
new grounds as appropriate in view of our comments above, and to take any
other appropriate action consistent with current examining practice and
procedure. 37 C.F.R. § 41.50 (a)(1) (2006).
Our decision includes a remand and, thus, shall not be considered final
for judicial review. We will enter an order making our decision final for this
purpose upon conclusion of the proceedings outlined above on remand
before the Examiner. 37 C.F.R. § 41.50 (e) (2006).
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)(iv) (2006).
AFFIRMED-IN-PART
REMANDED

clj

Morriss O’Bryant Compagni, P.C.
734 East 200 South
Salt Lake City, UT 84101
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