Ex Parte EDELSTEIN et al

Patent Trials and Appeals Board

Feb 28, 2019

15151260 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/151,260 05/10/2016 DANIEL EDELSTEIN
68397 7590 02/28/2019
THE LAW OFFICES OF ROBERT J. EICHELBURG
HODAFEL BUILDING, SUITE 200
196 ACTON ROAD
ANNAPOLIS, MD 21403
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.
YOR920121040US3
(14-40-02
EXAMINER
SABUR,ALIA
9400
ART UNIT PAPER NUMBER
2812
MAIL DATE DELIVERY MODE
02/28/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL EDELSTEIN, ALFRED GRILL,
SETH L. KNUPP, SON NGUYEN, TAKESHI NOGAMI,
V AMSI K. P ARUCHURI, HOSADURGA K. SHOBHA,
and CHIH-CHAO YANG
Appeal2018-001580
Application 15/151,260
Technology Center 2800
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 16 and 17 of Application
15/151,260 under 35 U.S.C. §§ 103 and 112. Final Act. (Dec. 28, 2016) 4--
8. Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 The Appellant, International Business Machines Corporation, is identified
as the real party in interest. Appeal Br. 5.
Appeal2018-001580
Application 15/151,260
STATEMENT OF THE CASE
The present application, filed May 10, 2016, is a divisional of
Application No. 14/298,938, filed June 8, 2014. See Application Data Sheet.
The divisional application as filed included original claims 1-20. A
preliminary amendment was filed concurrently with the divisional
application canceling claims 1-15. See 3 7 CPR § 1.116 Preliminary
Amendment ( dated May 10, 2016).
On July 14, 2016, the Examiner issued a non-final action rejecting
claims 16-20 as indefinite and claims 16 and 17 as obvious. Non-Final
Action (July 14, 2016). The rejection of claims 18-20 as indefinite was
predicated only on a lack of antecedent basis. Id. at 3.
On October 14, 2016, Appellant submitted amendments to the claims
leaving original claims 16 and 17 unchanged, amending claims 18-20, and
adding new claims 21-25. See 37 CPR 1.111 Amendment (dated Oct. 14,
2016). Appellant stated that it "amend[ s] claims 18-20 to provide the
antecedent basis for these claims." Id. at 10.
On December 28, 2016, the Examiner determined that "newly
submitted claims 18-25" are directed to inventions that are independent or
distinct from the originally claimed invention. Final Act. 2. The Examiner
determined that "[ s ]ince applicant has received an action on the merits for
the originally presented invention, this invention has been constructively
elected by original presentation for prosecution on the merits. Accordingly,
claims 18-25 are withdrawn from consideration as being directed to a non-
elected invention." Id.
On March 7, 201 7, Appellant submitted a response after final action.
See 3 7 C.F .R. § 1.13 3 Record of Interview and § 1.116 Amendment (March
2
Appeal2018-001580
Application 15/151,260
7, 2017). There, Appellant sought to cancel claims 16 and 17 and requested
the Examiner to "pass claims 18-25 to issue." Id. at 6.
By Advisory Action dated March 16, 2017, the Examiner determined
not to enter the proposed amendments because such amendments were not
"deemed to place the application in better form for appeal by materially
reducing or simplifying the issues for appeal." See Advisory Action (March
16, 2017).
BACKGROUND
The present application indicates that it teaches articles of
manufacture and processes to "reduce or substantially eliminate EM
[electromigration] and/or stress migration, and/or TDDB [time-dependent-
dielectric breakdowns] in copper interconnects in microelectronic devices
and circuits ... by means of an ultra thin layer or layers of Mn alloys
containing Wand/or Co." Spec. ,r 12.
Claim 16 is illustrative of the subject matter on appeal and is
reproduced below with certain text bolded for emphasis:
16. A deposition tool comprising: a load/unload chamber; a
mechanism for transferring a substrate between said
load/unload chamber and a deposition chamber, said deposition
chamber connected to said load/unload chamber by a port; and
wherein said deposition chamber is (i) configured to selectively
form a metal layer or layers on copper by chemical vapor
deposition or by atomic layer deposition and (ii) is configured
to form a dielectric layer by chemical vapor deposition, and
additionally comprising further downstream chambers
selected from at least one of a UV and a Low rf stream
plasma or thermal cure means in at least one of a reducing
environment ambient to enhance the reaction/intermixing
between said layer or layers and said copper.
