Ex Parte HSUEH et al

Patent Trial and Appeal Board

Dec 29, 2015

12618464 (P.T.A.B. Dec. 29, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/618,464 11113/2009
60601 7590 12/29/2015
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
FIRST NAMED INVENTOR
Chia-Hao HSUEH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
094l/2368PUS1 6664
EXAMINER
CAPOZZI, CHARLES
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
12/29/2015 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CHIA-HAO HSUEH, YUAN-CHUN CHAO, KUO-HSING
TENG, and CHAO-CHEN CHEN 1
Appeal2014-002414
Application 12/618,464
Technology Center 1700
Before MARK NAGUMO, WESLEY B. DERRICK, and JEFFREY W.
ABRAHAM, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 and 4--13 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement and
under 35 U.S.C. § 103(a) as obvious over Sugimoto et al. (US 5,762,709,
issued June 9, 1998) ("Sugimoto") in view of Hall (US 2003/0143866 Al,
published July 31, 2003). We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify VisEra Technologies Company Limited as the Real
Party in Interest. Br. 2.
Appeal2014-002414
Application 12/618,464
Appellants' claimed invention is directed to a spray coating system
including a spin support for spinning a substrate and an air supply
mechanism for supplying air flows to the back surface of the substrate.
Independent claims 1 and 9 (emphasis added) are illustrative:
1. A spray coating system for forming a film coating on an
upper surface of a substrate, comprising:
a spin support for supporting and spinning the substrate;
a sprayer for applying a material to an upper surface of
the substrate;
a cup surrounding a lateral and lower region of the spin
support, wherein an opening is located in an upper central
region of the cup;
an air supply mechanism for supplying air flows to a
back surface of the substrate to prevent the material from
adhering thereto;
air holes surrounding the spin support at a top portion of
an air path and being open toward back surface of the
substrate, wherein only the air flow penetrates through the air
holes to the back suiface of the substrate; and
an exhaust zone disposed below a slanted surface of the
cup for exhausting the air flow and material.
9. A spray coating system for forming a film coating on an
upper surface of a substrate, comprising:
a spin support for supporting and spinning the substrate;
a sprayer for applying a material to an upper surface of
the substrate;
a cup surrounding a lateral and lower region of the
support member, wherein an opening is located in an upper
central region of the cup;
air holes surrounding the spin support at a top portion of
an air path and being open toward back surface of the substrate;
an air supply mechanism for supplying air flows through
the air holes to a back surface of the substrate to prevent the
material from adhering thereto;
2
Appeal2014-002414
Application 12/618,464
a pressure device for adjusting pressure of the air flow,
such that the air flow are supplied through the air holes to the
back surface of the substrate only by the pressure of the air flow
and without line guiding; and
an exhaust zone disposed below a slanted surface of the
cup for exhausting the air flows and the material.
Amendment, dated October 19, 2012. 2
Appellants omit the phrase "and without line guiding" from claim 9 in
the Claim Appendix, however, the Amendment deleting the phrase
(Amendment After Final, dated April 22, 2013) was not entered by the
Examiner (Advisory Action, mailed April 26, 2013). The non-entry of an
amendment is a petitionable matter over which we lack jurisdiction. 37
C.F.R. §§ 1.127, 1.181; see also MPEP § 1002.02(c). No such petition has
been filed. We take, therefore, the claims as they stand prior to Appellants'
proffered amendment and address the Examiner's rejection of those claims.
Appellants argue the patentability of all claims on the basis of claims
1 and 9. Br. 5-10. Accordingly; we focus our discussion on these claims.
DISCUSSION
Upon consideration of the evidence and opposing contentions of the
Appellants and the Examiner, 3 we find Appellants' arguments persuasive the
Examiner erred in finding a lack of written description as to independent
claim 1, and claims 4--8 depending thereon. 4 Appellants' arguments are not
2 Claims 1 and 9 are reproduced here from the listing of claims from the last-
entered amendment.
3 We refer to the Final Office Action (mailed February 22, 2013), the Appeal
Brief (filed July 22, 2013), and the Examiner's Answer (mailed October 25,
2013).
4 Appellants' listing of claims 4 and 5 is in error as absent entry of the
Amendment After Final, dated April 22, 2013, claims 4 and 5 recite
3
Appeal2014-002414
Application 12/618,464
persuasive, however, of reversible error in the Examiner's decision rejecting
claim 9, and 10-13 depending thereon, for lack of written description, or of
reversible error in the Examiner's decision rejecting claims 1 and 4--13 as
unpatentable for obviousness.
