Ex Parte Black et al

Board of Patent Appeals and Interferences

Jan 19, 2012

11028889 (B.P.A.I. Jan. 19, 2012)

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.
11/028,889 01/04/2005 Russell Black 1324
C2/AHRDWR/DISPLAY/RK
3409
44257 7590 01/20/2012
PATTERSON & SHERIDAN, LLP - - APPM/TX
3040 POST OAK BOULEVARD, SUITE 1500
HOUSTON, TX 77056
EXAMINER
KACKAR, RAM N
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
01/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RUSSELL BLACK, NORMAN L. TURNER,
and ERNEST DEMARAY
____________

Appeal 2010-008626
Application 11/028,889
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and LINDA M.
GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2010-008626
Application 11/028,889

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-3, 5-16, and 19-20, the only claims pending in the
Application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The independent claims (claims 1, 2, and 13) are representative of the
invention and are reproduced below from the Claims Appendix to the Appeal Brief
(emphasis added):
1. A method for processing substrates, comprising:

positioning a substrate in a deposition chamber;

depositing a material on the substrate in the deposition chamber; and

cooling a liner having a first surface lining a sidewall of the deposition
chamber and a second surface facing a processing region defined within the
deposition chamber, wherein the liner has a body having a passage formed within
the body.

2. A method for processing substrates, comprising:

positioning a substrate in a chamber;

depositing a material on the substrate in the deposition chamber; and

controlling a temperature of a liner having a first surface lining a sidewall of
the deposition chamber and a second surface facing a processing region defined
within the deposition chamber, wherein the liner has a body having a passage
formed within the body, wherein the step of controlling the temperature of the liner
further comprises:

1 Final Office Action mailed Nov. 24, 2008 (“Final”).
2 Amended Appeal Brief filed Jun. 19, 2009 (“App. Br.”), 5.
Appeal 2010-008626
Application 11/028,889

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heating the liner.

13. A method for processing substrates, comprising:

positioning a substrate in a deposition chamber having a shield having a
body, wherein the body has a first surface lining a[t] least a portion of an internal
volume of the deposition chamber and a second surface facing a processing region
defined within the deposition chamber;

regulating a temperature of the shield by flowing a fluid through a passage
formed within the body; and

depositing a material on a substrate disposed in the deposition chamber
while the shield is cooled.

Appellants request review of the following grounds of rejection (App. Br. 9-
10)3:
1. claims 1, 3, 7, 10, 13, and 16 under 35 U.S.C. §102(a) or §102(e) as
anticipated by or, in the alternative, under 35 U.S.C. §103(a) as obvious over
Katayama (US 5,545,258, issued Aug. 13, 1996) (Ans. 3-4);
2. claims 1-3, 5, 7, 10, 13, 14, and 16 under 35 U.S.C. §102(a) or
§102(e) as anticipated by or, in the alternative, under 35 U.S.C. §103(a) as obvious
over Benjamin (US 5,820,723, issued Oct. 13, 1998) (Ans. 4-5);
3. claims 6 and 8 under 35 U.S.C. §103(a) as unpatentable over
Katayama or Benjamin in view of Arami (US 5,938,850, issued Aug. 17, 1999)
(Ans. 5-6);

3 The Examiner has withdrawn the rejection of claim 16 under 35 U.S.C. § 112,
second paragraph, and has indicated that the rejection of claims 1-8, 10, and 13-15
on the ground of non-statutory obviousness-type double patenting has been
obviated by the filing of a terminal disclaimer on Jun. 19, 2009. (Examiner’s
Answer mailed Sep. 16, 2009 (“Ans.”), 3.)
Appeal 2010-008626
Application 11/028,889

4
4. claims 1-3, 5, 7, 9-16, 19, and 20 under 35 U.S.C. §103(a) as
unpatentable over Hosokawa (US 5,518,593, issued May 21, 1996) in view of
Benjamin or alternatively in view of Oehrlein (US 5,798,016, issued Aug. 25,
1998) (Ans. 6-7);
5. claims 6, 14, and 15 under 35 U.S.C. §103(a) as unpatentable over
Hosokawa in view of Benjamin or alternatively in view of Oehrlein (as applicable
to claims 1-3, 5, 7, 9-16, 19, and 20) further in view of Steger (US 5,788,799,
issued Aug. 4, 1998) and Scanlan (US 4,521,674, issued Jun. 4, 1985) (Ans. 7-8);
and
6. claims 6, 14, and 15 under 35 U.S.C. §103(a) as unpatentable over
Hosokawa in view of Benjamin (as applicable to claims 1-3, 5, 7, 9-16, 19, and 20)
further in view of Aruga (US 5,688,331, issued Nov. 18, 1997) (Ans. 8).
As an initial matter, we note that above-listed grounds of rejection 4 and 5
are based on Hosokawa in view of Benjamin or alternatively in view of Oehrlein.
We vacate the rejections based on Oehrlein, such that these rejections are set aside
and no longer exist. See The Manual of Patent Examining Procedure (MPEP) §
706.02, p. 700-22 (8th Ed. rev. 6, Sept. 2007) (noting that merely cumulative
rejections should be avoided).
Appellants’ arguments in support of patentability as to appealed claims 1-3,
5-16, and 19-20 (see generally, App. Br. 11-20) are based on limitations found in
independent claims 1, 2, and 13 (see italicized claim language supra). More
specifically, Appellants request reversal of the Examiner’s rejections on the basis
that the Examiner reversibly erred in finding that: (1) the inner wall of Katayama’s
double walled chamber meets the limitations of Appellants’ claim 1 “liner” and the
claim 13 “shield;” and (2) Benjamin discloses a liner (claims 1 and 2) or shield
(claim 13) having “a passage formed within the body.”
Appeal 2010-008626
Application 11/028,889

5
For the reasons explained below, Appellants have persuasively argued that
the Examiner applied an overly broad interpretation of the claim terms “liner” and
“shield.” Therefore, we reverse the rejections based on Katayama. However, the
Examiner’s finding with respect to Benjamin’s liner/shield is supported by a
preponderance of the evidence. Accordingly, we sustain the rejections based on
Benjamin, as well as those rejections based on Hosokawa4 in view of Benjamin.
Issue 1: Did the Examiner reversibly err in finding that the inner wall of
Katayama’s double walled chamber meets the limitations of Appellants’ claim 1
“liner” and the claim 13 “shield”?

Katayama discloses a “reaction chamber 41 ha[ving] a double-wall structure
so that a cavity serving as a passage 50 for cooling water is formed inside the
double-structured side wall” (col. 2, ll. 12-15). The Examiner maintains
Appellants’ claimed liner (claim 1) and shield (claim 13) read on the inner wall of
this structure. (Ans. 3-4.) Appellants argue one of ordinary skill in the art would
understand the terms “liner” and “shield” to refer to separable elements and not to
a double-wall structure which is an integrated, singular body. (App. Br. 12-13.)
During examination, claim terms must be given their broadest reasonable
construction consistent with the Specification. In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Prior art references may be “indicative
of what all those skilled in the art generally believe a certain term means” and “can
often help to demonstrate how a disputed term is used by those skilled in the art.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).

4 Appellants, in traversing the grounds of rejection based on Hosokawa, rely on
their contention that the combined teachings of Hosokawa and Benjamin fail to
disclose or suggest a liner or shield having a body with a passage formed therein.
(See App. Br. 17-20.) The Examiner has relied on Benjamin for a teaching of this
feature. (See Ans. 7.)
Appeal 2010-008626
Application 11/028,889

6
In the discussion of the known prior art, the Specification states that physical
vapor deposition (“PVD”) “chambers may be constructed with ‘shield’ pieces
which act as a lining for the processing chamber. . . . The sputter deposited
material then coats the inside of the ‘shield’ and not the inside of the chamber wall.
The ‘shield’ can then be easily removed and cleaned or replaced” (Spec.5 ¶
[0009]). FIG. 1 of the Specification is described as showing “an exploded view of
the pieces which are generally associated with a PVD sputtering processing
chamber” (Spec. ¶ [0031]). Element 46 of FIG. 1 is identified as a “[s]hield
[which] acts as a removable lining in the processing chamber between the
sputtering target and the substrate being sputtered” (Spec. ¶ [0037]).
Benjamin describes a chamber in which “it is possible to assemble or replace
a liner” (col. 11, ll. 66-67). According to Benjamin, “with the chamber open it is
possible to slide a liner of process compatible material through an access port into
the chamber and hold the liner in place with suitable fasteners or simply by
attaching a cover to the access port” (col. 12, ll. 1-4).
Steger describes a known method of lining PVD chamber surfaces with
“removable, disposable (or ‘out-of-chamber’ cleanable) liners” to intercept
depositing materials before they reach plasma process chamber surfaces (col. 2, ll.
11-14).
In our view, the above-cited disclosure in the Specification and prior art
supports Appellants’ contention that one of ordinary skill in the art would not have
interpreted the claim terms “liner” and “shield” as encompassing the inner wall of
Katayama’s double-walled chamber. Rather, we determine the ordinary artisan
would have interpreted the terms “liner” and “shield” as referring to structures
which are separable from the chamber walls.

