Ex Parte Podlaha et al

Board of Patent Appeals and Interferences

Jun 15, 2009

10196764 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ELIZABETH J. PODLAHA, MICHAEL C. MURPHY,
and LAKSHMIKANTH NAMBURI
____________

Appeal 2009-000849
Application 10/196,764
Technology Center 1700
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Decided:1 June 16, 2009
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

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).
Appeal 2009-000849
Application 10/196,764

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 16-18 and 21-27. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM for the reasons expressed in the Answer and below.
Statement of the Case
Appellants claim a process for making a metal alloy microstructure by
depositing metals into a mold having a recessed depth of at least about 50
µm and having an aspect ratio greater than 1 via a pulsed electroplating
technique,
wherein the electroplating pulses have an on time that is
sufficiently short, and a duty cycle that is sufficiently low,
that the products of the electroplating reactions and the
products of any side reactions do not accumulate in
concentrations that are sufficiently high to substantially
interfere with the electroplating of the desired alloy into the
deep recesses[,] and wherein the duty cycle is less than about
0.2[,] and wherein the on time is greater than about 1 second

(claim 16).
Representative independent claim 16 reads as follows:
16. A process for making a metal alloy microstructure; wherein the
alloy comprises two or more metals, at least one of which metals is selected
from the group consisting of nickel, iron, tungsten, and cobalt; said process
comprising the steps of:

(a) supplying into a mold an aqueous solution comprising salts of the
metals, wherein the shape of the mold is complementary to the shape
of the microstructure to be made, and wherein the mold includes one
or more deep recesses having a depth of at least about 50 µm, and
having an aspect ratio greater than about 1;

(b) depositing the metals from the aqueous solution into the mold by
pulsed electroplating; wherein the electroplating pulses have an on
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time that is sufficiently short, and a duty cycle that is sufficiently low,
that the products of the electroplating reactions and the products of
any side reactions do not accumulate in concentrations that are
sufficiently high to substantially interfere with the electroplating of the
desired alloy into the deep recesses; and wherein the duty cycle is less
than about 0.2; and wherein the on time is greater than about 1 second;
and wherein said depositing step is continued until a metal alloy
microstructure has been formed having a height of at least about 50
µm, and having an aspect ratio greater than about 1.

The references relied upon the Examiner as evidence of obviousness
are set forth below:
Yamashita 4,820,387 Apr. 11, 1989
Nee 4,869,971 Sep. 26, 1989
Dubin 5,972,192 Oct. 26, 1999
Taylor 6,524,461 B2 Feb. 25, 2003
Chen 6,776,891 B2 Aug. 17, 2004

N. H. Phan et al., Electrodeposition of Fe-Ni and Fe-Ni-Co Alloys, in 21 J.
Appl. Electrochem. 672-677 (1991) (hereafter Phan).

B. Löchel et al., Ultraviolet Depth Lithography and Galvanoforming for
Micromachining, in 143 J. Electrochem. Soc. 237-244 (1996) (hereafter
Löchel).

V.K.P. Kanigicherla et al., Enhanced Adhesion of PMMA to Copper with
Black Oxide for Electrodeposition of High Aspect Ratio Nickel-Iron
Microstructures, in 4 Microsystem Technologies 77-81 (1998) (hereafter
Kanigicheria2).

W. Ehrfeld et al., Materials of LIGA Technology, in 5 Microsystem
Technologies 105-112 (1999) (hereafter Ehrfeld).

2 The Examiner and Appellants refer to this reference by the misspelled
name “Kanigicheria” and so shall we in order to be consistent with the
record.
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Application 10/196,764

