Ex Parte Salama et al

Board of Patent Appeals and Interferences

Mar 16, 2012

11321616 (B.P.A.I. Mar. 16, 2012)

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.
11/321,616 12/28/2005 Islam A. Salama 42P22583 2011
45209 7590 03/19/2012
MISSION/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
03/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ISLAM A. SALAMA and OMAR J. BCHIR
________________

Appeal 2010-007911
Application 11/321,616
Technology Center 1700
________________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1-10 and 22-26 of Application
11/321,616 as obvious pursuant to 35 U.S.C. § 103(a). In particular, claims
1-10 and 22-25 were rejected over U.S. Patent No. 5,989,653 (“Chen ’653,”
issued Nov. 23, 1999) in view of U.S. Patent No. 6,863,936 B2 (“Chen
’936,” issued March 8, 2005) in view of Method for Forming Wiring
Patterns and Vias on a Variety of Substrates, 32 IBM Technical Disclosure
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Bulletin 6A, 17-18 (Nov. 1, 1989) (“IBM”) and in further view of U.S.
Patent No. 6,495,200 B1 (“Chan,” issued Dec. 17, 2002). Claim 26 was
rejected over Chen ’653, in view of Chen ’936, in view of IBM, in view of
Chan, and in further view of U.S. Patent No. 4,394,229 (“Korach,” issued
July 19, 1983).
We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth
below, we AFFIRM.
Background
The ’616 application discloses and claims methods for making printed
circuit boards by using laser-assisted activation and patterning of a seed
layer followed by electroless plating without electrolytic plating. Spec., ¶ 1.
The claimed method starts with a substrate board comprised of a
conductive layer covered by a dielectric layer. Figures 1-3 from the ’616
application are reproduced below:

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Figures 1-3 show a cross-sectional view of a device being made by the
claimed method. Id. at ¶¶ 8-10) In these figures, the conductive layer is
identified as 101, while the dielectric layer is identified as 100 in Figure 1.
Id. at ¶¶ 31-32. An opening 110, called a via, is provided in the dielectric
layer, id., and the entire dielectric layer is then covered with a laser-
activatable film 130, which is comprised of an organo-metallic compound.
Id. at ¶ 33.
Figure 4A is reproduced below.

Figure 4A shows a cross-section view of the results of the laser activation,
where the laser-activatable layer is selectively activated by using a laser to
ablate the organic material from selected regions of the device. Id. at ¶ 35.
The activated regions are numbered 130', 135', and 136'; the unactivated
regions are numbered 132; and the dielectric layer is numbered 102. Id.
Figure 5A is reproduced below:

As shown in Figure 5A, the unactivated laser-activatable film is then
removed, leaving behind activated regions 130', 135', and 136'. Id. at ¶ 38.
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The resulting device is then electrolessly plated with copper or other
conductive metals, which are selectively reduced and deposited on regions
130', 135', and 136'. Id. at ¶¶ 39-40.
Discussion
I. The Prior Art
In rejecting claims 1-10 and 22-25 of the ’616 application, the
Examiner cited four references: Chen ’653, Chen ’936, IBM, and Chan. The
rejection of claim 26 added a fifth reference, Korach. Appellants have
stipulated that the claims stand or fall as a group. Br. 6. We only need to
discuss the first three references cited by the Examiner against claim 1
because Appellants arguments are focused on whether there is a motivation
to combine these references and whether there would be a reasonable
expectation that the first three references could be successfully combined.
The teachings of these references are summarized below.
A. Chen ’653
Chen ’653 teaches the use of an activatable catalyst layer to produce
metallic clusters that can be electrolessly plated. Chen ’653 Abstract. To
improve adhesion of the metal to the substrate, the catalyst layer comprises a
polymer carrier, catalyst metal ions, and a solvent. Figure 1b from Chen
’653 is reproduced below.
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Figure 1b shows that the catalyst layer 2 is applied to substrate 1 and dried.
Col. 2, l. 64-col. 3, l. 3. The polymer component of the catalyst layer 2 is
chosen to be identical to or compatible with the material that forms the
substrate layer 1. Col. 3, ll. 62-65. Due to this identity or compatibility, the
polymer portion of the catalyst can interdiffuse into the substrate, which
results in improved adhesion of the metallic layers that will be built up on
top of the catalyst layer. Id.; see also Col. 5, ll. 39-53.
Figure 1c is reproduced below:

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As shown in the Figure 1c, the catalyst layer is then subjected to further
processing. First, the catalyst layer is covered with a mask 6. Mask 6 is
opaque to electromagnetic radiation, except in pre-defined transparent areas
8. The assembly of substrate 1, catalyst layer, and mask 6 is then exposed to
electromagnetic radiation 7. Mask 6 protects the portions of the catalyst
layer not under transparent areas 8 from exposure to electromagnetic
radiation 7. Col. 3, ll. 4-11.
The resulting product is shown in Figure 1d, which is reproduced
below.

