Ex Parte 5,074,456 et al

Patent Trial and Appeal Board

Mar 18, 2013

90010742 (P.T.A.B. Mar. 18, 2013)

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.
90/010,742 11/16/2009 INV001 5,074,456 8455
21839 7590 03/18/2013
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/18/2013 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 Lam Research Corporation,
Patent Owner and Appellant
____________

Appeal 2012-009622
Reexamination Control 90/010,742
Patent RE 41,266 E
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

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Patent RE 41,266 E

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STATEMENT OF THE CASE
Lam Research Corporation (hereinafter “Appellant”), the owner of RE
41,266 E (hereinafter the “‘266 Patent”), the patent under reexamination,
challenges the Examiner’s finding of a substantial new question of
patentability (hereinafter “SNQ”). (Appeal Brief filed April 29, 2011,
hereinafter “App. Br.,” at 2 and 10; Final Office Action mailed February 10,
2011.) The authority to review issues related to SNQ in ex parte
reexaminations has been delegated to the Chief Judge of the Patent Trial and
Appeal Board by the Director, and includes the authority to address and
decide issues raised by (1) arguments that the proceeding was improperly
instituted because the reexamination request does not raise a substantial new
question of patentability, and (2) arguments raised that a rejection on appeal
does not raise a substantial new question of patentability. (See attached
Delegation dated February 6, 2013.) The Chief Judge has further delegated
that authority to this panel.
Appellant also appeals under 35 U.S.C. §§ 134(b) and 306 from a
final rejection by the Examiner of claims 1-36 of the ‘266 Patent. (Id. at 10-
11.) We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. However,
because the procedural SNQ issue is dispositive, we do not reach the merits
of the rejections on appeal.
We REMAND for the reasons set forth below.
This reexamination proceeding (Reexamination Control 90/010,742)
was filed as a third-party request for ex parte reexamination of U.S. Patent
5,074,456 (hereinafter the “‘456 Patent”), which issued on December 24,
1991 to Raymond L. Degner and Eric H. Lenz from Application 07/584,324
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filed on September 18, 1990. (Request for Ex Parte Reexamination
November 16, 2009, hereinafter the “’742 Request”.) At the time the ‘742
Request was filed, the ‘456 Patent was the subject of reissue application
10/734,073, which was filed on December 12, 2003. The reissue application
was merged with two prior ex parte reexamination proceedings, 90/007,027
(hereinafter the ‘“027 Reexamination”) and 90/007,114, which were the
subject of Appeal 2008-003131 (hereinafter “Prior Board Decision”) in
which a prior Board panel reversed the Examiner’s rejections of the claims,
culminating in the issuance of the reissue ‘266 Patent on April 27, 2010.
(Br. 2.) Thus, the ‘742 Request was applied to the claims of the ‘266 patent.
Moreover, we also understand that the ‘266 Patent is the subject of
litigation that has been stayed pending the outcome of this reexamination,
which is identified at page 2 of the Appeal Brief.1

THE INVENTION
The ‘266 Patent relates to the design of electrodes used for producing
a plasma in a reactor vessel. (Col. 1, ll. 9-10.)
Claim 1 on appeal reads as follows (paragraphing added for clarity):
1. An improved reactor of the type having a first
electrode for supporting a substrate, an opposed electrode, and
means for producing a plasma therebetween, wherein the
opposed electrode has one face exposed to the first electrode
and an opposite face connected to an electrical source and a
thermal sink, the improvement comprising

1 Lam Research Corporation v. Schunk Semiconductor and Xycarb
Ceramics, Case No. C03-1335CRB in the United States District Court,
Northern District of California, San Francisco Division. (App. Br. 2;
Related Proceedings Appendix.)
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an opposed electrode including
(a) an electrode plate composed of a substantially pure
material and having a substantially uniform thickness and
(b) a support frame composed of an electrically and
thermally conductive material bonded to a back face of the
plate,
whereby the support frame is connected to the electrical
source and thermal sink and a front face of the plate which is
exposed to the first electrode is substantially free from
protuberances.
(App. Br., Claims App’x 1.)

THE REJECTIONS
The Examiner rejected claims 1-36 of the ‘266 Patent as follows
(Examiner’s Answer mailed March 30, 2012, hereinafter “Ans.”):
I. Claims 1-3, 5-7, 10-13, 15, 18, 21, 24-27, and 29 under 35
U.S.C. § 102(b) as anticipated by Yamada2 as evidenced by
Uematsu,3 Enomoto,4 Vossen,5 and Koch6 (Ans. 4-6);
II. Claims 8, 9, 20, 22, and 23 under 35 U.S.C. § 103(a) as obvious
over Yamada (Ans. 6-7);

2 JP 61-279672, published December 10, 1986 (all citations to English
Translation of Record).
3 Uematsu et al., "Application of Gas Plasma Technique to the Fabrication of
Semiconductor Integrated Circuits,” Mitsubishi Electric Corporation
Technical Report, Vol. 45, No. 6, pp. 740-745, 1971 (all citations to English
Translation of Record).
4 Enomoto et al., "Dry Process", Denshi Tsushin Gakkaishi (The Journal of
Institute of Electronics and Communications Engineers of Japan), Vol. 62,
No.4, pp. 404-409, 1979 (all citations to English Translation of Record).
5 Vossen, "The Preparation of Substrates for Film Deposition Using Glow-
Discharge Techniques", Physics of Thin Films, Vol. 14, pp. 201-237, 1989.
6 US 4,340,462, issued July 20, 1982.
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III. Claims 4 and 19 under 35 U.S.C. § 103(a) as obvious over
Yamada in view of either Koch or Rose7 (Ans. 7-8); and
IV. Claims 14, 16, 17, 28, and 30-36 under 35 U.S.C. § 103(a) as
obvious over Yamada in view of Inaba8 (Ans. 8-9).

ISSUE
Substantial New Question of Patentability (SNQ)
Appellant characterizes its challenge to the Examiner’s finding of a
substantial new question of patentability as “the Examiner’s use of ‘old art’
in the rejections under appeal.” (App. Br. 21.) Specifically, Appellant
contends that whether Yamada anticipated the claims on appeal was a
question considered by a previous Examiner in response to the grounds of
rejection over the same reference proposed in the Request for
Reexamination in the ‘027 Reexamination of the ‘456 patent. (App. Br. 23-
31.) The present ‘266 patent is a reissue of the ‘456 patent. Appellant
additionally contends that “Uematsu, Enomoto, and Vossen do not establish
a new light in which to view Yamada.” (App. Br. 26-27.)
The Examiner maintains that the newly cited references Uematsu,
Enomoto, and Vossen, along with the previously cited Koch references
present a new light in which to view Yamada, particularly in view of the
Prior Board Decision, which allegedly “repeatedly indicates that equivalence
between sputtering and etching and the reactors used therefor, was not
clearly established on the record by the examiner.” (Ans. 10.) Specifically,

7 US 4,820,371, issued April 11, 1989.
8 JP 61-243170, published October 29, 1986 (all citations to English
Translation of Record).
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the Examiner’s position is that Uematsu, Enomoto, Vossen, and Koch
establish a correlation between sputtering and etching plasma reactors that
provides a new light in which to view Yamada as an anticipatory
publication. (Ans. 10-11.) In addition, the Examiner stated that Appellant’s
requested review of the appropriateness of the Examiner’s decision to enter
rejections based on Yamada is a petitionable issue, not an appealable issue.
(Ans. 11.)
The principal issue in this appeal is:
Did the Examiner err in determining that Enomoto, Uematsu, Vossen,
and Koch present Yamada in a new light sufficient to raise a substantial new
question of patentability?

FINDINGS OF FACT (“FF”)
1. In the ‘027 Reexamination Request, the Requester proposed a
rejection of claims 1-36 of the ‘456 Patent, in which the claims
were alleged to be anticipated by or obvious over Yamada.
(‘027 Reexamination Request, pages 4-40.)
2. The ‘027 Reexamination Request states: “It should be noted
that plasma etching and sputtering are closely related. Both
processes are significantly used for semiconductor processing,
and both processes use plasma. As discussed above, the
apparatuses have many similarities to each other.” (‘027
Reexamination Request, pages 10-11.)
3. In the order granting the ‘027 Reexamination, the Examiner
stated: “It is agreed that the consideration of [Yamada] raises a
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substantial new question of patentability as to claims 1-36 of
the [‘456] patent. As pointed out on pages 4-40 of the request,
[Yamada] teaches the reactor, the electrode assembly and the
method for forming the electrode assembly as claimed by [the
‘456 Patent].” (Order Granting ‘027 Reexamination entered
July 23, 2004, page 3.)
4. In the ‘742 Request of the ‘456 Patent, Requester proposed
rejections of claims 1, 18, and 33 as anticipated by or obvious
over Yamada in view of “newly cited” references Uematsu,
Enomoto, and Vossen. (The ‘742 Request, page 5.) The ‘742
Request stated, that “[a]lthough Yamada JP’672 was cited by
the requester in the [‘027] reexamination [in a proposed
rejection], the Examiner did not cite it in the rejection of the
independent claims of the ‘456 patent. The fact indicates that
the Examiner did not recognize the importance of Yamada
JP’672.” (The ‘742 Request, pages 5-6.)
5. The ‘742 Request cites Uematsu as “indicat[ing] that gas
etching process and sputtering process are considered in the
same technical field of application of gas plasma technique to
the fabrication of semiconductor IC’s.” (The ‘742 Request,
pages 9-10, citing Uematsu, page 1, lines 19-24.)
6. The ‘742 Request cites Enomoto for the proposition that
“plasma etching process and RF sputtering process are
considered to be in the same technical field of dry process of
semiconductor processing technology.” (The ‘742 Request,
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page 10, citing Enomoto, page 1, ll. 17-24.) The ‘742 Request
also emphasizes Enomoto’s disclosure that “the difference
between [] reactive sputter etching and parallel plate electrode-
type plasma shown in Figure 2(c) is not clear.” (The ‘742
Request, page 10, Enomoto, page 3, ll. 6-10 (emphasis
omitted).)
7. The ‘742 Request cites Vossen for the proposition that “the
differences between the processes using plasma [chemical
sputtering, plasma etching, reactive sputter etching, or reactive
ion etching] are often not clear. This fact indicates that a
person of ordinary skill in the art would have knowledge of
these processes and that various aspects of the technology are
interchangeably applied among these processes.” (The ‘742
Request, pages 10-11, citing Vossen, p. 233.) The ‘742
Request emphasizes that Vossen discloses that “[a]s a practical
matter, the physics of all of these processes is fundamentally
the same.” (The ‘742 Request, page 11 (emphasis omitted).)
8. The ‘742 Request also cites to Koch for describing plasma
etching and plasma deposition processes. (The ‘742 Request,
pages 11-12, citing Koch, column 1, line 11 through column 2,
line 2.)
9. The ‘742 Request states: “These disclosures of Uematsu et al.,
Enomoto et al., Vossen and Koch shows how plasma processes,
including plasma etching and sputtering, are closely related to
each other [and] justify the interpretation of ‘reactor’ and
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‘electrode’ as including those both for plasma etching and
sputtering.” (The ‘742 Request, page 13.)
10. In the order granting the ‘742 Reexamination of the ‘266
Patent, the Examiner agreed with Requester that “Uematsu,
Enomoto, Vossen, and Koch teach how closely various plasma
processes, such as etching and sputtering, are related with
apparatus and process similarities” and that a reasonable
Examiner would consider these teachings important. (Order
Granting Request for Ex Parte Reexamination, February 9,
2010 at 3.)

PRINCIPLES OF LAW
35 U.S.C. § 303(a) (2006) states, in pertinent part:
The existence of a substantial new question of patentability is
not precluded by the fact that a patent or printed publication
was previously cited by or to the Office or considered by the
Office.

In applying this statutory language, the Federal Circuit stated that "to
decide whether a reference that was previously considered by the PTO
creates a substantial new question of patentability, the PTO should evaluate
the context in which the reference was previously considered and the scope
of the prior consideration and determine whether the reference is now being
considered for a substantially different purpose." In re Swanson, 540 F.3d
1368, 1380 (2008) (concluding that prior art used as a secondary reference in
an obviousness rejection was sufficient to establish SNQ when considered as
an anticipatory reference) (citing H.R.Rep. No. 107-120, at 3 ("The
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appropriate test to determine whether a 'substantial new question of
patentability' exists should not merely look at the number of references or
whether they were previously considered or cited but their combination in
the appropriate context of a new light as it bears on the question of the
validity of the patent.")).
As stated by our reviewing court, there is no presumption that the
Examiner fully considered all questions of patentability raised by any
reference before him, and in order to decide whether a reference that was
previously considered by the Office creates an SNQ, one must evaluate the
context in which the reference was previously considered. Swanson, 540
F.3d at 1380. To accomplish this review, Swanson instructs: “Determining
the scope of an examiner's previous consideration of a reference will
generally require an analysis of the record of the prior proceedings to
determine if and how the examiner used the reference in making his initial
decisions.” 540 F.3d at 1380-81.
"[A]n 'argument already decided by the Office, whether during the
original examination or an earlier reexamination' cannot raise a new question
of patentability . . . . As [the Federal Circuit] explained in In re Recreative
Technologies Corp., the substantial new question requirement 'guard[s]
against simply repeating the prior examination on the same issues and
arguments' and bars 'a second examination, on the identical ground that had
previously been raised and overcome.'" Swanson, 540 F.3d at 1380.
(Citations omitted). "[W]e are mindful that Congress intended that the
courts continue to 'judiciously interpret the 'substantial new question'
standard to prevent cases of abusive tactics and harassment of patentees
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through reexamination.'" Swanson, 540 F.3d at 1380-81 (citing H.R.Rep.No.
107- 120, at 3).

ANALYSIS
Initially, we observe that in light of the delegation of authority to
review issues related to SNQ in an ex parte reexamination proceeding,
Appellant’s argument that “the Examiner fails to distinguish between the
Patent Owner’s option to contest an Order granting reexamination with the
Patent Owner’s right to challenge the Examiner’s SNQ determination in
support of [a] rejection” (App. Br. 20-21), and the Examiner’s position that
Appellant’s requested review of the appropriateness of the Examiner’s
decision to enter rejections based on Yamada is a petitionable issue (Ans.
11), are moot. The delegation of authority makes clear that the Board has
jurisdiction to review the Examiner’s SNQ determination in support of a
rejection.
Upon review of the record before us, we agree with Appellant, that
there was insufficient basis for the Examiner to determine that a new SNQ
existed based on Yamada in view of Uematsu, Enomoto, Vossen, and Koch.
Specifically, the ‘027 Reexamination Request proposed a rejection of the
claims of the ‘266 Patent as being anticipated by or obvious over Yamada.
(FF 1.) In describing the applicability of the prior art including Yamada to
claim 1, the ‘027 Reexamination Request described the similarity between
sputtering and plasma techniques, both in process and in structure. (FF 2.)
In the order granting‘027 Reexamination, the Examiner, referring to the
explanation in the ‘027 Reexamination Request, stated that Yamada
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discloses the reactor and the electrode assembly disclosed in the ‘266 Patent.
(FF 3.) However, the Examiner then declined to reject the claims over
Yamada as proposed by the Requester in the ‘027 Reexamination.
Rather than failing to appreciate the disclosure in Yamada, the
Examiner in the ‘027 Reexamination considered Yamada as disclosing the
reactor recited in the ‘266 Patent, stating as much in the order granting the
‘027 Reexamination. While the Examiner did not specifically indicate why
a rejection based on Yamada was not adopted in the ‘027 Reexamination,
there is also no indication in the record that the Examiner in the ‘027
Reexamination did not appreciate the scope of Yamada’s disclosure. The
points for which Uematsu, Enomoto, Vossen, and Koch are cited in the
current reexamination, namely, the close relation between processes and
reactors in plasma sputtering and etching processes (FF 4-10), were already
discussed in the ‘027 Reexamination Request. (FF 2.) Those portions of the
‘027 Reexamination Request were identified by the Examiner in the order
granting the ‘027 Reexamination. (FF 3.) Thus, we agree with Appellant,
that Uematsu, Enomoto, Vossen, and Koch did not present Yamada in a new
light sufficient to justify a substantial new question of patentability.
Further, although the Examiner in the present reexamination states
that the Prior Board Decision in the ‘027 Reexamination “repeatedly
indicates that equivalence between sputtering and etching and the reactors
used therefor, was not clearly established on the record by the examiner”
(Ans. 10, see also Ans. 11 and 18), we are unable to locate support for the
Examiner’s position in the Prior Board Decision. Rather than emphasizing
any perceived differences between sputtering and etching reactors, the Prior
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Board Decision emphasized the difference between the particular materials
of the prior art references and the applicability of the specific bonding
process in one prior art reference to another. (Prior Board Decision, pages
15-17.) The Examiner does not explain how the general disclosures of
Uematsu, Enomoto, Vossen, and Koch relate to the bonding processes
discussed in the Prior Board Decision such that the citation of these
references presents Yamada in a new light.
Thus, there is insufficient evidence on the record that the Examiner in
the ‘027 Reexamination proceeding failed to appreciate Yamada’s
disclosure. The points raised in citing Uematsu, Enomoto, Vossen, and
Koch had already been considered by the Examiner in the previous
reexamination proceeding. Therefore, the Examiner in the present
reexamination erred in determining that Uematsu, Enomoto, Vossen, and
Koch present Yamada in a new light, sufficient to raise a substantial new
question of patentability.

CONCLUSION
We conclude that there is no substantial new question of patentability,
and the case is REMANDED for further action consistent with this decision.

REMANDED

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Patent Owner:

Buchanan, Ingersoll & Rooney, PC
Post Office Box 1404
Alexandria, VA 22313-1404

Third Party Requester:
Rader, Fishman & Grauer, PLLC
39533 Woodward Avenue
Suite 140
Bloomfield Hills, MI 48304-0610