Under 35 U.S.C. § 103(a), the Examiner rejects: claims 16-18 and
21-25 over Ehrfeld in combination with Taylor and Dubin in view of Chen
and Yamashita; claims 16-18, 21-23, and 25 over Löchel or Kanigicheria in
combination with Taylor and Dubin in view of Chen and Yamashita; and
claims 26 and 27 over the previously cited references and further in view of
Phan and Nee respectively.
The Examiner concludes that it would have been obvious for one with
ordinary skill in this art to practice the metal deposition step in the respective
processes of Löchel, Ehrfeld, and Kanigicheria with pulsed electroplating
having a duty cycle less than about 0.2 and an on time greater than about 1
second as required by independent claim 16 so as to replenish depleted
metal-to-be-deposited in view of Taylor, Dubin, Chen, and Yamashita (Ans.
7-9, 11, para. bridging 13-14).
Because Appellants have not separately argued any of the dependent
claims, all appealed claims will stand or fall with independent claim 16
(App. Br. 10; Supp. App. Br. 3).
Issues
Have Appellants shown error in the Examiner’s finding that Chen is
analogous art?
Have Appellants shown error in the Examiner’s finding that Taylor,
Dubin, Chen, and Yamashita would have suggested practicing the metal
deposition step of Löchel, Ehrfeld, and Kanigicheria with pulsed
electroplating having a duty cycle less than about 0.2 and an on time greater
than about 1 second as required by claim 16?

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Findings of Fact
In response to Appellants’ argument to the contrary, the Examiner
finds that Chen is analogous art because it is in the field of Appellants’
endeavor and is reasonably pertinent to the particular problem with which
Appellants were concerned (Ans. para. bridging 20-21, first full para. at 21).
In this regard, the Examiner emphasizes the undisputed finding that Chen
discloses a process for depositing metal (i.e., as a thin film) by pulsed
electroplating in a high aspect ratio recess or trench (Ans. para. bridging 6-7,
para. bridging 20-21).
The Examiner also finds that
[e]ach of the primary references, Löchel . . . , Ehrfeld . . . and
Kanigicheria . . . , discloses a process for making a metal
alloy microstructure by electrodeposition of a metal or alloy
into a deep recess having a thickness of at least 50 µm and an
aspect ratio greater than 1

(Ans. 15). The Examiner concedes that the metal deposition step of these
primary reference processes is not practiced by pulsed electroplating with a
duty cycle less than about 0.2 and an on time greater than about 1 second as
required by claim 16 (Ans. para. bridging 4-5, first para. at 11, para. bridging
13-14). However, the Examiner finds that “the secondary references [to
Taylor, Dubin, Chen, and Yamashita] show that the pulse plating values of
duty cycle and on time recited in claim 16 are known and have been used in
the art” to replenish metal-to-be-deposited (Ans. para. bridging 17-18, para.
bridging 18-19). Appellants agree with these findings by the Examiner
(Reply Br. 5).