Figure 1d shows a perspective view of the exposed substrate. In the exposed
areas 3 of the catalyst layer 2, the metal catalyst has formed metallic
clusters. Such clusters are not found in the unexposed areas 9. Col. 3, ll. 12-
16.
The device is next subjected to electroless plating. Figure 1e is
reproduced below:
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As shown in Figure 1e, the metallic clusters in the exposed areas 3 act as
catalysts for metal deposition in the electroless plating process. Thus, the
metal preferentially deposits itself in the exposed areas, creating metallized
areas 4. Col. 3, ll. 17-19.
B. Chen ’936
Chen ’936 teaches the use of a conductor or semiconductor layer
covered with a dielectric layer. Figures 5a through 5c are reproduced below:

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Figures 5a-5c show a cross sectional view of a process taught in Chen
’936. As shown in Figures 5a, a strippable layer 52 of non-aromatic organic
material is then placed on top of the dielectric layer 51. Col. 3, ll. 60-64.As
shown in Fig. 5b, a laser is then used to ablate through strippable layer 52
and the dielectric layer 5, creating a via 53. Col. 3, ll. 64-68. After the laser’s
power is reduced, a portion 54 of the surface of the polymer layer 51 is
activated. Id. The activated portion 54 of the strippable layer is next seeded
with metal clusters. The residual strippable layer 52 is then removed, and the
seeded surface is plated in an electroless bath to form the circuitry 55, as
shown in Figure 5c. Col. 3, l. 68-col. 4, l. 7.
C. IBM Technical Disclosure Bulletin, Nov. 1989
IBM teaches a method for defining wiring patterns and vias on
ceramic greensheets or polymer surfaces. IBM 1. In particular, IBM teaches
the deposition of metal chelates—a class of organo-metallic compounds—on
the substrate surface, followed by “developing” a wiring pattern by laser
ablation of the organic material. The metal chelate can be deposited as a
powder, by sublimation, or by casting from solution. Id. at 2. This technique
can be used to create metal connections in holes that have been pre-punched
in greensheets to create vias. Id. at 3.
II. The Examiner’s Rejections of the ’616 Application’s Claims as
Obvious are Sustained
Appellants state: “For the purposes of this appeal, claims 1-10 and 22-
26 stand or fall together . . . .” Br. 6. Therefore, we need only consider the
patentability of representative claim 1 of the’616 application, which reads:
1. A method of providing a printed circuit board
comprising:
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providing a microelectronic substrate including a
dielectric layer disposed over a conductive layer;
providing a via opening in the dielectric layer to expose
the conductive layer using laser irradiation;
providing a laser activatable film on the dielectric layer
and exposed conductive layer, the laser activatable film
comprising a metal-organic material; and
providing an interconnect on the microelectronic
substrate comprising:
providing a patterned seed layer on the
microelectronic substrate comprising exposing the
laser activatable film to laser irradiation to
selectively activate a portion of the laser
activatable film on the exposed conductive layer,
wherein exposing the laser activatable film to laser
irradiation comprises ablating the organic material
from the metal-organic material; and
metallizing the patterned seed layer to yield the
interconnect to provide the printed circuit board by
catalyzing an activator layer with copper to only
electrolessly plate the copper on the
microelectronic substrate, wherein copper is plated
on the substrate without being electrolytically
plated.
A. The Examiner’s Rejections of the Claims as Obvious
Obviousness is a legal conclusion based upon underlying factual
determinations. In re Kumar, 418 F.3d 1361, 1365 (Fed. Cir. 2005). These
underlying factual determinations include: (1) the level of ordinary skill in
the art, (2) the scope and content of the prior art, (3) the differences between
the claimed invention and the prior art, and (4) any objective indicia of
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nonobviousness that may be present. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).
In this case, the Examiner has demonstrated that each of the steps in
the claimed method was known in the prior art. The Examiner started with
the teaching of Chen ’653 as a base reference and modified it in view of
Chen ’936 to include a substrate with a conductive layer and a via. The
Examiner next modified the process used to create the patterned seed layer
for guiding the electroless deposition to incorporate the teachings of IBM.
Finally, the Examiner added the specific teachings from Chan to use
palladium acetate on a structure comprising a dielectric layer on top of a
conducting layer. This combination of references teaches every step in claim
1 of the ’616 application.
Furthermore, the Examiner explained that a person of ordinary skill in
the art would have been motivated to combine the procedure used in Chen
’653 with the via-containing structure shown in Chen ’936 in order to be
able to create structures containing vias. Final Office Action (“FOA”) (May
14, 2009) 3. The skilled artisan would then be motivated to modify the
resulting combination by using the methods taught in IBM. FOA 4.
Finally, the teaching from each of these references is used in the
manner and for the purpose taught in the reference from which it comes. As
the Supreme Court has stated, “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007).
The Examiner, therefore, rejected the claim as obvious.
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B. Appellant’s Arguments Do Not Overcome the
Examiner’s Obviousness Rejections
Seeking to overcome the Examiner’s rejections, Appellants present
three fundamental arguments. First, they argue that the combination of
references would create an inoperable device. Thus, Appellants claim, there
would be no reasonable expectation that the device created by combining
Chen ’653, Chen ’936, and IBM would work for its intended purpose.
Second, Appellants argue that Chen ’653 teaches away from the combination
of references. Third, Appellants argue that the Examiner provided an
inadequate motivation to combine the references.1
1. A Person of Ordinary Skill in the Art Would
Have Had a Reasonable Expectation of Success
Appellants’ first argument against the obviousness rejections is that a
person of ordinary skill in the art would not have had a reasonable
expectation of success that the Examiner’s proposed combination would
have worked for its intended purpose. In particular, Appellants argue that the
combination of Chen ’653 with the via-containing substrate in Chen ’936
would not have worked because the organic polymers that Chen ’653
teaches are co-deposited with the metal catalyst would have effectively filled
in the via by recreating the dielectric layer on top of the substrate. Br. 8-9.
This argument fails for at least two reasons.
First, the Appellants are arguing about whether there was a reasonable
expectation of success using a subcombination of the cited references—

1Appellants present this argument for the first time in their Reply Brief.
Although arguments raised for the first time in the reply brief need not be
considered without a showing of good cause, Ex parte Borden, 93 USPQ2d
1473, 1476-77 (BPAI 2010) (informative), we will provide non-procedural
reasons why the argument is unsuccessful.
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Chen ’653 and Chen ’936. They do not address the effect of the Examiner’s
proposed substitution of the process disclosed in IBM. Because Appellants’
argument is based on the alleged lack of a reasonable expectation of success
for the subcombination of Chen ’653 and Chen ’936, Appellants are not
addressing the combination of references that the Examiner actually used in
the rejections. Appellants therefore are not applying the correct legal test.
The law requires that there be a reasonable expectation of successfully
combining the cited references in the manner required by the claimed
invention. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir.
2006). Thus, consideration of whether the subcombination of Chen ’653 and
Chen ’936 would work for the intended purpose is legally irrelevant. The
proper question is whether the combination of all of the cited references
would be reasonably expected to succeed. In re Keller, 642 F.2d 413, 425
(Fed. Cir. 1981) (“The test for obviousness . . . . is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”(emphasis added)).
Second, to the extent that Appellants address IBM, they fail to do so
adequately. Rather than provide analysis, Appellants assert that the proposed
additional modification in view of IBM “does not remedy the deficiency of
the proposed modification of Chen ’653 in view of [Chen ’936].” Br. 9-10.
However, Appellants do not reasonably identify any deficiency in the
Examiner’s proposed combination of Chen ’653, Chen ’936, and IBM.
2. Chen ’653 Does Not Teach Away From the
Proposed Combination
Appellants next argue that Chen ’653 teaches away from the proposed
combination of references. Appellants’ argument is based on the same
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premise as their “reasonable expectation of success” argument—that the
method of creating the metal seeding used in Chen ’653 would rendered the
vias in the combination of Chen ’653 and Chen ’936 inoperable.
This argument, however, does not establish that Chen ’653 teaches
away from the proposed combination of Chen ’653, Chen ’936, and IBM.
Indeed, a skilled artisan would have recognized the limitations imposed by
the polymer deposition taught in Chen ’653. As discussed above, the skilled
artisan would have been motivated to consider replacing the
polymer/catalyst metal combination with an activatable layer from which
any organic material could be easily ablated. IBM teaches the composition
of such a layer. Keller, 642 F.2d at 425.
3. A Person of Ordinary Skill in the Art Would
Have Been Motivated to Combine the Cited
References
Appellants’ final argument is that the Examiner’s stated motivation to
combine the cited references does not meet the threshold set forth in KSR
International Co. v. Teleflex Inc.
However, we note that the Examiner did provide a reason to combine
the references. The Examiner noted that Chen ’653 failed to teach a substrate
having vias formed therein. FOA 3. A person of ordinary skill in the art
would have known of the utility of vias and would have been motivated to
combine Chen ’653 with Chen ’936 in order to obtain the via/interconnect
function taught by this reference. Furthermore, the skilled artisan would
have been motivated to further modify the combination of Chen ’653 and
Chen ’936 with IBM in order to incorporate the laser activatable film taught
in IBM. FOA 4. This modification would allow the skilled artisan to skip the
subsequent seeding steps and stripping steps taught by Chen ’936.
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Although these statements of motivation are short, they are not
conclusory, as they provide a sufficient basis for our review. See KSR, 550
U.S. at 418 (explaining that the reason to combine references must be made
explicit to facilitate review); Keller, 642 F.2d at 425 (explaining that the test
for obviousness does not require that the claimed invention be expressly
suggested in any one or all the references).
Conclusion
Each of the steps in claim 1 of the ’616 application was known in the
prior art and would have been used for its known purpose. There is no
allegation of surprising or unexpected results from this combination of
known elements. After considering each of Appellants’ arguments ascribing
error to the Examiner’s rejections, we sustain each of the Examiner’s
rejections as applied against claims 1-10 and 22-26 of the ’616 application.
The Examiner’s decision is affirmed.

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)(iv).

AFFIRMED.

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