Ex Parte Dutton et al

Board of Patent Appeals and Interferences

Sep 10, 2010

10423185 (B.P.A.I. Sep. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DAVID THOMAS DUTTON
and KAREN L. SEAWARD
________________

Appeal 2009-014442
Application 10/423,185
Technology Center 1700
________________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, 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 2009-014442
Application 10/423,185

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A. Introduction2
David Thomas Dutton and Karen L. Seaward (“Dutton”) timely
appeal under 35 U.S.C. § 134(a) from the final rejection3 of claims 8-10,
14-16, 22, and 23, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to methods of etching certain
materials in a “low temperature etching environment” with a plasma based
on a halogen gas comprising chlorine and an inert gas comprising argon, in
which the ratio of halogen gas to total gas is less than 20% (based on relative
flow rates). According to the 185 Specification, certain materials—indium
compounds InP, InGaAs, InAlAs, and AlInGaAs, and copper are specifically
named—are known to accumulate a “surface reaction layer” (also known as
a “selvedge layer”), e.g., InClx, that can inhibit etching. (Spec. 9, ll. 14-22.)
The prior art is said to have achieved higher etch rates by raising the
temperature of the substrate to increase the volatility of, and thus displace,
the surface reaction layer. (Id. at ll. 17-21.) The inventors are said to have
discovered that the highest etch rates can be achieved at chlorine abundances
less than 20%. (Spec. 12, ll. 11-24; Figure 3A.) The low concentration of
chlorine is said to inhibit the formation of a surface reaction layer. (Id.
at 13, ll. 9-10.)

2 Application 10/423,185, Low-Temperature Etching Environment,
filed 24 April 2003. The specification is referred to as the
“185 Specification,” and is cited as “Spec.” The real party in interest is
listed as Agilent Technologies, Inc. (Appeal Brief, filed 17 December 2007
(“Br.”), 3.)
3 Office action mailed 17 July 2007 (“Final Rejection”).
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The 185 Specification indicates that “the term ‘low temperature’
means a temperature below which would melt a standard photoresist mask
that has not been specially treated to withstand higher temperatures. For
example, standard photoresist material has a glass-reflow point of
about 110-120 degrees Celsius.” (Spec. 9, ll. 6-10.) Accordingly, we
consider any temperature above 120° C to be “high.”
Representative Claim 8 reads:
8. A method of etching a surface reaction layer limited
material, the surface reaction layer limited material having a
predetermined susceptibility to etching, the method comprising:
a) receiving said surface reaction layer limited material in
a low-temperature etching environment comprising:
a halogen gas and an inert gas in a ratio determined
from flow rates of said halogen gas and said inert
gas that does not induce the formation of an etch-
limiting surface reaction layer having a
susceptibility to etching less than the
predetermined susceptibility to etching during
etching in said low-temperature etching
environment,
wherein said halogen gas comprises chlorine and
said inert gas comprises argon, and
wherein said ratio of said halogen gas to said inert
gas is achieved by a flow rate of said halogen gas
less than 20 percent of the combined flow rate of
said halogen and said inert gas; and
b) etching said surface reaction layer limited material
within said low-temperature etching environment;
to expose a portion of the surface reaction layer
limited material that had not been exposed prior to
the etching, wherein the exposed portion of the
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surface reaction layer limited material has the
predetermined susceptibility to etching.
(Claims App., Br. 17; indentation, paragraphing, and emphasis added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 8, 14-16, 22, and 23 stand rejected under
35 U.S.C. § 102(b) in view of Watanabe.5
B. Claims 8-10, 15, 22, and 23 stand rejected under
35 U.S.C. § 102(b) in view of Nishibe.6
C. Claims 8-10, 15, 22, and 23 stand rejected under
35 U.S.C. § 102(b) in view of Shul.7
D. Claims 8, 9, 15, 22, and 23 stand rejected under
35 U.S.C. § 102(b) in view of Chung.8
E. Claims 8, 9, 14-16, 22, and 23 stand rejected under
35 U.S.C. § 102(e) in view of Ying.9

