Ex Parte Zhang

Board of Patent Appeals and Interferences

Sep 15, 2010

10434294 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte GANG ZHANG
______________

Appeal 2009-004951
Application 10/434,294
Technology Center 1700
_______________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 2, 4-11, and 14-28 in the Office Action
mailed September 11, 2007. Appellant subsequently canceled claim 10 in
the Amendment filed March 11, 2008, which was entered in the Advisory

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 2009-004951
Application 10/434,294
2
Action mailed April 9, 2008, leaving claims 1, 2, 4-9, 11, and 14-28 for
consideration. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2007).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellant’s invention of an electrochemical
fabrication process for producing a three-dimensional structure from a
plurality of adhered layers, and is representative of the claims on appeal:
1. An electrochemical fabrication process for producing a three-
dimensional structure from a plurality of adhered layers, the process
comprising:
(A) supplying at least one contact mask having at least one opening;
(B) selectively depositing a first material via the at least one opening
onto a substrate or previously deposited material to form a first portion of a
layer and depositing at least a second material to form a second portion of
the layer, wherein one of the first material or the second material comprises
a structural material and the other comprises a sacrificial material, and
wherein the depositing of the first material or the second material comprises
an electrodeposition operation;
(C) forming a plurality of layers such that each successive layer is
formed adjacent to and adhered to a previously formed layer, wherein said
forming comprises repeating (B) a plurality times; and
(D) after formation of the plurality of layers, separating at least a
portion of the sacrificial material from the structural material using an
etching solution that comprises (1) ammonium hydroxide, (2) a chlorite salt,
and (3) a nitrate salt, wherein the nitrate salt is provided in an effective
quantity such that pitting of the structural material forming the three-
dimensional structure does not occur.
Appellant requests review of this ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1, 2, 4-8, 11, 14-19,
21-25, 27, and 28 over Cohen (US 6,027,630) in view of Slominski (US
Appeal 2009-004951
Application 10/434,294
3
3,466,208), further in view of Kataoka (US 2002/0070120 A1). Br. 6;2 Ans.
3.
We summarily sustain these grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claim 9 over Cohen in view
of Slominski, further in view of Pan (US 5,011,580); and claims 20 and 26
over Cohen in view of Slominski, further in view of Fadgen (US 3,896,043).
Ans. 7 and 8. Appellant acknowledges these grounds but does not request
review of or argue these grounds. Br., e.g., 6 and 9-10. See Manual of
Patent Examining Procedure (MPEP) § 1205.02 (8th ed., Rev. 3, August
2005) (“If a ground of rejection stated by the examiner is not addressed in
the appellant’s brief, that ground of rejection will be summarily sustained by
the Board.”).
Opinion
I
The record shows that Appellant filed the two Declarations under 37
C.F.R. § 1.132 listed in the Evidence Appendix with the Amendment filed
May 8, 2008, and that the Notice of Appeal was filed March 11, 2008.
In these respects, 37 C.F.R. §§ 41.33(d)(1) and (d)(2) provide in
pertinent part: “. . . other evidence filed after the date of filing an appeal . . .
and prior to the date of filing a brief . . . may be admitted if the examiner
determines that the . . . evidence overcomes all rejections under appeal
and that a showing of good and sufficient reasons why the . . . other
evidence is necessary and was not earlier presented has been made,” and
“[a]ll . . . other evidence filed after the date of filling an appeal . . . will not

