Daijitsu Harada et al.

Patent Trials and Appeals Board

Jul 1, 2020

13369459 - (D) (P.T.A.B. Jul. 1, 2020)

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.
13/369,459 02/09/2012 Daijitsu Harada P5298US00 2041
38834 7590 07/01/2020
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 LEESBURG PIKE
SUITE 7500
TYSONS, VA 22182
EXAMINER
OCHYLSKI, RYAN M
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAIJITSU HARADA
and MASAKI TAKEUCHI
__________

Appeal 2018-005617
Application 13/369,459
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1, 2, 5–8, and 10–17 under 35 U.S.C. 103(a) as
unpatentable over Hieda et al.2 in view of Tanabe et al.3 Claim 9 is also pending

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Shin-Etsu Chemical Co.,
Ltd. Appeal Brief dated November 10, 2017 (“App. Br.”), at 2.
2 US 6,162,564, issued December 19, 2000 (“Hieda”).
3 US 2006/0068300 A1, published March 30, 2006 (“Tanabe”).
Appeal 2018-005617
Application 13/369,459

2

but has been withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
The claims on appeal are directed to a circular mold-forming substrate. The
Appellant discloses that the substrate is especially suited to form a mold for use in
nanoimprint lithography. Spec. 5, ll. 15–17.
Representative claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitations at issue are italicized.
1. A circular mold-forming substrate comprising:
an outer area and a circular mold role area;
wherein the circular mold-forming substrate has a diameter of
125 mm to 300 mm;
wherein the circular mold role area is an area that is capable of
forming a topological pattern;
wherein the outer area surrounds the circular mold role area;
wherein the circular mold role area has a diameter of up to 125
mm; and
wherein a variation of thickness of the circular mold role area is
up to 2 µm;
wherein the circular mold-forming substrate satisfies the
relationship: T ≥ C ≥ E;
wherein within the circular mold role area has a thickness T at
the thickest point t that first comes in contact with a resin layer on a
recipient substrate, a thickness C at the center c, and a thickness E at
point e that is the intersection between line t-c and the periphery of
the circular mold role area which is remote from t and last comes in
contact with the resin layer on the recipient substrate; and
wherein the circular mold-forming substrate satisfies the
relationship: 0.6 µm ≥ T-E ≥ 0.3 µm.
App. Br. 14.
Appeal 2018-005617
Application 13/369,459

3

As for the linear relationship: T ≥ C ≥ E, the Appellant’s Figure 2A,
reproduced below, is illustrative.

Appellant’s Figure 2A is a cross-sectional view
of a mold-forming substrate with the claimed
thickness variation.
The Appellant discloses that “[i]f the mold-forming substrate is profiled so
that the substrate thicknesses may meet the relationship: T ≥ C ≥ E, formation of
defects from bubbles in the transfer step can be mitigated.” Spec. 8, ll. 1–4. In
other words,
the site on the mold surface that last comes in contact with the resin
layer on the recipient substrate is the point of thickness E. Since the
point of thickness E is at the boundary of the pattern-formed region,
bubbles or foreign particles, if any in the resin layer, will escape out
of the pattern-formed region, giving no impact to the transferred
pattern.
Spec. 8, ll. 8–14.
As for the relationship: 0.6 µm ≥ T-E ≥ 0.3 µm, the Appellant discloses:
If the difference is more than 0.6 µm, which indicates a thickness
variation of more than 0.6 µm, then a misalignment can occur
between the pattern to be formed on the mold-forming substrate and
the pattern being transferred, resulting in pattern errors. If the
difference is less than 0.3 µm, this substrate thickness difference is
insufficient for bubbles or foreign particles to escape outside, and
bubbles or foreign particles will rather collect near the center of the
pattern-formed region, with a possibility of forming defects in the
transferred pattern despite fulfillment of the relationship: T ≥ C ≥ E.
Spec. 8, l. 30–9, l. 5.
Appeal 2018-005617
Application 13/369,459

4

B. DISCUSSION
Hieda and Tanabe both disclose mask blank substrates. The Examiner finds
Hieda discloses a circular substrate having a diameter of 200 mm, which is within
the range recited in claim 1, and allows for a circular mold role area that could be
up to 125 mm as claimed. Final Act. 3.4
The Examiner finds Hieda does not disclose the claimed thickness
relationship (i.e., 0.6 µm ≥ T-E ≥ 0.3 µm)
which, put another way, is a requirement that in an area capable of
forming a topological pattern, there is a convex curvature in the area
that encompasses the shortest linear distance from a thickest point [t]
at least just beyond a center of the circular mold role area to a second
point on the periphery of mold role area [e] that is on the opposite
side of the center from the thickest point and collinear with the line
defined by the thickest point [t] and the center of the circular mold
[c], wherein the thickness difference between the thickest point [t]
and second point [e] is between .3 and .6 microns, inclusive.
Final Act. 3–4 (emphasis added).
The Examiner, however, finds that the convex shapes disclosed in Tanabe
suggest the claimed relationship 0.6 µm ≥ T-E ≥ 0.3 µm, recited in claim 1. Final
Act. 4. More specifically, the Examiner directs our attention to Tanabe’s Figure 8
which, according to the Examiner,
shows an exemplary convex shape wherein the maximum thickness is
at 0.076 µm, and the minimum thickness dips to -0.390 µm, for a total
pre-chucking flatness variation from the thickest point to the edge of
0.466 µm (a value near the exact center of the claimed inequality), as
can be verified in Table 1 on Page 7 of Tanabe. Indeed, for all convex
Examples, Tanabe discloses convexity values well within the range of
0.6 µm ≥ T-E ≥ 0.3 µm.