4 Examiner’s Answer mailed 25 March 2008. (“Ans.”).
5 Katsuya Watanabe et al., Method and Apparatus for Plasma Processing,
U.S. Patent 6,156,663 (2000).
6 Tohru Nishibe et al. Dry Etching Method, U.S. Patent 5,304,514 (1994).
7 Randy J. Shul and Christopher Constantine, Dry Etching Method for
Compound Semiconductors, U.S. Patent 5,624,529 (1997).
8 Shee-won Chung, Method for Manufacturing Ferroelectric Thin-Film
Capacitor, U.S. Patent 5,658,820 (1997).
9 Chentsau Ying et al., Method of Fabricating a Magneto-Resistive Random
Access Memory (MRAM) Device, U.S. Patent Application Publication
US 2004/0209476 A1 (2004), based on an application filed 17 April 2003.
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B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The test for anticipation is stringent. To be anticipatory, “the
reference must disclose each and every element of the claimed invention,
whether it does so explicitly or inherently . . . [and] those elements must be
arranged or combined in the same way as in the claim.” In re Gleave,
560 F.3d 1331, 1334 (Fed. Cir. 2009) (internal quotations and citations
omitted. The disclosure need not be ipsissimis verbis, but it must be
enabling. Id. The predecessor to the Federal Circuit noted that § 103
provides for rejections over prior art when the claimed invention “is not
identically disclosed or described” in the prior art, and explained that an
anticipatory reference must “clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the compound without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.” In re Arkley,
455 F.2d 586, 587 (CCPA 1972).
Although each case must be evaluated on its own facts, the mere
disclosure of a broader range is not an anticipation of a narrower range
within the broader range. See, e.g., Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991, 999-1000 (Fed. Cir. 2006). Indeed, such a limited disclosure
does not necessarily suffice to establish a prima facie case of obviousness.
In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (“We decline to extract from
Merck [Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 806-09 (Fed.
Cir. 1989)] the rule that the Solicitor appears to suggest—that regardless of
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how broad, a disclosure of a chemical genus renders obvious any species
that happens to fall within it.”)
In the present appeal, the Examiner has relied on references that, at
best, describe etching conditions that encompass or overlap the conditions
specified in the rejected claims. In no case has the Examiner directed our
attention to a clearly and unequivocally disclosed process that lies within the
scope of the conditions required by the claims. Nor has the Examiner come
forward with credible evidence that any of the references describes a range
of conditions that lies entirely within the scope of the conditions required by
the claims. The Examiner has not rejected any claim under § 103(a).
The Examiner’s reliance on Watanabe, column 8, ll. 55-58, as
describing anticipatory etching conditions is erroneous because although
correct etching temperatures are taught (e.g., 100° C), it is necessary to rely
on unguided picking and choosing of flow rates to obtain flow rate ratios
within the scope of the rejected claims. In this regard, the guidance provided
by Watanabe is towards much higher relative amounts of halogen.
(Watanabe col. 7, ll. 13-16 and Figure 5(c).) (The Examiner also neglects to
take into account the definition of the term “halogen gas” in
the 185 Specification as including compounds comprising a halogen. See
the amendment to the 185 Specification at page 18, line 8, filed 5 December
2005; and original claim 17.)
Similarly, picking and choosing values from Nishibe will yield
chlorine and argon flow ratios within the scope of the rejected claims, but
the direction in Nishibe is towards much higher relative amounts of chlorine.
As for temperatures, the Examiner has failed to come forward with credible
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evidence that GaAs is a material that has or develops a surface reaction layer
limited material; nor has the Examiner explained why the encompassing
range of 50° to 150° C is necessarily an anticipation of etching under low
temperature conditions as required by the rejected claims.
The Examiner’s reliance solely on the claims of Shul as evidence of
anticipation is without merit for any of the limitations of the rejected claims
because picking and choosing is necessary for the substrate, the temperature,
and the relative amounts of halogen and inert gas.
The Examiner’s reliance on Chung as evidence of anticipation is
without merit for lack of evidence that the disclosed substrates meet the
requirements of the rejected claims.
The Examiner’s reliance on Ying as evidence of anticipation is
without merit due to the required picking and choosing of gas flow rates in
the absence of clear teachings that relative flow rates within the scope of the
claims are to be used.
Dutton complains that the Examiner failed to follow guidelines set out
in the Manual of Patent Examining Procedure (“MPEP”). (Br. 8-11.)
The MPEP, however, provides guidance for Examiners: “The Manual does
not have the force of law or the force of the rules in Title 37 of the Code of
Federal Regulations.” (MPEP, 8th ed., Rev. 3, Foreword (2005).) Failure to
comply with guidance is not per se appealable to the Board, as the
jurisdiction of the Board is limited to review of rejections. Relief regarding
the conduct of the examination must be sought via the supervisory chain of
authority over the Examiner.
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C. Order
We REVERSE the rejection of claims 8, 14-16, 22, and 23 under
35 U.S.C. § 102(b) in view of Watanabe.
We REVERSE the rejection of claims 8-10, 15, 22, and 23 under
35 U.S.C. § 102(b) in view of Nishibe.
We REVERSE the rejection of claims 8-10, 15, 22, and 23 under
35 U.S.C. § 102(b) in view of Shul.
We REVERSE the rejection of claims 8, 9, 15, 22, and 23 under
35 U.S.C. § 102(b) in view of Chung.
We REVERSE the rejection of claims 8, 9, 14-16, 22, and 23 under
35 U.S.C. § 102(e) in view of Ying.
REVERSED

sld

Agilent Technologies, Inc. in care of:
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