Ex Parte Mirkarimi et al

Board of Patent Appeals and Interferences

Jun 29, 2009

10964048 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL B. MIRKARIMI, SHERRY L. BAKER,
DANIEL G. STEARNS, and EBERHARD A. SPILLER
____________

Appeal 2009-003709
Application 10/964,048
Technology Center 1700
____________

Decided:1 June 29, 2009
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20 (Appeal Brief filed January 7, 2008, hereinafter “Br.,” 2; Final

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Office Action mailed June 6, 2007). We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants state that the claimed invention “relates to [a method for]
planarizing pits and scratches in the substrates of [extreme ultraviolet
lithography] mirrors and the ability to do so while simultaneously
planarizing substrate particles” (Specification, hereinafter “Spec.,” ¶ 0003).
Claim 1 reads as follows:
1. A method for planarizing a substrate pit or scratch,
comprising:
depositing a film onto a substrate, wherein said substrate
comprises a defect selected from the group consisting of a pit
and a scratch; and
etching at an angle away from normal incidence to said
substrate at least a portion of said film off of said substrate,
wherein the etch rate at the bottom of said defect is less than the
etch rate at the surface of said film, wherein the difference
between the etch rates at the surface of said film and at the
bottom of said defect causes the depth of said defect to
decrease.
(Br. 12, Claims Appendix.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed April 1, 2008, hereinafter
“Ans.,” 2-5):
Windischmann 4,673,475 Jun. 16, 1987
Murakami 6,295,164 B1 Sep. 25, 2001
Matsukuma 6,303,392 B1 Oct. 16, 2001
Stearns 6,967,168 B2 Nov. 22, 2005

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The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
follows:
I. claims 1-20 as unpatentable over the combined teachings of
Murakami, Windischmann, and Matsukuma (Ans. 3-5); and
II. claims 1-20 under 35 U.S.C. § 103(a) as unpatentable in view
of Stearns (id. at 5).2

ISSUES
Rejection I
The Examiner found that Murakami describes a method for
planarizing a substrate, wherein the substrate comprises at least one layer
(i.e., a film) deposited by ion beam sputter deposition and then planarizing
the substrate comprising the at least one layer with an ion beam (Ans. 3).
Specifically, the Examiner found that Murakami teaches ion beam sputter
depositing amorphous silicon as one layer of a bi-layer on a substrate where
“either the first layer, the second layer, or both are planarized with [an
argon] ion beam” (id.). The Examiner acknowledged, however, that
Murakami does not explicitly describe: (i) the use of a substrate comprising
a defect selected from the group consisting of a pit and a scratch; and (ii)
“etching at an angle away from normal incidence to said substrate at least a
portion of said film off of said substrate, wherein the etch rate at the bottom
of said defect is less than the etch rate at the surface of said film, wherein the

2 The Examiner lists claims “1-2, 5-10 and 1-20” as rejected in the second
ground of rejection (Ans. 5). Nonetheless, Appellants state that “[i]n order
to address the intended rejection, the applicant will treat this as a rejection of
claims 1-20 as being unpatentable over Stearns et al.” (Br. 7.)
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difference between the etch rates at the surface of said film and at the bottom
of said defect causes the depth of said defect to decrease” (claim 1; Ans. 4).
Nevertheless, the Examiner found that Windischmann teaches that
“amorphous silicon material includes defects (scratches) as the material is
deposited by an ion-sputtering process” (Ans. 4). From this teaching, the
Examiner found that Murakami’s substrate would contain defects (e.g.,
scratches) because it comprises amorphous silicon deposited by ion
sputtering (Ans. 4). As to etching at an angle away from normal incidence,
the Examiner relied on Matsukuma, which teaches that “ion beam etching is
performed with an etching angle with respect to the work piece within the
range of 0 to 90 degrees” to prevent or reduce dust from depositing on the
work piece (id. at 4). The Examiner thus concluded that it would have been
obvious to one of ordinary skill in the art to combine the teachings of
Matsukuma and Murakami to arrive at the claimed etching angle away from
normal incidence in order to reduce or prevent dust from depositing on the
work piece (id.). As to the different etch rates at the bottom of the defect
and at the film surface to cause a decrease in the depth of the defect, the
Examiner reasoned that the same result would occur in Murakami’s method
as modified according to Matsukuma’s teachings because the modified
method would include etching at an angle as in the claimed invention (id.).
Appellants, on the other hand, contended that the Examiner failed to
establish a prima facie case of obviousness with respect to claim 1. In
particular, Appellants asserted that “Murakami et al. does not teach
planarization by etching with an ion beam” (Br. 4). Specifically, Appellants
contended that Murakami “merely teaches irradiation of a multilayered film
interface by a particle beam to relieve the atomic structure in order to lower
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compressive stress” (id.). In addition, Appellants asserted that “applicants’
method is directed to the planarization of a pit or scratch that is part of the
substrate” and that “none of the cited references teach the mitigation of a pit
or scratch in a substrate” (id.).
Thus, the issues arising from the contentions of the Examiner and
Appellants are:
Have Appellants shown reversible error in the Examiner’s finding that
Murakami’s method of irradiating a multilayer film interface with an ion
beam necessarily achieves planarization by etching?
Have Appellants shown reversible error in the Examiner’s finding that
Murakami teaches a substrate having a defect (i.e., a pit or scratch) as
required by claim 1?

Rejection II
The Examiner found that Stearns teaches a process for repairing
localized defects in an EUV lithography (i.e., extreme ultraviolet lithography
or EUVL) mask by removing defects such as scratches or pits by etching the
defects at a low angle (i.e., less than 20 degrees) from the surface (Ans. 5).
The Examiner acknowledged, however, that Stearns is “silent about the etch
rate [being] less at the bottom of the defect than [at] the surface of the film”
(id.). Nevertheless, the Examiner concluded that “[i]t would have been
obvious to have less etching rate at the bottom of the defect than the surface
of the film because Stearns . . . has the intention to remove the defects from
a deposited film with low angle with less damage on the film surface” (id.).
Appellants, on the other hand, asserted that “Stearns teaches the
physical removal of a defect near the top of a multilayer coating” (Br. 8), but
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Stearns “does not teach the applicants’ method for planarizing a substrate pit
or scratch” (id.).
Thus, the issue arising from the contentions of the Examiner and
Appellants is:
Have Appellants shown reversible error in the Examiner’s finding that
Stearns teaches a step of “depositing a film onto a substrate, wherein said
substrate comprises a defect selected from the group consisting of a pit and a
scratch” as required by claim 1?

FINDINGS OF FACT
1. The Specification discloses that the planarization process
achieves “pits . . . smoothed below the detectability threshold”
(Spec. ¶ 0016) and that the planarization technique smoothes
substrate scratches (Spec. ¶ 0021).
2. The Specification discloses that “[a] key element of [a method
of planarizing a substrate pit or scratch] is to conduct the
etching at angles well away from normal incidence to the
substrate, which enhance pit and scratch planarization” (Spec. ¶
0010).
3. Murakami’s FIG. 2B is reproduced below:

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FIG. 2B depicts an “example of a method of manufacturing a
multi-layered mirror by irradiation using a particle beam P [e.g.,
an Ar ion beam] during multi-layered film formation stage,”
wherein the ion beam has an incidence angle θ away from
normal (col. 5, ll. 30-33; col. 8, ll. 1-4).
4. Murakami discloses:
When a thin film surface . . . is irradiated by
inert gas ions, atoms that form protuberances are
removed by collisions. Alternatively, atoms that
form protuberances are imparted kinetic energy for
movement across the substrate surface and move
to concavities. Thus the surface can be made
smooth . . . . [col. 13, ll. 43-48].
5. Murakami discloses:
[A] multi-layered mirror is manufactured by
alternatively laminating by sputtering upon a
substrate, a layer of a first substance with a
relatively small refractive index (a first layer) and
a layer of a second substance with a relatively
large refractive index (a second layer) as follows:
(1) after formation of the first layer, and prior
to formation of the second layer, a smoothing step
is carried out by irradiation of the surface of the
first layer using an ion beam; or
(2) after formation of the second layer, and
prior to formation of the first layer, a smoothing
step is carried out by irradiation of the surface of
the second layer using an ion beam; or
(3) perform both (1) and (2).
[Col. 12, ll. 38-52].
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6. Murakami’s Fig. 6 is reproduced below:

FIG. 6 depicts a “multi-layered mirror 50 includ[ing] Mo and Si
layers (52 and 53, respectively) forming a multi-layered film
upon a Si substrate 51” (col. 20, l. 66 to col. 21, l. 2).
7. Murakami discloses, in Working Example 3, that the multi-
layered mirror 50 is formed by ion beam sputtering of
alternating layers of Mo and Si, wherein prior to forming the Si
layer 53 upon a Mo layer 52, the Mo layer was irradiated by an
Ar ion beam having 600 eV with an 80° irradiation angle from
normal (col. 20, l. 65 to col. 21, l. 5).
8. Windischmann discloses:
In contrast to known dual ion beam processes, in the
new process, the low arrival energy of the deposition
species reduces structural disorder or defect formation in
the deposited film producing the higher density [col. 2, ll.
3-6].
9. Stearns discloses a repair method for a pit or scratch including
“first removing [a] particle (if a particle exists) and secondly
etching away the damaged region of the multilayer coating
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without disturbing the intact underlying layers” (col. 3, ll. 58-
61).
10. In particular, Stearns discloses “the damaged part of the coating
is removed by etching using a low-voltage (<5000 V) ion beam
at a low angle of incidence (<20 degrees from the coating
surface)” (col. 4, ll. 3-6).
11. Stearns discloses that the repair method results in a “wide . . .
shallow . . . crater at the surface of the reflective multilayer
coating that exposes the underlying intact layers and thereby
restores the local reflectivity” (col. 4, ll. 14-19).

PRINCIPLES OF LAW
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification.
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”) (Citation omitted);
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (“[T]he PTO gives a
disputed claim term its broadest reasonable interpretation during patent
prosecution.”).
“Where, as here, the result is a necessary consequence of what was
deliberately intended, it is of no import that the article’s authors did not
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appreciate the results.” MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d
1362, 1366 (Fed. Cir. 1999).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
Rejection I
With regard to the first ground of rejection, Appellants submit
reasonably specific arguments directed to limitations recited in claim 1 (Br.
4 and 5). With respect to claims 2-20, however, Appellants merely point out
what the claims recite without providing any discussion on why these
limitations render the claims separately patentable over the applied prior art
(id. at 5 and 6). Accordingly, we select claim 1 as representative of all the
claims subject to this first ground of rejection and confine our discussion to
this selected claim. See C.F.R. § 41.37(c)(1)(vii).
An initial step in our inquiry is to construe certain disputed claim
terms, namely “substrate” and “planarizing.” In our claim construction, we
are obligated to give claim terms their broadest reasonable interpretation
while taking into account any definitions or enlightenment found in the
specification. ICON Health and Fitness, 496 F.3d at 1379.
Appellants do not direct us to any special definition in the
Specification that restricts the scope of the claim term “substrate” (Br. 3-11),
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and thus we apply a broad interpretation. When the term is given its
broadest reasonable interpretation, one of ordinary skill in the art would
have understood the term, in the context of Appellants’ claimed method, to
encompass any structure including those that include additional layers.
Therefore, the term “substrate” encompasses a coated substrate (i.e., a
substrate comprising at least one deposited film layer).
With respect to the claim term “planarizing,” the Specification
informs one skilled in the relevant art that the claim term “planarizing” is
accomplished by etching at an angle away from normal incidence to the
substrate (Facts 1 and 2).
Appellants do not dispute the Examiner’s factual finding that
Murakami teaches a method comprising applying ion beam energy to a
substrate coated with two layers, wherein one of the layers is an amorphous
Si layer, which according to Windischmann contains defects (Ans. 3-4; App.
Br. 4-5). Nor do Appellants dispute the Examiner’s conclusion that a person
having ordinary skill in the art would have been led to carry out Murakami’s
ion beam energy treatment at an angle as shown in Matsukuma in order to
reduce or prevent dust and that such a modification would have necessarily
resulted in different etch rates at the bottom of the defect and at the film
surface to cause a decrease in the depth of the defect (id.).
Rather, Appellants make two arguments. First, Appellants contend:
Murakami . . . does not teach planarization by etching with an
ion beam. The patent merely teaches irradiation of a
multilayered film interface by a particle beam to relieve the
atomic structure in order to lower compressive stress [Br. 4].
Second, Appellants argue that “none of the cited references teach the
mitigation of a pit or scratch in a substrate” (id.).
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Neither argument is persuasive to show reversible error. As discussed
above, “planarizing,” in the context of Appellants’ invention, is
accomplished by applying energy at an angle away from normal incidence to
the substrate (Facts 1 and 2). Murakami discloses applying ion beam energy
at an incidence angle away from normal to remove atoms from a film
surface that had been deposited upon a substrate in order to smooth the film
surface (Facts 3-7). Even assuming that Murakami does not explicitly
disclose planarization, it would reasonably appear that Murakami’s method
would necessarily result in planarization as required by claim 1 because
Murakami also applies energy at an angle away from normal incidence.
MEHL/Biophile, 192 F.3d at 1366.
In this case, Appellants have not directed us to any persuasive
evidence that the ion energy and etching angle in Murakami’s disclosed
process does not necessarily planarize by etching.
Appellants’ assertions that “applicants’ method is directed to the
planarization of a pit or scratch that is part of the substrate” and that “none
of the cited references teach the mitigation of a pit or scratch in a substrate”
are likewise unpersuasive (Br. 4). As discussed above, one of ordinary skill
in the art would have understood that the claim term “substrate”
encompasses a substrate comprising at least one deposited film layer. Here,
the Examiner found that Murakami teaches manufacturing a multi-layered
mirror including alternately depositing onto a substrate first and second film
layers, respectively, wherein one of the layers is an amorphous Si layer and
the smoothing step is performed after formation of one layer and prior to the
formation of the other layer (Facts 5-7). In addition, the Examiner found,
and Appellants do not dispute, that Windischmann teaches that “silicon
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material includes defects (scratches) as the material is deposited by ion-
sputtering process” (Ans. 4; Br. 4-7; Fact 8).
Thus, Murakami teaches applying ion beam energy at an angle away
from normal to a structure in the form of a substrate on which is deposited a
film such as a Mo layer, wherein the substrate is previously coated with
amorphous Si (which necessarily contains defects as evidenced by
Windischmann). Therefore, Murakami’s substrate deposited with silicon
containing pits and scratches corresponds to the claimed “substrate
compris[ing] a defect selected from the group consisting of a pit and a
scratch,” as required in the claimed method.
Appellants have not submitted any persuasive evidence that the prior
art method would not necessarily have the claimed characteristics of
mitigating a substrate pit or scratch.

Rejection II
Appellants assert that the Examiner failed to establish a prima facie
case of obviousness (Br. 8). In particular, Appellants contend that Stearns
“teaches the physical removal of a defect near the top of a multilayer
coating” (id.). Furthermore, Appellants argue that Stearns “does not teach
the applicants’ method for planarizing a substrate pit or scratch” (id.).
The Examiner responds that “removing scratch or defect from the top
of the coated or deposited layer in a multilayered structure (see the
rejection), reads on the claimed invention of planarizing a substrate having
defects or scratches” (Ans. 7). In the rejection, the Examiner asserts:
Stearns et al teach a process to repair localized defects in
EUV mask by removing defects such as scratches or pits,
wherein the removing comprising [sic] ion beam etching the
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defect with low angle (less than 20 degree) than the surface
with less damage of the surface (abstract, col. 3, lines 57-col.4,
lines 1-25), wherein Ar ion beam is used to remove the defects
[Ans. 5].
We agree with Appellants that the Examiner failed to make out a
prima facie case of obviousness. In particular, the Examiner has not directed
us to evidence that Stearns teaches or suggests all limitations of the claimed
method for planarizing a substrate pit or scratch. The Manual of Patent
Examining Procedure (Eighth Edition, Revision 7 (July 2008)) establishes
the following requirement for the Examiner:
[T]he [E]xaminer’s answer is required to include . . . the
following items:
. . . .
(9) Grounds of Rejection. For each ground of rejection
maintained by the examiner . . . an explanation of the
ground of rejection.
. . . .
(d) For each rejection under 35 U.S.C. 103, the
examiner’s answer must:
(i) state the ground of rejection and point out
where each of the specific limitations recited in the
rejected claims is found in the prior art relied on in
the rejection,
(ii) identify the differences between the
rejected claims and the prior art relied on (i.e., the
primary reference), and
(iii) explain why it would have been obvious
at the time the invention was made to a person of
ordinary skill in the art to have modified the
primary reference to arrive at the claimed subject
matter [MPEP 1207.02].
The Examiner, however, does not address how Stearns teaches or
suggests the claimed step of “depositing a film onto a substrate, wherein the
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substrate comprises a defect selected from the group consisting of a pit and a
scratch” (Ans. 5 and 7). Rather, the Examiner’s rejection directs us to
evidence that Stearns discloses a method for repairing a defect in a
multilayer coating that includes “first removing [a] particle (if a particle
exists) and secondly etching away the damaged region of the multilayer
coating without disturbing the intact underlying layers” (Fact 9). The
Examiner then directs us to evidence that discusses repair of a hole in the
surface of a multilayer coating using a low-voltage (<5000 V) ion beam at a
low angle of incidence (<20 degrees from coating surface) to create a wide
shallow crater at the surface of a multilayer coating (Facts 10 and 11). But
these findings do not account for a step of depositing a film upon a substrate
having a pit or scratch, as required by the claimed method.
Accordingly, we reverse the Examiner’s stated rejection.

CONCLUSION
Appellants have not shown reversible error in the Examiner's finding
that Murakami’s method of irradiating a multilayer film interface with an ion
beam necessarily achieves planarization by etching.
Appellants have not shown reversible error in the Examiner's finding
that Murakami teaches a substrate having a defect as required by claim 1.
However, Appellants have shown reversible error in the Examiner's
conclusion that one of ordinary skill in the art would have found it obvious
to arrive at the claimed method in view of the teachings of Stearns.

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DECISION
The decision of the Examiner to reject claims 1-20 under 35 U.S.C. §
103(a) as unpatentable in view of Murakami, Windischmann, and
Matsukuma is affirmed.
However, the Examiner’s decision to reject claims 1-20 under 35
U.S.C. § 103(a) as unpatentable over Stearns 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)(1)(v).

AFFIRMED

KMF

Deputy Laboratory Counsel For Intellectual Property
Lawrence Livermore National Laboratory
P.O. Box 808, L-703
Livermore, CA 94551-0808