Ex Parte Choi et al

Board of Patent Appeals and Interferences

Jun 26, 2012

11182168 (B.P.A.I. Jun. 26, 2012)

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.
11/182,168 07/15/2005 Soo Young Choi APPM/008178P1/DISPLAY/AKT 9165
44257 7590 06/27/2012
PATTERSON & SHERIDAN, LLP - - APPM/TX
3040 POST OAK BOULEVARD, SUITE 1500
HOUSTON, TX 77056
EXAMINER
FORD, NATHAN K
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
06/27/2012 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, BEOM SOO PARK,
QUANYUAN SHANG, JOHN M. WHITE,
DONG-KI YIM, and CHUNG-HEE PARK
____________

Appeal 2010-006409
Application 11/182,168
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-25. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2010-006409
Application 11/182,168

2

Appellants’ claimed invention is directed to a substrate support for
large area substrates including a conductive/aluminum body having a surface
finish of a specified roughness value range. An electrically insulative
coating can be disposed on the substrate supporting surface with at least a
portion of the surface coating located over a central portion of the substrate
supporting surface providing a surface finish of a specified roughness value
range.
Claims 1 and 22 are illustrative of the claimed invention and are
reproduced below:
1. A substrate support adapted to support large area substrates
comprising:
an electrically conductive body having a substrate support surface;
an electrically insulative coating disposed on the body; and
at least a portion of the coating disposed over a center of the substrate
supporting surface having a surface finish, Ra, between about 500 micro-
inches and about 2000 micro-inches.

22. A substrate support adapted to support large area substrates
comprising:
an electrically conductive body having a substrate support surface,
wherein the substrate support surface is bare aluminum and has a surface
finish, Ra, between about 500 micro-inches and about 2000 micro-inches.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Toya 5,200,157 Apr. 6, 1993
Watanabe 5,384,682 Jan. 24, 1995
White 5,844,205 Dec. 1, 1998
Satoh 6,063,203 May 16, 2000
Sato 6,159,301 Dec. 12, 2000
Sakaue US 2002/0176217 A1 Nov. 28, 2002
Ito US 6,841,049 B1 Jan. 11, 2005
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Application 11/182,168

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Hawley’s Condensed Chemical Dictionary, 14th ed. at www.knovel.com on
4/30/2005.

Russ Rowlett, “Abrasive Grit Sizes”, obtained from www.unc.edu/-
rowlett/units/scales/grit.html on 4/30/2005.

The Examiner maintains the following grounds of rejection:
1. Claims 1-3, 5, 8-111, 13-17, 19, and 21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Satoh in view of White,
Watanabe, and Toya; 2. Claims 4 and 22-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Satoh in view of White, Watanabe, and
Toya further taken with Ito; 3. Claims 6 and 7 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Satoh in view of White,
Watanabe, and Toya further taken with Sakaue; 4. Claims 12, 18, and 25
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Satoh in
view of White, Watanabe, and Toya as further evidenced by “Corundum”
and Hawley’s Condensed Chemical Dictionary2; and 5. Claim 20 stands

1 Claims 8-11 were inadvertently omitted from the statement of the rejection
(Ans. 3). This is evinced by the Examiner’s reference thereto in the body of
the rejection (Ans. 3 and 4). Furthermore, Appellants recognize these
claims are under rejection (App. Br. 10). Consequently, this omission
represents harmless error.
2 The Examiner presents a separate rejection of claim 25 in the Answer
while stating the rejection is the same as that presented for claim 12 (Ans.
6). A rejection of claim 25 does not appear in the Final rejection; however,
claim 25 is listed as a rejected claim on the cover sheet (Form PTOL-326).
Appellants appeal from the rejection of claims 1-25 (App. Br. 1).
Accordingly, we consider claim 25 as being rejected for the same reasons as
presented for claim 12 and combine these rejections for consideration of
Appellants’ arguments against claim 12 together with claim 25.
Appeal 2010-006409
Application 11/182,168

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rejected under 35 U.S.C. § 103(a) as being unpatentable over Satoh in view
of White, Watanabe, and Toya further taken with Sato.
We reverse the stated rejections. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
The Examiner acknowledges that Satoh, employed in all of the stated
rejections as the primary reference, “is silent regarding the surface roughness
of the coating formed atop the supporting surface” and/or does not disclose
the electrically conductive body (susceptor) surface finish as variously
required by the appealed claims (Ans. 3 and 4). In this regard, all of the
maintained rejections are bottomed on the Examiner’s determination that
one of ordinary skill in the art would have been led to modify the susceptor
(substrate support) of Satoh based on the additional teachings of Watanabe,
Toya, and White (1) in a manner that would have allegedly resulted in a
susceptor having an electrically insulative coating finish corresponding to
that of the substrate support of rejected independent claim 1 (Rejections 1
and 3-5; or (2) in a manner (with the further addition of Ito) that would have
resulted in a susceptor having a bare aluminum surface finish corresponding
to that of the substrate support of claim 22 (Rejection 2) (Ans. 3-10). Here,
the Examiner’s reliance on a combination of the aforementioned reference
combinations to underpin all of the stated obviousness rejections is not well-
founded.
In making the base first stated obviousness rejection, the Examiner
relies on Watanabe for allegedly teaching or suggesting that the surface
roughness of a coating atop a substrate support is a result effective variable
Appeal 2010-006409
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that would have been obvious for one of ordinary skill in the art to optimize
for use in Satoh’s substrate support. In so doing, the Examiner further
maintains that such optimization of surface roughness based on Watanabe’s
teachings would have been performed by one of ordinary skill in the art on
Satoh’s substrate utilizing additional teachings found in Toya respecting a
silicon carbide support (susceptor) surface coating roughness in a manner
that would have resulted in the selection of a coating surface roughness
value for Satoh’s substrate that would have fallen within the range required
by Appellants’ claim 1 (Ans. 3-4).3
From our perspective, however, Appellants contrary viewpoint is
more consonant with the evidence of record than the Examiner’s asserted
obviousness position appears to be (App Br. 10-14; Reply Br. 3-5). This is,
for the most part, because the Examiner has not articulated a reasonable
basis for establishing why one of ordinary skill in the art would have sought
to modify the surface roughness of the anodized coating located on the
aluminum/aluminum alloy susceptor (substrate) of Satoh, which susceptor is
used as an earthed electrode opposite an RF powered electrode (Satoh, col.
1, ll. 11-22 and col. 3, ll. 5-35), based on the disparate teachings of
Watanabe taken together with Toya.
In this regard, Watanabe is directed to an electrostatic chuck made so
as to shorten the time required for the residual electrostatic force of the

3 Appellants argue the claims together as a group with respect to the first
stated obviousness rejection. Accordingly, we select claim 1 as the
representative claim on which we decide this appeal as to this rejection.
The Examiner does not rely on White for suggesting Appellants’ surface
roughness features; rather, White is alleged to teach a large area substrate
support (Ans. 4).
Appeal 2010-006409
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electrostatic chuck to be dissipated after applied voltage is removed (col. 2,
ll. 15-19). According to Watanabe, this is accomplished by providing a
chuck that satisfies a disclosed mathematical relationship between several
physical parameters of the electrostatic chuck and a wafer (W) held thereby
(col. 2, l. 15 - col. 3, l. 2).
Significantly, the electrostatic chuck of Watanabe, unlike the
susceptor of Satoh, includes a DC powered electrode (3) located between an
insulating layer (2) and a substrate (1) (col. 3, ll. 37-43; Figs. 1 and 2).
Moreover, the work piece or wafer (W) of Watanabe is arranged to be
electrically connected to ground with a gap between the wafer and the
insulating layer of the electrostatic chuck (col. 3, ll. 43-46). According to
Watanabe, this gap can be represented by the surface roughness of the wafer
and the surface roughness of the insulating layer or replaced by a maximum
surface undulation, each for use in the disclosed mathematical relationship
that must be satisfied by the electrostatic chuck of Watanabe (col. 5, ll. 1-
18).
The Examiner has not reasonably explained why and/or how one of
ordinary skill in the art would have been led to make use of a portion of the
disclosed mathematical relationship relating to surface roughness taught by
Watanabe, that is used for making the particular electrostatic chuck of
Watanabe, for optimizing surface roughness of an anodized coating layer of
Satoh’s susceptor, which latter susceptor is not constructed with a
sandwiched DC powered electrode like the electrostatic chuck of Watanabe.
Moreover, the Examiner’s additional reliance on the disparate teachings
found in Toya respecting a silicon carbide support (susceptor) surface
coating roughness as a guidepost for the use of the disclosed parameter
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relationships of Watanabe for optimizing Satoh’s susceptor further
attenuates the asserted obviousness position advanced by the Examiner. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[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"), cited with
approval in KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
Rejections based on § 103(a) must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the invention from the
prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
On this record, Rejection 1 is not sustainable.
Because Rejections 3 through 5 utilize the same basic combination of
references as discussed above with respect to Rejection 1 as a foundation,
with the various additional references being applied therein for suggesting
other features of certain claims subjected to these rejections, we likewise
reverse Rejections 3-5.
Concerning Rejection 2, the same result as indicated above for the
other rejections is reached as this rejection relates to dependent claim 4. As
regards independent claims 22 and 23, which are also subject to Rejection 2,
the Examiner should have explicitly recognized that these claims do not
require an insulative coating for the substrate support instead of rejecting
these claims along with dependent claim 4 on the same basic combination of
references as if they included such a coating with a specified roughness. In
any event, the Examiner notes that these claims (along with dependent claim
4) do require a specified roughness value for the surface finish of the
electrically conductive aluminum support that is different than that disclosed
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Application 11/182,168

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by Satoh (Ans. 4 and 7). In maintaining the rejection of these claims, the
Examiner additionally utilizes the teachings of Ito in an attempt to bridge the
gap between the surface finish roughness values suggested by Satoh for the
uncoated surface finish of its support and that required by these claims.
However, as argued by Appellants (App. Br. 15), Ito is directed to optical
disk manufacture and discloses an optical disk holder as part of the disclosed
apparatus. The Examiner has not reasonably articulated why one of ordinary
skill in the art would have looked to the optical disk holder of Ito for
guidance in arriving at an optimum surface roughness value for the
aluminum susceptor of Satoh that overlaps with that claimed by Appellants,
given that such a roughness value is otherwise outside the roughness values
for the susceptor taught by Satoh (App. Br. 15 and 16; Reply Br. 5-6).
Consequently, we do not sustain Rejection 2.
CONCLUSION
On this record, we reverse all of the Examiner’s obviousness
rejections, as presented.

ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

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