10115352 (B.P.A.I. Nov. 10, 2010)

Ex Parte Carbonell et al

Board of Patent Appeals and InterferencesNov 10, 2010

10115352 (B.P.A.I. Nov. 10, 2010)

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. 10/115,352 04/03/2002 Ruben Carbonell 5697.56 9248 20792 7590 11/10/2010 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER TALBOT, BRIAN K ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 11/10/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RUBEN CARBONELL, JOSEPH M. DESIMONE, JAMES B. MCCLAIN, and JAMES DEYOUNG ____________ Appeal 2009-013478 Application 10/115,352 Technology Center 1700 ____________ Before CATHERIN Q. TIMM, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013478 Application 10/115,352 2 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-4, 6-14, 16-19, 65, and 66. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of Appellants’ invention: 1. A method of reducing undesired topographic features in an unpatterned polymer film formed on a microelectronic substrate, said method comprising the steps of: (a) providing a preformed microelectronic substrate, said substrate having an unpatterned polymer film deposited thereon, wherein said film is formed by spin coating; (b) contacting said substrate to carbon dioxide in an enclosed vessel; and (c) elevating the pressure of said carbon dioxide for a time sufficient to plasticize said polymer film and reduce undesired topographic features previously found in said polymer film. The Examiner maintains, and Appellants appeal, the rejection of all the claims under 35 U.S.C. § 103(a) as unpatentable over the Namatsu (US 6,358,673) alone or with Boggs (US 6,087,191). Appellants argue the rejected claims as a group (App. Br. 6-14). Thus, we select independent claim 1 as the representative claim on which our discussion will focus. ISSUE ON APPEAL Did the Examiner err in determining that the claimed method would have been obvious over the combined prior art of Namatsu and Boggs, because, as alleged by Appellants, a) Namatsu’s process “does not plasticize its resist film and reduce Appeal 2009-013478 Application 10/115,352 3 undesired topographic features” (App. Br. 6); and b) Boggs does not cure the deficiencies of Namatsu (App. Br. 11) and there is no motivation to combine these references (id.; Reply Br. 3, 4)? We answer these questions in the negative. PRINCIPLES OF LAW In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. It is well established that, “in a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.”’ Merck & Co. Inc. v. Biocraft Labs Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples.” (citations omitted)). “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). Appeal 2009-013478 Application 10/115,352 4 ANALYSIS with Factual Findings We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. Appellants’ main contention in the Briefs is that Namatsu does not plasticize the top surface and reduce undesired topographic features since the purpose of Namatsu is to avoid swelling (i.e., plasticizing).2 This argument is of no persuasive merit. We agree with the Examiner’s finding that “Namatsu teaches that the higher the pressure of the supercritical carbon dioxide, the larger the swelling of the resist film (as illustrated in Fig. 2).” (Ans. 3).3 Namatsu also teaches an embodiment with “a pressure of 8MPa” and another embodiment at “col. 17, lines 14-23” with a pressure of 10MPa or more, which will result in some swelling of a patterned or unpatterned film (Ans. 3; see also Ans. 7).4 The Examiner’s position is thus reasonable that Namatsu will plasticize/swell its surface to some degree and accordingly reduce undesired topographic features, regardless of Namatsu’s preference to avoid swelling. Thus, we find that the desired reduction in undesired 2 It is undisputed that swelling is equivalent to plasticizing (see bottom of Ans. 7; see also generally App. Br.; Reply Br.). 3 Indeed, Fig. 2 shows swelling of up to 1nm whereas Appellants’ dependent claim 4 recites that the layer can be as thin as 1nm. 4 The Examiner also aptly points out that Appellants claim a pressure of as low as “at least 900psi (6.2MPa)” (claims 8, 18) (Ans. 4). Appeal 2009-013478 Application 10/115,352 5 topographic features would have naturally flowed from following the suggestion of the applied prior art to use supercritical CO2 at pressures that will swell the coating to at least some extent. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795 F.2d 1017 (Fed. Cir. 1986) (holding that the recognition of another advantage flowing naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise be obvious). In any event, as pointed out by the Examiner, Boggs exemplifies that it was known in the art to use supercritical CO2 in order to reduce undesired topographic features in a unpatterned polymer film applied by spin coating (Ans. 5). Furthermore Boggs teaches a pressure range for its process that corresponds to the pressures taught by Appellants (compare, e.g., Boggs, claims 7, 8, to Appellants’ Spec. Examples 2 and 3). Indeed, Boggs alone appears to render the invention of claim 1 obvious. Accordingly, upon properly considering the prior art reference as a whole, we agree with the Examiner that one of ordinary skill in the art would have been led to utilize the supercritical CO2 in the process of Namatsu for reducing defects as taught by Boggs (Ans. 5), with a reasonable expectation of successfully reducing undesired topographical feature as taught by Boggs (Ans., e.g., 5). Thus, in our view, the Examiner properly concluded that one of ordinary skill would have considered the use of supercritical CO2 as claimed obvious from the teachings of Namatsu and Boggs. Furthermore, skill is presumed on the part of one of ordinary skill in the art. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); see also KSR, 550 U.S. at 421(“[a] person of ordinary skill is also a person of ordinary Appeal 2009-013478 Application 10/115,352 6 creativity, not an automaton.”). The Examiner’s position is reasonable in view of the applied prior art, and Appellants have not provided any convincing technical reasoning nor evidence that one of ordinary skill in the art would not have, using no more than ordinary creativity, successfully used CO2 at pressures and times sufficient to reduce defects in the polymeric film as taught by Boggs (see generally App. Br.; Reply Br.). In this context, the use of CO2 to reduce defects in an unpatterned or patterned coating would have been nothing more than using a known technique in accordance with its known function for the predictable result of curing defects on the coating of Namatsu. See KSR, 550 U.S. at 415-16 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). We also note that independent claim 11 does not contain the limitation that the method recited therein “reduce undesired topographic features”. Many of Appellants’ arguments are thus based on a limitation that is not required by claim 11. “Many of appellant's arguments fail from the outset because, … they are not based on limitations appearing in the claims ….” In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Accordingly, the rejection of claim 11 (and those claims dependent thereon) is also affirmed for the additional reason that no arguments were made by Appellants specific to claim 11. As a final note, Appellants have not offered any evidence of unexpected results on this record. Appeal 2009-013478 Application 10/115,352 7 Accordingly, the evidence as a whole supports the Examiner’s conclusion of obviousness, and on the record before us, we sustain the § 103 rejection of the claims as maintained by the Examiner.5 DECISION We affirm the Examiner’s § 103 rejection. 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 sld MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH NC 27627 5 Only those arguments actually made by Appellants have been considered in this decision. Arguments which could have made but that Appellants chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).