Ex Parte Lopatin et al

Board of Patent Appeals and Interferences

Jan 27, 2009

09994395 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SERGEY D. LOPATIN, PAUL R. BESSER,
and PIN-CHIN CONNIE WANG
____________

Appeal 2008-5997
Application 09/994,395
Technology Center 2800
____________

Decided: January 27, 2009
____________

Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and MARC S.
HOFF, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-4, 6, 8-13, 15-20, 22, and 23. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

Appeal 2008-5997
Application 09/994,395

STATEMENT OF THE CASE
Appellants invented a method for making integrated circuits. The
method includes using a ternary copper alloy to form a via of low resistance
and large grain size that promotes electromigration reliability.1 Independent
claim 1 is reproduced below:

1. A method of fabricating an integrated circuit, the
method comprising:

depositing an etch stop layer over a first conductive
layer, wherein the etch stop layer is in direct contact with the
first conductive layer;

depositing an insulating layer after the etch stop layer is
deposited over the etch stop layer;

forming a barrier layer extending along lateral side walls
and a bottom of a via aperture, the via aperture being
configured to receive a via material that electrically connects
the first conductive layer and a second conductive layer; and

depositing a copper alloy via material in the via aperture
to form a via, the copper alloy material including Zinc (Zn) or
Silver (Ag) and at least one element for increasing grain size
including Calcium (Ca) or Chromium (Cr).

The Examiner relies upon the following as evidence in support of the
rejection:
Andricacos US 6,090,710 Jul. 18, 2000
Gross US 6,380,083 B1 Apr. 30, 2002
(filed May 10, 2000)
Edelstein US 6,399,496 B1 Jun. 4, 2002
(filed Nov. 16, 2000)

1 See generally Spec. ¶¶ 13, 32, and 33.
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Merchant US 6,440,849 B1 Aug. 27, 2002
(filed Oct. 18, 1999)
Bögel US 6,749,699 B2 Jun. 15, 2004
(filed Aug. 6, 2001)

1. Claims 1-3, 6, 10, 15, 17-20, and 22 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Edelstein and Bögel (for purposes of
showing an inherent characteristic of Edelstein) (Ans. 3-4).
2. Claims 8, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Edelstein and Bögel (Ans. 5).
3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edelstein, Bögel, and Merchant (Ans. 5-6).
4. Claims 9 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edelstein, Bögel, and Gross (Ans. 6).
5. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edelstein, Bögel, and Andricacos (Ans. 6-7).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments, which Appellants could have made but did not
make in the Briefs, have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

2 Throughout this opinion, we refer to (1) the most recent Appeal Brief filed
January 3, 2008, (2) the Examiner’s Answer mailed March 31, 2008, and (3)
the Reply Brief filed June 2, 2008.
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ANTICIPATION REJECTION
Regarding representative independent claim 1,3 the Examiner finds
that Edelstein discloses all the limitations in claim 1, including “at least one
element for increasing grain size including Calcium (Ca) or Chromium (Cr)”
(Ans. 3-4). The Examiner cites to Bögel for purposes of showing an
inherent characteristic of Edelstein (Ans. 4). Appellants argue that: (1)
Edelstein does not anticipate claim 1 because the reference does not mention
grain size; (2) the Examiner has provided no evidence to support the
assertion that Edelstein inherently discloses at least one element for
increasing grain size as required by MPEP 2112; and (3) Bögel relates grain
growth to annealing and fails to show explicitly or inherently an element for
increasing grain size (App. Br. 7-10; Reply Br. 2-3).

ISSUE
The following issue has been raised in the present appeal:
Have the Appellants shown that the Examiner erred in finding
Edelstein inherently discloses “at least one element for increasing grain size”
in rejecting claim 1 under § 102?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