Appeal Br. 32 (Claims App.) ( emphasis added).
3
Appeal2018-001580
Application 15/151,260
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 16 and 172 are rejected under 35 U.S.C. § 112(b) for failure
to particularly point out and distinctly claim the subject matter of
the invention. Final Act. 4--5.
2. Claims 16 and 17 are rejected under 35 U.S.C. § 103 as obvious
over Smith et al. (US 2008/0202892 Al, published Aug. 28, 2008)
("Smith"). Id. at 7-8.
DISCUSSION
As a preliminary matter, Appellant asserts that "[t]he Rejection that
[r]estricted and withdrew claims 18-25 from further prosecution is a clear
error of law that appellants ask the Board to reverse." Appeal Br. 20.
Appellant further asserts that the Office is estopped from imposing a
restriction requirement by virtue of not having imposed such requirement
prior to the final rejection. Id. at 21-23. Appellant further disputes the
Examiner's determination that Appellant elected a single class of statutory
invention by original presentation. Id. at 23-25. Appellant asserts that "the
application did in fact originally present process claims 18-19 and structure
claim 20 as the claims of the invention." Id. at 23.
We decline to address Appellant's arguments regarding the restriction
requirement.
2 The Final Rejection indicates that the indefiniteness rejection is applicable
to claims 16-20; however, the text of the rejection is applicable only to
claims 16 and 17. See Final Act. 4--5.
4
Appeal2018-001580
Application 15/151,260
Decisions of patent examiners relating to examination are subject to
review either by petition to the Director or appeal to the Board. The proper
avenue of review depends upon the subject matter at issue. The Court of
Customs and Patent Appeals offered guidance as follows in this regard:
Decisions of the examiner directly relating to the rejection of
claims are subject to appeal. These questions generally deal with
the merits of the invention, involving factual determinations and
the legal conclusions drawn therefrom regarding the application
disclosure, the claims and the prior art. The examiner's rulings
dealing with procedural matters, such as whether an affidavit or
amendment is untimely, and formal requirements, such as
whether a new application title will be required, are reviewable
upon petition.
Application of Searles, 422 F.2d 431,435 (C.C.P.A. 1970). Patent Office
regulations provide that a restriction requirement is reviewable by petition.
37 CPR§ 1.144; see also Application ofHengehold, 58 C.C.P.A. 1099, 1109
(1971) (restriction requirement reviewable by petition); see also In re
Watkinson, 900 F.2d 230, 233 (Fed. Cir. 1990) ("neither this court nor the
board has jurisdiction in this proceeding to review the merits of a
requirement for restriction").
Appellant seems to argue that Title 37 of the Code of Federal
Regulations forbids imposition of a restriction requirement in a final office
action, that such rule has the force of law, and that the Board is obliged to
enforce Title 37. See Appeal Br. 20 ( quoting a statement from Issidores v.
Lew, 4 U.S.P.Q.2d 1854, 1858 (Bd. of Pat. App. and Intf. 1987) that "37
CPR has the effect of law ... [and] they must be enforced by us."); Reply Br.
3. This is not persuasive. Any number of rules applicable to examination
procedure are found in Title 37; they are not all appealable. See Application
of Searles, 422 F.2d at 435 (holding that various issues which may be
5
Appeal2018-001580
Application 15/151,260
"determinative of the rejection" are reviewable only by petition); see also
MPEP § 1002.02(c) (9th ed., Rev. 08.2017, Jan. 2018) (petitions and requests
decided by the Technology Center Directors).
Rejection 1. The Examiner rejected claims 16 and 17 as indefinite.
The Examiner determined that the claim terms "further downstream
chambers" and "selected from at least one of a UV and a Low rf stream
plasma or thermal cure means in at least one of a reducing environment"
render claim 16 indefinite.
The Examiner determined that "further downstream chambers" is
ambiguous because no indication is given in the claim or specification what
"downstream" indicates structurally. Final Act. 4. The Examiner further
determined that the use of the plural term "chambers" creates ambiguity as
to the number of further chambers required by the claim. Id. Appellant
briefly responds that one of ordinary skill in the art would understand such
term to mean "chambers after those initially set out in claim 16." Appeal Br.
6. In the Answer, the Examiner indicated that such response is inadequate as
it is unclear what structure is defined by the term "after."
During prosecution, a claim is examined for compliance with 3 5
U.S.C. § 112, ,r 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) ( quoting MPEP § 2173.02). A claim should be rejected as
indefinite when it is amenable to two or more plausible claim constructions.
In re Packard, 751 F.3d 1307, 1309-10 (Fed. Cir. 2014) (a pending claim is
indefinite if it "contains words or phrases whose meaning is unclear.").
"There are good reasons why unnecessary incoherence and ambiguity in
claim constructions should be disapproved." Id. at 1324.
6
Appeal2018-001580
Application 15/151,260
Here, the claim explicitly requires a "load/unload chamber" and a
"deposition chamber." Appeal Br. 32 (Claims App.). Appellant seems to
argue that the term "downstream" is a temporal limitation. That is, a
"downstream chamber" is argued to be one where some function occurs that
is temporally subsequent to loading and deposition. This is somewhat
ambiguous at least because it is unclear whether such limitation would be
applicable to a chamber where one of the recited functions was ( or could be)
performed prior to loading/unloading or deposition. Accordingly, Appellant
has not shown error in the Examiner's determination that "further
downstream chambers" renders claim 16 indefinite.
The Examiner further determined that the phrase "selected from at
least one of a UV and a Low rf stream plasma or thermal cure means in at
least one of a reducing environment" render claim 16 indefinite. Final Act.
5. The Examiner determined that use of the word "means" suggests that the
limitation is a means-plus-function term, but that the Specification does not
teach corresponding structure. In response, Appellant indicates "that the
examiner as a person with ordinary skill in the art, has placed one reasonable
interpretation on the claim, inter alia, and therefore the claim is not
indefinite." Appeal Br. 26.
Appellant's argument is not persuasive. First, Appellant misstates the
legal test. Being susceptible of "one reasonable interpretation" does not
render a limitation definite if other reasonable interpretations are possible.
In re Packard, 751 F.3d at 1309-10. Additionally, Appellant does not
address the Examiner's finding regarding the claim term being a means-
plus-function limitation.
Construing a means-plus-function claim term is a two-step process.
First, one must identify the claimed function. Noah Sys., Inc. v. Intuit Inc.,
7
Appeal2018-001580
Application 15/151,260
675 F.3d 1302, 1311 (Fed. Cir. 2012). Second, one must determine what
structure, if any, disclosed in the specification corresponds to the claimed
function. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir.
2015). Here, the claimed function appears to be "to enhance the
reaction/intermixing between said layer or layers and said copper." With
regard to corresponding structure, the Specification teaches as follows
regarding the UV, low RF stream plasma or thermal cure means:
The invention comprises, among other things ... UV
or/and Low rf/down stream plasma or thermal cure treatment in
reactive hydrogen or other reducing environments (H2,
NH3,CO and art-known equivalents) or inert gas (N, Ar, He,
.Ne, Kr, Xe and art-known equivalents) ambient to enhance the
reaction/intermixing between each layer and between Cu/Metal
alloy interfaces.
Spec. ,r 26. This is substantially redundant of the claim term at issue. The
Specification includes certain additional teachings regarding the appropriate
gaseous environment. This portion of the Specification is, however,
inadequate to define the structure associated with the function stated in the
claim.
Additionally, even if not construed as a means-plus-function
limitation, the phrase at issue remains ambiguous. It is unclear if the term
UV modifies "plasma," "stream plasma," or neither. Moreover, it is not
clear what is required by a "reducing environment ambient to enhance."
In view of the foregoing, we conclude that Appellant has not shown
reversible error in the Examiner's determination that claim 16 is indefinite.
