NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

ROBERT ROZBICKI, MICHAL DANEK, AND

ERICH KLAWUHN,

Appellants,

v.

TONY CHIANG, GONGDA YAO, PEIJUN DING, 

FUSEN E. CHEN, BARRY L. CHIN, GENE Y. 

KOHARA, ZHENG XU, AND HONG ZHANG,

Appellees.

______________________ 

2014-1041

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Interference No. 

105,898.

______________________ 

Decided: November 14, 2014

______________________ 

TODD R. WALTERS, Buchanan Ingersoll & Rooney PC, 

of Alexandria, Virginia, argued for appellants. With him 

on the brief were S. LLOYD SMITH and ERIN M. DUNSTON. 

JOHN R. KENNY, Kenyon & Kenyon LLP, of New York, 

New York, argued for appellees. With him on the brief 

were MARIA LUISA PALMESE and JOSEPH A. COPPOLA. Of 

counsel was GAUDENIS VIDUGIRIS. 
2 ROZBICKI v. CHIANG

______________________ 

Before DYK and O’MALLEY, Circuit Judges.*

O’MALLEY, Circuit Judge. 

This patent appeal arises from an interference proceeding before the United States Patent and Trademark 

Office Patent Trial and Appeal Board (“PTAB”) relating to 

technology for depositing and etching barrier materials on 

wafer substrates. The PTAB construed the term “etching” 

as “the removal of material to create a pattern.” Relying 

on this construction, the PTAB found that U.S. Patent 

Application No. 11/733,671 (“the Chiang Application”)

contained adequate written description support for the 

lone interference count.

On appeal, Rozbicki challenges the PTAB’s construction of “etching” and its written description finding. 

Because we agree with the PTAB’s claim construction, we 

affirm its written description decision for Chiang claims 

31–39, 46, 59–61, 63, 64, 66–71, 83, and 84 as it is supported by substantial evidence. We vacate and remand

the PTAB’s decision for Chiang claims 47, 49, 51, 53, 55, 

57, 76–82, 85, 87, 88, and 90, however, because we find 

that the PTAB’s explanation of how the Chiang Application describes the “net etching” limitation is inadequate. 

BACKGROUND

This technology relates to wafer substrates to make 

integrated circuits. The wafer substrates contain semiconductor devices that are electrically connected to form 

the integrated circuits. Appellee Br. 4. These electrical 

connections are made using vias, which are openings in a 

* Randall R. Rader, who retired from the position of 

Circuit Judge on June 30, 2014, did not participate in this 

decision. 

 
ROZBICKI v. CHIANG 3

layer of silicon dioxide above the wafer substrate. Id. 

These vias are filled with metal to make the electrical 

connections. Id. Previously, semiconductor manufacturers used aluminum to make these electrical connections. 

Id. Eventually, manufacturers switched to copper, which 

has a lower resistivity. Id. This switch, however, required the placement of a layer of barrier material between the silicon dioxide and the copper to prevent the 

copper from diffusing into the silicon dioxide. Id. Normally, this barrier material is placed over the silicon 

dioxide through a physical vapor deposition process, such 

as, sputtering or a chemical vapor deposition process. ’977 Patent col. 2 ll. 13–16. Sputtering is a process 

where atoms are ejected from a solid target material 

towards a substrate by bombarding the target material 

with energetic particles. Resputtering is the sputtering of 

previously deposited material. Typical barrier materials 

can include tantalum, tantalum nitride, tungsten, titanium, titanium tungsten, titanium nitride, etc. ’977 Patent 

col. 2 ll. 11–13. The identical claims-at-issue on appeal 

from both disclosures are directed to a method of depositing barrier material.

