Ex Parte Reents et al

Patent Trial and Appeal Board

Jun 29, 2016

11661704 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/661,704 12/22/2008
23908 7590 07/01/2016
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Bert Reents
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ATODP01l8WOUS 5815
EXAMINER
COHEN, BRIAN W
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERT REENTS, THOMAS PLIET, BERND ROELFS,
TOSHIY A FUJIWARA, RENE WENZEL,
MARKUS YOUKHANIS, and SOUNGSOO KIM
Appeal2015-000789
Application 11/661,704
Technology Center 1700
Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's March
25, 2014 decision finally rejecting claims 1-22, which constitute all the claims
pending in this application ("Final Act."). We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify the real party in interest as Atotech Deutschland
GmbH (Appeal Br. 2).
Appeal2015-000789
Application 11/661,704
CLAHvIED SUBJECT ivIATTER
Appellants' invention is directed to a two-step, galvanic process for filling
through-holes in a workpiece with metals, in particular copper (Abstract).
Details of the claimed invention are shown in independent claim 1, which is
reproduced below from the Claims Appendix (key claim language in italics):
1. Galvanic process for filling through-holes of a workpiece
with metals comprising the following steps:
(i) bringing in contact the workpiece containing through-
holes with a first metal deposition electrolyte and applying a
voltage between the workpiece and at least one anode so that a
current flow is supplied to the workpiece, wherein the current
flow is chosen such that a deposition occurs in the center of the
through-holes and, consequently, the through-holes grow
together, until the through-holes are divided into two halves
forming two holes which are each closed at one end close to the
through-hole center, one hole on each side of the workpiece;
(ii) further bringing in contact the workpiece with a
second metal deposition electrolyte and applying a voltage
between the workpiece and at least one anode so that a current
flow is supplied to the workpiece, wherein the through-holes
obtained in step (i) which are divided into two halves are filled
by the metal,
wherein the current flow in accordance with step (i) is a
pulse reverse current and in every cycle of the current at least
one forward current pulse and at least one reverse current pulse
occurs and that the current flow in accordance with step (ii) is
either a pulse reverse current, a direct current or an alternating
current, and
wherein, in the pulse reverse current of step (i) and in the
pulse reverse current of step (ii) when present, the ratio of the
duration of the at least one forward current pulse to the duration
of the at least one reverse current pulse is adjusted to 5 - 75,
wherein the electrolyte comprises a wetting agent, and
wherein the through-holes have a diameter of 30 µm -
300 µm and a maximum height of 0.025 - 1 mm.
2
Appeal2015-000789
Application 11/661,704
REJECTIONS
I. Claims 1-7, 10-12, 14, 16-18, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Martin2 in view ofNakamura3 and
Morrissey. 4
II. Claims 8 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin, Nakamura, and Morrissey, and further in view of
Hartmann. 5
III. Claim 9 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin, Nakamura, Morrissey, and Hartmann, and further
in view of Hubel. 6
IV. Claims 13 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin, Nakamura, and Morrissey, and further in view of
Meyer 7 and Taylor. 8
V. Claims 15 and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over iviartin, Nakamura, and ivforrissey, and further in
view of Gross. 9
VI. Claims 1-20 are provisionally rejected on the grounds of
nonstatutory obviousness-type double patenting over claims 1-20 of
2 Martin et al., U.S. Patent No. 6,071,398, issued June 6, 2000.
3 Nakamura, U.S. Patent Pub. 2004/0011654, published January 22, 2004.
4 Morrissey et al., U.S. Patent No. 4,683,036, issued July 28, 1987.
5 Hartmann et al., U.S. Patent No. 5,525,862, issued June 20, 1995.
6 Hubel, U.S. Patent No. 6,132,584, issued October 17, 2000.
7 Meyer et al., U.S. Patent No. 6,793,785 Bl, issued September 21, 2004.
8 Taylor et al., U.S. Patent Pub. 2003/0010642 Al, published January 16, 2003.
9 Gross, U.S. Patent No. 6,458,696 Bl, issued October 1, 2002.
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Appeal2015-000789
Application 11/661,704
Application No. 12/295,513 (which issued as U.S. Patent No. 8,784,634 on
July 22, 2014).
DISCUSSION
Rejections 1-V. Because we decide this appeal based on limitations
present in independent claim 1, and thus common to all of the appealed
claims, we limit our discussion of the obviousness rejections to the rejection
of claim 1 over Martin in view of Nakamura and Morrissey.
The Examiner finds that Martin discloses each of the elements of
claim 1, except that Martin does not teach that (i) the electrolyte comprises a
wetting agent; (ii) the through-holes have a diameter of 30-300 µm and a
maximum height of 0.025-1 mm; and (iii) there are two metal deposition
electrolytes (Final Act. 3--4, citing Martin 3:39--46. 4:7-34, 4:48-5:10). The
Examiner further finds that Martin does not specifically teach the use of first
and second metal deposition electrolytes (Final Act. 4). The Examiner finds
that the missing elements are taught by Nakamura and Morrissey, and
concludes that it would have been obvious to combine the teachings of the
references to arrive at the claimed invention.
The Examiner finds that the claim limitations reciting that "the
through holes are divided into two halves forming two holes which are each
closed at one end close to the through hole center, one hole on each side of
the workpiece" and "wherein the through-holes obtained in step (i) which
are divided into two halves are filled by the metal" are necessarily met by
Martin because Martin teaches the same current and flow parameters as set
