Ex Parte Corrigan

Patent Trial and Appeal Board

Apr 26, 2017

12275669 (P.T.A.B. Apr. 26, 2017)

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.
12/275,669 11/21/2008 Thomas R. Corrigan 64807US002 2502
32692 7590 04/28/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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 parte1 THOMAS R. CORRIGAN
Appeal 2015-007542
Application 12/275,669
Technology Center 3700
Before CHUNG K. PAK, KAREN M. HASTINGS,
and CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 35, 38-42, 44, and 46, which are all
of the claims pending in the above-identified application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as “3M Company (formerly known
as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its
affiliated 3M Innovative Properties Company of St. Paul, Minnesota.” Appeal
Brief filed February 19, 2015 (“Appeal Br.”) at 2.
2 Final Action entered September 9, 2014 (“Final Act.”) at 3-6; Advisory Action
entered October 21, 2014 (“Advisory Act.”) at 1; and the Examiner’s Answer
entered June 17, 2015 (“Ans.”) at 2—4.
Appeal 2015-0007542
Application 12/275,669
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to using “[a] sparse
patterned mask [having one or more plurality of apertures] ... in a laser ablation
process to image a substrate.” Spec. 1,11. 29-31. “Any type of pattern can be
divided to become sparse.” Spec. 7,1. 14. “The apertures [for transmission of
light] individually form a portion of a complete pattern, and the non-transmissive
areas exist on the mask in regions between the first apertures that correspond to
non-imaged regions on the substrate that are subsequently imaged by second
apertures on the same or different mask to create the complete pattern.” Spec. 1,1.
31-2,1. 3. “A microreplicated article.. .has two or more repeating arrays of
discrete features. Each of the arrays of features form a constituent pattern as part
of a complete pattern.” Spec. 2,1. 28-30. “The arrays of features are interlaced to
create the complete pattern of the features that repeats over a distance greater than
a repeat distance of any of the constituent patterns.” Spec. 2,11. 30-32.
Figures 3A through 3C illustrating such complete pattern are reproduced
below:
42 44 42 46
Figures 3A through 3C show each of patterns applied in discrete rows on
cylindrical substrate 42. Spec. 9,11. 26-28. Figure 3A shows a first pattern 44 on
cylindrical substrate 42. Spec. 9,11. 28-29. “Figure 3b illustrates a second pattern
46 having a larger repeat distance in both the circumferential direction (43) and the
axial direction (45) than pattern 44.” Spec. 9,11. 28-29. “FIG. 3c illustrates a
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Application 12/275,669
pattern 48 representing pattern 44 interlaced with pattern 46.” Spec. 9,11. 29-30.
“The only additional constraint is that the total distance along the circumference (0
direction, 43) must be a multiple of the step distance in that direction for all of the
individual patterns.” Spec. 9,1. 26-10,1. 1.
Details of the appealed subject matter are recited in representative claim 35,3
which is reproduced below from the Claims Appendix of the Appeal Brief (with
disputed limitations italicized):
35. A method for laser imaging a substrate using a sparse patterned
mask in order to form a complete pattern in a surface of the substrate
from the sparse pattern, comprising:
imaging the substrate through a mask having apertures for
transmission of light and nontransmissive areas around the apertures
in order to form first features in the substrate, comprising:
imaging the mask to form a portion of the first features;
moving the mask to a different position relative to the substrate;
and
repeating the imaging and moving steps to form the first
features, wherein the first features comprise discontinuous repeating
features on the substrate; and
imaging the substrate through the mask to form second features
interlaced with the first features, comprising:
imaging the mask to form a portion of the second features
interlaced between portions of the first features;
moving the mask to a different position relative to the substrate;
and
repeating the imaging and moving steps to form the second
features,
wherein the second features merge with the first features to
form continuous repeatingfeatures comprising the complete pattern,
3 Appellant argues common limitations in independent claims 35, 44, and 46
together and do not separately argue the limitations of the remaining claims.
Appeal. Br. 3-5. Therefore, for purposes of this appeal, we limit our discussion to
claim 35. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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wherein the first and second features form two constituent
patterns and the complete pattern repeats over a distance that is
greater than a repeat distance of either of the two constituent
patterns.