U.S. Patent No. 6,607,977 (“the ’977 Patent” or “the 

Rozbicki Patent”) issued on August 19, 2003. It is titled 

“Method of Depositing a Diffusion Barrier for Copper 

Interconnect Applications.” ’977 Patent, at [54] (filed 

September 26, 2001). As shown in Figure 3C below, the 

invention discloses a first step of depositing barrier material 325 to provide coverage, then a second step of depositing additional barrier material and simultaneously 

etching a portion of the barrier material deposited in the 

first step as seen in Figure 3D. 
4 ROZBICKI v. CHIANG

’977 Patent Fig. 3C, 3D. The summary of the invention 

states that the result of the steps is a metal diffusion 

barrier formed in part by “net etching” in the bottom of 

the vias and “net deposition” on the side walls. The 

specification describes “net etching” as having an “etch to 

deposition ratio” or “E/D” that is greater than 1. The 

purpose of this “net etching” is to reduce the resistance of 

subsequently formed metal interconnects. 

The Chiang Application relates to “a method of sputtering a sculptured coating over the walls of a high aspect 

ratio semiconductor feature in a manner which avoids or 

significantly reduces the possibility of damage to or 

contamination of underlying surfaces.” Joint Appendix 

(“J.A.”) 1180. The Chiang Application generally describes 

applying a first portion of a sculptured layer using traditional sputtering or ion deposition sputtering with a low 

substrate bias such that a surface onto which said sculptured layer is applied is not eroded away. J.A. 1188. It 

then describes applying a subsequent portion of the 

sculptured layer using ion deposition sputtering with 

sufficiently high substrate bias to sculpture a shape from 

said first portion while depositing additional layer material. J.A. 1188. Chiang explains that, “[a]fter deposition 
ROZBICKI v. CHIANG 5

of a first portion of barrier layer material, the bias voltage 

is increased during the deposition of additional barrier 

layer material over the feature surface. The application 

of increased bias voltage results in the resputtering 

(sculpturing) of the first portion of barrier layer or wetting 

layer material (deposited at the lower substrate bias 

voltage) while enabling a more anisotropic deposition of 

newly depositing material.” J.A. 1190. “Availability of 

the material which was deposited at the lower bias voltage on the surface of a trench or via protects the substrate 

surface under the barrier or wetting layer material during 

the sputtering deposition at higher bias voltage. This 

avoids breakthrough into the substrate by impacting 

ionized material which could destroy device functionality.” 

J.A. 1190. 

Chiang provides three examples in his application, 

which correspond to the Chiang Application Figures 3 to 

5. The key example is Example 3, describing Figure 5. 
6 ROZBICKI v. CHIANG

This figure discloses an embodiment involving an initial deposition where a barrier material is applied for 15

seconds without the application of substrate biasing 

power, then applying a substrate biasing power of -60V 

(250W) while depositing barrier material through ion 

deposition plasma for about 45 seconds. J.A. 1200–01. 

During this second deposition period, barrier material

from the first deposition period is resputtered, with excess 

barrier material being removed and reshaped. J.A. 1201.

On May 25, 2012, the PTAB declared Interference No. 

105,898 between claims 1–73 of the Rozbicki Patent and 

claims 31–90 of the Chiang Application. As Chiang copied 

its claim language from the Rozbicki Patent, the interference included a single count: claim 1 of the ’977 Patent 

which is the same as claim 31 of the Chiang Application. 

These identical claims state:

A method for depositing a diffusion barrier and a 

metal conductive layer for metal interconnects on 

a wafer substrate, the method comprising: 

(a) depositing a first portion of the diffusion barrier over the surface of the wafer substrate;

(b) etching the first portion of the diffusion barrier 

at the bottom of a plurality of vias without fully 

etching through such that an amount of barrier 

material remains at the bottom of the plurality of 

vias, while depositing a second portion of the diffusion barrier elsewhere on the wafer substrate; 

and

(c) depositing the metal conductive layer over the 

surface of the wafer substrate such that the metal 

conductive layer contacts the barrier material remaining at the bottom of the plurality of vias; 

wherein at least part of (a) and all of (b) are performed in the same processing chamber.
ROZBICKI v. CHIANG 7

J.A. 155–166, 178–187 (emphasis added); see also ’977 

Patent col. 14 ll. 24–41. For the lone count, the PTAB 

accorded Rozbicki benefit back to March 13, 2001, and 

Chiang back to November 26, 1997. Accordingly, the 

PTAB deemed Rozbicki the junior party and Chiang the 

senior party. 

