Ex Parte Carlson et al

Board of Patent Appeals and Interferences

Sep 6, 2012

11485658 (B.P.A.I. Sep. 6, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/485,658 07/12/2006 Chris M. Carlson MI22-3286 2270
21567 7590 09/07/2012
Wells St. John P.S.
601 West First Avenue
Suite 1300
Spokane, WA 99201-3828
EXAMINER
CHEN, BRET P
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
09/07/2012 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 CHRIS M. CARLSON,
VISHWANATH BHAT, and F. DANIEL GEALY
____________

Appeal 2011-007828
Application 11/485,658
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 87, 93-102, and 104-115. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method of forming a material over a substrate
which comprises utilizing a first precursor to form a first species such as
aluminum and a second precursor to form a second species such as hafnium
and providing a reactant for reacting with the first and second species
Appeal 2011-007828
Application 11/485,658

2
(independent claim 87; see also independent claims 94 and 95). Appellants
also claim a corresponding method in which the first precursor is tetrakis
methylethylamido hafnium and the second precursor is trimethyl aluminum
(independent claim 101).
Representative claims 87 and 101 read as follows:
87. A method of forming a material over a substrate, comprising at
least one iteration of the following sequence within a reaction chamber:

utilizing a first precursor to form a first species comprising a first
metal selected from the group consisting of aluminum, lanthanides, niobium,
tantalum, yttrium and zirconium across at least a portion of the substrate;

prior to providing any reactant, utilizing a second precursor within the
reaction chamber, in the substantial absence of the first precursor, to form a
second species in contact with the first species, the second precursor having
a different composition than the first precursor and comprising a second
metal selected from the group consisting of aluminum, hafnium, lanthanides,
niobium, tantalum, titanium, yttrium and zirconium; and

providing a reactant within the reaction chamber, in the substantial
absence of the first and second precursors, and reacting said reactant with at
least one of the first and second species.

101. A method of forming a material over a substrate, comprising at
least one iteration of the following sequence within a reaction chamber:

utilizing a first precursor to form a first species across at least a
portion of the substrate;

prior to providing any reactant, utilizing a second precursor within the
reaction chamber, in the substantial absence of the first precursor, to form a
second species in contact with the first species, the second precursor having
a different composition than the first precursor;

Appeal 2011-007828
Application 11/485,658

3
providing a reactant within the reaction chamber, in the substantial
absence of the first and second precursors, and reacting said reactant with at
least one of the first and second species; and

wherein the first precursor is tetrakis methylethylamido hafnium and
the second precursor is trimethyl aluminum.

The Examiner rejects all appealed claims on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-61 of U.S. Patent No. 7,135,421.
We summarily sustain this rejection because it has not been contested
by Appellants in the record of this appeal (App. Br. 10).
Under 35 U.S.C. § 103(a), the Examiner rejects independent claim
101 as unpatentable over Lee (US 2004/0238872 A1, pub. Dec. 2, 2004) in
view of Basceri (US 6,785,120 B1, patented Aug. 31, 2004) and Ahn (US
2003/0227033 A1, pub. Dec. 11, 2003) and correspondingly rejects claims
102 and 104-106 which depend from claim 101 as unpatentable over these
references alone or further in view of other prior art of record.
The Examiner finds that Lee discloses all aspects of the claim 101
method except for using tetrakis methylethylamido hafnium as the hafnium
precursor (i.e., the first precursor) but concludes that it would have been
obvious to use this specific precursor in Lee's ALD process in view of
Basceri's teaching that such is a conventionally used hafnium precursor in
ALD processes (Ans. 5-6).
In contesting the rejections of claims 101, 102, and 104-106,
Appellants' sole argument is that the Examiner's above obviousness
conclusion regarding claim 101 is incorrect because "Lee specifically
Appeal 2011-007828
Application 11/485,658

4
teaches away from non-chlorine or fluorine first precursors (paragraphs 0019
and 0043)" (App. Br. 16).
Appellants' argument is unpersuasive. Lee teaches that, "[p]referably,
the first precursor is a composition of the first element and one of chlorine
(Cl) and fluorine (F)" (para. [0019]). Lee's teaching of a preference for
chlorine or fluorine first precursors does not discourage, and therefore does
not teach away from, using non-chlorine or fluorine first precursors. See
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379-80 (Fed. Cir.
2005) ("A statement that a particular combination is not a preferred
embodiment does not teach away absent clear discouragement of that
combination.").
Accordingly, we sustain the Examiner's § 103 rejections of claims
101, 102, and 104-106 as unpatentable over Lee in view of Basceri and Ahn
alone or further in view of other prior art of record.
Finally, under 35 U.S.C. § 103(a), the Examiner rejects the remaining
claims on appeal (i.e., independent claims 87, 94, and 95 as well as
dependent claims 93, 96-100, and 107-115) as unpatentable over Lee alone
or in combination with other prior art of record such as the Ahn reference.
The Examiner acknowledges that Lee teaches depositing hafnium first
followed by aluminum rather than aluminum followed by hafnium as
required by independent claims 87, 94, and 95 (see, e.g., Ans. 4) but
concludes that "it would have been obvious to switch aluminum and
hafnium with the expectation of obtaining similar results in the absence of a
showing of criticality" (id.).
Appellants contest the above obviousness conclusion on the grounds
that there is no "expectation of obtaining similar results" (id.) as urged by
Appeal 2011-007828
Application 11/485,658

5
the Examiner because their Specification teaches depositing aluminum first
followed by hafnium is critical to obtaining certain benefits (e.g., avoidance
of a deposition which is not self-limiting) which do not occur in the
deposition order taught by Lee (see, e.g., App. Br. 11-12, Spec. para.
[0036]).
In response, the Examiner correctly points out that Appellants'
Specification teaches an embodiment wherein hafnium is deposited first
followed by aluminum as in Lee's method (Ans. 14-15). However, this
embodiment is not disclosed as yielding the benefits which attend
Appellants' alternative embodiment as defined by the claims under review
wherein aluminum is deposited first followed by hafnium such as the self-
limiting benefit noted previously.
Therefore, we are persuaded by Appellants' argument that the record
evinces error in the Examiner's conclusion that it would have been prima
facie obvious to switch the hafnium then aluminum deposition order of Lee
based upon an erroneous "expectation of obtaining similar results" (see, e.g.,
Ans. 4).
In rejecting independent claim 95, the Examiner attempts to further
support the above obviousness conclusion by relying on paragraph [0072] of
Ahn which, according the Examiner's finding, "teaches varying the order [of
hafnium and aluminum deposition]" (Ans. para. bridging 6-7).
As correctly argued by Appellants, this paragraph of Ahn contains no
such teaching (App. Br. 13, 15). Moreover, it is significant that the Answer
contains no response by the Examiner to this argument. Based on the record
before us, we cannot agree with the Examiner that Ahn supports the
obviousness conclusion under consideration.
Appeal 2011-007828
Application 11/485,658

6
It follows that we cannot sustain the Examiner's § 103 rejections of
claims 87, 93-100, and 107-115.
In summary, we have sustained the obviousness-type double patenting
rejection of all appealed claims as well as the § 103 rejections of claim 101,
102, and 104-106. However, we have not sustained the § 103 rejections of
claims 87, 93-100, and 107-115.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

Cam/sld