Appeal Br. 7, Claims Appendix.
The Examiner has maintained, and Appellant seeks review of, the following
grounds of rejection:
1. Claims 35, 38, 41^43, 46, and 47 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Im ‘866 (US 7,318,866 B2 issued to Im on Jan.
15, 2008) and Im ‘449 (US 6,555,449 B1 issued to Im et al. on Apr. 29, 2003); and
2. Claims 39, 40, and 44 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Im ‘866, Im ‘449, and Langille (US 6,222,157 B1 issued
to Langille et al. on Apr. 24, 2001). See Final Act. 2-6; Advisory Act. 1-2; Ans.
2-A\ Appeal Br. 3-5; Reply Brief filed August 12, 2015 (“Reply Br.”) at 2-3.
DISCUSSION
The Examiner has found, and Appellant does not dispute, that Im ‘866
discloses “a method and structure claimed including a mask (310, 280a, 280[b])
that is translated or moved in repeated patterns having different masking
configuration^] (see column 9, lines 11-38, column 12, lines 62-67; Figure 3, and
Figure 9).” Compare Final Act. 3 and Ans. 2, with Appeal Br. 3-5 and Reply Br.
2-3. The Examiner has acknowledged that Im ‘866 does not show repeating first
and second features constituting two constituent patterns, which are merged to
form continuous repeating features comprising a complete pattern that repeats over
a distance that is greater than a repeat distance of either of the two constituent
patterns as recited in claim 1. Ans. 2-3.
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To account for these missing features, the Examiner has relied upon the
disclosure of Im ‘449. Ans. 3. The Examiner has found, and Appellant does not
dispute, that Im ‘449 discloses a sparse pattern mask4 (illustrated in Figure 2A, 3A,
4A, 5A, 6A, 7A, 8A, or 9A) having apertures for transmitting light and non­
transmissive areas around the apertures, which is repeatedly imaged at different
positions and/or locations to create a complete pattern on a major in-plane surface
of a substrate in the form of continuous, discrete, or interlaced features (merging
portions or parts created by each imaging to form a complete pattern) as illustrated
in Figures 2B, 3B, 4B, 5B, 6B, 7B, 8B, or 9B. Compare Final Act. 4 and Ans. 3,
with Appeal Br. 3-5. In the words of the Examiner:
Im ‘449 .. .shows discontinuous repeating of the first and
second constituent feature patterns as[, for example, using the masks]
illustrated in Figures 2 A and 3 A wherein the first features and second
features form a continuous complete pattern as respectively illustrated
in Figures 2B and 3B. Im ‘449 also teaches.. .translating the mask
([shown in Figures] 2A, 3 A, 4A, 6A, 7A, 8A, [and] 9A) in the X
direction and Y direction, which are different positions, to form such
constituent patterns of Figures 2 A and 3 A and the complete patterns
of Figures 2B and 3B.
Ans. 3.
Based on these findings, the Examiner has concluded that one of ordinary
skill in the art would have been led to conduct the method taught by Im ‘866 with
Im ‘449’s mask “that is translated to form interlaced first and second features . . .
4 The Specification states that “a sparse mask” “has empty spaces in one-half, two-
thirds, or three-fourths of the pattern, or in other ratios. Then one, two, or three or
more passes of that mask image or others across the substrate are required
respectively to fill in the gaps.” Spec. 6,11. 10-14. The Specification also states
that “[a]ny type of pattern can be divided to become sparse.” Spec. 7,1. 14. This
description or definition of “a sparse mask” set forth in the Specification
encompasses the mask disclosed by Im ‘449.
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[in order to create] a desired complete pattern on a substrate wherein the complete
pattern is larger than the either of the two constituent pattems/features,” and “[in
order] to form various shapes and sizes [of the complete pattern on a given sized
substrate ]” as a function of the pattern shapes of the masks and the areas of the
substrate to be patterned “to provide a desired distance including the claimed
greater distance as a matter of routine experimentation ... for more densely or
more sparsely arranged patterns . . . [on the given sized substrate.]” Ans. 3; Final
Act. 4-5.
