Ex Parte Braun et al

Patent Trial and Appeal Board

Jun 7, 2016

11817827 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111817,827 0910512007 Christopher P. Braun
47396 7590 06/09/2016
HITT GAINES, PC
LSI Corporation
PO BOX 832570
RICHARDSON, TX 75083
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BRAUN 1-94-1 7073
EXAMINER
ZHAO, XIAO SI
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
docket@hittgaines.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER P. BRAUN, 1
Sailesh Chittipeddi, and Frederick R. Peiffer
Appeal2014-009927
Application 11/817 ,827
Technology Center 1700
Before BRADLEY R. GARRIS, MARK NAGUMO, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Christopher P. Braun, Sailesh Chittipeddi, and Frederick R. Peiffer
("Braun") timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2
of claims 1-7, 11-16, 19, 21, 23, and25-30. 3
1 The real party in interest is identified as Agere Systems Inc. (Appeal
Brief, filed 8 April 2014 ("Br."), 3.)
2 Office action mailed 22 November 2013 ("Final Rejection"; cited as
"FR"). In an Advisory Action mailed 12 February 2013 ("Adv."), the
Examiner indicated continued disagreement with Braun's arguments.
3 Remaining copending claims 22, 24, and 31 have been withdrawn from
consideration by the Examiner (FR 1, § 5a), and are not before us.
Appeal2014-009927
Application 11/817 ,827
We have jurisdiction. 35 U.S.C. § 6.
We REVERSE for substantially the reasons well-stated by Braun.
OPINION
A. Introduction4
The subject matter on appeal relates to hybrid methods of making
devices, particularly integrated circuits, using a combination of imprint
lithography to make first devices (especially for very small dimensioned
features (e.g., less than 100 nm (independent claims 11 and 25) or less
than 50 nm (claims 21, 23, and 29)) and direct-write processes to make
second devices, generally "sub-micron devices," on the same chip as the first
devices.
The present appeal arises from continued examination after a Decision
by the Board affirming the rejections of claims then presented. 5 We refer
the reader to that Opinion for further details of the claimed subject matter.
Braun presents somewhat narrower claims in this appeal, and urges
that the Examiner erred in rejecting the amended claims as lacking an
adequate written description and enablement, and as being obvious over the
applied art, which has been augmented by two additional references.
4 Application 11/817 ,827, Method for Manufacturing a Device Using
Imprint Lithography and Direct Write Technology, filed 5 September 2007
as the national stage of an international application filed 23 March 2006,
claiming the benefit of a provisional application filed 23 March 2005. We
refer to the '"827 Specification," which we cite as "Spec."
5 See the Decision in Appeal 2011-005404, mailed 11February2013 (cited
as "Op 1. ")
2
Appeal2014-009927
Application 11/817 ,827
Claim 1 now reads:
A method for manufacturing a device, comprising:
forming one or more devices of a first type over a substrate
using imprint lithography; and
forming one or more sub-micron devices of a second type
over the substrate using electron beam lithography or laser
beam lithography.
(Claims App., Br. 12; some indentation, paragraphing, and emphasis added.)
Claim 11 now reads:
A method for manufacturing an integrated circuit,
compnsmg:
forming one or more devices having at least one dimension
less than about 100 nm over a substrate using imprint
lithography;
forming a dielectric layer over the nano-scale devices; and
forming sub-micron conductive features in, on or over the
dielectric layer using electron beam lithography or laser
beam lithography technology,
the sub-micron conductive features contacting at least a
portion of the one or more devices having at least one
dimension less than about 100 nm.
(Claims App., Br. 13; some indentation, paragraphing, and emphasis added.)
Remaining independent claim 25 is similar to claim 11, but somewhat
more detailed in ways we need not describe to resolve this appeal.
In these claims, the term "sub-micron" replaces the term
"microscale"; and the phrase "one or more devices having at least one
dimension less than about 100 nm" replaces the term "nanoscale devices."
3
Appeal2014-009927
Application 11/817 ,827
The Examiner maintains the following grounds of rejection6 :
Al. Claims 1-7, 11-16, 19, 21, 23, and 25-30 stand rejected
under 35 U.S.C. § 112(1) for lack of adequate written
description of the term "sub-micron."
A2. Claims 1-7, 11-16, 19, 21, 23, and 25-30 stand rejected
under 35 U.S.C. § 112(1) for lack of an enabling disclosure.
B. Claims 1---6 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Street7 and Gambino8.
Bl. Claims 7, 11-16, 19, 21, 23, 25, 27, 29, and 30 stand rejected
under 35 U.S.C. § 103(a) in view of the combined teachings
of Street, Gambino, and Sreenivasan9.
B2. Claims 26 and 28 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Street' Gambino,
Sreenivasan, and Winkler10 .
6 Examiner's Answer mailed 8 July 2014 ("Ans.").
7 Robert A. Street et al., Large Area Electronic device with High and Low
Resolution Patterned Film Features, U.S. Patent Application Publication
2006/013126 Al (2006), based on an application filed 20 December 2004.
8 Richard Gambino et al., Direct Writing of Metallic Conductor Patterns on
Insulating Surfaces, U.S. Patent Application Publication 2006/0068087 (30
March 2006), based on an international application filed 26 September 2003.