2 We considered the Appeal Brief filed June 30, 2008.
Appeal 2009-004951
Application 10/434,294
4
be admitted . . . .” 37 C.F.R. § 41.37(c)(2) provides in pertinent part: “A
brief shall not include . . . any new or non-admitted . . . other evidence. . . .
See . . . § 41.33 for . . . other evidence filed after the date of filing the
appeal.”
On this record, the two Declarations constitute evidence filed after the
Notice of Appeal and prior to the Brief, and thus are inadmissible on the
basis of the above rules. Indeed, it is apparent that the Examiner did not
determine that the evidence in the Declarations overcame all rejections under
appeal as required by the rule. See Ans., e.g., 12-13. See MPEP § 1206, II.
Affidavits or Other Evidence (8th ed., Rev. 3, August 2005).
Accordingly, Appellant’s reliance on the inadmissible evidence in the
two Declarations to any extent in argument presented in the Brief is
improper. See MPEP § 1205.02 (8th ed., Rev. 3, August 2005) (“Reference
to unentered evidence is not permitted in the brief.”).
Thus, we have not considered arguments submitted at pages 10-14 and
16-18 of the Brief that relies on the two Declarations.
II
We have considered the arguments submitted at pages 14 to 16 of the
Brief with respect to the application of the combination of Cohen and
Slominski to claims 1 and 23. We decide this appeal with respect to the first
ground of rejection based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
We disagree with Appellant’s position that the Examiner erred in
relying on Slominski for the reasons advanced by Appellant. Appellant
submits that Slominski would have taught away from the combination
thereof with Cohen because Slominski discloses that when ammonium
Appeal 2009-004951
Application 10/434,294
5
nitrate is employed without some ammonium bicarbonate along with
ammonium hydroxide and a chlorite salt in an etchant solution for copper as
disclosed by Cohen, maximum etching rates are obtained but with the effect
that solder is darkened and the buffering capacity of the system is reduced
which results in damage to the substrate. Br. 15, citing Slominski col. 1, ll.
50-65, and col. 2, ll. 1-23.
The Examiner determines that one of ordinary skill in the art would
have been led by the combination of Cohen and Slominski to modify
Cohen’s copper etching solution of ammonium hydroxide and sodium
chlorite to include ammonium nitrate in view of Slominski’s copper etching
solution of ammonium hydroxide, sodium chlorite, and ammonium nitrate,
because the use of ammonium nitrate increases the copper etch rate. Ans. 4
and 6, citing Cohen, e.g., col. 15, ll. 54-67, and Slominski col. 1, ll. 50-65,
and Table 1. Thus, the Examiner concludes that the combination of Cohen
and Slominski meet step (D) of the claimed process encompassed by claim
1.
We find that Slominski would have taught one of ordinary skill in the
art that when no ammonium bicarbonate is present in the copper etching
solution containing ammonium nitrate, the use of the etchant solution “has
two shortcomings for certain applications.” Slominski col. 2, ll. 1-5. First,
the etchant solution will darken solder which can be a problem if solder is
present as a resist or for other purposes on a printed circuit board that is
etched. Slominski col. 2, ll. 5-11. Second, the “nitrate substitution for
ammonium bicarbonate” will “substantially eliminat[e] the buffering
capacity of the system,” which is not a problem if “the solution is consumed
Appeal 2009-004951
Application 10/434,294
6
in a day’s operation . . . but if the solution is kept over any length of time,
lack of buffering in the solution may be a handicap.” Slominski col. 2, ll.
11-18. In these respects, Slominski would have taught that it is thus
“sometimes advisable to employ a solution in which a part only of the
ammonium bicarbonate.” Slominski col. 2, ll. 18-23.
On this record, we cannot agree with Appellant that Slominski would
have taught away from including Slominski’s ammonium nitrate in Cohen’s
etchant solution for two reasons. First, as the Examiner points out, one of
ordinary skill in the art would have used ammonium bicarbonate in the
etchant solution if necessary to avoid the two problems as taught by
Slominski. Ans. 15-16. In this respect, the Examiner properly finds that the
claim language, “an etching solution that comprises” the three listed
ingredients, opens claim 1 to include etching solutions that contain the three
ingredients and any other ingredients, including ammonium bicarbonate.
See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555
(Fed. Cir. 1995); In re Baxter, 656 F.2d 679, 686 (CCPA 1981). Second,
Slominski teaches one of ordinary skill in the art that the etchant solution
without ammonium bicarbonate can be used where solder is not present on
the substrate, and where the etchant solution is removed from the system
after the etching operation.
Thus, we determine that, contrary to Appellant’s position, Slominski
would not have led one of ordinary skill in the art away from using
ammonium nitrate in an etching solution containing ammonium hydroxide
and sodium chlorite, with or without ammonium bicarbonate. See, e.g., In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior art disclosure does not
Appeal 2009-004951
Application 10/434,294
7
teach away if the “disclosure does not criticize, discredit, or otherwise
discourage the solution claimed.”).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Cohen, Slominski, and Kataoka with Appellant’s
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1, 2, 4-8, 11, 14-19, 21-25, 27,
and 28 would have been obvious as a matter of law under 35 U.S.C. §
103(a).
III
We have affirmed all of the grounds of rejection advanced on appeal
by the Examiner.
The Primary 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)(v).

AFFIRMED

kmm

MICROFABRICA INC.
ATT: DENNIS R. SMALLEY
7911 HASKELL AVENUE
VAN NUYS, CA 91406