NONAKA, Yuya et al.

Patent Trials and Appeals Board

Sep 30, 2019

14609758 - (D) (P.T.A.B. Sep. 30, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/609,758 01/30/2015 Yuya NONAKA 004700-000008 1484
78198 7590 09/30/2019
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
EXAMINER
CHEN, KEATH T
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
09/30/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte YUYA NONAKA and YOZO IKEDO1
(Applicant: ASM IP Holding B.V.)
____________

Appeal 2019-001308
Application 14/609,758
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant identifies the real party in interest as ASM IP Holding B.V.
Appeal Br. 2.
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Application 14/609,758

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Appellant requests our review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–3 and 6. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth
below:
1. A film forming apparatus comprising:
a chamber having a processing space;
a stage provided in the processing space and having a substrate placed
thereon;
an electrode provided above the stage and having openings formed
therein;
an intermediate plate provided above the electrode, having openings
formed therein, and formed of an insulating material;
a diffusion tube positioned above the electrode and the intermediate
plate and connected to the chamber so that a diffusion space communicating
with the processing space is provided right above the stage; and
a gas supply tube extending from the outside of the diffusion tube into
the diffusion space through a portion of the diffusion tube and having a gas
supply orifice in a portion thereof inside of the diffusion space,
wherein the gas supply orifice is formed so as to eject a material gas in
a direction away from the stage, and
the gas supply orifice is provided only at a center of the diffusion
space as viewed in plan.

The Examiner relies on the following prior art references as evidence of
unpatentability:
Von Der Waydbrink et al. US 2009/0061088 A1 Mar. 5, 2009
(“Von Der Waydbrink”)
Chao et al. US 2009/0211707 A1 Aug. 27, 2009
(“Chao”)
Satake et al. US 2009/0288602 A1 Nov. 26, 2009
(“Satake”)
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THE REJECTIONS
1. Claims 1–3 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable
over Satake in view of Applicant’s Admitted Prior Art (Fig. 6, hereafter
“AAPA”)2 and Von Der Waydbrink.
2. Claims 1–3 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable
over AAPA, in view of Chao and Satake.

ANALYSIS
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports Appellant’s
position in the record. We thus reverse the Examiner’s decision for the reasons
provided by Appellant in the record, and add the following for emphasis.

Rejection 1
The Examiner proposes to modify Satake in view of AAPA to reduce the
number of gas injection holes 727 of Satake to a single one. Ans. 3–4. The
Examiner proposes a further modification of locating that single gas injection hole to
be in the center of the diffusion space because one skilled in the art would have
known that the single hole needs to be in the center in the X-direction in order to
provide more uniform distribution across the width of the substrate. Ans. 4–5.
Appellant argues that it would not have been obvious to have reduced the
number of gas injection holes 727 of Satake to a single one because such
a modification would reduce the gas-dispersion uniformity of Satake. Appeal Br. 4–
5. Appellant also argues that the Examiner’s position that it would have been
obvious to locate the single gas injection hole in the center of the diffusion space

2 We use US publication 2016/0222513 A1, published on August 4, 2016 for AAPA
disclosure.
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because one skilled in the art would have known that the single hole needs to be in
the center in the X-direction in order to provide more uniform distribution across the
width of the substrate, is unsupported by sufficient reasoning and a preponderance
of the evidence in the record. Reply Br. 1–2.
We are persuaded by Appellant’s argument. The Examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; 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) quoted with approval
in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Also, establishing a
prima facie case of obviousness requires an apparent reason to modify the prior art
as proposed by the Examiner. See KSR Intʼl. Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Here, we agree with Appellant that the Examiner has not provided sufficient
reasoning to modify Satake to include one gas injection hole “for its suitability with
predictable results” in view of Von Der Waydbrink (Final Act. 5–6), because Von
Der Waydbrink discloses “one or more openings” (¶ 42) such that it is unclear
whether in locating one gas injection hole in the center in the X-direction in Satake
would even maintain the uniformity of the reactant gas over the whole surface of the
substrate in Satake, or reduce uniformity as argued by Appellant notwithstanding the
presence of an intermediate plate having openings as disclosed in AAPA. (Appeal
Br. 4; see Ans. 8.) Thus, the Examiner has not established a sufficient reason for
the proposed modifications, which would have been apparent to one of ordinary skill
in the art in view of the relied-upon prior art.
In view of the above, we reverse Rejection 1.

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Rejection 2
The Examiner proposes to modify AAPA in view of Chao by re-arranging the
gas supply tube 33 of AAPA to extend into the center of the diffusion tube 30 of
AAPA in view of Chao. Ans. 5–6. The Examiner also proposes to further modify
AAPA (in view of Chao) by re-arranging the opening of AAPA’s gas supply tube
33, extending into the diffusion tube 30 of AAPA, to a upward direction in view of
Satake for the purpose of improving the uniformity of the distribution of the
deposited film. Ans. 6.
Appellant argues, inter alia, that one skilled in the art would recognize that
the showerhead configurations of AAPA and Chao are not analogous to the
processing apparatus of Satake and therefore the Examiner’s rejection relying on the
implementation of the teachings of Satake with AAPA in view of Chao is improper
and is based on improper hindsight reasoning. Appeal Br. 5–6.
Appellant also argues that it is only a bald assertion by the Office, without any
evidence, that modifying the gas inlet in a showerhead structure (such as in Chao
and AAPA) to eject reactant gas away from a processing surface would improve the
uniformity of a deposited film. Appeal Br. 6. Appellant submits that the
Examiner’s statement (made on page 4 of the Advisory Action) that the proposal to
further modify AAPA (in view of Chao) by re-arranging the opening of AAPA’s gas
supply tube 33 to a upward direction in view of Satake would improve uniformity of
the distribution because “more travel time would allow more even flow distribution”
is an unsupported assertion. Appeal Br. 6.
We are persuaded by Appellant’s argument in this regard. As mentioned
supra, the Examiner bears the initial burden of presenting a prima facie case of
obviousness. Oetiker, 977 F.2d at 1445. Thus, as previously discussed above,
rejections on obviousness grounds cannot be sustained by mere conclusory
statements, but instead require some articulated reasoning with some rational
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underpinning to support the legal conclusion of obviousness (Kahn, 441 F.3d at
988), and require an apparent reason to modify the prior art in view of the relied-
upon prior art (KSR, 550 U.S. at 418). Thus, for the reasons stated in the record by
Appellant, we agree that the Examiner has not met this burden.

DECISION
Each rejection is reversed.

ORDER
REVERSED