Ex Parte Schmitt et alDownload PDFBoard of Patent Appeals and InterferencesJan 29, 200910461638 (B.P.A.I. Jan. 29, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte FRANCIMAR C. SCHMITT and HICHEM M'SAAD ____________ Appeal 2008-4294 Application 10/461,638 Technology Center 1700 ____________ Decided: January 29, 2009 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and LINDA M. GAUDETTE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1 and 3-30. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART. Appeal 2008-4294 Application 10/461,638 STATEMENT OF THE CASE Appellants claim a method for depositing a low dielectric constant film comprising delivering a gas mixture and applying RF power to the gas mixture at conditions sufficient to deposit a film on a substrate surface, the film having a dielectric constant less than 3.2 and compressive stress. Representative independent claims 1 and 13, as presented in the Claims Appendix of the Appeal Brief, read as follows: 1. A method for depositing a low dielectric constant film, comprising: delivering a gas mixture consisting essentially of: a cyclic organosiloxane; a linear hydrocarbon compound having at least one unsaturated carbon-carbon bond to a substrate surface; and an inert gas; and applying RF power to the gas mixture at conditions sufficient to deposit a film on the substrate surface, the film having a dielectric constant less than 3.2, and wherein the film has compressive stress. 13. A method for depositing a low dielectric constant film, comprising: providing a gas mixture comprising: a cyclic organosiloxane; a linear hydrocarbon compound having at least one unsaturated carbon-carbon bond; and one or more oxidizing gases to a substrate surface; and 2 Appeal 2008-4294 Application 10/461,638 applying RF power to the gas mixture at conditions sufficient to deposit a film on the substrate surface, the film having a dielectric constant less than 3.2 and compressive stress. The references set forth below are relied upon by the Examiner as evidence of anticipation and obviousness: Grill ('009) US 6,147,009 Nov. 14, 2000 Li US 6,358,839 B1 Mar. 19, 2002 Grill ('443) US 6,437,443 B1 Aug. 20, 2002 Grill ('398) US 6,541,398 B2 Apr. 1, 2003 Nakayama US 2003/0089045 A1 May 15, 2003 Bao US 2003/0203652 A1 Oct. 30, 2003 Lukas US 2004/0175957 A1 Sep. 9, 2004 Matsuki US 6,881,683 B2 Apr. 19, 2005 Gates ('930) US 2005/0276930 A1 Dec. 15, 2005 Gates ('468) US 7,030,468 B2 Apr. 18, 2006 Hyodo US 7,064,088 B2 Jun. 20, 2006 Hawley, "The Condensed Chemical Dictionary," Tenth Edition, pp. 699, 972 & 998 (1981). Wolf, "Silicon Processing for the VLSI Era," pp. 114-117 (1986). All appealed claims are rejected based on a common rationale under 35 U.S.C. § 112 as being indefinite and non-enabled according to the second and first paragraphs respectively. Claims 1, 3, 5-11, 13-16, and 18-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Grill '443 (which incorporates by reference Grill '009) in view of Li and further in view of Wolf. Claims 4 and 17 are correspondingly rejected over these references and further in view of Grill '398. 3 Appeal 2008-4294 Application 10/461,638 Claims 12 and 23 are correspondingly rejected over Grill '443, Li, and Wolf and further in view of Lukas, Hawley, Gates '468, and Nakayama.1 Claims 1, 3-11, and 13-22 are rejected under 35 U.S.C. § 102(e) as being anticipated by Hyodo. Claims 1, 3-11, and 13-22 also are rejected under 35 U.S.C. § 102(e) as being anticipated by Matsuki. Claims 1, 3, 5-11, 13-16, and 18-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Matsuki in view of Li and further in view of Wolf. Claims 1, 3-6, 8-19, and 21-23 are rejected under 35 U.S.C. § 102(e) as being anticipated by, or alternatively under 35 U.S.C. § 103(a) as being unpatentable over, Gates '930. Claims 7, 20, and 24-30 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gates '930 (as applied above to claims 1, 3-6, 8-19, and 21-23) optionally in view of Matsuki. Claims 13-15 and 17-21 are rejected under 35 U.S.C. § 102(e) as being anticipated by, or alternatively under 35 U.S.C. § 103(a) as being unpatentable over, Bao. 1 Appellants characterize this rejection of claims 12 and 23 as a new ground of rejection in view of the Examiner's reliance on the Hawley, Gates '468, and Nakayama references (Reply Br. 3, 5). However, Appellants have not provided the appeal record with any objection to the alleged new ground of rejection (e.g., via an appropriate petition). Instead, the rejection is merely contested on the merits of the applied reference evidence (id.). Under these circumstances and because the issue of whether an Examiner has inappropriately made a new ground of rejection is petitionable rather than appealable, we (like Appellants) will assess this rejection based on the merits thereof. 