Rejections under 35 USC§ 112,first paragraph
The critical issue regarding the adequacy of a disclosure to satisfy the
written description requirement is factual: does the originally filed
Specification contains a written description of the invention. Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en bane) ("This inquiry, as we have long held, is a question of
fact.") (citation omitted). "The purpose of the written description
requirement is to prevent an applicant from later asserting that he invented
that which he did not; the applicant for a patent is therefore required to
'recount his invention in such detail that his future claims can be determined
to be encompassed within his original creation."' Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (quoting Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991) (citation
omitted)).
We will not sustain the rejection of claims 1 and 4--8 under 35 U.S.C.
§ 112, first paragraph because we find the Appellants have shown how the
Specification, particularly Figure 2, conveys with reasonable clarity to those
skilled in the art that, as of the filing date of the instant application, that
Applicants were in possession of the invention as now claimed. See Wang
Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 866 (Fed. Cir. 1993) ("It is also
dependency from cancelled claim 2. The Examiner treats claims 4 and 5 as
dependent on claim 1, Final Act. 3, and we do not disturb this treatment.
4
Appeal2014-002414
Application 12/618,464
clear that 'drawings alone may provide a 'written description' of an
invention as required by§ 112."' (quoting Vas-Cath, 935 F.2d at 1565)). In
particular, we find Figure 2 and the Specification as a whole convey with
reasonable clarity possession of devices in which "only the air flow [would]
penetrate[] through the air holes to the back surface of the substrate" as
claimed. In light of the cited disclosure (Br. 5---6, citing Spec. i-fi-124--32, Fig.
2) and other disclosure, which we find limited to disclosing air flows
through the air holes, the Examiner has not met the initial burden (Ans. 2, 6-
7).
We will, however, sustain the rejection of claims 9-13 under 35
U.S.C. § 112, first paragraph on the basis of the air flow being "supplied
through the air holes ... without line guiding" (claim 9) because the
Examiner has set forth how the phrase "line guiding" is not found in the
Specification and determined that the broadest reasonable interpretation of
the term "line guiding" includes being guided in the manner disclosed
throughout the Specification (Ans. 7-8). By ignoring pending claim 9's
limitation "without line guiding" in the pertinent argument, see pages 5---6 of
Appeal Brief; see also pages 12-13 (Claims Appendix), Appellants fail to
address the rejection maintained by the Examiner, and thus fail to meet the
procedural burden of showing harmful error in the Examiner's rejection.
Rejections under 35 USC§ 103(a)
Appellants' arguments fail to identify reversible error in the
Examiner's obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[E]ven assuming that the examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of
'reversible error."').
5
Appeal2014-002414
Application 12/618,464
Sugimoto, like the instant application, is directed to a substrate spin
coating apparatus. Compare Sugimoto, Abstract, to Specification Abstract.
The Examiner finds Sugimoto teaches a spin support for supporting
substrate, a sprayer, a cup, an air supply mechanism for supplying air to the
back surface of the substrate, and an exhaust vent. Ans. 3 (citing Sugimoto,
Figs. 3 and 5; col. 4, 1. 54 to col. 5, 1. 11; col. 5, 11. 26-58, col. 7, 11. 57---68).
The Examiner further finds Sugimoto teaches an air hole (opening 20 in cup
3) surrounding spin chuck 1 (spin support), but does not explicitly teach a
plurality of air holes. Id. (citing col. 5, 11. 26-34, Fig. 5).
The Examiner further finds Sugimoto teaches an air flow adjusting
unit (pressure device for adjusting air flow) for adjusting pressure through
opening 20. Id. at 4--5 (citing Sugimoto, Figs. 3 and 5; col. 5, 1. 50 to col. 6,
1. 16).
The Examiner relies on Hall, which the Examiner also finds to be in
the same field of endeavor, for its explicit teaching of a plurality of air holes
for providing air flow, i.e., jets of pressurized gas, to the backside of the
wafer. Id. at 3--4 (citing Hall i-fi-f 19--22, 24). Hall discloses a spin support
for supporting a substrate in a spin-coating environment and providing jets
of gas directed to the back surface of the substrate. Hall, Abstract. The
Examiner finds Hall teaches the structure providing the gas-ports without
nozzles-surrounding a chuck at the top portion of an air path open toward
the back surface of a substrate. Id. (citing Hall, Figs. 1-2, i-fi-f 19--22, 24).
The Examiner further finds Hall discloses providing a plurality of air holes
arranged in a concentric ring in Hall's cup 18 surrounding a spin support.
Id. at 4, 10.
6
Appeal2014-002414
Application 12/618,464
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the spin
coating apparatus of Sugimoto to have a plurality of air holes in the cup as
claimed rather than a single opening in light of the teachings of Hall. Id.
Appellants argue Hall-in teaching a gas line to provide the
pressurized gas-fails to teach or suggest that "only the air flow penetrates
through the air holes to the back surface of the substrate" because the gas
lines 26 of Hall extend through the gas ports 20. Br. 7-8 (citing Hall i-fi-f 19-
20, Figs. 1-2).
Appellants further argue the combination of Sugimoto and Hall is
improper because there is no element corresponding to the spin cup 18 of
Hall in the opening 20 of Sugimoto and that "a person of ordinary skill in the
art at the time of the invention cannot [sic] obviously know how to modify
the spin coating apparatus of Sugimoto to provide the claimed air holes."
Br. 8-9 (citing Hall i-f 19, Fig. 1; Sugimoto, Fig. 5). Still further, Appellants
argue that were a person of ordinary skill in the art to know how to modify
the apparatus of Sugimoto by the teaching of Hall forming gas ports with an
additional spin cup in the opening 20 of Sugimoto, the additional spin cup
may interfere or block the air flow sought by Sugimoto. Id. at 9.
As to claim 9, Appellants further argue "Hall teaches providing a gas
line 26 to build the pressurized gas penetrating through the gas ports 20, and
therefore fails to teach or suggest the limitation 'a pressure device for
adjusting pressure of the air flow ... without line guiding."' Id. at 10 (citing
Hall i-f 19, Fig. 1 ).
We find Appellants' argument unpersuasive. The rejections of claims
1 and 9 were not based upon literal substitution or incorporation of Hall's
7
Appeal2014-002414
Application 12/618,464
disclosed structure into Sugimoto' s spin coating apparatus. See Ans. 3---6, 9--
12. Rather, the Examiner correctly determined the combined teachings of
Sugimoto and Hall would have led one of ordinary skill in the art to modify
the spin coating of Sugimoto to have a plurality of air holes in the cup rather
than a single opening in light of the teachings of Hall. Id. at 10. We
understand the Examiner's combination does not include Hall's nozzle 24 or
any portion of gas line 26 extending through gas port 20 (id. at 9--10) and so
meets the limitation of claim 1 that "only the air flow penetrates through the
air holes to the back surface of the substrate" (claim 1) and of claim 9 "that
the air flow [is] supplied ... without line guiding" (claim 9).
It is axiomatic that "one cannot show non-obviousness by attacking
references individually where ... the rejections are based on combinations
of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981). The relevant
inquiry is, instead, whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. See id. at 425. Appellants' arguments further
ignore that "[a] person of ordinary skill is ... a person of ordinary creativity,
not an automaton[.]" KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007). Accordingly, Appellants' arguments fail to "take account of the
inferences and creative steps that a person of ordinary skill would employ"
in overcoming difficulties in combining the teachings of the cited references.
Id. at 418.
Based on the reasons set forth above and in the Answer, we find
Appellants' arguments are unsupported by persuasive evidence that the
Examiner's relied on combination of Sugimoto and Hall would not have
suggested an apparatus meeting the limitations of claims 1 and 9, or that the
8
Appeal2014-002414
Application 12/618,464
Examiner has not provided sufficient articulated reasoning as to why one of
ordinary skill in the art would have found it obvious. Accordingly, it cannot
be said that the Appellants have shown reversible error in the Examiner's
determination that one of ordinary skill in the art, armed with the knowledge
of the cited prior art, would have been led to the subject matter recited in the
appealed claims. See, e.g., In re Jung, 637 F.3d at 1365.
CONCLUSION
The Examiner's rejection of claims 1 and 4--8 under 35 U.S.C. § 112,
first paragraph is REVERSED.
The Examiner rejection of claims 9-13 under 35 U.S.C. § 112, first
paragraph is AFFIRMED.
The Examiner's rejection of claims 1 and 4--13 under 35 U.S.C.
§ 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
9