Ex Parte Sturtevant et al

Board of Patent Appeals and Interferences

Jan 25, 2012

11011823 (B.P.A.I. Jan. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/011,823 12/14/2004 David J. Sturtevant 04-1851 8127
24319 7590 01/25/2012
LSI CORPORATION
1621 BARBER LANE
MS: D-105
MILPITAS, CA 95035
EXAMINER
DUDA, KATHLEEN
ART UNIT PAPER NUMBER
1722
MAIL DATE DELIVERY MODE
01/25/2012 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 DAVID J. STURTEVANT, PHONG DO, and
DODD DEFIBAUGH
____________________

Appeal 2010-004951
Application 11/011,823
Technology Center 1700
____________________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1 and 3-7 under 35 U.S.C. § 102(b) as anticipated by
Kemp1 (Final Office Action ¶ 5). We have jurisdiction under 35 U.S.C.
§ 6(b).
In the Answer, the rejection is set forth as made under 35 U.S.C.
§102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Kemp (Ans. § (9) at p.4). The Examiner did not specifically

1 Kemp, US 5,308,741, patented May 3, 1994.
Appeal 2010-004951
Application 11/011,823

2
call attention to the addition of the § 103 ground. Appellants neither
disputed the change by petition to the Director, nor filed a Reply Brief
responding to any new points made in the Answer.
It is unclear from the record whether Appellants recognized the
addition of the § 103 ground. We affirm, but, in order to protect Appellants’
due process rights, we denominate our affirmance as involving a new ground
of rejection so that Appellants are afforded an opportunity to respond.
The claimed invention is directed to a method of exposing images on
a wafer using multiple reticles, each used for multiple exposures. Appellants
do not argue any claim apart from the others, therefore, we select claim 1 as
representative. Claim 1 is reproduced below:
1. A method or exposing images on a wafer comprising:
using a first reticle to expose a first image on the wafer at
a first location on the wafer;
shifting the first reticle;
using the first reticle expose the first image on the wafer
again, at a second location;
using a second reticle to expose a second image on the
wafer at a third location on the wafer;
shifting the second reticle; and
using the second reticle to expose the second image on
the wafer again, at a fourth location,
wherein each reticle us [sic, is] used for multiple
exposures on the wafer.
(Claim 1, Claims App. at Br. 8 (indentation added).)
Appeal 2010-004951
Application 11/011,823

3
While we agree with Appellants that Kemp fails to “describe,” as that
word is used in §102, using each of two reticles for multiple exposures (Br.
4-5), there is a basis for concluding that so using the reticles would have
been obvious to one of ordinary skill in the art at the time of the invention.
Kemp specifically discloses shifting mask 11, a reticle, to a second
position (Kemp, col. 6, ll. 56-58). There is no dispute that this mask shifting
can be used for multiple exposures in a double exposure process (Br. 5; see
also Kemp, col. 12, ll. 1-22 and Fig. 17). In explaining the background of
the invention, Appellants’ own Specification discloses that “[t]o achieve
complete wafer coverage, the wafer is repeatedly 'stepped' from position to
position under the optical column until full exposure is achieved.” (Spec.
2:14-16). Therefore, in the process of Kemp, one of ordinary skill in the art
would have repeatedly shifted the reticle mask by stepping the relative
position of the reticle and wafer, and repeated the double exposure process at
the new location.
Kemp also discloses a double exposure process in which a first reticle
is used for one exposure in the double exposure process, and then a second
reticle is used for the second exposure in the double exposure process
(Kemp, col. 12, ll. 7-8). Again, in order to fully form all the images in all of
the locations of the wafer, it would have been necessary to shift each of the
two reticles, by shifting to an adjacent location, and repeat this double
exposure process in order to completely expose all the necessary locations of
the wafer as is known in the art. In so doing, the ordinary artisan would
have been repeatedly exposing and shifting using two different reticles as
claimed. Therefore, we agree with the Examiner that it would have been
Appeal 2010-004951
Application 11/011,823

4
obvious to one of ordinary skill in the art at the time of the invention to
perform the method as claimed.

CONCLUSION
While we do not sustain the Examiner’s rejection under 35 U.S.C.
§102(b), we do sustain the Examiner’s rejection under 35 U.S.C. § 103(a).
Because the Examiner’s rationale under § 103(a) was presented for the first
time in the Answer without calling attention to the fact that a new ground of
rejection was being made and in light of our additional fact finding, out of an
abundance of caution, we denominate our affirmance as involving a new
ground of rejection to afford Appellants an opportunity to respond.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
Appeal 2010-004951
Application 11/011,823

5

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

AFFIRMED
NEW GROUND OF REJECTION

cam