4 Appeal 2008-4294 Application 10/461,638 Claims 1, 3-10, 16, and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bao (as applied above to claims 13-15 and 17-21) optionally in view of Grill '443 or Matsuki. THE § 112 REJECTIONS ISSUE Have Appellants established error in the Examiner's determination that all appealed claims are indefinite and non-enabled because these claims do not require that a plasma be created by the RF power applying step? FINDINGS OF FACT It is undisputed on this record that Appellants' originally filed disclosure teaches applying RF power to deposit the claimed film on a substrate with no further teaching that the applied RF power creates a plasma. Moreover, the Examiner acknowledges that "one of ordinary skill would realize that it is obvious that RF power can be supplied to provide heating instead of a plasma" (Ans. 5). The Examiner further acknowledges that "RF heating for thermal CVD processes can be considered a conventional generic deposition technique" (Ans. 23). Nevertheless, the Examiner determines that "the disclosure as originally provided does not enable one to determine what the sufficient conditions are for depositing the claimed film, if for example the RF power was used only to heat, as is within the scope of the claims as written" (Ans. 5). For this same reason, the Examiner also determines that the appealed claims are indefinite (Ans. 7- 8). 5 Appeal 2008-4294 Application 10/461,638 PRINCIPLES OF LAW Breadth is not indefiniteness. In re Miller, 441 F.2d 689, 693 (CCPA 1971). Even if an enabling disclosure is not commensurate in scope with the subject matter encompassed by the claims, that fact alone does not render the claims indefinite. In re Borkowski, 422 F.2d 904, 909 (CCPA 1970). In order to carry the burden of establishing a prima facie case of non- enablement, an Examiner must provide a reasonable explanation why the scope of protection provided by a claim is not adequately enabled by an applicant's disclosure. In re Wright, 999 F.2d 1557, 1562 (Fed. Cir. 1993). ANALYSIS We agree with Appellants (App. Br. 11-12; Reply Br. 4) that the Examiner has failed to establish a prima facie case of indefiniteness and non-enablement. The Examiner's basis for each of the § 112 rejections is that the appealed claims do not require the creation of a plasma during the RF power applying step (Ans. 4-8). However, the fact that the appealed claims are broad in this respect does not render them indefinite since breadth is not indefiniteness. Even if the claims were non-enabled for failure to require plasma creation, this fact alone does not render the claims indefinite. In any event, on this record, the Examiner has not carried the Examiner's burden of reasonably explaining why the scope of protection provided by the appealed claims is not adequately enabled by Appellants' disclosure. In this regard, the Examiner acknowledges that RF power can be used to provide heating instead of plasma creation (Ans. ¶ bridging pages 4- 5). Nevertheless, the Examiner asserts that Appellants' originally filed 6 Appeal 2008-4294 Application 10/461,638 disclosure "does not enable one to determine what the specific conditions are for depositing the claimed film, if for example the RF power was used only to heat, as is within the scope of the claims as written" (id.; emphasis deleted). The deficiency of this assertion is that the Examiner has not reasonably explained why one with ordinary skill in this art would not be able to determine without undue experimentation the conditions needed to achieve deposition of the film required by the appealed claims. The need for such an explanation is highlighted by the Examiner's admission that "RF heating for thermal CVD processes can be considered a conventional generic deposition technique" (Ans. 23). On this record, the Examiner has provided no reasonable basis for believing that an artisan would not be able to use this conventional deposition technique for depositing a film having the properties required by the appealed claims. CONCLUSIONS OF LAW For the above stated reasons, the Appellants have established that the Examiner erred in determining that the appealed claims are indefinite and non-enabled merely because they do not require plasma creation during the RF power applying step. Therefore, we cannot sustain either of the Examiner's rejections of claims 1 and 3-30 under the first and second paragraphs of 35 U.S.C. § 112. THE § 102 AND § 103 REJECTIONS BASED ON THE PRIMARY REFERENCES TO HYODO, GATES '930, AND BAO ISSUE Have Appellants established error in the Examiner's determination that the references applied in the above-noted rejections teach (expressly or 7 Appeal 2008-4294 Application 10/461,638 inherently) or would have suggested applying RF power to deposit a film having a dielectric constant less than 3.2 and compressive stress? FINDINGS OF FACT Concerning the § 102 rejection over the Hyodo patent, it is undisputed that Hyodo expressly teaches methods of depositing a film having a dielectric constant less than 3.2 (col. 12, ll. 37-46) and for depositing a film having compressive stress (col. 13, ll. 23-29). However, the Hyodo patent contains no express teaching of any