Ex Parte Wang

Board of Patent Appeals and Interferences

Oct 6, 2009

10913745 (B.P.A.I. Oct. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TAK KUI WANG
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Appeal 2009-006508
Application 10/913,745
Technology Center 1700
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Decided: October 6, 2009
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 3-13. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
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I. STATEMENT OF THE CASE
The invention relates to a method for making a structure, such as a
transmissive or reflective grating, by using sequential lift off masks that
provide the proper offset for forming sequentially narrower optical element
layers on top of previously deposited optical element layers. (Spec. ¶¶ 11-
20). Claim 1 is illustrative of the subject matter on appeal:
1. A method for making a diffractive optical element, comprising:
forming a first lift-off mask that exposes a portion of a substrate;
depositing a first thin film over the substrate;
removing the first lift-off mask to leave behind a first optical element
on the exposed portion of the substrate;
forming a second lift-off mask that exposes a portion of the first
optical element;
depositing a second thin film over the substrate; and
removing the second lift-off mask to leave behind a second optical
element on the exposed portion of the first optical element;
wherein the second lift-off mask covers sidewalls of the first optical
element.
Appellant requests review of the rejections maintained by the
Examiner, namely, the rejection of claims 1, 3, and 5-9 under 35 U.S.C.
§ 102(b) as anticipated by JP 2001-1000181 (Kato, et al., published April 13,
2001)(hereinafter “JP ‘018”) and the rejection of claims 4 and 10-13 under
35 U.S.C. § 103(a) as obvious over JP ‘018 in view of JP 04-151220
(Nakada et al., published May 25, 1992)(hereinafter “JP ‘220”).

1 We rely upon and cite to the English translation of JP ‘018 made of record
on November 24, 2008.
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II. ISSUE ON APPEAL
The focus of this appeal is on a limitation within claim 1. Appellant
contends that JP ‘018 does not teach or suggest a second lift-off mask that
“covers sidewalls of the first optical element” (App. Br. 9-10). The
Examiner responds that the resist pattern formed from the negative of
chromium mask 16 would cover the left side portion of the first CaF2 layer
(i.e., the first optical layer) (Ans. 6).
The sole issue on appeal arising from the contentions of Appellant and
the Examiner is: has Appellant shown that the Examiner reversibly erred in
finding that JP ‘018 teaches a second lift-off mask that “covers sidewalls of
the first optical element”? We answer this question in the negative.
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the issue
on appeal:
1. JP ‘018 is directed to forming a fine structure, like a diffraction
grating, made of layers of CaF2 (i.e., optical elements) using a lift-off
process, which is shown in Figures 4(a) through 4(d) (JP ‘018, ¶¶ 8, 26,
and 27). Figures 4(a) through 4(d) of JP ‘018 are reproduced below:
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Figures 4(a) through 4(d) depict production cross-sectional views of the
diffraction optical device manufactured using a lift-off process (JP ‘018,
¶ 26).
2. In the lift-off process of JP ‘018, a CaF2 film pattern 15 is deposited
onto a substrate 11. To obtain the film pattern 15, a specified resist
development treatment is performed to create a resist pattern 13. Figures
4(a) and 4(b) shows that resist pattern 13 is the negative of chromium mask
12. (Mask 12 in Figure 4(a) is mislabeled as mask “17”, but the same mask
is labeled mask “12” in Figure 4(d).) A first CaF2 film 14 is deposited in a
pattern 15 defined by the first resist pattern 13. First resist pattern 13 is
shown in Figure 4(b) covering both left and right sidewalls of CaF2 film 14.
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The resist pattern is removed to leave film pattern 15 shown in Figure 4(c).
(JP ‘018, ¶ 26-27; Figures 4(a) through 4(d).)
3. JP ‘018 teaches that the same procedure is repeated using second and
third chromium masks 16 and 17, respectively (JP ‘018, ¶ 27; Figure 4(d)).
Accordingly, the second and third resist patterns are the negative of
chromium masks 16 and 17, respectively.
IV. PRINCIPLES OF LAW
The burden is on the appellants to demonstrate reversible error in the
Examiner’s findings of fact or conclusions of law. See, In re Crish, 393
F.3d 1253, 1259 (Fed. Cir. 2004) (“[W]hen the prior art evidence reasonably
allows the PTO to conclude that a claimed feature is present in the prior art,
the evidence ‘compels such a conclusion if the applicant produces no
evidence or argument to rebut it.’”) (quoting In re Spada, 911 F.2d 705, 708
n.3).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In general, a limitation is
inherent if it is the “natural result flowing from” the explicit disclosure of the
prior art. Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed.
Cir. 2003).
V. ANALYSIS
Although the second resist pattern formed from the negative of
chromium mask 16 (i.e., the second lift-off mask) is not explicitly shown in
Figures 4(a) through 4(d), there is sufficient evidence in the teachings of
JP ‘018 to find, as the Examiner did (Ans. 6), that the second resist pattern
covers the sidewalls of CaF2 film pattern 15, in the same manner as the first
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resist pattern 13 covers the sidewalls of film pattern 14 as shown in Figure
4(b) (FF 1-3). Appellant’s conclusory assertion that this limitation is not
taught by JP ‘018 does not specifically challenge the Examiner’s findings
articulated in the Answer or explain why these findings are deficient.
Merely pointing out what a claim recites is not considered an argument for
separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii). Since the
Examiner's finding is reasonable and the Appellant has not challenged it, we
accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964).
Accordingly, Appellant has not shown that the Examiner reversibly
erred in finding that JP ‘018 teaches a second lift-off mask that “covers
sidewalls of the first optical element.”
We need not discuss JP ‘220 as Appellant does not advance any
further arguments directed to the combination of JP ‘018 with JP ‘220.
VI. CONCLUSION
For the reasons discussed above and provided by the Examiner, we
sustain the Examiner’s rejections of claims 1, 3, and 5-9 under 35 U.S.C.
§ 102(b) as anticipated by JP ‘018 and the rejection of claims 4 and 10-13
under 35 U.S.C. § 103(a) as obvious over JP ‘018 in view of JP ‘220.
VII. DECISION
We affirm the Examiner’s decision.
VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v) (2008).

AFFIRMED

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KATHY MANKE
AVAGO TECHNOLOGIES LIMITED
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