3 Appellants do not argue independent claims 10 and 17 separately from
claim 1. Additionally, Appellants have not particularly argued claims 2, 3,
6, 15, 18-20, and 22 (Br. 7-10). Accordingly, we select independent claim 1
as representative. 37 C.F.R. § 41.37(c)(1)(vii).
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1. Edelstein discloses depositing a seed layer made from a copper alloy
having one or more of the following materials: zinc (Zn), silver (Ag),
calcium (Ca), and chromium (Cr) (Edelstein, col. 8, ll. 35-52).
2. Appellants have not challenged that Edelstein discloses a ternary
copper alloy including (a) zinc or silver and (b) calcium or chromium.
3. Edelstein discloses the seed layer provides a thin layer with nucleation
growth characteristics (Edelstein, col. 7, ll. 54, 55, and 62-65).
4. The Specification explains that an element with a characteristic for
increasing grain size includes calcium or chromium (Spec. ¶ 32).
5. Claim 15 recites “the element with a characteristic for increasing grain
size is Calcium (Ca) or Chromium (Cr).”
6. Edelstein discloses that the seed layer 76 initiates the chemical
reaction for the deposition of copper conducting layers 56 and 60 and
can provide electrical continuity (Edelstein, col. 7, ll. 54-62; Fig. 2).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros, Inc. v. Union Oil Co. of Calif., Inc., 814 F.2d
628, 631 (Fed. Cir. 1987).
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. Of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “‘Functional’ terminology may
render a claim quite broad. By its own literal terms a claim employing such
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language covers any and all embodiments which perform the recited
function.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
The mere recitation of a newly discovered function or property that is
inherently possessed by the prior art does not distinguish over the prior art.
Swinehart, 439 F.2d at 212-13. The court explains:
where the Patent Office has reason to believe that functional limitation
asserted to be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.

In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting Swinehart,
439 F.2d at 213).

ANALYSIS
We begin our analysis by discussing the scope of claim 1. Appellants
have chosen to define the “at least one element for increasing grain size” of
the deposited copper alloy via material functionally. That is, this limitation
describes the copper alloy not structurally but in terms of an increasing grain
size characteristic. See Swinehart, 39 F.2d at 212-13; Schreiber, 128 F.3d at
1478. In addition, without further explanation of the amount of the element
needed to increase grain size, the Specification states that calcium and
chromium have the characteristic of increasing grain size (FF 4). The
above-quoted recitation also does not relate or limit the element’s ability to
increase grain size to another material. Thus, giving the above-quoted
limitation its broadest reasonable interpretation in light of the Specification,
the limitation of “at least one element for increasing grain size” covers any
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and all elements that posses the characteristic of increasing grain size
relative to any material. See Am. Acad. Of Sci. Tech., 367 F.3d at 1364.
Edelstein discloses a seed layer that can have one or more of the
following elements: zinc, silver, calcium, and chromium (FF 1). Appellants
have not challenged that Edelstein discloses a ternary copper alloy
containing at least calcium or chromium (FF 2). The Examiner takes the
position that this copper alloy, that includes calcium and chromium,
inherently has at least one element for increasing grain size as claimed (Ans.
4 and 9). The Specification, along with claim 15, further supports the
Examiner’s position that the element with a characteristic for increasing
grain size includes calcium or chromium (FF 4-5). The Specification also
does not describe that a specific proportion or percentage of calcium or
chromium is necessary in order to obtain the characteristic for increasing
grain size. Edelstein also states the seed layer provides a thin layer with
nucleation growth characteristics (FF 3). Thus, contrary to Appellants’
statements (App. Br. 7-9), we find that the Examiner has reasonably
demonstrated that Edelstein’s copper alloy that includes calcium or
chromium inherently has the characteristic of a copper alloy via material
having “at least one element for increasing grain size including Calcium
(Ca) or Chromium (Cr)” as recited in claim 1.
Regarding Appellants’ assertion that the Examiner must provide
evidence (App. Br. 8), MPEP 2112 (IV) requires a rationale or evidence that
the copper alloy in Edelstein necessarily has the increasing grain
characteristic. As demonstrated above, the Examiner has provided such a
rationale for concluding that Edelstein’s copper alloy having at least one
element that includes calcium or chromium inherently possesses the
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increasing grain characteristic. Thus, once the Office has provided this
explanation, the Office has the authority to require Appellants to
demonstrate the disclosed element in Edelstein does not possess the
characteristic of increasing grain size as recited in claim 1. See Schreiber,
128 F.3d at 1478 (citation omitted). Appellants provide no evidence but
rather allege that the Examiner has not met his burden of showing that
Edelstein has a copper alloy with at least one element for increasing grain
size (Br. 7-9).
Furthermore, as explained in In re Crish, 393 F.3d 1253, 1258 (Fed.
Cir. 2004) (citations omitted), there are many cases that confirm “one cannot
establish novelty by claiming a known material by its properties.” For
example, based on the evidence in Titanium Metal Corp. of Am. v. Banner,
778 F.2d 775, 781-82 (Fed. Cir. 1985), the court found the prior art
disclosed the known chemical structure recited in the claim and inherently
met the limitation of an alloy “characterized by good corrosion resistance in
hot brine environments,” even though the prior art was silent regarding this
characteristic. Similarly, based on the record before us, Appellants are
claiming a known material by its properties. Such a discovery of a new
property of a known material, however, cannot establish novelty. Crish, 393
F.3d at 1258.
Appellants next argue (for the first time, in the Reply Brief) that the
seed layer in Edelstein does not meet the limitation of “depositing a copper
alloy via material in the via aperture to form a via” as recited in claim 1 or a
ternary copper alloy via electrically connecting the first and second
conductive layers in claims 10 and 17 (Reply Br. 2). These arguments were
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not timely raised in the Appeal Brief, but rather were brought up for the first
time in the Reply Brief. As such, this argument is waived.4
Finally, as Edelstein discloses all the limitations of claim 1, we find
that the reliance on Bögel cumulative and unnecessary.
For the foregoing reasons, Appellants have not shown the Examiner
erred in rejecting claim 1 as being anticipated by Edelstein. Accordingly,
we will sustain the Examiner’s rejection of that claim, and claims 2, 3, 6, 10,
15, 17-20, and 22 which fall with claim 1.