method which deposits a film having both compressive stress and a dielectric constant less than 3.2. As for the § 102/§103 rejection over Gates '930, this reference teaches depositing a film having a dielectric constant less than 3.2 and an elastic modulus of about 5 or greater (Abstract). The Examiner finds that the films of Gates '930 having an elastic modulus of about 5 or greater would inherently encompass films having compressive stress (Ans. ¶ bridging 20-21). Alternatively, the Examiner finds that the disclosure of Gates '930, which incorporates by reference the disclosure of Grill '009, would have suggested optimizing stress values thereby resulting in films having compressive stress (id.). Regarding the § 102/§103 rejections over the Bao reference, Bao teaches depositing a film having a dielectric constant less than 3.2 and a higher resistance to crack initiation and propagation. (Abstract; ¶ [0023]). Although the reference contains no express disclosure that the film has compressive stress, the Examiner finds that Bao's films inherently would have compressive stress due to their crack resistance (Ans. 22). Alternatively, the Examiner concludes that, "given the teachings of Bao . . . 8 Appeal 2008-4294 Application 10/461,638 to produce crack resistant films, it would have been obvious to one of ordinary skill in the art to optimize the stress in [Bao's] film via known means in order to result in the type of stress, i.e., compressive, which would be consistent with the taught crack resistance" (id.). PRINCIPLES OF LAW A claim is anticipated only if each and every element set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Brothers, Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). For a § 102 rejection to be proper, the applied reference must clearly and unequivocally disclose the claimed subject matter or direct those skilled in the art to the claimed subject matter without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the applied reference. Such picking and choosing may be entirely proper in a § 103 obviousness rejection, but it has no place in a § 102 anticipation rejection. In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972). To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of 9 Appeal 2008-4294 Application 10/461,638 obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'l Co. v. Teleflex Co., 127 S. Ct. 1727, 1741 (2007). ANALYSIS In making the § 102 rejection over Hyodo, the Examiner has improperly combined low dielectric constant disclosure with disclosure concerning compressive stress which is, on this record, unrelated to a dielectric constant less than 3.2 as required by the appealed claims. While combining these seemingly unrelated disclosures may be proper in a § 103 obviousness rejection, it has no place in a § 102 anticipation rejection. In rejecting claims 1, 3-6, 8-19, and 21-23 over Gates '930, the Examiner has incorrectly found that films having the elastic modulus values of Gates '930 inherently would have a compressive stress characteristic. Aside from being apparently subjective, this finding is contradicted by the Examiner's express concession that "the examiner has never said that all values of elastic modulus ≥5 are necessarily compressive stress as previously implied by [A]ppellant, but that such values necessarily encompass or include the claimed generic compressive stress, particularly for the higher values of this taught open ended range" (Ans. 20). Contrary to this concession, not just some but all films having elastic modulus values in the entire range disclosed by Gates '930 must necessarily possess the characteristic of compressive stress in order to satisfy the principles of inherency. As for the Examiner's conclusion that the Gates '930 disclosure would have suggested providing films with compressive stress, this obviousness determination is based on mere conclusory statements rather than articulated reasoning with rational underpinning in the form of objective evidence. 10 Appeal 2008-4294 Application 10/461,638 In rejecting claims 7, 20, and 24-30 over Gates '930 optionally in view of Matsuki, the Examiner does not rely on Matsuki for supplying any of the deficiencies discussed above. Therefore, this rejection is improper for the same reasons that the § 102 and § 103 rejections over Gates '930 alone are improper. In rejecting claims 3-15 and 17-21 as anticipated by Bao, the Examiner has found that the films of this reference inherently would have compressive stress due to their crack resistance characteristic. This finding, however, is not supported by any extrinsic evidence and therefore must be regarded as inappropriate speculation. Similarly, the alternative rejection of these claims as obvious over Bao is based on mere conclusory statements rather than the rational underpinning of objective evidence to support the legal conclusion of obviousness. In rejecting claims 1, 3-10, 16, and 22 under § 103 over Bao optionally in view of Grill '443 or Matsuki, the Examiner does