Ex Parte Frey et al

Patent Trial and Appeal Board

Mar 28, 2014

11550542 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATTHEW H. FREY and KHANH P. NGUYEN
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Appeal 2012-010703
Application 11/550,542
Technology Center 1700
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Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims to a method of patterning a first material
on a polymeric substrate. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 134. We reverse.

Appeal 2012-010703
Application 11/550,542

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STATEMENT OF CASE
Claims 21-31 stand rejected under 35 U.S.C § 103 as obvious in view
of Jeong,1 Li,2 Huang,3, and Mei.4 Claim 21 is the only independent claim
on appeal. Claims 22-31 depend from it. Claim 21 reads as follows:
21. A method of patterning a first material on a polymeric substrate
comprising:
providing a transparent polymeric film substrate having a major
surface with a relief pattern comprising region and an adjacent raised region,
wherein the recessed region has a floor and sidewalls;
depositing a first material onto the major surface a recessed of the
polymeric film substrate to form a coated polymeric film substrate, wherein
the depositing a first material comprises depositing a metal onto the
polymeric film substrate;
forming a layer of a functionalizing material selectively on the raised
region of the coated polymeric film substrate to form a functionalized raised
region and an unfunctionalized recessed region, wherein the functionalizing
material is a self- assembled monolayer selectively onto the raised region
and the self-assembled monolayer comprises a chemical species selected
from the group consisting of organosulfur compounds, silanes, phosphonic
acids, benzotriazoles, and carboxylic acids, wherein forming comprises
unwinding the coated polymeric film substrate from a support and winding
the coated polymeric film substrate onto a support; and
etching the first material from the polymeric substrate selectively
from the floor and sidewalls of the unfunctionalized recessed region,
forming a first material patterned polymeric substrate.

DISCUSSION
The Examiner found that Jeong describes the steps recited in claim 21
(Final Rejection 2), but acknowledged that Jeong’s method lacked certain of
the specific limitations recited in the claim (id. at 3-6). To meet these

1 Jeong et al., US 2005/0186405 A1, Aug. 25, 2005.
2 Li et al., US 7,582,509 B2, Sept. 1, 2009.
3 Huang et al., US 2004/0075155 A1, Apr. 22, 2004.
4 Mei, US 7,585,424 B2, Sept. 8, 2009.
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Application 11/550,542

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deficiencies, the Examiner relied upon the teachings in Li, Huang, and Mei
(id.).
Appellants challenged the Examiner’s determination that the claimed
step of “etching the first material from the polymeric substrate selectively
from the floor and sidewalls of the unfunctionalized recessed region,
forming a first material patterned polymeric substrate” would have been
obvious to one of ordinary skill in the art.
The Examiner found that Jeong describes a step of etching a substrate
by removing material from the floor, but not the floor and sidewalls of the
unfunctionalized recessed region as required by claim 21 (Final Rejection 4).
However, the Examiner found that Jeong teaches in paragraph 41 that either
dry or wet etching may be used to remove the first material (id.). The
Examiner further found that, if wet etching is used, the sidewalls would also
be removed along with the material on the floor of the recessed region
because wet etching is isotropic5 and removes all exposed material (id. at 4-
5). To support this position, the Examiner cited Mei for its teaching that wet
etching removes material from the sidewalls and floor of a recessed region
(id. at 5). Based on these teachings, the Examiner concluded that it would
have been obvious to one with ordinary skill in the art to use wet etching in
Jeong’s method to remove material from the sidewalls and floor “because
Mei teaches that it is useful to obtain a raised portion with first material
relative to a surrounding trench with removed first material as cited.” (Id. at
5.)

5 When etching is removed from the sidewalls and floors of the recess, it is
called “isotropic” etching; when material is removed from only the recess’s
floors, it is called “anisotropic” etching.
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Application 11/550,542

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Appellants contend that it would not have been obvious to one of
ordinary skill in the art to remove material from the sidewalls and floor of
the recessed area because Jeong teaches only removing the material from the
recess floor (Appeal Br. 8-9). To support this position, Appellants cited
paragraph 44 of Jeong which contains the following disclosure:
Therefore, desired portions, i.e., the floors A, may be
selectively etched by using the metal thin film 23 as a mask.
Here, the anisotropic etching is performed such that the metal
thin film 23 coated at the side of the channels H [recessed
region] is not etched. Thus, the substrate 20 having the desired
pattern thereon can be obtained (refer to FIG. 21).
The Examiner asserts that the disclosure in paragraph 44 is a
“preferred embodiment” (Answer 6). Furthermore, the Examiner cited
Jeong’s claim 5 which “describes to remove the metal film, and not - - to
remove the metal film from the floor of the trench - - thus leaving open the
possibility that wet etching is present that also removes the metal from the
sidewalls in addition to removal from the floor of the trench.” (Id. at 5-6.)
The Examiner’s position is not supported by a preponderance of the
evidence. There is explicit disclosure in Jeong that the floors of the channels
[recessed region] are etched but not the “metal thin film 23 coated at the side
of the channels.” (Jeong ¶ 44.) Despite this express teaching, the Examiner
took the position that the disclosure of wet etching indicated that Jeong also
contemplated removing the metal from the sidewalls, as well (Answer 5-6).
However, Appellants provided evidence that wet etching does not always
result in removing material from the side walls and floor (Appeal Br. 9).
Thus, the disclosure of wet etching does not necessarily indicate that Jeong
contemplated removing the metal film from the sides of the channel H in
paragraph 44. To the contrary, Jeong’s explicit disclosure of anisotropic
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Application 11/550,542

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etching in paragraph 44 indicates that Jeong did not intend to remove the
metal film from the sides of the channel recess.
The Examiner referred to Jeong’s claim 5 as evidence that this etching
step was not restricted to the channel floor. Claim 5 refers to using “the
SAM as a mask,” but, in paragraph 44 of Jeong, the metal film is used as a
mask. Thus, claim 5 appears to refer to a different step than the one
described in paragraph 44.
In sum, the reason that the Examiner gives for etching both the
sidewalls and floor of the recessed region is that Jeong discloses that wet
etching may be used, which the Examiner found would have accomplished
etching on both surfaces as recited in the claim (Answer 2). However, as
discussed above, Appellants provided evidence that wet etching does not
necessarily include etching both the sidewalls and floor (Appeal Br. 9).
Moreover, even if it did, paragraph 44 of Jeong explicitly teaches only
etching the floor. The Examiner did not provide a persuasive reason as to
why one of ordinary skill in the art would have ignored the disclosure in
paragraph 44 and etched the sidewalls, as well. Accordingly, as the
Examiner did not meet the burden of establishing the obviousness of claim
21 in view of Jeong, Li, Huang, and Mei we shall reverse the rejection.
Claims 22-31, depend from claim 21, and are reversed for the same reasons.

REVERSED

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