Claim 1 7 depends from claim 16 and further requires, inter alia, that
the tool have "from about 4 to about 5 chambers." Appeal Br. 32 (Claims
App.). The Examiner notes that the Specification states that the "terms
8
Appeal2018-001580
Application 15/151,260
'about,' 'substantial,' or 'substantially' as applied to any claim or any
parameters herein, such as a numerical value, including values used to
describe numerical ranges, means slight variations in the parameter or the
meaning ordinarily ascribed to these terms." Spec. ,r 64. The Specification
further states that "[i]n another embodiment, the terms 'about,' 'substantial,'
or 'substantially,' when employed to define numerical parameter include,
e.g., a variation up to five per-cent, ten per-cent, or 15 per-cent, or somewhat
higher." Id. The Examiner however, determines that such teaching does not
provide adequate guidance for the interpretation of "about 4 to about 5
chambers." Final Act. 5.
Appellant argues that a person of ordinary skill in the art would
construe the limitation "as a whole number variation" rather than a
percentage variation. Appellant further argues that the Examiner's
construction of the limitation to mean 4 to 5 chambers is "one reasonable
interpretation on the claim ... therefore the claim is not indefinite." Appeal
Br. 27.
A claim employing a "term[ ] of degree" may be definite "where it
provide[s] enough certainty to one of skill in the art when read in the context
of the invention." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370
(Fed. Cir. 2014). Where, however, a term of degree is "purely subjective"
and depends "on the unpredictable vagaries of any one person's opinion," it
is indefinite. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1350-51 (Fed. Cir. 2005).
Here, the Specification provides little guidance regarding construction
of "about" in the present context. Further, Appellant has conceded that
construing the limitation as "4 to 5 chambers," effectively reading "about"
out of the claim, is "one reasonable interpretation." Appeal Br. 27.
9
Appeal2018-001580
Application 15/151,260
Claim terms are not read out of a claim. See In re Wilson, 424 F .2d
1382, 1385 (CCPA 1970) ("All words in a claim must be considered in
judging the patentability of that claim against the prior art."). Thus, the term
"about" is not properly read out of claim 17.
It is unclear on this record how there can be some degree of whole
number variation in the context of a chamber, e.g., four chambers with a
variation up to 5 percent. For that reason, the claim limitation "from about 4
to about 5 chambers" is indefinite.
In view of the foregoing, Appellant has not shown reversible error in
the Examiner's determination that claim 17 is indefinite.
Appellant additionally appears to argue that claims 18-20 are not
indefinite because they find proper antecedent basis in claims 1 and 9. Id. at
27-28. We will not consider such argument as those claims are not
presently of record nor are they subject to a standing rejection.
Rejection 2. The Examiner rejected claims 16 and 17 as obvious over
Smith. Final Act. 5-8. In support of the rejection of claim 16, the Examiner
found that Smith teaches a deposition tool that includes "at least one further
chamber (Fig. 1) comprising irradiation means ([0067]), rf generators
([0078]), or thermal treatment means ([0071], [0067], [0057]), wherein gases
can be provided to the deposition chamber ([0072])." Id. at 7.
Appellant argues that Smith does not teach a deposition tool
"additionally comprising further downstream chambers selected from at
least one of a UV and a Low rf stream plasma or thermal cure means."
Appeal Br. 28. Specifically, Appellant argues that Smith does not teach
"further downstream chambers." Id. at 28-29. For purposes of
10
Appeal2018-001580
Application 15/151,260
Examination, the Examiner construed such limitation to mean "at least one
further chamber." Final Act. 5; Answer 7.
We will not review the appeal of an obviousness rejection implicating
a limitation determined to be indefinite. See In re Aoyama, 656 F.3d 1293,
1298-99 (Fed. Cir. 2011) (explaining that a claim cannot be both indefinite
and anticipated and refusing to review an anticipation rejection); In re
Steele, 305 F.2d 859, 862 (CCPA 1962) ("[W]e do not think a rejection
under 35 U.S.C. § 103 should be based on such speculations and
assumptions."). Accordingly, the rejection of claims 16 and 17 is reversed
on this procedural basis. This should not be construed as a substantive
determination as to the merits of any rejection predicated upon obviousness
in view of Smith.
CONCLUSION
The Board declines to consider the propriety of the restriction
requirement issued December 28, 2016. The rejection of claims 16 and 17
as indefinite is affirmed. The rejection of claims 16 and 17 as obvious over
Smith is reversed.
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
11