Ex Parte PalaniswamyDownload PDFPatent Trial and Appeal BoardAug 23, 201713882068 (P.T.A.B. Aug. 23, 2017) Copy Citation 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. 13/882,068 04/26/2013 Ravi Palaniswamy 63797US006 4938 32692 7590 08/25/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER DUCLAIR, STEPHANIE P. ART UNIT PAPER NUMBER 1713 NOTIFICATION DATE DELIVERY MODE 08/25/2017 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAVI PALANISWAMY Appeal 2017-001350 Application 13/882,068 Technology Center 1700 Before PETER F. KRATZ, MONTE T. SQUIRE, and BRIAN D. RANGE, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 10—20. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellant’s claimed invention is directed to a process for etching a polymeric film to form features therein. Claim 10 is illustrative and reproduced below: 10. A process comprising: providing a polymeric film; contacting said polymeric film with an aqueous solution comprising from about 5 wt.% to about 55 wt.% of an alkali metal salt, and from about 5wt.% to about 30 wt.% of glycine; and etching the polymeric film to form features in the polymeric film. Appeal 2017-001350 Application 13/882,068 The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Ishikawa et al. JP 05-202206 Aug. 10, 1993 (“Ishikawa”) Visintin et al. WO 2008/039730 Al Apr. 3, 2008 (“Visintin”) The Examiner maintains the following ground of rejection: Claims 10-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ishikawa in view of Visintin. We reverse the stated rejection. Our reasoning follows. It is well settled that the burden of establishing a prima facie case of non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Examiner finds, inter alia, that Ishikawa teaches a process of etching a polymeric film to form features therein wherein the film is contacted with an aqueous solution that includes sodium hydroxide in amounts that overlap the amount of alkali metal salt content required by Appellant’s etching process solution as specified in appealed claim 10; however, Ishikawa lacks a teaching as to glycine being used as a component of the etching solution as required by Appellant’s claim 10 (Final Act. 3; Ishikawa ]Hf 6—9, 11, 21—25). The Examiner finds, inter alia, that Visintin teaches using a solution comprising an alkali metal salt and a corrosion inhibitor, such as glycine for removing material, such as polymer-containing build-up from microelectronic device substrates/layers (Final Act. 3^4; Visintin || 12, 28, 43,50,51). 2 Appeal 2017-001350 Application 13/882,068 The Examiner maintains that an ordinarily skilled artisan would have been led “to include the glycine of Visintin” in the aqueous solution used by Ishikawa to form features in a polymeric film “because one of ordinary skill in the art at the time of the invention would have had a reasonable expectation of predictably achieving the desired etching process using the glycine of Visintin” in Ishikawa (Final Act. 4). Appellant argues that the Examiner has not established why an ordinarily skilled artisan would have had reason to modify the etchant solution used in the feature forming polyimide etching process of Ishikawa by introducing a corrosion inhibiting material (glycine) that optionally may be employed in Visintin’s solution as part of Ishikawa’s etchant solution (App. Br. 4—5). Appellant argues that Visintin’s solution is designed for applying to a microelectronic device wafer for removing photoresist/polymer build-up from the wafer and Visintin’s solution includes a corrosion inhibitor, such as glycine, in its etchant solution for purposes of preventing etching of sensitive layers, such as metallic traces found in a microelectronic device, under the photoresist (App. Br. 4; Visintin 151). In contrast, according to Appellant, “Ishikawa is not concerned with removing a polymer from sensitive underlying metallic structures and so would have no reason to modify the etchant in an attempt to prevent the etching of an underlying metallic component” (App. Br. 4). The Examiner responds by contending that Ishikawa employs a metal mask during etching of a polyimide film and, after the polyimide etching, removes the metal mask via use of a corrosive etchant (Ans. 3^4; Ishikawa 1 17, 18, 23, 24). Thus, the Examiner argues that including Visintin’s corrosion inhibitor (glycine), which is used for preventing corrosion of 3 Appeal 2017-001350 Application 13/882,068 underlying metals, such as tungsten, in Visintin’s process, as an additive in the polyimide etchant of Ishikawa for use in Ishikawa’s process would have been desired by an ordinarily skilled artisan so as to provide for the expected polyimide etching of Ishikawa while reducing the etching rate of exposed metal, including tungsten, found in Ishikawa’s mask (Ans. 3^4; Ishikawa 1117, 18; VisintinH9, 51). As urged by Appellant, however, Ishikawa is not concerned with the protection of the etching mask from damage during the polymer etching and/or with the ultimate survival of the etching mask and any sensitive metals contained therein. Consequently, we concur with Appellant’s argument that the Examiner has not established an apparent reason as to why one of ordinary skill in the art would have sought to avoid any corrosion of Ishikawa’s mask during the feature (hole) forming polymer film etching step of Ishikawa by adding a corrosion inhibitor to Ishikawa’s etchant composition given that Ishikawa follows the polymer etching step with a step providing for the corrosive dissolution of the mask (Reply Br. 2—3; App. Br. 5; Ishikawa H 3, 4, 8—24; abstract). In this regard, our review of the evidence relied upon by the Examiner in light of the countervailing arguments of Appellant and the Examiner reveals that the Examiner has not carried the burden to fully address the differences between the teachings of the applied prior art references from each other in proposing their combination.1 Nor has the Examiner adequately explained why, regardless of the differences, one of 1 The Examiner has not demonstrated how the machine translation of Ishikawa, as cited to and relied upon by the Examiner, favors the Examiner’s obviousness position. 4 Appeal 2017-001350 Application 13/882,068 ordinary skill in the art would have been led by the separate teachings of the applied references to make the modifications of Ishikawa’s etching method that are necessary to yield a method that would correspond to the method required by Appellant’s claim 1 and with a reasonable expectation of success in so doing. Consequently, the Examiner has not established an apparent reason for the proposed modification of the process of Ishikawa based on the combined teachings of the applied prior art. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (establishing a prima facie case of obviousness requires an apparent reason to modify the prior art as proposed by the Examiner). Thus, the evidence of record indicates that the Examiner appears to have used impermissible hindsight in rejecting the Appellant’s claims. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we do not sustain the Examiner’s obviousness rejection. CONCLUSION The Examiner’s decision to reject the appealed claims is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation