Applied Materials, Inc.

Patent Trials and Appeals Board

Aug 26, 2020

14602885 - (D) (P.T.A.B. Aug. 26, 2020)

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.
14/602,885 01/22/2015 Chin Hock Toh 022001USA/
AMST/APDC/MDD
7502
150369 7590 08/26/2020
Schwabe, Williamson & Wyatt/AMAT
1211 SW Fifth Ave.
Suite 1900
Portland, OR 97204
EXAMINER
CHAN, LAUREEN
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
IPDocketing@SCHWABE.com
ghoover@schwabe.com
mscardina@schwabe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIN HOCK TOH, TUCK FOONG KOH,
SRISKANTHARAJAH THIRUNAVUKARASU,
JEN SERN LEW, ARVIND SUNDARRAJAN,
and SESHADRI RAMASWAMI

Appeal 2019-004974
Application 14/602,885
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–12, 16, and 18–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We pro forma REVERSE and enter a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Applied
Materials, Inc. (Appeal Br. 3).
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Appellant’s invention is directed to an apparatus for producing thin
silicon chips used in the microelectronics manufacturing industry (Spec.
¶¶ 2–4). According to the Specification, carriers facilitate the effective
plasma processing of thin silicon wafers for chip manufacturing (id. ¶ 4).
The Specification describes a resilient sealing ridge for holding a substrate
on the perimeter of a substrate carrier’s top surface (id. ¶ 6; Figs. 4, 12;
claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A substrate carrier comprising;
a top surface for holding a substrate, the top surface
having a perimeter;
a sealing ridge on the perimeter of the top surface
extending above the top surface to contact a perimeter of the
substrate when the substrate is being carried, wherein the
sealing ridge further comprises a heat treated seal coating over a
top and over inner and outer side surfaces of the sealing ridge,
the heat treated seal coating not on portions of the top surface
exposed by the sealing ridge, the heat treated seal coating to
contact the substrate and prevent materials from passing past
the sealing ridge to contact the substrate.
Appellant appeals the following rejections:
1. Claims 1 and 18 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
2. Claims 1, 11, and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Shiraiwa et al. (US 2012/0287552 A1; pub.
Nov. 15, 2012; “Shiraiwa”) in view of Vartabedian et al. (US
2010/0323124 A1; pub. Dec. 23, 2010; “Vartabedian”), and
further in view of Shih et al. (US 2008/0169588 A1; pub. July
17, 2008; “Shih”).
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3. Claims 2–5 are rejected under 35 U.S.C. § 103 as unpatentable
over Shiraiwa in view of Vartabedian, Shih, and further in view
of Lin et al. (US 2013/0120897 A1; pub. May 16, 2013; “Lin”).
4. Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable
over Shimizu et al. (US 7,195,673 B2; iss. Mar. 27, 2007;
“Shimizu”) in view of Stevens et al. (US 2012/0267049 A1;
pub. Oct. 25, 2012; “Stevens”), Ke et al. (US 6,284,093 B1; iss.
Sept. 4, 2001; “Ke”), Shiraiwa, Vartabedian, and further in
view of Shih.
5. Claims 1–5, 7–10, 12, and 16 are rejected under 35 U.S.C.
§ 103 as unpatentable over McCutcheon et al. (US
2011/0308739 A1; pub. Dec. 22, 2011; “McCutcheon”) in view
of Burggraf et al. (US 2014/0374144 A1; pub. Dec. 25, 2014;
“Burggraf”), and further in view of Flaim et al. (US
2009/0218560 A1; pub. Sept. 3, 2009; “Flaim”) as evidenced
by Ash, Michael, Handbook of Solvents, 2nd Ed. pp. 485
(2013), and Wypych, George, Handbook of Fillers, 3rd Ed. pp.
711.
6. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable
over McCutcheon in view of Burggraf, Flaim, and further in
view of Landesberger (US 2015/0332944 A1; pub. Nov. 19,
2015).
7. Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable
over McCutcheon in view of Burggraf, Flaim, and further in
view of Zhang et al. (US 2007/0284758 A1; pub. Dec. 13,
2007; “Zhang”).
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8. Claims 18–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Shimizu in view of Stevens, Ke,
McCutcheon, Burggraf, and further in view of Flaim.
FINDINGS OF FACT & ANALYSIS
The issue in this appeal concerns the meaning of “exposed by” in the
phrase “a heat treated seal coating over a top and over inner and outer side
surfaces of the sealing ridge, the heat treated seal coating not on portions of
the top surface exposed by the sealing ridge” present in claims 1 and 18.
(emphasis added). Claims 1 and 18 recite a negative limitation. We
determine whether the negative limitation clearly recites what is excluded.
We determine that the phrase renders the claim indefinite under 35 U.S.C.
§ 112(b) for the reasons discussed below.
Figure 4 of the Specification, reproduced below, illustrates a side
cross-sectional view of a ridge formed on a carrier by deposition:

Figure 4 illustrates, inter alia, the formation of circumferential ridge
408 by depositing spin coat material 406 in a ring shape around the edge of
carrier 402 using slit 412 onto top surface 416 (Spec. ¶ 31).
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The Examiner interprets the disputed limitation as requiring that the
heat treated seal coating layer “is formed on the sealing ridge and
specifically formed on top and on inner and outer side surfaces of the ridge
and not on the top surface . . . of the carrier” (Ans. 27) (emphasis added).
The Examiner acknowledges that the Specification describes spraying a seal
coating over the entirety of a carrier top surface having elevated edges and,
thereafter, heat treating the seal coating, but “[t]here are no specifics
regarding where the coating is on the edges/sealing ridge” (id. at 28 (citing
Spec. ¶ 44)).
Appellant argues that the Specification’s description of a seal coating
sprayed specifically over a sealing ridge “discloses a first embodiment
where the seal coating is a heat treated coating that is not on portions of the
top surface of the carrier exposed by the sealing ridge” (Appeal Br. 8 (citing
Spec. ¶ 44)) (emphasis added).
For words of exclusion in a negative limitation to not render a claim
indefinite, the excluding words must have a reasonably precise meaning. In
re Wakefield, 422 F.2d 897, 904 (CCPA 1970); see also In re Barr, 444 F.2d
588, 595 (CCPA 1971) (holding that when “the boundaries of the patent
protection sought are set forth definitely, albeit negatively, . . . [the] claim
complies with the second paragraph of 112”)); MPEP § 2173.05(i).
Claim 1 is directed to a substrate carrier comprising, inter alia, a
“sealing ridge[, which] further comprises a . . . heat treated seal coating not
on portions of the top surface exposed by the sealing ridge.” Thus, claim 1
excludes from within its scope a heat treated seal coating, which is located
on “portions of the top surface exposed by the sealing ridge” (claim 1).
However, the location of these “exposed” top surface portions in relation to
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the sealing ridge is not clear. The term “exposed” requires that the referred
to top surface portions are “open to view” and “not shielded or protected”
(see MERRIAM-WEBSTER’S DICTIONARY (August 13, 2020),
https://www.merriam-webster.com/dictionary/exposed).
The disputed negative limitation may be interpreted to encompass a
heat treated coating, which is not on open and unshielded portions of the
carrier’s top surface adjacent, next to, and “by the sealing ridge” (claim 1)
(emphasis added). However, it is unclear how seal coating is sprayed
specifically over the sealing ridge’s top, inner, and outer side surfaces, but
not onto the top surface’s portions, which are adjacent and next to the
sealing ridge (see, e.g., Spec. ¶ 44).
The negative limitation may alternatively be interpreted as
encompassing a heat treated coating, which is not on open and unshielded
portions of the carrier’s top surface that the sealing ridge has exposed. It is,
however, unclear how the sealing ridge actively exposes the top surface’s
uncoated portions when these portions are covered, not viewable, and
shielded by the sealing ridge (see MERRIAM-WEBSTER’S DICTIONARY
(August 13, 2020), https://www.merriam-webster.com/dictionary/exposed).2
Therefore, claim 1 as drafted is indefinite as the negative limitation
“the heat treated seal coating not on portions of the top surface exposed by
the sealing ridge” is unreasonably imprecise.

2 In yet another alternative interpretation, we note that the Specification’s
Figures 4 and 5a depict a portion of the carrier’s top surface 416 in contact
and exposed to circumferential sealing ridge 408. The spray coating method
described in the Specification would not coat the area of top surface 416 in
contact with ridge 408 (see Spec. ¶ 44).
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Claim 18 suffers from the same issue as claim 1. Claim 18 is directed
to a system comprising, inter alia, a “sealing ridge[, which] further
comprises a . . . heat treated seal coating not on portions of the top surface of
the carrier exposed by the sealing ridge.” As with claim 1, it is unclear
whether the claim encompasses a heat treated coating, which is not on: (i)
open and unshielded portions of the carrier’s top surface adjacent, next to,
and “by the sealing ridge,” (claim 18) (emphasis added) or (ii) uncoated
portions of the top surface, which the sealing ridge somehow exposes.
We find that claims 1–5, 7–12, 16, and 18–22 are indefinite and enter
a new ground of rejection under 35 U.S.C. § 112(b) for the reasons
discussed above. Because the Examiner’s rejections are based upon a
speculative meaning as to the claims, we pro forma reverse the Examiner’s
§ 112(a) and § 103 rejections over Shiraiwa, Vartabedian, Shih, Lin,
Shimizu, Stevens, Ke, McCutcheon, Burggraf, Flaim, Landesberger, and
Zhang. In re Steele, 305 F.2d 859, 863 (CCPA 1962).
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1, 18 112(a) Written
Description
1, 18
1, 11, 22 103 Shiraiwa,
Vartabedian, Shih
1, 11, 22
2–5 103 Shiraiwa,
Vartabedian, Shih,
Lin
2–5
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Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
18 103 Shimizu, Stevens,
Ke, Shiraiwa,
Vartabedian, Shih
18
1–5, 7–
10, 12,
16
103 McCutcheon,
Burggraf, Flaim
1–5, 7–
10, 12, 16

11 103 McCutcheon,
Burggraf, Flaim,
Landesberger
11
21 103 McCutcheon,
Burggraf, Flaim,
Zhang
21
18–20 103 Shimizu, Stevens,
Ke, McCutcheon,
Burggraf, Flaim
18–20
1–5, 7–
12, 16,
18–22
112(b) Indefiniteness 1–5, 7–
12, 16,
18–22
Overall
Outcome
1–5, 7–
12, 16,
18–22
1–5, 7–
12, 16,
18–22

This decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
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Application 14/602,885

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to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R. § 41.50(b)