Ex Parte Soininen et alDownload PDFBoard of Patent Appeals and InterferencesFeb 25, 200910428207 (B.P.A.I. Feb. 25, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PEKKA J. SOININEN and SVEN LINDFORS ____________ Appeal 2008-3846 Application 10/428,207 Technology Center 1700 ____________ Decided:1 February 25, 2009 ____________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and KAREN M. HASTINGS, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge GARRIS. Opinion Concurring filed by Administrative Patent Judge WARREN. GARRIS, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-3846 Application 10/428,207 Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-43. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. STATEMENT OF THE CASE Appellants claim an apparatus for depositing a thin film on a substrate. The apparatus comprises a gas injector structure 20 comprising a first gas injector 22 in fluid communication with a first reactant gas source and a purge gas source and a second gas injector 24 in fluid communication with a second reactant gas source and a purge gas source, wherein the first and second gas injectors include hollow tubes 27, 28, 34, 74 having a plurality of gas flow apertures 30, 36 (Fig. 1; claim 1). The apparatus may also comprise a showerhead rake structure comprising a first gas injector having a first rake 906 in fluid communication with a first reactant source and a second gas injector having a second rake 924 in fluid communication with a second reactant source, wherein the first reactant source comprises a first precursor and the second reactant source comprises a second precursor, the second precursor being reactive with chemisorbed first precursor on the substrate (Fig. 9; claim 30). Independent claims 1 and 30 are representative of the subject matter claimed by Appellants, and a copy of these claims (taken from the Claims Appendix of the Appeal Brief) is set forth below. 1. An apparatus for depositing a thin film on a substrate, comprising: a reaction chamber having a reaction space; a substrate holder for holding the substrate within the reaction space; 2 Appeal 2008-3846 Application 10/428,207 a gas outlet in fluid communication with the reaction space; a gas injector structure positioned with [sic, within?] the reaction chamber fixed relative to the substrate during deposition, the gas injector structure comprising: a first gas injector being in fluid communication with a first reactant gas source and a purge gas source; and a second gas injector being in fluid communication with a second reactant gas source and a purge gas source; wherein the first and second gas injectors include hollow tubes extending in the reaction space, the hollow tubes including a plurality of gas flow apertures spaced along respective tube axes of elongation, the apertures opening to the reaction space. 30. An apparatus for depositing thin films on a substrate, comprising: a reaction chamber; a substrate support configured to receive a substrate disposed within the reaction chamber; and a showerhead rake structure positioned adjacent the substrate support comprising: a first gas injector having a first rake in fluid communication with a first reactant source, the first rake including a plurality of first fingers extending from and in fluid communication with a first gas distribution structure, each of the first fingers having first apertures along a length thereof; and a second gas injector positioned opposite from the first gas injector having a second rake in fluid communication with a second reactant source, the second rake including a plurality of second fingers extending from and in fluid communication with a second distribution structure, each of the second fingers having a second apertures along a length thereof; 3 Appeal 2008-3846 Application 10/428,207 wherein the first reaction [sic, reactant] source comprises a first precursor and the second reaction [sic, reactant] source comprises a second precursor, the second precursor being reactive with chemisorbed first precursor on the substrate. The following references are relied upon by the Examiner as evidence of anticipation and obviousness: Dimock US 4,523,985 Jun. 18, 1985 Drage US 4,590,042 May 20, 1986 Oda US 5,010,842 Apr. 30, 1991 Ishii US 5,683,537 Nov. 4, 1997 Chen US 5,716,453 Feb. 10, 1998 Shirakawa US 6,291,800 B1 Sep. 18, 2001 Chae US 6,478,872 B1 Nov. 12, 2002 Claims 30-33, 35, 37, 41, and 43 are rejected under 35 U.S.C. § 102(b) as being anticipated by Oda. Under 35 U.S.C. § 103(a): claims 34, 36, 38, 40, and 42 are rejected over Oda in view of Drage, and claim 39 is rejected over Ida in view of Dimock. Also under 35 U.S.C. § 103(a): claims 1-4, 9-15, 17, 18, and 20-292 are rejected over Shirakawa in view of Chae; claim 16 is rejected over Shirakawa, Chae, and Oda; claims 5 and 7 are rejected under Shirakawa, Chae, and Dimock; claim 8 is rejected over Shirakawa, Chae, and Ishii; claim 19 is rejected over Shirakawa, Chae, and Chen; and 2 The Examiner failed to include dependent claim 29 in the statement of rejection based on Shirakawa in view of Chae (Ans. 7) although this failure clearly was an inadvertent oversight (Ans. 13). In light of our disposition of this appeal, the Examiner's oversight constitutes harmless error. 4 Appeal 2008-3846 Application 10/428,207 claim 6 is rejected over Shirakawa, Chae, and Drage. THE REJECTIONS BASED ON ODA ISSUE Have Appellants shown error in the Examiner's finding that Oda discloses each and every limitation of independent claim 30 including the limitation "wherein the first reaction source comprises a first precursor and the second reaction source comprises a second precursor, the second precursor being reactive with chemisorbed first precursor on the substrate"? FINDINGS OF FACT It is undisputed that Oda discloses an apparatus for depositing a thin film on a substrate comprising a showerhead rake structure with first and second gas injectors (Figs. 3, 9). It is also undisputed that Oda's gas injectors are not in fluid communication with a first reactant source comprising a first precursor and a second reactant source comprising a second precursor, "the second precursor being reactive with chemisorbed first precursor on the substrate" as required by claim 30. PRINCIPLES OF LAW A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987), cert denied, 484 U.S. 484 U.S. 827 (1987). 5 Appeal 2008-3846 Application 10/428,207 ANALYSIS According to the Examiner, the claim 30 recitation "wherein the first reaction source comprises a first precursor and the second reaction source comprises a second precursor, the second precursor being reactive with chemisorbed first precursor on the substrate" constitutes merely recitation of intended use which does not structurally distinguish the claim 30 apparatus from the apparatus of Oda (Ans., para. bridging 30-31). In response, Appellants argue that "[c]laim 30 positively claims two reaction sources that are separately in communication with the first and second gas injector[s] respectively [wherein] [t]he second reaction source comprises a precursor that is reactive with the chemisorbed first precursor on the substrate" (App. Br. 15). Appellants further argue that, because Oda does not disclose this claim 30 element, the § 102 rejection is in error (id.). We agree with Appellants. By express language, claim 30 requires first and second reactant sources which are in fluid communication with first and second gas injectors and which comprise first and second precursors wherein the second precursor is explicitly defined as "being reactive with chemisorbed first precursor on the substrate." Therefore, claim 30 requires more than Oda's rake structure having first and second gas injectors. Claim 30 also requires first and second reactant sources comprising first and second specifically defined precursors which are indisputably not disclosed by Oda. It follows that Oda fails to describe each and every element of claim 30 as correctly argued by Appellants. 6 Appeal 2008-3846 Application 10/428,207 CONCLUSIONS OF LAW Appellants have shown error in the Examiner's finding that Oda describes each and every element set forth in claim 30 including the limitation "wherein the first reaction source comprises a first precursor and the second reaction source comprises a second precursor, the second precursor being reactive with chemisorbed first precursor on the substrate." For this reason, we cannot sustain the § 102 rejection based on Oda of independent claim 30 or of dependent claims 31-33, 35, 37, 41, and 43. Because the additionally applied references are not relied upon by the Examiner for supplying the above discussed deficiencies of Oda, we also cannot sustain the § 103 rejections of dependent claims 34, 36, 38, 39, 40, and 42 over Oda in combination with the Drage or Dimock references. THE REJECTIONS BASED ON SHIRAKAWA ISSUE Have Appellants shown error in the Examiner's conclusion that it would have been obvious to provide the apparatus of Shirakawa with first and second gas injectors in fluid communication respectively with first and second reactant and purge gas sources (as required by independent claim 1) in view of Chae? FINDINGS OF FACT The Examiner acknowledges that the apparatus of Shirakawa does not include first and second gas injectors in fluid communication respectively with first and second reactant gas sources and purge gas sources as required by independent claim 1 (Ans. 11). 7 Appeal 2008-3846 Application 10/428,207 The Examiner concludes that "[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to add Chae's purge and reaction gas conduits and controls to Shirakawa's gas injector structure (110, 115, 126), including optimizing the shape and relative positions of Shirakawa's components" (Ans. 13). Shirakawa discloses an apparatus for heat treating a substrate which avoids the prior art problem of heated air rising up in the space above the substrate such that particles in the air may fall down on the substrate (col. 1, ll. 24-33 and 50-53). This prior art problem is avoided in Shirakawa's apparatus by an arrangement of gas blow-out and exhaust ports which prevent heated air from rising up in the space above the substrate (Figs. 15- 18; col. 13, ll. 19-48; col. 14, ll. 30-63; col. 16, ll. 10-14). Chae discloses an apparatus for depositing film on a substrate by injecting reaction and purge gases through a showerhead in such a way as to prevent the backward flow of reaction gas when the gas is not being delivered to the reaction chamber (Abstract; Fig. 8; col. 1, ll. 56-67). PRINCIPLES OF LAW Rejections on obviousness grounds cannot be sustained by mere conclusory statement; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'l Co. v. Teleflex Co., 127 S. Ct. 1727, 1741 (2007). ANALYSIS Appellants argue that "it would not be obvious to one of skill in the art to combine the reactant system of Chae to the distribution system of Shirakawa [because] Chae's system is configured to supply precursors in an 8 Appeal 2008-3846 Application 10/428,207 ALD process to the surface of a substrate [while] Shirakawa's system is configured to generate a parallel flow above the substrate to sweep impurities that rise from the substrate towards an exhaust port" (App. Br., ¶ bridging pages 10-11). According to Appellants, "there is no motivation to pick and choose components of a gas system configured to promote deposition [i.e., Chae's system] and combine it with a gas system designed to sweep things away from the substrate [i.e., Shirakawa's system]" (App. Br. 11, first full para.). We agree. The objectives and functions of the Shirakawa and Chae devices are so dissimilar that an artisan would not have been motivated to combine the teachings of these references in the manner proposed by the Examiner. In contrast, the Examiner alleges that "[m]otivation to add Chae's purge and reaction gas conduits and controls to Shirakawa's gas injector structure . . . is to prevent back flow of reactant gases as taught by Chae (col. 1, ll. 60-68)" (Ans. 13). However, the Examiner has failed to articulate any reasoning with some rational underpinning in support of the proposition that such back flow prevention would be at all desirable in the apparatus of Shirakawa. CONCLUSIONS OF LAW Appellants have shown error in the Examiner's conclusion that it would have been obvious to provide Shirakawa's apparatus with first and second gas injectors being in respective fluid communication with first and second reactant gas sources and purge gas sources (as required by independent claim 1) in view of Chae. For this reason, we cannot sustain the § 103 rejection based on Shirakawa and Chae of independent claim 1 or of dependent claims 2-4, 9 Appeal 2008-3846 Application 10/428,207 9-15, 17, 18, and 20-29. Since the other applied references have not been relied upon to supply the above discussed deficiencies of Shirakawa and Chae, we also cannot sustain the corresponding rejections of claims 5-8, 16, and 19 over various combinations of Shirakawa and Chae with Oda, Dimock, Ishii, Chen, and Drage. SUMMARY We have not sustained any of the § 102 and § 103 rejections advanced by the Examiner in this appeal. ORDER The decision of the Examiner is reversed. REVERSED 10 Appeal 2008-3846 Application 10/428,207 WARREN, Administrative Patent Judge, Concurring: I concur in the decision of the majority of this panel to reverse the decision of the Primary Examiner, and join the decision with respect to the grounds of rejection based on Shirakawa. Dec. 7-10. I reach the same result as the majority of this panel with respect to the grounds of rejection based on Oda (Dec. 7), but do so for the following reasons expressed with respect to the ground of rejection of claim 30 under 35 U.S.C. § 102(b) as anticipated by Oda. See Dec. 5-6. The issue of whether Oda anticipates claim 30 entails the interpretation of the following language: 30. An apparatus for depositing thin films on a substrate, comprising: a first gas injector having a first rake in fluid communication with a first reactant source . . . ; and a second gas injector positioned opposite from the first gas injector having a second rake in fluid communication with a second reactant source . . . ; wherein the first reaction [sic, reactant] source comprises a first precursor and the second reaction [sic, reactant] source comprises a second precursor, the second precursor being reactive with chemisorbed first precursor on the substrate. This claim language must be interpreted by giving the terms thereof the broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art in light of the written description in the Specification unless another meaning is intended by Appellants as established therein, and without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. of 11 Appeal 2008-3846 Application 10/428,207 Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). Indeed, it must be determined whether the functional language, “a . . . gas injector having a . . . rake in fluid communication with a . . . reactant source,†and the operational language, “first . . . [reactant] source comprises a first precursor and the second . . . [reactant] source comprises a second precursor, the second precursor being reactive with chemisorbed first precursor on the substrate,†in claim 30 confer a structural limitation on the claimed apparatus, see, e.g., In re Echerd, 471 F.2d 632, 634-35 (CCPA 1973); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971) (there is nothing intrinsically wrong in defining something by what it does rather than by what it is), or conveys a method or intended use concept. See, e.g., In re Yanish, 477 F.2d 958, 959 (CCPA 1973); In re Casey, 370 F.2d 576, 579-80 (CCPA 1967); In re Otto, 312 F.2d 937, 939-40 (CCPA 1963). In this respect, it is well settled that a structural limitation is not conferred on a claimed apparatus by specifying materials on which the claimed apparatus performs work. See, e.g., Otto, 312 F.2d at 939-40; In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952) (“[T]here is no patentable combination between a device and the material upon which it works.â€); In re Young, 75 F.2d 996 (CCPA 1935); In re Smith, 36 F.2d 302, 303 (CCPA 1929)(“It might be argued that the invention here consists in a combination of extra length carbons with the old machine, and that such a combination is patentable. It will be borne in mind that it has been long established that a person may not patent a combination of device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.â€). 12 Appeal 2008-3846 Application 10/428,207 On this record, I disagree with the interpretations advanced by the Examiner, Appellants, and the majority of this merits panel. See Ans., e.g., 5-6 and 28-31; App. Br., e.g., 14-15; Reply Br. 3-4; Dec. 6. I determine the claim language specifying that each of the first and second gas injectors has a rake in functional fluid communication with a respective first and second reactant source, is sufficient, in light of the disclosure with respect to Figure 9 in the Specification, to establish the structural limitations that the rake 906, 902 of the respective gas injectors is in “fluid communication,†such as through first and second gas inlets 922, 924, with its own “reactant gas source,†both of which are “not shown.†Spec. ¶¶ 0063-0066; see App. Br. 7-8. Consequently, the compositions of the first and second reactant sources specified in the last clause of claim 30 on which the claimed apparatus performs work do not structurally limit the claimed apparatus as a matter of law, see, e.g., Otto, 312 F.2d at 939-40; Rishoi, 197 F.2d at 344- 45; Young, 75 F.2d 996, and, in any event, are not necessary to construe the structure of the functional claim language in light of the disclosure in the Specification. Indeed, one of ordinary skill in this art would find from the disclosure in the Specification describing the apparatus of Figure 9 that no particular structure in fluid communication with first and second gas inlets 922, 924 is required to accommodate either or both of the specified compositions of the first and second reactant sources, as indeed, none is “shown.†See Spec. ¶¶ 0063 and 0065. I further find that in Oda, each of the two reactant gases sources is in fluid communication with a specific diffusing means, only one of which 13 Appeal 2008-3846 Application 10/428,207 means comprises a plurality of pipes in the form of a “rake.†Oda, e.g., col. 2, ll. 30-41, col. 3, l. 12 to col. 4, l. 23, and Figs. 2, 8, and 9. Accordingly, Oda does not describe to one of ordinary skill in this art an embodiment falling within claim 30 as I have interpreted this claim above. Therefore, I would reverse the grounds of rejection based on Oda on this basis. cam KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE CA 92614 14 Copy with citationCopy as parenthetical citation