Ex Parte Choi

Board of Patent Appeals and Interferences

Sep 4, 2012

11139349 (B.P.A.I. Sep. 4, 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.
11/139,349 05/27/2005 Soo Young Choi AMAT/9767/DISPLAY/AKT/RKK 2894
44257 7590 09/05/2012
PATTERSON & SHERIDAN, LLP - - APPM/TX
3040 POST OAK BOULEVARD, SUITE 1500
HOUSTON, TX 77056
EXAMINER
CHEN, KEATH T
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
09/05/2012 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 SOO YOUNG CHOI
__________

Appeal 2010-006236
Application 11/139,349
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON REHEARING

The Appellant requests rehearing of our DECISION ON APPEAL dated
June 1, 2012, sustaining the § 103(a) rejection of claim 7 over the prior art of
record. For the reasons set forth below, the Request is GRANTED-IN-PART.
I.
On rehearing, the Appellant argues:
The Board supports the Examiner’s conclusion [of obviousness] using
what appears to be a new ground for obviousness, asserting that there
Appeal 2010-006236
Application 11/139,349

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would be a time lag in the apparatus of Beppu between manipulating
the valve upstream of the remote plasma source and a change of flow
into the chamber.
Request 2.
Beppu teaches positioning a flow restrictor upstream of a remote plasma
generator, and Davis teaches positioning a flow restrictor downstream of a remote
plasma generator (i.e., between a remote plasma generator and the chamber). See
Beppu Fig. 3; Davis Fig. 2. The Examiner concluded it would have been obvious
to one of ordinary skill in the art to add a valve (e.g., flow restrictor) between the
remote plasma generator and the chamber of Beppu “for improved selectivity in
controlling the remote plasma source” based on the teachings in Davis. Ans. 5.
We agreed with the Examiner and noted that the modification proposed by the
Examiner would have solved a time lag problem created by positioning Beppu’s
flow restrictor upstream of the remote plasma generator. Decision 4.
Our discussion of time lag merely elaborated on the Examiner’s conclusion
that positioning a flow restrictor downstream of Beppu’s remote plasma generator
would have resulted in “improved selectivity in controlling the remote plasma
source.” However, to the extent this discussion does not expressly appear in the
Examiner’s Answer, our decision sustaining the § 103(a) rejection will be
denominated a new ground of rejection.
II.
Moreover, on rehearing, the Appellant contends “[t]here would . . . be no
change to the operation of the Beppu apparatus were the upstream valve replaced
by the downstream valve. Either valve would adequately control the flow of gas
through the system.” Request 2.
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Thus, there appears to be no dispute on this record that the position of the
flow restrictor in Beppu (i.e., upstream of the remote plasma generator) and the
position of the flow restrictor in Davis (i.e., between the remote plasma generator
and the chamber) achieve the same result, i.e., control of gas flow from the remote
plasma generator to the chamber. For this additional reason, we conclude it would
have been obvious to one of ordinary skill in the art to reposition the flow restrictor
of Beppu downstream of the remote plasma generator as taught by Davis. See In
re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute one
equivalent for another need not be present to render such substitution obvious.”).
III.
Upon consideration of the Appellant’s request for rehearing, it is
ORDERED that the Examiner’s decision rejecting claim 7 under
35 U.S.C. § 103 over the prior art of record is affirmed and denominated a new
ground of rejection, and it is
FURTHER ORDERED that this Decision on Rehearing incorporates
the Decision on Appeal dated June 1, 2012, in its entirety, and it is
FURTHER ORDERED that the Appellant may reopen prosecution or
request rehearing under 37 C.F.R. § 41.50(b) (2011) in response to this Decision
on Rehearing, and it is
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)
(2011).

GRANTED-IN-PART

Appeal 2010-006236
Application 11/139,349

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