5 Specification filed Jan. 4, 2005.
Appeal 2010-008626
Application 11/028,889

7
Based on our interpretation of the claim language in dispute, we are in
agreement with Appellants that the Examiner reversibly erred in finding that the
inner wall of Katayama’s double walled chamber meets the limitations of the claim
1 “liner” and the claim 13 “shield.” Accordingly, we do not sustain the grounds of
rejection based on Katayama.
Issue 2: Did the Examiner reversibly err in finding Benjamin discloses a liner
(claims 1 and 2) or shield (claim 13) having “a passage formed within the body”?

The Examiner relies on col. 11, l. 66-col. 12, l. 18 of Benjamin for a
teaching of a liner (claims 1 and 2), or a shield (claim 13), having “a passage
formed within the body” thereof as recited in the independent claims. (Final 3-4;
Ans. 5.) The relied-upon disclosure in Benjamin reads, in relevant part: “The liner
can include suitable openings which align with various openings in the chamber
. . . . Further, the liner can include a temperature control mechanism such as one or
more passages for flow of a temperature control fluid.” (Col. 12, ll. 5-16.)
Appellants dispute the Examiner’s finding that Benjamin discloses a liner or
a shield having a passage as claimed. (See App. Br. 14-16.) Appellants direct us
to the embodiment disclosed in Benjamin FIG. 1, arguing that liner 54 does not
include a passage for temperature control fluid; rather, the temperature of liner 54
is controlled by an external member 56 positioned alongside liner 54. (Id.)
Appellants’ argument is not persuasive because it fails to identify error in
the facts and reasons relied on by the Examiner in support of the obviousness
determination; i.e., Appellants discuss only one of Benjamin’s embodiments, and
have not explained why the embodiment relied on by the Examiner (described in
Benjamin col. 11, l. 66-col. 12, l. 18) 6 fails to anticipate claims 1, 2, and 13.

6 In their Reply Brief, Appellants attempt to discuss this embodiment, arguing the
term “include” in Benjamin col. 12, ll. 5-16 “does not equal to or elaborate the
Appeal 2010-008626
Application 11/028,889

8
Because Appellants have not convincingly demonstrated that the Examiner
reversibly erred in finding Benjamin discloses a liner or shield having “a passage
formed within the body” as claimed in claims 1, 2, and 13, we sustain the
rejections based on Benjamin, as well as those rejections based on Hosokawa in
view of Benjamin (see supra note 4).

ORDER
We REVERSE the following grounds of rejection:
claims 1, 3, 7, 10, 13, and 16 under 35 U.S.C. §102(a) or §102(e) as
anticipated by Katayama;
claims 1, 3, 7, 10, 13, and 16 under 35 U.S.C. §103(a) as obvious over
Katayama; and
claims 6 and 8 under 35 U.S.C. §103(a) as unpatentable over Katayama in
view of Arami.
We AFFIRM the following grounds of rejection:

relative location and the configuration where and how a passage is formed or
‘included’ in the liner.” (Reply Brief filed Nov. 16, 2009, 3-4.) Appellants have
not explained why these arguments were not raised in the Appeal Brief and,
therefore, these arguments have been waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(second sentence); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that
an argument not first raised in the brief to the Board is waived on appeal); Ex parte
Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that
arguments and evidence not timely presented in the principal Brief, will not be
considered when filed in a Reply Brief, absent a showing of good cause explaining
why the argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted,
the Rules do not require the Board to take up a belated argument that has not been
addressed by the Examiner, absent a showing of good cause.”). Moreover, this
argument fails to explain how the claim language, which broadly recites “a passage
formed within the body,” defines a relative location and particular configuration of
the passage.
Appeal 2010-008626
Application 11/028,889

9
claims 1-3, 5, 7, 10, 13, 14, and 16 under 35 U.S.C. §102(a) or §102(e) as
anticipated by Benjamin;
claims 1-3, 5, 7, 10, 13, 14, and 16 under 35 U.S.C. §103(a) as obvious over
Benjamin;
claims 6 and 8 under 35 U.S.C. §103(a) as unpatentable over Benjamin in
view of Arami;
claims 1-3, 5, 7, 9-16, 19, and 20 under 35 U.S.C. §103(a) as unpatentable
over Hosokawa in view of Benjamin;
claims 6, 14, and 15 under 35 U.S.C. §103(a) as unpatentable over
Hosokawa in view of Benjamin further in view of Steger and Scanlan; and
claims 6, 14, and 15 under 35 U.S.C. §103(a) as unpatentable over
Hosokawa in view of Benjamin further in view of Aruga.
We VACATE the following grounds of rejection:
claims 1-3, 5, 7, 9-16, 19, and 20 under 35 U.S.C. §103(a) as unpatentable
over Hosokawa in view of Oehrlein; and
claims 6, 14, and 15 under 35 U.S.C. §103(a) as unpatentable over
Hosokawa in view of Oehrlein further in view of Steger and Scanlan.

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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