OBVIOUSNESS REJECTION OVER EDELSTEIN AND BÖGEL
Representative claim 85 recites the element with a characteristic for
increasing grain size is one atomic percent or less of chromium (Cr). The
Examiner found that the combination of Edelstein and Bögel disclose this
limitation (Ans. 5). Appellants first argue that neither Edelstein nor Bögel
disclose or teach the limitation of the copper alloy having at least one
element for increasing grain size (App. Br. 11). As discussed above, we are

4 See Optivus Tech., Inc. v. Ion Beam Appls. S.A., 469 F.3d 978, 989 (Fed.
Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief … is
waived.”) (citations and quotation marks omitted). In any event, the seed
layer 76 of Edelstein initiates the chemical reactions for the deposition of
copper conducting layers 56 and 60 (FF 6). Through chemical initiation, the
seed layer becomes part of the via and is, therefore, a copper alloy via
material in the via aperture that forms part of the via along with conductor
layers 56 and 60. Additionally, since the seed layer also provides electrical
continuity (FF 6), Edelstein discloses the alloy electrically connects the first
and second conducting layers as recited in claims 10 and 17.

5 With the exception of the heading, Appellants have not particularly argued
claims 8, 13, and 16 (Br. 11). Accordingly, we select claim 8 as
representative. 37 C.F.R. § 41.37(c)(1)(vii).
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not persuaded by this argument for the reasons previously discussed in
connection with claim 1. Appellants also argue that there is no suggestion to
combine Edelstein with Bögel since Bögel is directed to automotive
applications and is not analogous to Appellants’ invention (App. Br. 9 and
11).

ISSUE
The following issue has been raised in the present appeal:
Is Bögel in the same field as Appellants’ endeavor or reasonably
pertinent to the problem with which the inventor was concerned such that
Bögel is analogous art and thus properly combinable with Edelstein in
rejecting the claims under § 103?

ADDITIONAL FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence.
7. Appellants’ invention relates to making integrated circuits (Spec. ¶
3).
8. Bögel states the copper alloy containing chromium and silver is
particularly suited for electrical connector applications and states the
alloy is used in computer and automotive applications (Bögel, col. 3,
ll. 57-59 and col. 4, ll. 61-67).
9. Edelstein discloses the invention relates to producing interconnections
in electronic devices and the interconnection structure for electrical
connections for electronic devices, including semiconductors
(Edelstein, col. 1, ll. 8-17).
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PRINCIPLES OF LAW
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing Oetiker, 977 F.2d at 1447).

ANALYSIS
Appellants’ invention relates to making integrated circuits with copper
alloys, which involves creating electrically conductive connections for
electrical components (FF 7). Thus, under the analogous art test set forth in
Kahn, 441 F.3d at 986-87, the Board must show that Bögel is either in the
field of creating electrical connections for electrical components or is
reasonably pertinent to the problem with which the inventor was concerned.
Bögel explains that the copper alloy is “particularly suited for electrical
connector applications,” including computer applications (FF 8). Bögel is,
therefore, within Appellants’ field of endeavor related to using copper alloys
in electrical conductive applications and is analogous. Edelstein similarly is
analogous art as the reference discloses producing interconnections in
electronic devices, including semiconductors or integrated circuits (FF 9).
Thus, the cited references are analogous and properly combinable under
§ 103.
For the foregoing reasons, Appellants have not shown the Examiner
erred in rejecting claims 8, 13, and 16 as being unpatentable over Edelstein
and Bögel.

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OBVIOUSNESS REJECTION OVER EDELSTEIN, BÖGEL, AND MERCHANT
Claim 4 recites that the copper alloy via material includes one atomic
percent or less of zinc or silver. The Examiner finds the combination of
Edelstein and Merchant teaches this limitation (Ans. 5-6). Appellants repeat
the arguments that: (1) neither Edelstein nor Bögel alone or in combination
teach the increasing grain size limitation of claim 1 and (2) there is no
suggestion or motivation to combine Edelstein with Bögel (App. Br. 12).
We are not persuaded by these arguments, however, for the reasons
previously discussed in connection with claims 1 and 8. We also find such
arguments fall well short of rebutting the Examiner’s rejection under
obviousness – a position that we find reasonable. Additionally, as Edelstein
discloses the purported missing increasing grain size limitation, we need not
address whether Merchant (App. Br. 12) teaches this recitation.
For the foregoing reasons, Appellants have not shown the Examiner
erred in rejecting claim 4 as being unpatentable over Edelstein, Bögel, and
Merchant.

OBVIOUSNESS REJECTION OVER EDELSTEIN, BÖGEL, AND GROSS
Representative claim 96 recites the increased grain size is between 0.5
and 3 µm. The Examiner finds the combination of Edelstein and Gross
teach this limitation (Ans. 6). Appellants repeat the argument that neither
Edelstein nor Bögel alone or in combination teach the increasing grain size
limitation of claim 1 (App. Br. 12-13). We are not persuaded by these

6 Appellants have nominally argued claim 23 and essentially repeat the
arguments of claim 9 (App. Br. 12-13). Accordingly, we select claim 9 as
representative. 37 C.F.R. § 41.37(c)(1)(vii).
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arguments, however, for the reasons previously discussed in connection with
claim 1. In addition, as Edelstein discloses the purportedly missing
increasing grain size limitation, we need not address whether Gross (App.
Br. 12) teaches this recitation.
Appellants also state there is no suggestion or motivation to combine
the Edelstein with Soininen (App. Br. 13). As Soininen forms no part of the
rejection of claim 9, we find this argument does not address the rejection
before us. However, to the extent Appellants intended to state that there is
no motivation to combine Bögel with Gross, Appellants merely assert and
do not specifically explain why there is no motivation to combine the
references. Arguments made by counsel do not take the place of evidence in
the record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965); see also In re
Geisler, 116 F.3d 1465 (Fed. Cir. 1997). In any event, such conclusory
statements fall well short of rebutting the Examiner’s rejection under
obviousness – a position that we find reasonable.
For the foregoing reasons, Appellants have not shown the Examiner
erred in rejecting claims 9 and 23 as being unpatentable over Edelstein,
Bögel, and Gross.

OBVIOUSNESS REJECTION OVER EDELSTEIN, BÖGEL, AND ANDRICACOS
The Examiner finds the combination of Edelstein, Bögel, and
Adricacos teaches the limitations of claims 11 and 12 (Ans. 6-7). Appellants
repeat the arguments that: (1) neither Edelstein nor Bögel teach the
increasing grain size limitation and (2) there is no suggestion or motivation
to combine Edelstein with Bögel (App. Br. 13). We are not persuaded by
these arguments, however, for the reasons previously discussed in
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connection with claims 1 and 8. We also find such arguments fall well short
of rebutting the Examiner’s rejection under obviousness – a position that we
find reasonable. Additionally, as Edelstein disclose the purportedly missing
increasing grain size limitation, we need not address whether Andricacos
(App. Br. 13) teaches this recitation.
For the foregoing reasons, Appellants have not shown the Examiner
erred in rejecting claims 11 and 12 as being unpatentable over Edelstein,
Bögel, and Andricacos.

CONCLUSION
(1) Appellants have not shown that the Examiner erred in finding
Edelstein inherently discloses “at least one element for increasing grain size”
in rejecting claim 1 under § 102.
(2) Bögel is in the same field of endeavor as Appellants’ invention
such that Bögel is analogous art and thus properly combinable with
Edelstein in rejecting claims 4, 8, 9, 11-13, 16, and 23 under § 103.
(3) Appellants have not shown the Examiner erred in finding the
combination of Edelstein and other prior art fail to teach or suggest the
limitations in rejecting claims 4, 8, 9, 11-13, 16, and 23 under § 103.

DECISION
The decision of the Examiner to reject claims 1-4, 6, 8-13, 15-20, 22,
and 23 is affirmed.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED

Eld

PAUL S. HUNTER
FOLEY & LARDNER
FIRSTAR CENTER
777 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202-5367
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