Ex Parte Zhang

Patent Trial and Appeal Board

Jun 19, 2014

11652735 (P.T.A.B. Jun. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TONGLONG ZHANG
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Appeal 2012-004124
Application 11/652,735
Technology Center 2800
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Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks review of the Examiner’s decision to reject claims
1-12 and 21-28. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We REVERSE and ENTER A NEW GROUND OF REJECTION.
The claims are directed to a method for fabricating a via in a substrate.
Claim 1 is illustrative:
Claim 1: A method for fabricating a via in a substrate,
said method comprising:
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forming a blanket metal layer on a surface of said
substrate;
drilling a via hole through said blanket metal layer and
said substrate;
performing a differential plating of said blanket metal
layer and an inner wall of said via hole so as to preferentially
cover said inner wall relative to said blanket metal layer;
patterning said surface of said substrate, said via hole
remaining exposed during said patterning.
(App. Br. 20, Claims App’x.)

OPINION
The Examiner rejects all of the pending claims as obvious under 35
U.S.C. § 103(a) over various combinations of prior art references with
Hirose.1 The dispute on appeal involves the question of whether Hirose
teaches the claimed step of patterning the surface of the substrate with “said
via hole remaining exposed during said patterning” (claims 1 and 21).
(Compare Appeal Br. 7-17 with Ans. 6 and 16-18.) In order for us to
resolve the dispute, we must first determine what is meant by “said via hole
remaining exposed” as that phrase is used in claims 1 and 21, the
independent claims on appeal.
Appellant’s Specification does not use the phrase “via hole remaining
exposed” and, in fact, the Specification describes a method of covering the
surfaces of the via hole with layers of material, specifically, a seed layer and
blanket metal layer. Throughout the Specification, the “via hole” is defined
as the hole drilled through the substrate or circuit board of a given diameter

1 US 2003/0102151 A1, published June 5, 2003
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and bounded by the inner walls of the hole before any subsequent layers are
deposited onto the inner walls (Spec. 2:17-21; 6:1-8; 9:6-11 (hole having
diameter 180 as shown in Fig. 1A and 1B); 11:8 to 14:2 (hole 402 having
diameter 480 and inner wall 414 as shown in Fig. 4B, hole 502 having inner
wall 514 as shown in Fig. 5, hole 602 having inner wall 614 as shown in Fig.
6, and hole 702 having diameter 780 and inner wall 716 as shown in Figs.
7A and 7B).) The Specification discloses that inner walls of the via hole are
covered with a seed layer (534 in Fig. 5) (Spec. 11:19 to 12:4) and then
further plated with a blanket metal layer (636 in Fig. 6 over seed layer 634)
(Spec. 12:5-19).
In the physical sense, “exposed” is generally understood to mean “to
uncover or bare to the air, cold, etc.” Expose,
http://dictionary.reference.com/browse/exposed?s=t&path=/. But it is not
clear what “remaining exposed” means in the context of Appellant’s claims
given that the inner walls of the via holes described in Appellant’s
Specification are not exposed, but covered with seed and blanket layers.
Nor do the top and bottom openings of the hole “remain exposed” as the
seed and blanket layers extend into the hole (see., e.g., Fig. 6).
Appellant’s Specification describes a step of patterning the substrate
surface (622a in Figure 6) without the use of a protective plug overlaying the
via hole (Spec. 13:1-2), but this is not what is claimed. It is unclear what
“remaining exposed” encompasses when Appellant’s Specification discloses
covering portions of the via hole.
Because the claims do not particularly point out and distinctly claim
the subject matter which Appellant regards as the invention, we enter a new
ground of rejection under 35 U.S.C. §112, second paragraph, as to all the
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pending claims. Because the proper bounds of the claims are not
ascertainable, we reverse the Examiner’s obviousness rejections. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (reversed because § 103 rejection
was based on considerable speculation as to meaning of terms of claims and
assumptions as to their scope). This reversal is a procedural reversal based
on the indefiniteness of the claims, not on the merits of the rejections.

CONCLUSION
We do not sustain the Examiner’s rejections, but we enter a new
ground of rejection under 35 U.S.C. § 112, second paragraph, as to all the
pending claims 1-12 and 21-28.

DECISION
The Examiner’s decision is reversed and a new ground of rejection
entered.

TIME PERIOD FOR RESPONSE
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:
T]he A]ppellant, within two months from the date of the
decesion, 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. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)
llw