Appellant contends that the Examiner has not shown that the collective
teachings of Im ‘866 and Im ‘449 would have led one of ordinary skill in the art to
the limitation “the first and second features form two constituent patterns and the
complete pattern repeats over a distance that is greater than a repeat distance of
either of the two constituent patterns” recited in claims 35, 44, and 46. Appeal Br.
4-5.5 In support of this contention, Appellant urges that:
Routine experimentation using the teachings of Im ‘866 and Im ‘449
would not result in the claimed repeat distances of the
patterns without using Applicant’s disclosure as a guide. Im ‘449
teaches translating the mask in X and Y directions across the
substrate, which would result in the same pattern being repeated
without a larger repeat distance of the complete pattern. See Im ‘449,
figs. 2B, 3B, 4B, 6B, 7B, 8B, 9C, and 9D. ... As such, Applicant
submits there is no teaching nor suggestion in Im ‘449 to merge
features and create a larger repeat distance of the complete pattern
compared with a constituent pattern. Im ‘866 and Im ‘449 teach
forming repeating single patterns, not a larger complete pattern
formed by merging features of two constituent patterns.
5 According to Appellants, the Examiner has relied upon the disclosure of Langille
solely for the purpose of showing that laser imaging of a cylindrical substrate with
a mask was known at the time of the invention. Compare Appeal Br. 5, with Final
Act. 5.
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Appeal Br. 4.
However, we are not persuaded of reversible error in the Examiner’s
§ 103(a) rejections. As indicated supra, there is no dispute that Im ‘449 teaches,
inter alia, placing a sparse mask in an initial position and imaging the mask to
form first portions of a complete pattern, translating the mask in X and/or Y
directions across a substrate, and imaging the mask again to form second portions
of the feature intersecting the first portions to create a complete pattern on a
surface of a substrate in the form of continuous, discrete, and/or interlaced features
(merging parts created by each imaging to form a complete pattern) as illustrated in
Figures 2B, 3B, 4B, 6B, 7B, 8B, or 9B as indicated supra. See also Im ‘449, col.
6,11. 26-29 (“In accordance with the present invention, the sample 170 [(i.e., a
substrate)] is translated with respect to the laser pulses 164, either by movement of
masking system 150 or sample translation stage 180, in order to grow crystal
regions in the sample 170 [(substrate)].”) For instance, Im ‘449 teaches translating
and imaging the mask shown in Figure 3 A repeatedly to form a complete pattern of
chevrons, with the top chevrons in a row and one inversely arranged chevrons in a
row constituting two portions of the first features and the bottom chevrons in a row
and another inversely arranged chevrons in a row located between the top chevrons
and one inversely arranged chevrons in a row constituting two portions of the
second features. See Im ‘449, Fig. 3B and col. 6,11. 42-60. Im ‘449 also teaches
translating and imaging the mask shown in Figure 7A, 8A, and 9D to form packed
rectangular, diagonal, or hexagonal patterns on the substrate. See Im ‘449, Figs.
7B, 8B, and 9D and col. 8,11. 5^49; compare also Fig. 7B of Im ‘449, with the
packed hexagonal pattern shown in Appellant’s Figure 6. These types of steps,
according to Im ‘449, can also be repeated in a next area of the substrate to provide
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a continuous patterning (second features) in the form of a packed hexagonal,
diagonal, or rectangular pattern when such patterning (crystallization) is needed in
such next area for forming a desired microstructure on the substrate.6 See Im ‘449,
Fig. 10, steps 1065 and 1066, col. 9,11. 15-17 and col. 6,11. 22-25.
Thus, notwithstanding Appellant’s arguments to the contrary, the collective
teachings of Im ‘866 and Im ‘449 would have suggested forming at least two or
more packed hexagonal or diagonal patterns (corresponding to at least two first and
second features) in two or more connected areas of a given large sized substrate in
a continuous manner to create a larger packed hexagonal or diagonal pattern
(merged or interlaced individual hexagonal patterns)7 or forming a pattern of
chevrons larger than first or second features of chevrons as discussed supra, in the
context of Figure 3B, with the larger packed hexagonal or diagonal pattern or a
pattern of chevrons repeating over a distance that is greater than a repeat distance
of either of the individual packed hexagonal or diagonal patterns or two rows of
6 Appellant acknowledges that “[t]he patterns in Im ‘449 are the end result of. . .
imaging where the same feature is progressively imaged along the x- and y-
directions to form the resulting patterns.” Reply Br. 2-3 (citing Im ‘449, col. 9,
lines 1-15, [F]ig. 10).