9 Sidlgata V. Sreenivasan et al., Step and repeat imprint lithography
systems, U.S. Patent Application Publication 2004/0008334 Al (2004).
10 Dieter Winkler et al., Multiple electron beam device, U.S. Patent
Application Publication 2005/0256556 Al (2004).
4
Appeal2014-009927
Application 11/817 ,827
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
A. 112(1)
The Examiner finds that the term "sub-micron" occurs only in the
background section of the '827 Specification, and that the Specification does
not describe the formation of "sub-micron devices by electron beam-, laser
beam-lithography, or any other kind of direct-writing techniques." (FR 4,
11. 7-12.) Moreover, the Examiner finds that the Specification does not
provide any teachings of how to make sub-micron conductive traces.
Whether the written description requirement of 35 U.S.C. § 112(1) is
met is a factual inquiry. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010)(en bane) ("This inquiry, as we have
long held; is a question of fact"). Whether the enablement requirement is
met is a question of law based on underlying factual findings. In re Wands,
858 F.2d 731, 735, 736-37 (Fed. Cir. 1988)
As Braun urges (Br. 6-7), we find no substantial evidence supporting
the Examiner's findings. The background section describes the state of the
art as relying on sub-micron lithography as a "critical process in the
microelectronics industry" (Spec. 1-2, [0003]), but that further progress to
structure smaller than about 100 nm, and especially smaller than
about 50 nm, will require further technical developments. In particular, the
Specification reveals, optical lithography will require reflective optics due to
absorption of~ 13 nm light, while electron-beam lithography, although
precise, is too slow. (Id. at 2 [0004].) Thus, there is a niche that imprint
5
Appeal2014-009927
Application 11/817 ,827
lithography can fill, provided that the degradation of the imprint templates
upon extensive use can be addressed. (Id. at 3 [0005].)
The projected failure of direct-writing techniques (at least for practical
applications) at less than 100 nm does not mean that direct-write techniques
are not effective at 100 nm to I micron. In this regard, it is well-settled that
"a patent need not teach, and preferably omits, what is well known in the
art." Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384
(Fed. Cir. 1986). The Examiner has not directed our attention to any
credible evidence of record indicating that persons of skill in the art would
have doubted that Braun had described using conventional techniques such
as laser-lithography ore-beam-lithography to make sub-micron devices.
We reverse the rejections under§ 112 for lack of an evidentiary basis
supporting the required findings of fact.
The Examiner adds, "[ fJor the purpose of examination, since it is
unclear whether or not such conductive traces of submicron are enabling
when using direct-writing techniques, 'submicron' is interpreted as just
'micron."' (Id. at 11. 19--22; emphasis omitted.)
This process of claim interpretation is unsound. The failure of
enablement of a limitation does not lead to a broader interpretation of that
limitation. Indeed, if the term "submicron" meant 'just micron," then the
enablement (and written description) rejections should be withdrawn, as we
do not understand the Examiner to have challenged the adequacy of
disclosure of lithographic processes of any sort on the micron scale. In any
event, the Examiner has not directed our attention to any ambiguous
disclosure in the Specification that would indicate that Braun was using the
6
Appeal2014-009927
Application 11/817 ,827
term "sub-micron" to mean anything other than "less than one micron,"
which is the plain-language meaning of the term. At the same time, in light
of the teachings that currently used technologies approach their practical
limits at 100 nm and especially at 50 nm, we understand the term "sub-
micron," as used in the '827 Specification and in the appealed claims, to
refer to the range of about 100 nm to about 1 micron.
B. obviousness
The Examiner finds that Street and Gambino are relevant to the "sub-
micron" limitation recited in claims 1 and 11 because "[i]t is clear
that 10 micrometers is considered micro-scale" (Adv. 2, 11. 9--10.) This
interpretation is founded on the analysis we held erroneous, supra.
The Examiner makes no findings that either Street or Gambino
describe making sub-micron devices-properly understood-by electron-
beam lithography or laser lithography. Thus, we reverse the rejection of
claim 1.
Regarding the additional teachings of Sreenivasan relied on by the
Examiner, Braun explains,
the Examiner is only applying the teachings/suggestions of
Sreen[ivasan] for the claim element that imprint lithography
can be used to form features having a feature size
below 100 nm. However, similar to both Street and
Gamb[ino ], Sreen[ivasan] fails to teach forming one or more
sub-micron devices of a second type over the substrate using
a form of direct write technology, including electron beam
lithography or laser beam lithography.
(Br. 9, 11. 12-16.)
7
Appeal2014-009927
Application 11/817 ,827
In other words, the Examiner makes no findings regarding any of the
further-applied references that cure the defects of the rejections of the
independent claims.
The rejections for obviousness are reversed.
C. Order
It is ORDERED that the rejection of claims 1-7, 11-16. 19, 21, 23,
and 25-30 is reversed.
REVERSED
8