4 Final Office Action dated January 27, 2017.
Appeal 2018-005617
Application 13/369,459

5

Ans. 6.5
In response, the Appellant argues that the flatness measurement area relied
on by the Examiner in Tanabe’s Figure 8 is a 148 mm square area and the value of
T-E differs depending on the size of the measurement area. Reply Br. 3.6 More
specifically, the Appellant argues:
[T]here are two figures illustrated in FIG. 8. The left one shows the
flatness measurement area of a 148 mm square, whereas the right one
shows that of a 132 mm square. The 132 mm square measurement
area may be closer in scope to the presently claimed invention, i.e. a
diameter of up to 125mm. Thus, when a skilled artisan at the time of
invention were to read the Max and Min values in the right figure of
FIG. 8, to calculate in the same manner as asserted by the Examiner,
Max value is 0.059 and Min value is -0.119, thus
T-E = 0.059 - (-0.119) = 0.178 µm. This is clearly not within the
presently claimed range feature.
Reply Br. 3.
Moreover, the Appellant argues that
when the Max and Min values of each 132 mm square figures in
FIGS. 8-17 are evaluated and calculated in the same manner, as
disclosed above, a skilled artisan would understand that each figure
has a smaller value than 0.3 µm, which is outside of the scope of the
presently claimed invention . . . .
Reply Br. 4. Thus, in contrast to the claimed invention, the Appellant argues that
the small difference in Tanabe’s substrate thicknesses makes it difficult to avoid
the introduction of bubbles or foreign particles. App. Br. 12.

5 Examiner’s Answer dated March 8, 2018.
6 Reply Brief dated May 8, 2018.
Appeal 2018-005617
Application 13/369,459

6

The Appellant’s argument is persuasive of reversible error. Two substrates
are depicted in each of Tanabe’s Figures 8–17.7 The left hand substrate in each
Figure is identified as “Mask 148 (Flatness),” referring to a 148 mm square area 16
of the substrate depicted in Tanabe’s Figure 1, and the right hand substrate in each
Figure is identified as “Mask 132 (Flatness),” referring to a 132 mm square area 14
of the substrate depicted in Tanabe’s Figure 1. Tanabe ¶ 123. Tanabe discloses
that the 132 mm square area is a pattern area of the substrate. Tanabe ¶ 123.
The claimed values T, C, and E are collinear and within the circular mold
role area which has a diameter of “up to 125 mm.” App. Br. 14. Therefore, we
concur with the Appellant that the 132 mm square area of Tanabe’s substrate,
which represents the pattern area of the substrate, rather than the 148 mm square
area relied on by the Examiner, is closer in scope to the circular mold role area
recited in claim 1.
The difference between each of the Max and Min values reported for “Mask
132 (Flatness)” in Tanabe’s Figures 8–17 is less than 0.3 µm, with 0.210 µm in
Tanabe’s Figure 9 being the highest value. Therefore, we find that Tanabe’s
substrate does not satisfy the claimed relationship: 0.6 µm ≥ T-E ≥ 0.3 µm,
especially where the Examiner has failed to show that the points corresponding to
T and E are collinear as claimed.
The Examiner also finds that “the optimum or workable range of the
convexity would require only ordinary skill.” Final Act. 4. To the extent that the
Examiner is taking the position that optimizing the T and E values of Tanabe’s
substrate would have been within the ordinary level of skill in the art, the Examiner

7 Figures 8–17 correspond to Tanabe’s inventive Examples 1–10. Tanabe ¶¶ 64–
73. Figures 18–20, on the other hand, correspond to Comparative Examples 1–3.
Tanabe ¶¶ 74–76.
Appeal 2018-005617
Application 13/369,459

7

has failed to show that T and E, as defined in claim 1, were known to be result-
effective variables at the time of the Appellant’s invention. See In re Antonie, 559
F.2d 618, 620 (CCPA 1977) (it is not obvious to optimize a parameter that was not
recognized to be a result-effective variable); see also App. Br. 9 (arguing that
“Tanabe does not disclose an [a, sic] result-effective variable that would have been
obvious to be optimized”). Moreover, the Examiner has failed to show that a T-E
value encompassed by the range recited in claim 1 would have been desirable in
Tanabe. See In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (the determination of
optimum values outside a range disclosed in the prior art may not be obvious); see
also Reply Br. 3 (arguing that “there is no reason or motivation for a skilled artisan
to achieve the presently claimed feature 0.6 µm ≥ T-E ≥ 0.3 µm”).
For the reasons set forth above, the obviousness rejection of claims 1, 2, 5–8,
and 10–17 is not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–8,
10–17
103(a) Hieda, Tanabe 1, 2, 5–8, 10–
17

REVERSED