7 Appellant appears to argue for the first time at page 2 of the Reply Brief filed
August 12, 2015 that Im’ 449 does not teach the limitation “imaging the mask to
form a portion of the second features interlaced between portions of the first
features” recited in claims 35, 44, and 46. Reply Br. 2. This argument is not
timely presented in the Appeal Brief. Therefore, we need not address this belated
argument. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47
and 41.52, any arguments or authorities not included in the appeal brief will be
refused consideration by the Board for purposes of the present appeal.”); see also
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (explaining
that under the previous rules, which are similar to the current rules, “the reply brief
[is not] an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
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chevrons identified as the first and second features, for the purposes of producing
desired microstructures on the substrate.
In any event, Im ‘449 further teaches utilizing “any pattern of slits [inclusive
of those patterns capable of forming first and second features representing two
constituent patterns and a complete pattern repeating over a distance that is greater
than a repeat distance of either of the two constituent patterns as recited in claims
35, 44, and 46] ... in accordance with the microstructure desired to be fabricated
on film 170.” Stated differently, the types of patterns to be formed on a substrate
are known result effective variables because they were known to affect the types of
the microstructures formed on a substrate. Id. Thus, we discern no reversible error
in the Examiner’s determination that the discovery of such desired or optimum
patterns, such as those recited, for forming desired microstructures on a substrate
through routine experimentation is well within the ambit of one of ordinary skill in
the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[DJiscovery of an
optimum value of a result effective variable.. .is ordinarily within the skill of the
art.”); In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
recognition in the prior art that a property is affected by the variable is sufficient to
find the variable result-effective.”).
Appellant contends that “Im ‘449 is not directed to solving a problem
recognized by Applicant’s invention.” Appeal Br. 4-5. However, the problem Im
‘449 is trying to solve is similar to or related to that described in Appellant’s
Specification. Im’ 449 teaches using the sparsely patterned mask illustrated in
Figure 2 A, 3 A, 4A, 6A, 7A, 8 A, or 9A in “the sequential lateral solidification
process” “to generate higher quality polycrystalline silicon at greater throughput
rates” and in particular, “to generate larger and more uniformly micro structured
polycrystalline silicon thin films to be use in the fabrication of higher quality
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devices, such as flat panel displays.” Im 449, col. 1,1. 46-col. 2,1. 2. Forming the
higher quality polycrystalline silicon films for displays taught by Im ‘449 is similar
to or related to Appellants’ objective of forming a film for a display without the
“visual” defects discussed at page 1 of the Specification.
In any event, it is well established that “any need or problem known in the
field of endeavor at the time of invention and addressed by the [prior art] patent
can provide a reason for combining the elements in the manner claimed.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “As long as some [reason,]
motivation or suggestion to combine the references is provided by the prior art
taken as a whole, the law does not require that the reference be combined for the
reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed.
Cir. 1992). In other words, the need to improve the quality of polycrystalline
silicon films for displays taught by Im ‘449 is a sufficient reason for employing its
imaging techniques in the method of Im ‘866.
Accordingly, based on the reasons set forth in the Final Action,
Advisory Action, Answer and above, we affirm the Examiner’s decision
rejecting claims 35, 38^12, 44, and 46 under 35 U.S.C. § 103(a).
ORDER
Upon consideration of the record, and for the reasons given in the Final
Action, Advisory Action, Answer, and above, it is
ORDERED that the decision of the Examiner to reject claims 35,38, 41—43,
46, and 47 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures
of Im ‘866 and Im ‘449 is AFFIRMED;
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FURTHER ORDERED that the decision of the Examiner to reject claims
39, 40, and 44 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Im ‘866, Im ‘449, and Langille is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent action
in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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