not rely on these last two mentioned references to supply the above discussed deficiencies of Bao (Ans. ¶ bridging 22-23). For this reason, the rejection under consideration is improper for the same reasons that the § 102 and § 103 rejections of claims 13-15 and 17-21 over Bao are improper. CONCLUSIONS OF LAW For the above stated reasons, Appellants have shown error in the Examiner's determinations of anticipation and obviousness in the rejections under review. Accordingly, we cannot sustain: the § 102 rejection of claims 1, 3-11, and 13-22 as anticipated by Hyodo; 11 Appeal 2008-4294 Application 10/461,638 the § 102/§103 rejections of claims 1, 3-6, 8-19, and 21-23 as anticipated by or obvious over Gates '930; the § 103 rejection of claims 7, 20, and 24-30 as unpatentable over Gates '930 optionally in view of Matsuki; the § 102/§103 rejections of claims 13-15 and 17-21 as anticipated by or obvious over Bao; and the § 103 rejection of claims 1, 3-10, 16, and 22 as unpatentable over Bao optionally in view of Grill '443 or Matsuki. THE § 103 REJECTIONS BASED ON GRILL '443 AS A PRIMARY REFERENCE ISSUE Have Appellants established error in the Examiner's conclusion that it would have been prima facie obvious for one with ordinary skill in this art to modify the method of Grill '443 so that the film produced thereby has compressive stress? FINDINGS OF FACT Grill '443 discloses a method of applying RF power to deposit film having a low dielectric constant of less than 3.2 as required by the rejected claims (Abstract, col. 2, ll. 36-38, and col. 6, ll. 24-59). While Grill '443 contains no disclosure that the low dielectric films thereof should have compressive stress, Li evinces that low dielectric films which have high tensile stress are problematic (¶ bridging col. 1-2). Further, Wolf teaches that nearly all films are in a state of internal stress, that highly stressed films are generally undesirable, and that films which are in tensile stress may crack if their elastic limits are exceeded 12 Appeal 2008-4294 Application 10/461,638 (¶ bridging 114-115). Wolf also teaches that the intrinsic stress in a film depends on thickness, deposition rate, deposition temperature, ambient pressure, method of film preparation, and type of substrate used, among other parameters (115 first full ¶). Finally, Grill '443 incorporates by reference the teachings of Serial No. 09/107,567 (col. 1, ll. 58-67) which has since matured into the patent to Grill '009. The Grill '009 patent teaches a method of producing low dielectric constant films which exhibit very low crack propagation and which have low internal stresses (Abstract, col. 1, ll. 56-59, col. 2, ll. 22-25). The Examiner finds that the low crack propagation teachings of Grill '009 in combination with Wolf's teachings that cracks are propagated by tensile stress suggest that compressive stress is present; alternatively, the Examiner concludes that these teachings would have motivated an artisan to provide desirable compressive stress in the films of Grill '443 in order to obtain the combination of low crack propagation and low dielectric constant as desired by Grill '443 (col. 1, ll. 58-67). (Ans. 12, first full para., para. bridging 12- 13.) PRINCIPLES OF LAW The test for obviousness is what the collective teachings of the prior art would have suggested to one of ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). When there is motivation to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product not of innovation 13 Appeal 2008-4294 Application 10/461,638 but of ordinary skill and common sense. In this instance, the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 127 S. Ct. at 1740. ANALYSIS Initially, we observe that Appellants do not separately argue with any reasonable specificity the rejections of the dependent claims including the separate rejections of dependent claims 4 and 17 and of dependent claims 12 and 23 (Br. 13-17). Accordingly, we will focus on independent claims 1 and 13 in assessing the merits of the § 103 rejections under review which rely upon Grill '443 as a primary reference. Appellants argue that the applied references to Grill '443, Li, and Wolf "do not teach or suggest depositing a low dielectric constant film having compressive stress as asserted by the Examiner" (App. Br. 13). According to Appellants, "[o]btaining a film having both compressive stress and a dielectric constant less than 3.2 by controlling the RF power would require more than routine experimentation" (id.). On the record before us, Appellants' position lacks convincing merit. We agree with the Examiner that the collective teachings of the applied prior art would have suggested modifying the method of Grill '443 so as to achieve a film having not only a low dielectric constant of 3.2 or less but also low internal stress in the form of compressive stress. In this way, tensile stress and the problems associated therewith (e.g., crack propagation) would be avoided. Furthermore, the teachings of Wolf evince that it would have been obvious for an artisan to select and manipulate the parameters necessary to achieve the desired film characteristic of compressive stress. 14 Appeal 2008-4294 Application 10/461,638 In this latter regard, we are mindful of Appellants' previously quoted statement that "[o]btaining a film having both compressive stress and a dielectric constant less than 3.2 by controlling the RF power would require more than routine experimentation" (App. Br. 13). However, this statement lacks persuasive merit for two reasons. First, the statement is not supported by objective evidence and therefore constitutes mere attorney argument with no apparent basis in fact. Second, contrary to the implication in this statement, independent claims 1 and 13 do not require that RF power be the sole parameter responsible for achieving the recited compressive stress. CONCLUSIONS OF LAW Appellants have failed to establish error in the Examiner's conclusion that it would have been prima facie obvious to modify the method of Grill '443 in such a way as to provide the film produced thereby with the characteristic of compressive stress. As a consequence, we sustain the following rejections under 35 U.S.C. § 103(a): the rejection of claims 1, 3, 5-11, 13-16, and 18-22 as being unpatentable over Grill '443 in view of Li and further in view of Wolf; the rejection of claims 4 and 17 as being unpatentable over Grill '443, Li, Wolf, and Grill '398; and the rejection of claims 12 and 23 as being unpatentable over Grill '443, Li, Wolf, Lukas, Hawley, Gates '468, and Nakayama. 15 Appeal 2008-4294 Application 10/461,638 THE § 102 AND § 103 REJECTIONS BASED ON MATSUKI ISSUE Have Appellants shown evidentiary inadequacy in the extrinsic evidence relied upon by the Examiner to establish that the film of Matsuki's sole example has compressive stress? FINDINGS OF FACT The method of Matsuki's example deposits film having a dielectric constant less than 3.2 (col. 11, l. 64--col. 12, l. 24). The Examiner finds that the parameters of Matsuki's example closely correspond to the parameters of Hyodo's example 3 which deposits film having compressive stress (Ans. ¶ bridging 17-18; Hyodo, cols. 15-16). Based on these findings, the Examiner determines that the example of Matsuki not only expressly describes a film having a dielectric constant less than 3.2 but also inherently describes the film as having compressive stress (Ans., id.) 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 Brothers, Inc., 814 F.2d at 631. To establish inherency, the extrinsic evidence must make clear that the descriptive matter is necessarily present in the thing described in the reference. In re Robertson, 169 F.3d at 745. ANALYSIS We again observe that Appellants do not separately argue with any reasonably specificity the rejections of the dependent claims. Accordingly, 16 Appeal 2008-4294 Application 10/461,638 the dependent claims under rejection will stand or fall with independent claims 1 and 13. Concerning the § 102 rejection of claims 1, 3-11, and 13-22 over Matsuki, Appellants argue that "the examples [sic, sole example] given in Matsuki . . . , which the Examiner asserts are substantially the same as those given in Hyodo . . . , also do not disclose a film having both compressive stress and a dielectric constant of less than 3.2" (App. Br. 19). However, this argument fails to even acknowledge much less rebut the inherency theory on which this rejection is based. More specifically, this argument identifies no evidentiary inadequacy in the extrinsic evidence (i.e., example 3 of Hyodo in comparison with the sole example of Matsuki) which the Examiner relies upon in support of the inherency theory. CONCLUSIONS OF LAW Appellants have shown no evidentiary inadequacy in the extrinsic evidence relied upon by the Examiner to establish that the example of Matsuki deposits a film which inherently has compressive stress. For this reason, we sustain the § 102 rejection of claims 1, 3-11, and 13-22 as being anticipated by Matsuki. We also sustain the § 103 rejection of corresponding claims 1, 3, 5-11, 13-16, and 18-22 as being unpatentable over Matsuki in view of Li and Wolf on the grounds that anticipation is the epitome of obviousness. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). 17 Appeal 2008-4294 Application 10/461,638 SUMMARY We have sustained the § 103 rejections based on Grill '443 and other references of claims 1 and 3-23, the § 102 rejection based on Matsuki of claims 1, 3-11, and 13-22, and the § 103 rejection based on Matsuki and other references of claims 1, 3, 5-11, 13-16, and 18-22. We have not sustained any of the other rejections advanced by the Examiner in this appeal including the single prior art rejection of claims 24- 30. ORDER The decision of the Examiner is affirmed-in-part. 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-IN-PART cam PATTERSON & SHERIDAN, LLP---APPM/TX 3040 POST OAK BLVD., SUITE 1500 HOUSTON TX 77056 18 Copy with citationCopy as parenthetical citation