Rozbicki filed a first motion for judgment asserting 

that the Chiang Application failed to satisfy the written 

description requirement. Rozbicki further filed a second 

motion for judgment that Chiang is not entitled to the 

benefit of the filing date of any earlier application because 

those applications also fail to satisfy the written description requirement. Chiang filed a motion to exclude certain evidence.1 On June 26, 2013, the PTAB: (1) grantedin-part Rozbicki’s motion for failure to meet written 

description for Chiang claims 40–45, 48, 50,2 52, 54, 56, 

58, 62, 65, 72–75, 86, and 89,3 but denied-in-part for 

Chiang claims 31–39, 46, 47, 49, 51, 53, 55, 57, 59–61, 63, 

64, 66–71, 76–85, 87, 88, and 90; (2) denied Rozbicki’s 

second motion on accorded benefit; and (3) granted-in-part 

and denied-in-part Chiang’s motion to exclude certain 

evidence. 

1 Chiang moved to exclude certain statements from 

Rozbicki’s patent and priority application that are repeated in the Rozbicki expert’s testimony as hearsay. The 

PTAB denied this motion on the grounds that the documents were admissible as proof of what they say. Accordingly, Rozbicki’s expert was allowed to reasonably rely on 

these documents. This ruling is not at issue on appeal.

2 While the PTAB granted Rozbicki’s motion as to 

claim 50, that claim was not included in the PTAB’s 

summary of dismissed claims. Compare J.A. 19, with J.A. 

20. 

3 Chiang is not appealing the PTAB’s finding for 

these dependent claims.

 
8 ROZBICKI v. CHIANG

Addressing the construction of “etching,” the PTAB 

construed the term as requiring “the removal of material 

to create a pattern.” J.A. 7. The PTAB then found that 

the Chiang Application disclosed sputtering/resputtering 

as one way to etch and deposit simultaneously, and pointed to Example 3 for disclosing the necessary etching. The 

PTAB further found that Chiang taught “net etching” 

based on Example 3. J.A. 15. As essentially the same 

reasons regarding written description, the PTAB found 

priority for Chiang. 

Rozbicki subsequently filed a motion for rehearing. 

On July 16, 2013, the PTAB entered its Decision on 

Request for Rehearing. While the PTAB reconsidered the 

decision, it denied the requested relief. The PTAB stated 

that there was nothing that compelled a narrower claim 

interpretation. The PTAB stated that the claims only 

require “etching,” not “net etching” as described in the 

Rozbicki Patent’s written description. Turning to 

Chiang’s disclosure, the PTAB stated that Chiang’s Example 3 made sense only if etching occurred in the second 

step. The PTAB also stated that it found Rozbicki’s 

expert less credible than Chiang’s expert. It then explained that the independent claims did not require 

reducing thickness of the barrier layer and that, even if 

they did, Chiang’s second step appears to reduce the 

thickness while redistributing the material. 

On July 30, 2013, the PTAB entered Judgment finding that Rozbicki did not have priority, and, consequently, 

cancelled claims 1–73 of the ’977 Patent. Rozbicki timely 

appealed. This court has jurisdiction pursuant to 28 

U.S.C. § 1295. 