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Principles of Law
A reference may serve as analogous art if it is from the field of the
inventor’s endeavor or if it is reasonably pertinent to the problem addressed
by the inventor. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-
80 (Fed. Cir. 2007).
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predicable results. KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415-16 (2007).
One of the ways in which claim subject matter can be proved obvious
is by noting that there existed at the time of the invention a known problem
for which there was an obvious solution encompassed by the claims. Id. at
419-20.
The motivation in the prior art to combine references does not have to
be identical to that of the applicant to establish obviousness. In re Kemps,
97 F.3d 1427, 1430 (Fed. Cir. 1996).
Under § 103 obviousness, “‘it is not inventive to discover the
optimum or workable ranges by routine experimentation’”. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997), quoting In re Aller, 220 F.2d 454, 456
(CCPA 1955).
Analysis
Appellants argue that Chen is not analogous art (App. Br. 24).
According to Appellants, “even when Chen’s process is used to form within
a high-aspect ratio trench, the resulting structure is itself still a thin film” (Id.
at para. bridging 25-26). For several reasons, this argument does not reveal
error in the Examiner’s finding that Chen is analogous art.
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First, Appellants do not explain with any reasonable specificity why
Chen does not satisfy the above-noted legal test for assessing whether a
reference is analogous art. Similarly, Appellants do not explain why Chen’s
process for depositing metal by pulsed electroplating into a high-aspect ratio
trench is not within Appellants’ field of endeavor which likewise includes a
process for depositing metal by pulsed electroplating into a high-aspect ratio
recess. Stated differently, the argument under consideration does not clarify
why the claimed and prior art processes should be considered in different
fields of endeavor simply because the former process prolongs deposition to
form a 50 µm high structure whereas the latter process limits deposition to
form a thin film structure. Finally, Appellants do not explain why Chen’s
process for pulsed electrodepositing metal into a high-aspect ratio trench is
not reasonably pertinent to their general problem relating to pulsed
electrodepositing metal into a high-aspect ratio recess.
Appellants also argue that the applied references contain no teaching
or suggestion of the claim 16 limitations “wherein the duty cycle is less than
about 0.2” and “wherein the on time is greater than about 1 second” (App.
Br. 12; Reply Br. 4-5). We cannot agree.
As indicated earlier, Taylor, Dubin, Chen, and Yamashita evince that
duty cycle values and on time values within the claim 16 ranges were
individually known in the prior art as effective parameters for replenishing
depleted metal-to-be-deposited. That is, these parameter values were
individually known in the prior art as solutions to the recognized problem of
replenishing the metal-to-be-deposited in electroplating processes of the type
disclosed by the references applied against claim 16. Therefore, an artisan
would have been motivated to employ these duty cycle and on time values of
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the prior art in the metal depositing step of Löchel, Ehrfeld, or Kanigicheria
in order to solve the metal replenishing problem known in the prior art.
Although the duty cycle and on time values of Taylor, Dubin, Chen,
and Yamashita were used individually rather than in combination, their
individual use evinces that their combined use likewise would solve the
metal replenishing problem known in the prior art. In other words, the
individual use of these parameter values in the prior art supports a
conclusion that it would have been obvious for an artisan to develop
workable ranges for these parameters by routine experimentation, thereby
yielding the combined duty cycle and on time values required by claim 16.
Appellants emphasize that “[n]othing in any cited reference
recognizes the source of the problem identified by the Applicants, namely,
the buildup of reaction byproducts in deep recesses” (Reply Br. 7).
While this may be so, claim subject matter can be proved obvious by
showing there was a known problem for which there was an obvious
solution encompassed by the claims. For this reason, the motivation in the
prior art to combine references does not have to be identical to that of an
applicant in order to establish obviousness. In this case, an artisan would
have been motivated to combine the applied references in the proposed
manner so as to solve the metal replenishing problem known in the prior art.
In this last mentioned regard, Appellants argue that
[t]he implicit, but unwarranted assumption is that optimizing
the prior art pulsed electroplating process to replenish
depleted reactants will also, of necessity, result in a process
that is sufficiently slow to remove interfering byproducts
from deep microrecesses as recited in Claim 16[,] [b]ut there
is no reason why this should be so

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(Reply Br. para. bridging 8-9).
Contrary to this argument, a substantial reason exists for believing
that duty cycle and on time values adequate to solve the metal replenishing
problem known in the prior art also would have been adequate to solve the
byproduct accumulation problem addressed by Appellants’ claim 16 process.
This reason is the above-mentioned fact that duty cycle and on time values
within Appellants’ claimed ranges were individually known in the prior art
to solve the metal replenishing problem. As previously discussed, the
combined use of these values, in accordance with claim 16, would have been
expected to also solve this metal replenishing problem. Therefore, the
Examiner’s proposed combination of applied references for the purpose of
solving the metal replenishing problem known in the prior art would have
yielded process steps fully corresponding to those defined by claim 16.
Finally, Appellants argue that the above-cited KSR decision supports a
conclusion that the claimed invention is non-obvious because it yields
unpredictable results. (Reply Br. para. bridging 16-17). However,
Appellants have proffered no evidence of unpredictable results in the record
before us (see App. Br. 33, Evidence Appendix, “not applicable”). For all
we know, based on the record of this appeal, the claim 16 process does not
yield a metal alloy microstructure or any other tangible result which is
unpredictably different from that of the applied references.
Conclusions of Law
Appellants have not shown error in the Examiner’s finding that Chen
is analogous art.
Appellants have not shown error in the Examiner’s finding that
Taylor, Dubin, Chen, and Yamashita would have suggested practicing the
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metal deposition step of Löchel, Ehrfeld, and Kanigicheria with pulsed
electroplating having a duty cycle less than about 0.2 and an on time greater
than about 1 second as required by claim 16.
As a consequence, we sustain each of the § 103 rejections advanced
by the Examiner in this appeal.

Order
The decision of the Examiner is affirmed.

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