Ex Parte Xu et al

Board of Patent Appeals and Interferences

Nov 10, 2010

10919224 (B.P.A.I. Nov. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte FRANK Y. XU, CHRISTOPHER J. MACKAY,
PANKAJ B. LAD, IAN M. MCMACKIN, VAN N.
TRUSKETT, WESLEY MARTIN, EDWARD B. FLETCHER,
DAVID C. WANG, NICHOLAS A. STACEY
and MICHAEL P.C. WATTS
________________

Appeal 2009-014692
Application 10/919,224
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-014692
Application 10/919,224

The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6, 9-17 and 20-28, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an imprint lithography method. Claims 1
and 26 are illustrative:
1. An imprint lithography method comprising:
sequentially depositing a plurality of discrete and spaced-apart
droplets on a substrate, the droplets comprising polymerizable components,
the polymerizable components having substantially uniform rates of
evaporation over a pre-determined length of time;
allowing the droplets to spread on the substrate to form a flowable
region; and solidifying said flowable region to form a solidified layer with
substantially uniform etch characteristics.

26. An imprint lithography method comprising:
sequentially depositing a plurality of discrete and spaced-apart
droplets of a composition on a substrate, the composition comprising
polymerizable components, the polymerizable components comprising a
silicon-containing acrylate component and a silicon-free acrylate
component, each of which has a rate of evaporation associated therewith that
is within a predetermined range during an interval of time;
allowing the droplets to spread on the substrate to form a
polymerizable region; and
solidifying said polymerizable region.

The Reference
Sreenivasan 2004/0021254 A1 Feb. 5, 2004
The Rejections
The claims stand rejected over Sreenivasan as follows: claims 1-6, 13-
17 and 24-28 under 35 U.S.C. § 102(e) and claims 9-12 and 20-23 under
35 U.S.C. § 103.
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Application 10/919,224

OPINION
We reverse the rejections.
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Sreenivasan discloses 1) polymerizable components
having substantially uniform rates of evaporation over a predetermined
length of time (claims 1 and 15), or 2) polymerizable components, each of
which has a rate of evaporation associated therewith that is within a
predetermined range during an interval of time (claim 26)?
Findings of Fact
Sreenivasan discloses “methods and systems for micro- and nano-
imprint lithography processes” (¶ 0002). Sreenivasan teaches that
“[p]atterning of low viscosity light curable liquids solves each of the issues
facing hot embossing techniques by utilizing a low-viscosity, light-sensitive
liquid” (¶ 0129). “The curable liquid may be composed of a variety of
polymerizable materials. Generally, any photopolymerizable material may
be used” (¶ 0130).
Analysis
The Examiner argues that the Appellants’ claims 1 and 15 can be
interpreted as meaning that each component has a rate of evaporation which
is substantially different from those of the other components but remains
substantially uniform over a predetermined length of time (Ans. 7-8).
The Appellants argue that “[t]he Examiner has interpreted the claims
in an unreasonably broad manner, outside of the context of the specification
and drawings, and inconsistent with the Appellants’ use of the claim
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Application 10/919,224

language” (Br. 5). The Appellants, however, do not provide a claim
interpretation.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
The Appellants’ Specification states that “[p]rior art silicon-
containing compositions in which the silicon-containing acrylate evaporated
faster than the remaining components of the composition were found to
present etch non-uniformity” (Spec. 15, ¶ 0031). The Appellants disclose
that “[t]he present invention is based upon the discovery that etch non-
uniformity in a layer that is formed by solidification of a deposited liquid is
a function of the relative rates of evaporation of the components that form
the layer” (Spec. 4, ¶ 0010) and that “[t]he present invention attenuates, if
not avoids, etch non-uniformity in a silicon-containing layer by configuring
compositions for imprinting material in which the desirable components
have desired rates of evaporation during a desired interval of time”
(Spec. 16, ¶ 0032). The Appellants state that their compositions “possess
desirable characteristics in that the polymerizable components thereof have
substantially uniform rates of evaporation that provide a substantially
uniform density of silicon over the volume of solidified imprinting
layer 134” (Spec. 17, ¶ 0033) and that “[a] maximum variation of the weight
of the silicon content between any two regions of solidified imprinting
layer 134 should be no greater than 5%.” See id. The Appellants disclose
that “[a]lthough it is possible to provide compositions in which the rate of
evaporation of the desired components are substantially the same for an
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Application 10/919,224