DISCUSSION

A. Claim Construction

This court reviews claim construction de novo. Lighting Ballast Control LLC v. Philips Elecs. N. Am., 744 F.3d 
ROZBICKI v. CHIANG 9

1272, 1276–77 (Fed. Cir. 2014) (en banc). “[W]hen a party 

challenges written description support for an interference 

count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim 

language.” Agilent Techs., Inc. v. Affymetrix, Inc., 567 

F.3d 1366, 1375 (Fed. Cir. 2009); see also In re Spina, 975 

F.2d 854, 856 (Fed. Cir. 1992) (“When interpretation is 

required of a claim that is copied for interference purposes, the copied claim is viewed in the context of the patent 

from which it was copied.” (citing DeGeorge v. Bernier, 768 

F.2d 1318, 1322 (Fed. Cir. 1985))). Consequently, we 

review the Chiang claims copied from the Rozbicki Patent 

in light of the Rozbicki Patent specification. See Agilent,

567 F.3d at 1375. 

The PTAB construed the term “etching” as the removal of barrier material. Looking at the claim language 

itself, the PTAB stated that the claim “simply requires 

‘etching’.” J.A. 6. It emphasized that Rozbicki defines 

“net etching” in its written description, but only references “etching” in the independent claims. The PTAB 

pointed out that this supports an inference that the 

claims are broader than the preferred embodiment. 

Turning to the expert testimony presented by both parties, the PTAB found the testimony of Chiang’s expert, 

Dr. Cuomo, more credible than that of Rozbicki’s expert, 

Dr. Ruzic, with respect to what the term “etching” requires. Specifically, the PTAB found Dr. Ruzic’s testimony less credible because the term “net etching” is not an 

art-recognized term and introduces imprecision. J.A. 6.

Rozbicki argues that the PTAB erred in ruling that 

“etching” does not require “net etching”—which occurs 

when there is more etching than deposition—in all the 

claims. He further argues that the PTAB should have 

construed etching to require thinning of the barrier layer 

at the bottom of the via. Rozbicki also asserts that the 

PTAB defined etching without considering the Rozbicki 

specification. He points out that the specification “re-
10 ROZBICKI v. CHIANG

peatedly, consistently, and exclusively” teaches reducing 

the thickness of the barrier layer previously deposited at 

the bottom of the via. Chiang responds that the PTAB 

correctly construed the term etching as simply the removal of barrier material. He agrees with the PTAB that the 

claim language in the independent claims only requires 

“etching,” and not any particular level of etching. Chiang 

further states that the specification describes net deposition where the etch to deposition ratio is less than one, 

which refutes the requirement that etching requires “net 

etching” or “net removal.” ’977 Patent col. 13 ll. 13–19 

(“The magnitude of E/D on the side walls is < 1 . . . . The 

side walls receive a net deposition.”).

We agree with Chiang that the PTAB properly defined etching to require the removal of material, and not 

“net etching” or thinning at the bottom of the via. The 

claim language states “(b) etching the first portion of the 

diffusion barrier at the bottom of a plurality of vias without fully etching through such that an amount of barrier 

material remains at the bottom of the plurality of vias.” ’977 Patent col. 14 ll. 30–33. The claim language

itself does not include any requirement of “net etching” or 

thinning at the bottom of the via. 

Rozbicki improperly attempts to read limitations into 

the claims based on the embodiments described in his 

written description, limitations which are absent from the 

claim language. The Rozbicki Patent’s written description, however, explicitly describes “net etching” as having

an etch to deposition ratio of greater than 1. Accordingly, 

even Rozbicki recognizes that this “net etching” is distinguishable from the term “etching.” For example, Rozbicki

claim 27, which corresponds to Chiang claim 47, states: 

“wherein (b) comprises a PVD etch/deposition process in 

which an RF frequency is applied to the wafer substrate 

such that the etch to deposition ratio is greater than 1 in 

the bottom of the plurality of vias and less than 1 on the 

field.” ’977 Patent col. 15 ll. 44–48 (emphasis added). 
ROZBICKI v. CHIANG 11

First, this claim language uses the term “etch” as part of 

its description of “net etching” for the bottom of the plurality of vias. Second, this very same claim requires an

etch to deposition ratio less than 1 on the field. If the 

term “etching” required “net etching,” then an etch to 

deposition ratio less than 1 would not make any sense, or 

at least be redundant. Accordingly, this claim language 

supports the PTAB’s broader construction of the term 

“etching.” Furthermore, despite the ability to include the 

term “net etching” or an etch to deposition ratio greater 

than 1 in the text of its claims, Rozbicki chose to include 

only the term “etching” in its independent claims. Chiang 

then copied this broad language into his own claims. 

Rozbicki, while attempting to obtain the broadest claim 

language possible during prosecution, cannot now improperly narrow its language by importing limitations not 

supported by the claim language or written description. 

For the reasons above, we affirm the PTAB’s claim construction of “etching.” 

B. Written Description Requirement

1. Etching 

Rozbicki disputes whether the Chiang Application 

provides written description support for the claims-atissue. The written description requirement is found in 35 

U.S.C. § 112 (2012), which states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, 

concise, and exact terms as to enable any person 

skilled in the art to which it pertains, or with 

which it is most nearly connected, to make and 

use the same, and shall set forth the best mode 

contemplated by the inventor or joint inventor of 

carrying out the invention.
12 ROZBICKI v. CHIANG

To satisfy the written description requirement, the 

specification must “convey with reasonable clarity to 

those skilled in the art that, as of the filing date sought, 

he or she was in possession of the [claimed] invention.” 

Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. 

Cir. 1991). The properly construed claim must be supported by the originating specification. Agilent, 567 F.3d

at 1378–79. Satisfying the written description requirement is a question of fact that we review for substantial 

evidence. Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 

2011) (citing Chen v. Bouchard, 347 F.3d 1299, 1304 (Fed.

Cir. 2003)). 

In light of its claim construction of “etching,” the 

PTAB concluded that the Chiang Application sufficiently 

described this limitation, which is recited in Chiang 

independent claims 31 and 66. Specifically, the PTAB 

found the Chiang Application’s discussion of the sputtering/resputtering process, which removes barrier material 

at the bottom of the via, satisfied the written description 

requirement for “etching.” In support, it looked to Example 3 in light of Examples 1 and 2 from the Chiang Application. The PTAB explained that the three examples “are 

sufficient to indicate to one of ordinary skill that, more 

likely than not, the third example achieves its purported 

result by offsetting the results of method steps similar to 

example 2 with the results of method steps similar to 

example 1.” J.A. 11. The PTAB also relied on the testimony of Chiang’s expert, Dr. Cuomo, who explained that 

etching results from the biasing substrate, which creates 

an electrical field, causing ions to impact on the silicon 

substrate and silicon dioxide sidewall, resulting in simultaneous sputtering of the surfaces such as through the 

second step of Example 3. 

Rozbicki argues that the Chiang Application does not 

satisfy the written description requirement. According to 

Rozbicki, the written description does not make clear that 

etching occurs at the bottom of the via, and Example 3 
ROZBICKI v. CHIANG 13

does not necessarily show etching. Chiang responds that 

substantial evidence exists based on Example 3 and Dr. 

Cuomo’s expert testimony, which the PTAB found more 

credible than that of Rozbicki’s expert. Since we agree 

with the PTAB’s claim construction, we look to see if the 

PTAB’s finding that the Chiang Application sufficiently 

described the “etching” limitation is supported by substantial evidence. We find that it is, and do not find 

Rozbicki’s arguments persuasive.

The Chiang Application generally discloses the removal of material through sputtering/resputtering. It 

then provides a step for “applying a subsequent portion of 

said sculptured layer using ion deposition sputtering, 

with sufficiently high substrate bias to sculpture a shape

from said first portion, while depositing additional layer 

material.” J.A. 1188. During this step, “[t]he application 

of increased bias voltage results in the resputtering 

(sculpturing) of the first portion of barrier layer.” J.A. 

1190; see also J.A. 1201. Consequently, the barrier layer

from the first deposition period, which includes the barrier layer at the bottom of the via, is resputtered. This 

resputtering meets the “etching” requirement. 

Chiang’s expert, Dr. Cuomo, testified that the sputtering/resputtering removes sections of the initially deposited barrier layer from the bottom of the via. In particular, 

he pointed to Example 3 as reproduced from Figure 5 of 

the Chiang Application. 
14 ROZBICKI v. CHIANG

Dr. Cuomo testified that Example 3 discloses the 

claimed invention, and essentially performs the steps of

Example 2 and then Example 1 consecutively, in that 

order. J.A. 2635–40. Example 1 discloses etching as seen 

by the breakthrough in the barrier level when sputtering 

with a substrate bias. Example 2 discloses sputtering 

with no substrate bias, resulting in the deposit of a large 

quantity of barrier material at the bottom of the via with 

no breakthrough. By performing a first step similar to 

Example 2 prior to the step of Example 1, Chiang’s expert 

testified that Example 3 prevents breakthrough into the 

lower level when etching occurs during the second step

similar to Example 1. J.A. 2639. Furthermore, the 

Chiang Application explains that the first deposit layer 

“protects the substrate surface . . . during the sputtering 

deposition at higher bias voltage” and “avoids breakthrough.” J.A. 1190. This concern exists only if the 

second step causes etching. Based on the specification of 

the Chiang Application and the expert testimony, there is 
ROZBICKI v. CHIANG 15

substantial evidence to support the conclusion that the

Chiang Application discloses etching.

Rozbicki also argues that the Chiang Application only 

employs two sequential deposition steps, not an etching 

step of the layer at the bottom of the via. In support, he 

points to language in the Chiang Application stating that 

the steps listed are described as depositing steps for a 

barrier layer substance.4 Chiang disagrees, stating that 

the second step in its application inherently includes 

etching within the depositing step. As explained by the 

PTAB and Chiang’s expert, although the Chiang Application lists its steps as depositing steps, this does not 

change the fact that the second step in the Chiang Application also performs etching. 

Rozbicki contends that the PTAB erred because the 

disclosure of sputtering/resputtering does not provide 

support for the full scope of the term “etching” in Chiang’s 

claims. In Rozbicki’s first motion, he requested “judgment 

that Chiang’s involved claims are unpatentable to Chiang 

under 35 U.S.C. § 112, first paragraph, as lacking adequate written description.” J.A. 412. The PTAB found 

that Rozbicki did not advance a scope argument, instead 

arguing only that the Chiang Application failed to describe a particular embodiment. J.A. 22. The PTAB

addressed this point again in its decision on request for 

rehearing. It stated that, “[w]hile the statute encompasses a scope argument, it does not follow that Rozbicki 

necessarily made a scope argument. As the decision 

noted, case law distinguishes scope as a distinct type of 

4 The specific claim language for the second step 

states: “applying a subsequent portion of said sculptured 

layer using ion deposition sputtering, with sufficiently 

high substrate bias to sculpture a shape from said first 

portion, while depositing additional layer material.” J.A. 

1188.

 
16 ROZBICKI v. CHIANG

written description problem.” J.A. 40. It further stated 

that, “[a]s a matter of due process, Chiang need not 

address every theory that Rozbicki could have argued, but 

only the argument Rozbicki actually made.” J.A. 40

(footnote omitted). We agree with the PTAB that Rozbicki 

did not properly raise a scope argument before the PTAB, 

and thus, we find that the PTAB did not err in failing to 

address this argument. 