forth in claim 1. The Examiner also determines that these limitations should
not be given patentable weight because they "simply express[] the intended
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Appeal2015-000789
Application 11/661,704
result of a process step positively recited" (Final Act. 5, c1tmg ivIPEP
2111.04).
We disagree with the Examiner, and conclude that these steps do carry
patentable weight. That is, a method in which a current flow is chosen
which does not result in the claimed pattern of deposition would not meet
the requirements of the claim. Moreover, the Examiner has found that
because "Applicant teaches using her same current flow parameters as those
described by Martin ... the claim language of the 'wherein clause' would
necessarily be met because the same overall active process steps are
disclosed by the Martin reference," as are disclosed by Appellants (Ans. 25).
Appellants argue that Martin does not teach or suggest partially filling
a through-hole to make two holes which are each closed at one end close to
the through-hole center, as set forth in step (i) of claim 1 (e.g., Appeal Br. 5-
6). Appellants argue that Martin discloses depositing a coating onto a
substrate where the substrate has uniform thickness, and therefore would not
suggest or render obvious a process in which the middle of a through hole is
filled to divide the through hole in halves (Appeal Br. 7-8). This argument
. .
1s persuasive.
First, we note that there is considerable discussion by both the
Examiner and Appellants as to how the term "filling" should be construed
(e.g., Ans. 23, Appeal Br. 12-15). However, the term "filling" or "filled"
does not appear in step (i) of claim 1. Instead, step (i) recites that the
through-holes are divided into two halves forming two holes which are each
closed at one end close to the through-hole center. Thus, the construction of
"filled" or "filling" is not pertinent to the determination of whether claimed
step (i) would have been obvious.
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Appeal2015-000789
Application 11/661,704
As noted above, the claimed process is a two-step process. In the first
step, a through-hole has metal deposited in its middle, so that, in essence,
two blind vias are created, each opening on an opposite side of the board or
wafer. In step (ii), those two blind vias are filled with metal.
In fact, the Examiner states that the each of the cited references:
teach "filling" through holes as the walls of the through holes
are plated with metal. Therefore the space between each wall
gets smaller as the process proceeds, thus the hole is being
filled with metal as the process occurs and therefore discloses
the "filling" process of the through holes as defined by the
Applicant.
(Ans. 24)
Even if the foregoing finding by the Examiner is accurate, it does not
explain why the claimed two-step process would have been obvious, as the
process described by the Examiner does not involve a step in which the
through-hole is first divided into two halves which are closed at one end,
prior to being filled in a second step.
We conclude that the Examiner has not demonstrated that the cited art
teaches such a two-step process. Even if the plating processes of the cited
art were to eventually completely fill the through holes, the Examiner has
not shown that the art suggests or would otherwise have made obvious a
process in which the through-hole is "plugged" in a first step, and the
resulting blind vias are filled in a subsequent step.
In particular, as noted by Appellants (Appeal Br. 7-9), Martin is
directed to a method of electrodepositing metal onto a substrate. Martin
discloses that its method provides a metal deposit of uniform thickness onto
the substrate (Martin, 2:33--41 ). Martin explicitly states that its process
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Appeal2015-000789
Application 11/661,704
provides a metal deposit of uniform thickness "in the through holes"
(Martin, 3: 10-14 ). The Examiner has not adequately explained why a
person of skill in the art reading Martin would have been led to a process in
which the metal was not coated uniformly in the through-hole, but instead
would clog the middle of the through-hole to create a pair of blind vias.
Accordingly, we determine that Appellants have demonstrated
reversible error in the obviousness rejection of independent claim 1.
Because none of the remaining obviousness rejections provide additional
findings to cure the deficiency in the rejection of claim 1 outlined above, we
also reverse each of rejections II.-V.
Rejection VI. Appellants have indicated that they have not argued
the provisional, obviousness-type double patenting rejection because doing
so was "premature." Accordingly, we summarily affirm this rejection.
CONCLUSION
We REVERSE the rejections of claims 1-7, 10-12, 14, 16-18, and 21
under 35 U.S.C. § 103(a) as being unpatentable over Martin in view of
Nakamura and Morrissey.
We REVERSE the rejections of claims 8 and 22 under 35 U.S.C. § 103(a)
as being unpatentable over Martin, Nakamura, and Morrissey, and further in
view of Hartmann.
We REVERSE the rejection of claim 9 under 35 U.S.C. § 103(a) as
being unpatentable over Martin, Nakamura, and Morrissey, Hartmann, and
further in view of Hubel.
We REVERSE the rejections of claims 13 and 19 under 35 U.S.C. § 103(a)
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Appeal2015-000789
Application 11/661,704
as being unpatentable over iviartin, Nakamura, and iviorrissey, and further in view
of Meyer and Taylor.
We REVERSE the rejections of claims 15 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Martin, Nakamura, and Morrissey, and further in view
of Gross.
We AFFIRM the rejection of claims 1-20 on the grounds of
nonstatutory obviousness-type double patenting over claims 1-20 of U.S.
Patent No. 8,784,634.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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