Ex Parte Donis

Board of Patent Appeals and Interferences

May 31, 2012

11063788 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/063,788 02/22/2005 Robert Wayne Donis 04-2195 6780
79102 7590 05/31/2012
RYAN, MASON & LEWIS, LLP
90 FOREST AVENUE
LOCUST VALLEY, NY 11560
EXAMINER
FORD, NATHAN K
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
05/31/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT WAYNE DONIS
____________

Appeal 2010-008863
Application 11/063,788
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-10 and 21-24 under 35 U.S.C. § 103(a) as
being unpatentable over Hausmann1 in view of Chang2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.3

1 U.S. Patent 5,880,923, issued Mar. 9, 1999.
2 U.S. Patent Publication 2006/0049036, published Mar. 9, 2006.
3 Our decision refers to Appellant’s Brief (App. Br.) filed November 30,
2009, Appellant’s Reply Brief (Reply Br.) filed April 30, 2010, and the
Examiner’s Answer (Ans.) mailed March 2, 2010.
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Appellant’s invention is directed to a chuck system for holding a
substrate such as a semiconductor wafer during a deposition process, the
chuck system having a plurality of zones that are electrically insulated from
one another, and a voltage controller that controls the voltage applied to the
zones. The voltage controller is configured to receive wafer profile
information. The voltage applied to the zones generates electromagnetic
fields to affect the concentration of a reactant at or near at least a portion of a
deposition surface of the substrate. (Claim 1).
Representative claim 1 reads as follows:
1. A chuck system for holding a substrate comprising:
a first zone;
a second zone electrically insulated from the first zone;
and
a voltage controller configured to receive substrate
profile information and configured to control a first voltage
applied to the first zone and a second voltage applied to the
second zone during a deposition process whereby one or more
electromagnetic fields are generated to affect a concentration of
a reactant at or near at least a portion of a deposition surface of
the substrate.

We will sustain the § 103(a) rejection for the reasons expressed in the
Answer with the comments below added for emphasis.

ANALYSIS
The Examiner found, and Appellant does not dispute, that Hausmann
discloses “a chuck system comprising multiple electrically insulated zones to
which voltages of varying intensity can be applied during a deposition
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process . . . [and a] power source such as a transformer [that] supplies the
voltages and modulates their intensity” (Ans. 2). Regarding the generation
of electromagnetic (EM) fields, the Examiner found that Hausmann’s
voltage application would inherently generate such fields (id. at 3). The
Examiner states that the claimed reactant concentration affect caused by
these EM fields is not accorded patentable weight as the reactant “is drawn
to contents of use” (citing to Ex parte Thibault, 164 USPQ 666, 667 (Bd.
App. 1969); In re Young, 75 F.2d 996 (CCPA 1935); and the Manual of
Patent Examination Practice, Section 2115). (Id.). The Examiner
acknowledges that Hausmann fails to teach a voltage controller configured
to receive substrate profile information (id.). The Examiner found that
Chang supplements this omission through the disclosure of a[n] . . .
method and apparatus for the real-time control of a plasma deposition
process . . . [wherein] the system generates an equation which
correlates information such as the deposition rate and substrate profile
to the intensity of the applied chuck voltage [0009]. Using this
dependency, the power supplied to the chuck is modified according to
the receipt of substrate profile information during the deposition
process [0010]. In this way, the voltage controller is configured to
receive substrate profile information and to modulate the chuck
voltage accordingly to achieve the desired deposition profile.

(Ans. 3.). The Examiner concluded that “it would have been obvious to one
of ordinary skill in the art at the time the invention was made to configure
Hausmann's voltage controller to receive substrate profile information” in
order to “enhance control of the deposition process by permitting immediate
voltage modulation in response to real-time receipt of substrate profile data.”
(Id.). While Appellant raises a number of arguments with regard to the
sufficiency of the disclosures of Hausmann and Chang, Appellant does not
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raise an issue with regard to the propriety of the combination of these prior
art references.
Appellant argues that there is no indication that Hausmann’s
electromagnetic fields affect concentration of reactant at or near the
substrate (App. Br. 7). Specifically, Appellant asserts that Hausmann has no
reactant while these electromagnetic fields are generated (id.). In this
regard, Appellant argues that Hausmann’s purpose is to maintain
temperature uniformity, not to “non-uniformly” attract or repel reactant
during the deposition process (id. at 7-8).4
We have evaluated these arguments and find them unpersuasive of
reversible error in either the Examiner’s factual findings or obviousness
conclusion. We must determine whether the claim recitation that “one or
more electromagnetic fields are generated to affect a concentration of a
reactant at or near at least a portion of a deposition surface of the substrate”
is a structural limitation on the scope of the claim, or a mere statement of
purpose or use (see Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed.
Cir. 2005)). A limitation that is a mere statement of purpose or use of the
apparatus will be accorded little weight in the patentability evaluation. (See
Boehringer Ingelheim Vetmedica v. Schering-Plough Corp., 320 F.2d 1339,
1345 (Fed. Cir. 2003) (“An intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.”)). However, as Appellant points

4 It is not necessary to address Appellant’s argument that “MPEP § 2114
misstates the holdings of Schreiber[, 128 F.3d 1473 (Fed. Cir. 1997)] and
Swinehart[, 439 F.2d 210 (CCPA 1971)]” (Reply Br. 2-3) because our
decision does not rely on the MPEP § 2114 material.
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out, an intended use or purpose is a functional limitation, the weight of
which requires a determination of the prior art’s inherent capability to
perform the intended purpose or use (Reply Br. 2-6). Nonetheless, this
determination does not require the prior art to explicitly disclose this
capability (Schreiber, 128 F.3d at 1477-1478; Swinehart, 439 F.2d at 212-
213).
That Hausmann generates electromagnetic fields is not in dispute
(Ans. 3, 4; App. Br. 7). The Examiner acknowledges that Hausmann does
not disclose that these electromagnetic fields affect the concentration of
reactant at or near the substrate, but nonetheless finds that this claim
recitation is “drawn to contents of use, which does not accord patentable
weight to an apparatus claim” (Ans. 3). The invention claimed is a chuck
system whose use is “for holding a substrate” (see independent Claims 1, 6
and 21). The substrate is clearly material to be worked on by the chuck
system, as are the deposited film and the reactants. The purpose for holding
the substrate is to deposit a film thereon in a deposition chamber, wherein
“voltage or current applied to one or more zones [of the chuck] may affect
the growth of a film on [the] substrate by attracting or repelling reactants”
(Spec. ¶ [0007]). The presence or absence of reactant whose concentration
would be affected by these electromagnetic fields is dictated by the intended
method of use of the apparatus and the materials selected in that intended
method (id.). We, therefore, agree with the Examiner that this claim
recitation is merely a statement of the intended purpose of the apparatus
(Ans. 3, 4). In addition, Hausmann discloses the same structure, a chuck
with a voltage controller configured to control voltages to a plurality of
electrically distinct zones, for generating electromagnetic fields as recited in
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the claims (id.). Hausmann’s generated electromagnetic fields must
therefore be inherently capable of performing the recited function in
question, namely affecting the concentration of reactants at or near a
deposition surface of the substrate (id.). Appellant fails to direct our
attention to any structure or feature recited in the claim and not found in
Hausmann that would enable Appellant’s electromagnetic field to affect
reactant concentration, yet disable Hausmann’s capability to inherently do
the same.
Appellant also argues that Hausmann does not vary voltage to affect
film deposition growth (id. at 10-11; Reply Br. 8-9). However, there is
nothing in the claims which requires this functional relationship. (See In re
Hiniker Co., 150 F.3d 1362, 1368 (Fed. Cir. 1998) (“Although operational
characteristics of an apparatus may be apparent from the specification, we
will not read such characteristics into the claims when they cannot be fairly
connected to the structure recited in the claims.”) (citing In re Self, 671 F.2d
1344, 1348 (CCPA 1982)). Claim 3 merely requires that at least one of the
applied voltages affect film deposition growth. The Examiner found, and we
agree, that Hausmann’s voltages inherently would affect film deposition
growth for the same reasons that Hausmann’s electromagnetic fields
inherently would affect reactant concentration (Ans. 3). Claim 5 merely
recites that at least one voltage is varied during the deposition process. The
Examiner found, and again we agree, that Hausmann’s voltage controller
must vary the voltage during deposition in order to function as disclosed (id.
at first ¶). Appellant has not shown otherwise. In the same sense, the
Examiner found that there is also nothing in the claims which requires the
electromagnetic fields to intentionally cause non-uniformity in the wafer by
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non-uniformly attracting or repelling reactants to the wafer during deposition
(Ans. 5). Appellant’s claims merely recite that the electromagnetic fields
affect reactant concentration and affect film deposition growth, which
inherently are the effects of Hausmann’s electromagnetic fields. The claims
do not require the voltage to be adjusted to cause non-uniformity (or
uniformity), or any other particular deposition effect.
Appellant next argues that the claim language “substrate profile” is
implicitly defined within the disclosure and that the rejection fails to address
this implied definition (App. Br. 9-10; Reply Br. 7-8). In particular,
Appellant asserts that the implied definition of “substrate profile” is “'intra-
wafer' substrate profile information which describes characteristics (such as
desired layer growth) associated with various areas of the wafer” (id.).
Appellant further argues that “[s]uch information is necessary to control a
first voltage applied to the first zone and a second voltage applied to the
second zone during a deposition process” (id.).
The Examiner responded by stating that the disclosure fails to provide
a special definition for “substrate profile”, and, therefore, these words are
given their plain meaning commensurate with the claims (Ans. 5). Where
Appellant wishes a definition be used that is contrary to the ordinary
meaning of a term, the intrinsic record must clearly set forth this different
definition, either explicitly or impliedly (see Philips v. AWH Corp., 415 F.3d
1303, 1319 (Fed. Cir. 2005); Schoenhaus v. Genesco, Inc., 440 F.3d 1354,
1358 (Fed. Cir. 2006). The Examiner found, and we agree, that the portions
of the disclosure to which Appellant refers do not provide a special
definition for “substrate profile”, either explicitly or impliedly (Ans. 5). The
portions to which Appellant refers do not manifest a clear intent to supplant
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the ordinary meaning of “substrate profile” with a different meaning,
especially one that differs from Chang. The Examiner found that “Chang’s
controller receives information such as the thickness of the deposited
substrate layer”, thus fulfilling the claim recitation that the controller is
configured to receive substrate profile information (id.). Further,
Appellant’s argument that the substrate profile information received by the
controller is used to vary or adjust the voltages/currents applied to achieve
the desired profile during the deposition is not commensurate in scope with
the claims. None of the claims requires such an operational cooperation
between the substrate profile information received and the voltages applied.
Finally, we find no error in the Examiner’s finding that Chang discloses
providing substrate profile information to a voltage controller that may be
varied during the deposition process to adjust the sputter rate, thereby
controlling deposition film growth (Ans. 3, 5). While as asserted by
Appellant, Chang produces a single sputter rate value, such is sufficient to
meet the terms of Appellant’s claims.
Appellant further argues that Hausmann does not teach that the
voltage controller controls voltage by controlling the current through the
zones (App. Br. 11-12; Reply Br. 9). Appellant indicates that according to
Ohm’s Law, voltage equals current multiplied by resistance (id.). Appellant
argues that voltage can be controlled by controlling either current or
resistance (id.). As such, though Hausmann discloses varying the applied
voltage, Appellant argues that Hausmann does not teach which of current or
resistance is varied (id.).
We do not find this argument persuasive of reversible error. The
Examiner responded that in order to vary voltage, both current and
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resistance are controlled (Ans. 4). In other words, varying one of these two
parameters and holding the other constant is controlling both parameters
(id.). Since claim 4 merely requires that “the voltage controller controls the
first and second voltages by controlling the current”, the Examiner found
that Hausmann meets this claim limitation (id.). To reinforce this point,
even if the control of current required the controller to vary or adjust the
current, we note that Ohm’s Law only provides two parameters, current and
resistance that could be varied to vary the applied voltage. We see no reason
why one skilled in the art would not have found it obvious to vary either
current or resistance to vary the voltage in Hausmann, as either option leads
to the predictable result. (See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
421 (2007) (“When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp.”)).

CONCLUSION
We have considered Appellant’s arguments, in the context of the
entirety of the record before us, and find no reversible error in the
Examiner’s obviousness conclusion or the findings upon which it is based.
Accordingly, we sustain the Examiner’s rejection as to appealed claims 1-10
and 21-24.
The decision of the Examiner is affirmed.

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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)(iv).
AFFIRMED

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