Because substantial evidence supports the PTAB’s 

finding that the Chiang Application adequately describes 

the “etching” limitation, we affirm the PTAB’s finding 

that Chiang claims 31 and 66 meet the written description requirement. Additionally, since Rozbicki only 

argues that Chiang dependent claims 32–39, 46, 59–61, 

63, 64, 67–71, 83, and 84 do not meet the written description requirement because the Chiang Application fails to 

disclose the “etching” limitation—the same argument we 

just rejected—we also affirm the PTAB’s findings as to 

these claims. Furthermore, because Rozbicki’s arguments 

that Chiang is not entitled to the benefit of each of its 

earlier-filed priority application hinges on the written 

description challenge, we affirm the PTAB’s finding that 

Chiang is entitled to the benefit of each of its earlier-filed 

applications for Chiang claims 31–39, 46, 59–61, 63, 64, 

66–71, 83, and 84. 

2. Net Etching

We do not find, however, that the PTAB adequately 

addressed the extent to which the Chiang Application 

discloses “an etch to deposition ratio greater than 1 in the 

bottom of the plurality of vias,” a limitation which appears in the remaining claims at issue.

First, the PTAB did not consider Rozbicki’s expert testimony regarding “net etching.” The only explanation the 

PTAB provided as to why it rejected the testimony of 

Rozbicki’s expert on this issue was that it did not agree 

with his definition of the term “etching.” See J.A. 15 (“Dr.
ROZBICKI v. CHIANG 17

Ruzic’s testimony is entitled to little weight because it is 

based on an untenable interpretation of the contested 

claim language.”). As such, the PTAB simply ignored Dr. 

Ruzic’s testimony regarding what “net etching” is, and the 

existence of “etch to deposition ratio greater than 1 in the 

bottom of the plurality of vias” solely based on his “untenable interpretation” of “etching.” Although the PTAB 

stated in its decision on rehearing that it did not overlook 

Rozbicki’s expert testimony, which showed that Chiang’s 

examples could not result in “an etch to deposition rates 

greater than 1,” solely based on its disagreement with his 

claim construction position, that is, in fact, what the 

PTAB did in its initial decision. J.A. 15, 39. And it did 

not cure this problem in its order on reconsideration.

Second, in addressing the “net etching” limitation, the 

PTAB failed to adequately explain how Chiang disclosed 

this limitation. The PTAB conceded that “Chiang’s disclosure does not describe an . . . etch-to-deposition (E/D) 

ratio.” J.A. 18. But it concluded that Chiang discloses the 

E/D ratio limitation, because the claim language is, in the 

PTAB’s opinion, so broad that Chiang’s general discussion 

of “etching at the via bottom while material is deposited 

elsewhere, including the field,” sufficiently describes the 

contested limitation. J.A. 18. This bare assertion alone, 

however, does not suffice as adequate support. Without 

any analysis as to how a brief discussion about “etching,” 

which can occur without an “etch to deposition ratio 

greater than 1 in the bottom of the plurality of vias,” also 

discloses this limitation, the PTAB’s conclusion is unfounded. Therefore, the PTAB’s explanation does not 

adequately support the finding that the Chiang Application meets the written description requirement for the 

limitation of an “etch to deposition ratio greater than 1 in 

the bottom of the plurality of vias.” 

Therefore, we vacate the PTAB’s decision regarding

Chiang claims 47, 49, 51, 53, 55, 57, 76–82, 85, 87, 88, and 

90 and remand for the PTAB to provide a more detailed 
18 ROZBICKI v. CHIANG

explanation of how the Chiang Application’s written 

description supports an “etch to deposition ratio greater 

than 1 in the bottom of the plurality of via,” including a 

discussion of the expert testimony from both parties. 

CONCLUSION

For the reasons above, and because we find that 

Rozbicki’s remaining arguments are without merit, we 

affirm the PTAB’s claim construction, and consequently, 

affirm its finding of written description support and 

priority for Chiang claims 31–39, 46, 59–61, 63, 64, 66–71, 

83, and 84 as it is supported by substantial evidence. We 

vacate and remand the PTAB’s decision for Chiang claims 

47, 49, 51, 53, 55, 57, 76–82, 85, 87, 88, and 90 for further 

proceedings consistent with this opinion. 

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED