Ex Parte Kolesnychenko

Patent Trial and Appeal Board

Mar 30, 2017

11189010 (P.T.A.B. Mar. 30, 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.
11/189,010 07/26/2005 Aleksey Yurievich Kolesnychenko 081468-0316986 8192
909 7590 04/03/2017
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
KHARE, ATUL P
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ALEKSEY YURIEVICH KOLESNYCHENKO
Appeal 2016-002101
Application 11/189,010
Technology Center 1700
Before BEVERLY A. FRANKLIN, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant request our review under 35 U.S.C. § 134 of the Examiner’
decision rejecting claims 1, 2, 4, 5, 7, 9, 11, 13, 15, 16, 32, 33, 35, 36, 38,
and 39. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
Appeal 2016-002101
Application 11/189,010
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A lithographic apparatus comprising an imprint
template, a substrate table configured to hold a substrate, and an
outlet to supply infrared, visible, or ultraviolet radiation, the
imprint template having:
a body transparent to the infrared, visible, or ultraviolet
radiation,
a patterned surface in or on the exterior of the body of the
imprint template, the patterned surface comprising a protrusion
and a recess, and
a layer of heat absorbing material overlying all of the
exterior of the patterned surface to absorb heat due to the
infrared, visible, or ultraviolet radiation entering the
imprint template through a surface other than the patterned
surface, the layer of heat absorbing material being opaque
to the infrared, visible, or ultraviolet radiation,
wherein (i) the recess with the layer of heat absorbing
material therein has an opening width or depth of less than
or equal to 100 nm, or (ii) the protrusion with the layer of
heat absorbing material thereover has a width or depth of
less than or equal to 100 nm, or (iii) both (i) and (ii).
The Examiner relies on the following prior art references as evidence
of unpatentability:
Debe et al. US 6,521,324 B1 Feb. 18,2003
(hereafter “Debe”)
Nishida et al. US 2004/0142273 Al July 22, 2004
(hereafter “Nishida”)
Funada et al. US 2005/0057789 Mar. 17, 2005
(hereafter “Funada”)
Choi et al. US 2006/0062867 Al Mar. 23, 2006
(hereafter “Choi”)
Ino (as translated) JP 06119661 Apr. 28, 1994
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Appeal 2016-002101
Application 11/189,010
THE REJECTIONS
1. Claims 1, 2, 4, 5, 7, 9, 11, 13, 15, 16, 32, 33, 35, 36, 38, and 39 are
rejected under 35 U.S.C. §112(a) or 35 U.S.C. §112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.1
2. Claims 1, 2, 4, 7, 9, 11, 13, 15, 32, 35, 36, 38, and 39 are rejected
under 35 U.S.C. § 103(a) are rejected as being unpatentable over Ino in view
of Choi.
3. Claim 33 is rejected under 35 U.S.C. § 103(a) is rejected as being
unpatentable over Ino in view of Choi and further in view of Debe.
4. Claims 1, 2, 4, 5, 7, 9, 11, 13, 15, 16, 32, 35, 36, 38, and 39 are
rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
Nishida in view of Choi.
5. Claim 33 is rejected under pre-AIA 35 U.S.C. § 103(a) is rejected as
being unpatentable over Nishida in view of Choi, as applied to claims 1, 2,
4, 7, 9, 11, 13, 15, 32, 35, 36, 38, and 39 above, and further in view of Debe.
1 On page 4 of the Answer, the Examiner notes that the rejection of claims
35 and 39 under 35 U.S.C. §112, first paragraph, has been withdrawn for
what these claims particularly recite, but notes that these claims remain
rejected as depending from rejected claims 1 and 11.
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Appeal 2016-002101
Application 11/189,010
ANALYSIS
To the extent that Appellant has presented substantive arguments for
the separate patentability of any individual claims on appeal, we address
them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii).
Rejection 1
Appellant argues that the Specification provides support for the
recitation found in claims 1 and 11 of a heat absorbing material being
“opaque” by (a) disclosing that the heat absorbing layer absorbs light, (b) not
depicting radiation to pass through the heat absorbing layer in Figure 4b,
(c) originally claiming that the heat absorbing layer is not transparent, and
(d) disclosing a benefit of the heat absorbing layer with respect to prior art
where light energy is directly transferred to an imprintable medium. Appeal
Br. 5-6.
In reply, the Examiner states that the term “opaque” does not appear
in the Specification, and the Specification lacks any implicit support for this
feature for the reasons expressed on pages 5—6 of the Answer (which we do
not repeat herein).
We first note that there is no requirement in US practice for ip sis
verbis support of claims. “Adequate description under the first paragraph of
35 U.S.C. §112 does not require literal [emphasis in original] support for the
claimed invention.” Ex parte Parks, 30USPQ2d 1234, 1236 (BPAI 1993).
Appellant’s Specification discloses that the heat absorbing material is
a layer of metal 35, for example, nickel or chromium. Spec. para. [0044],
As Appellant points out (Appeal Br. 5), it is further disclosed that metal
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Application 11/189,010
layer 35 “absorbs the beam of light 37” (shown in Figure 4b), and rapidly
becomes hot. Spec. para. [0046]. The fact that it is disclosed that metal layer
35 absorbs the beam of light 37—indicating the whole beam is absorbed—is
adequate support that metal layer 35 is opaque. We are thus persuaded by
Appellant’s position in the record.
With regard to the limitation of “an opening width or depth of less
than or equal to lOOnm,” Appellant argues that the Specification provides
support for this claim phrase in paragraphs [0004] and [0005]. Appeal Br. 6.
Reply Br. 4—6.2 Appellant’s argument is grounded on a contention as to
what a person of ordinary skill in the art would understand the disclosure to
convey. Appeal Br. 6. Reply Br. 5. But Appellant presents no persuasive
evidence in support of the contention. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (“Attorney’s argument. . . cannot take the place of
evidence.”). The Examiner’s response is found on pages 6—7 of the Answer
(which we do not repeat herein). Provided with no persuasive evidence to
support Appellant’s position, we agree with the Examiner’s stated position
in the record. Appellant has not adequately explained how paragraphs
[0004] and [0005] of the Specification provides sufficient written description
of “an opening width or depth of less than or equal to lOOnm” as now
claimed. The term “features” is disclosed, but not whether the features are
lateral features, a depth features, or both. We thus are unpersuaded by
Appellant’s position in this regard.
In view of the above, we affirm Rejection I.
2 The Reply Brief lacks pagination; we refer to page numbers sequentially.
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Application 11/189,010
Rejection 2
Rejection 2 involves the rejection of claims 1, 2, 4, 7, 9, 11, 13,
15, 32, 35, 36, 38 and 39 under 35 U.S.C. § 103(a) as being
unpatentable over Ino in view of Choi. It is disputed as to whether
Ino suggests a layer of heat absorbing material being opaque to
infrared, visible, or ultraviolet radiation.
Appellants argue, inter alia, that the Examiner identifies film 11 of
Ino as the recited layer of heat absorbing material (Final Act. 6). Appeal Br.
9. Appellant argues that the cited portions of Ino indicate that film 11 on
stamper 12 is transparent in order to be used in a 2P method of forming
optical memory substrates. Ino, para. [0011], [0012], FIG. 3. Appeal Br. 9—
10. Reply Br. 6. Appellant further states that Ino describes how film 11
transmits radiation to a resin 14. Appeal Br. 10. Reply Br. 6. Appellant
submits therefore that Ino does not teach the recited layer of heat absorbing
material opaque to infrared, visible, or ultraviolet radiation as recited in
claim 1. Id. Appellant further argues that the function of Ino’s metal film
11 is to allow radiation to pass through the film 11 to the resin. Ino, para.
[0002], Appellant submits that if Ino’s film were opaque, the radiation
provided to stamper 12 would not reach the resin to harden it. Appellant
also refers to paragraphs [0007], [0010] — [0012], and [0014] of Ino in this
regard. Appeal Br. 10. We are persuaded by these arguments that Ino’s film
11 is not opaque to infrared, visible, or ultraviolet radiation as required by
claim 1.
The Examiner states that film 11 has a thickness falling within or
overlapping with the thickness of Appellant’s heat absorbing layer. Final
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Application 11/189,010
Act. 4, 6, 7. Appellant replies by stating that claim 1 does not refer to a
particular thickness, so it is not apparent what Ino’s disclosure regarding its
film material or thickness has to do with claim 1. Appeal Br. 10. Appellant
further submits that when comparing Appellant’s Specification with the
specification of Ino, it is noted that Ino refers to a film of 100 Angstroms or
less, which, in terms of nanometers, means 10 nanometers or less. In
contrast, Appellant points out that the Specification refers to, for example,
“the metal layer 35 [being] between a few tens and a few hundreds
of nanometers thick. Spec. para. [0044], Appeal Br. 10-11. We are thus
persuaded of error regarding the Examiner’s position that Ino’s film 11 has a
thickness falling within or overlapping with the thickness of Appellant’s
heat absorbing layer.
In view of the above, in addition to Appellant’s stated position in the
record, we reverse Rejection 2. It is noted that the Examiner does not rely
upon the secondary reference of Choi to cure the aforementioned
deficiencies of Ino.
Rejection 3
Rejection 3 involves the rejection of claim 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Ino in view of Choi and further in view
of Debe. Because the Examiner does not rely upon Debe to cure the stated
deficiencies of the combination of Ino in view of Choi, we also reverse
Rejection 3 for the same reasons that we reverse Rejection 2.
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Rejection 4
Rejection 4 involves the rejection of claims 1,2, 4, 5,7, 9, 11, 13, 15,
16, 32, 35, 36, 38, and 39 under 35 U.S.C. § 103(a) as being unpatentable
over Nishida in view of Choi. The dispositive issue in this rejection is
whether Nishida discloses an “imprint template” as required in the claims.
The Examiner argues that the terms “mold” and “template” are
commonly used interchangeably in the molding arts. Ans. 12. The
Examiner submits that Nishida's mold meets each structural element of
“template” (with exception only of the claimed width or depth dimensions
that are instead met by Choi), and that Nishida's mold is in fact
explicitly disclosed as being used to imprint a material to transfer a pattern
thereto. Nishida, para. [0168]. Ans. 12—13. The Examiner submits that
protrusions 54 of Nishida's Figure 3 mold 52 are utilized for Appellant’s
exact same intended use (i.e., to imprint material 46 so as to form the Figure
2 pattern). Ans. 13.
Appellant disputes that portions 54 and layer 56 of Figure 3
of Nishida imprint into any material. Appellant submits that
protruding portions 54 and layer 56 of Nishida merely sit upon support 32,
which then transfers the heat from layer 56 to the layer 34 underneath
support 32. The heat causes the layer 34 to soften and then stick to the
workpiece 36. Appeal Br. 15—16. Reply Br. 9-11.
Appellant discusses paragraph [00168] of Nishida, which is
reproduced below:
At the upper mold 52, protruding portions 54 are formed at a face
thereof that faces the transfer film 30. These protruding portions 54
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Appeal 2016-002101
Application 11/189,010
are formed in accordance with the pattern of the organic
electroluminescent light-emitting layer 46 that is to be formed at the
workpiece 36. In other words, in the present embodiment, the
protruding portions 54 are provided at the upper mold 52 such that,
when the transfer film 30 and the workpiece 36 are positioned and
sandwiched between the upper mold 52 and the lower mold 14, the
protruding portions 54 correspond to the pattern of the organic
electroluminescent light-emitting layer 46 to be formed at
the workpiece 36.
Nishida, para. [00168].
Appellant submits that there is no mention in paragraph [00168] that
portions 54 of Figure 3 of Nishida imprint into any material. Appellant
submits that the aforementioned paragraph merely states that the portions are
formed with a particular pattern, namely the pattern of the organic
electroluminescent light-emitting layer 46.
We agree with Appellant’s stated interpretation of this disclosure of
Nishida. Hence, we agree that the claimed element of “an imprint template”
is not met by Nishida in view of Choi for the reasons stated in the record by
Appellant, and as emphasized herein.
In view of the above, we reverse Rejection 4 (the Examiner does not
rely upon Choi to cure the aforementioned deficiencies of Nishida).
Rejection 5
Rejection 5 involves the rejection of claim 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Nishida in view of Choi, and further in
view of Debe. Because the Examiner does not rely upon Debe to cure the
stated deficiencies of the combination of Nishida in view of Choi, we also
reverse Rejection 5 for the same reasons that we reverse Rejection 4.
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Application 11/189,010
DECISION
Rejection 1 is affirmed.
Rejections 2—5 are reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED
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