infinite period, this was determined to be unnecessary” (Spec. 16, ¶ 0032)
and that their exemplified polymerizable components “are selected so as to
have a desired relative rate of evaporation in the interval of time between
deposition and exposure to actinic radiation.” See id.
Thus, the Appellants’ Specification indicates that by “the
polymerizable components having substantially uniform rates of evaporation
over a pre-determined length of time” in claims 1 and 15 the Appellants
mean that the rates of evaporation of polymerizable components must be
sufficiently uniform over a time period such as between deposition and
exposure to actinic radiation to provide substantially uniform etch
characteristics, e.g., etch characteristics resulting from the maximum
variation of the weight of a component such as silicon between any two
regions of a solidified imprinting layer being limited to an amount such as
no greater than 5%. The Appellants’ Specification indicates that by the
claim 26 language “the polymerizable components comprising a silicon-
containing acrylate component and a silicon-free acrylate component, each
of which has a rate of evaporation associated therewith that is within a
predetermined range during an interval of time” the Appellants mean that the
acrylate components have rates of evaporation that are matched sufficiently
during a time period such as between deposition and exposure to actinic
radiation to provide substantially uniform etch characteristics, e.g., etch
characteristics resulting from the maximum variation of the weight of a
component such as silicon between any two regions of a solidified
imprinting layer being limited to an amount such as no greater than 5%.
The Examiner, in making the argument that “the claim language also
could describe a scenario where each component has its own rate of
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Application 10/919,224

evaporation (because the claim says rates), wherein each individual rate of
each individual component remains uniform over a pre-determined length of
time” (Ans. 7-8), does not address the Appellants’ Specification and explain
how the Examiner’s claim interpretation is consistent with the Specification.
As indicated by the above discussion of the Appellants’ Specification, there
does not appear to be consistency between the Examiner’s claim
interpretation and the Specification.
The Examiner argues that “Sreenivasan teaches an imprint lithography
technique of sequentially depositing a plurality of droplets comprising
polymerizable components having substantially uniform rates of evaporation
over some predetermined length of time (paragraphs [sic] 0135)” (Ans. 3).
The Appellants argue (Br. 6):
Since the curable composition of Sreenivasan differs from the
imprinting material in the Application, there is no reason to believe
that the polymerizable components of Sreenivasan have a
substantially uniform rate of evaporation, as required by claim 1. In
fact, the chemical structure and physical properties of n-butyl acrylate
(Sreenivasan, para. [0135]) are very different from the chemical
structure and physical properties of isobornyl acrylate (Application,
para. [0025]).

The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear,
either expressly or inherently, in a single reference. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990); Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989); In re King, 801 F.2d
1324, 1327 (Fed. Cir. 1986). The Examiner has not provided evidence that
Sreenivasan’s polymerizable components relied upon by the Examiner, i.e.,
(n-butyl acrylate, (3-acryloxypropyl) tris-trimethylsiloxane-silane and 1,3-
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bis(3-methacryloxypropyl)-tetramethyl disiloxane) (¶ 0135) have
substantially uniform rates of evaporation over a predetermined length of
time as required by the Appellants’ claims 1 and 15 or each have a rate of
evaporation associated therewith that is within a predetermined range during
an interval of time as required by the Appellants’ claim 26, as those claim
limitations are interpreted above.
The Examiner argues “that the difference in the two materials would
not lead the disclosure of Sreenivasan to create a product with substantially
non-uniform etch characteristics, and the appellant does not argue that they
would either” (Ans. 9).
The Appellants, in their Brief, argue that “the substantially uniform
rates of evaporation of the polymerizable components contribute to the
substantially uniform etch characteristics of the solidified layer” (Br. 5) and
that “the Examiner has failed to indicate how the cited art yields a solidified
layer with substantially uniform etch characteristics.” See id. Thus, the
Appellants have indicated disagreement with the Examiner’s argument that
the differences between the compounds of Sreenivasan and the Appellants
are so small that there is reason to believe that if the Appellants’ compounds
produce substantially uniform etch characteristics, Sreenivasan’s compounds
also do so, and the Examiner has not provided the required evidence
supporting the Examiner’s argument.
Regarding the rejection under 35 U.S.C. § 103 the Examiner does not
provide an argument as to why Sreenivasan would have rendered the
above-discussed limitations in the independent claims prima facie obvious to
one of ordinary skill in the art (Ans. 6-7).

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Conclusion
The Appellants have indicated reversible error in the Examiner’s
determination that Sreenivasan discloses 1) polymerizable components
having substantially uniform rates of evaporation over a predetermined
length of time (claims 1 and 15), and 2) polymerizable components, each of
which has a rate of evaporation associated therewith that is within a
predetermined range during an interval of time (claim 26).
DECISION/ORDER
The rejections over Sreenivasan of claims 1-6, 13-17 and 24-28 under
35 U.S.C. § 102(e) and claims 9-12 and 20-23 under 35 U.S.C. § 103 are
reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

tc

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