Ex Parte Houge et al

Board of Patent Appeals and Interferences

Nov 23, 2010

10505197 (B.P.A.I. Nov. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIK C. HOUGE, JOHN M. MCINTOSH, and
ROBERT FRANCIS JONES
____________

Appeal 2009-003795
Application 10/505,197
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

Opinion for the Board filed by KRATZ, Administrative Patent Judge.
Opinion Concurring filed by NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-003795
Application 10/505,197

2
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-21. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appellants’ claimed invention is directed to a method and system for
monitoring and controlling a fabrication process on a workpiece using a
crystallographic analysis subsystem. In the subsystem, crystallographic
orientation, grain size or grain morphology are acquired from the workpiece
after the workpiece undergoes a fabrication step and the information is
provided to a fabrication subsystem for modifying parameters associated
with the fabrication steps.
Claims 1 and 11, the sole independent claims on appeal, are
illustrative and reproduced below:

1. A system for monitoring and controlling a fabrication process
comprising:

a plurality of fabrication subsystems that perform respective fabrication
steps on a workpiece; and

a crystallographic analysis subsystem for acquiring crystallographic
orientation, grain size, or grain morphology from the workpiece after the
workpiece undergoes a fabrication step by at least a first subsystem, the
crystallographic analysis subsystem coupled to one or more of the fabrication
subsystems to provide information for modifying parameters associated with
the respective fabrication steps.

11. A method for monitoring and controlling a fabrication process
comprising:

coupling a plurality of fabrication subsystems that perform respective
fabrication steps on a workpiece;

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acquiring crystallographic orientation, grain size, or grain morphology
from the workpiece after the workpiece undergoes a fabrication step by at
least a first subsystem; and
providing information to one or more of the fabrication subsystems
for modifying parameters associated with the respective fabrication steps.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Manada 5,463,977 Nov. 7, 1995
Adams 5,466,934 Nov. 14, 1995

The Examiner maintains the following rejections, which are before us
on appeal:
Claims 1, 2, 6-8, 11-13, 17, and 18 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Manada in view of Adams. The Examiner
further rejects dependent claims 3-5, 9, 10, 14-16, and 19-21 over the same
combination of references.
We reverse.
ISSUE
Did the Examiner err in asserting that the combined teachings of
Manada and Adams would have rendered obvious a modification to
Manada’s light reflection analysis system that would have resulted in
employing the crystal property measuring techniques taught in column 2 and
the figures of Adams in Manada in a manner so as to measure more than
thickness and consequently result in a system or method as required by
independent claims 1 and/or 11 within the meaning of § 103?
We answer this question in the affirmative.

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PRINCIPLE OF LAW
"[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

FACTUAL FINDINGS
Manada discloses a method an apparatus for epitaxial growing
chemical compound crystal in a closed container from introduced raw
material gases in a manner to secure uniformity in a plane of a crystal film of
the crystal which is applicable to a wide range of pressures (abstract; col. 1,
ll. 59-67).
Manada discloses that reflected light from an incident light source can
be measured and the results used to control the amounts of raw material
gases charged and the growing rate of the crystal film on the basis of
reflected light intensity changes (abstract; col. 2, l. 1- col. 3, l. 5).
Manada teaches that a mutual relationship between the film thickness
that is grown per cycle and a changing rate of reflected light intensity can be
utilized in controlling the growing rate of a growing film and the thickness
thereof (col. 5, ll. 7-32; Figs. 1-3).
Adams is drawn to a method and apparatus for identifying
crystallographic defects in a polycrystalline material sample. Adams uses a
scanning electron microscope that bombards numerous points of the sample
with an electron beam and wherein backscatter diffraction patterns are
collected with an image collection system (abstract; col. 1, ll. 7-11). If
backscatter diffraction images collected for first and second points are
determined to exceed a predetermined level, coordinates of the second point
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are said to identify a crystallographic defect (Adams; col. 2, ll. 24-36). In
column two of Adams, a brief description of Adams’ drawing figures is
further provided.
The Examiner states that “[t]he sole difference between the instant
claims and the prior art is the plurality of subsystems” (Ans. 3). Thereafter,
the Examiner states that:
The Manada et al reference further differs from the
instant claims in the measurements. However, the Adams et al
reference teaches measuring crystal properties, note figures and
col. 2. It would have been obvious to one of ordinary skill in
the art to modify the Manada et al by the teachings of the
Adams to measure more then [sic] thickness in order to create a
more uniform crystal.
Ans. 3.
The Examiner does not point out where Adams teaches or suggests
that measuring more than thickness, in particular acquiring crystallographic
orientation, grain size, or grain morphology of a growing crystal film by
using Adams’ technique of identifying crystallographic defects in a
polycrystalline material sample using a scanning electron microscope that
bombards numerous points of the sample with an electron beam and wherein
backscatter diffraction patterns are collected with an image collection
system, would be applicable in forming a uniform crystal during the
controlled epitaxial growing of a chemical compound crystal; such as, in
accordance with a method or system as disclosed by Manada (see generally
Answer).

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ANALYSIS/CONCLUSION
The record before us contains no articulated reasoning with some
rational underpinning as to how and why one with ordinary skill in the art
would have provided a system or method modification to acquire
crystallographic orientation, grain size, or grain morphology as an addition
to the system and method of Manada wherein incident light is employed and
refracted light is measured and the results used to control the amounts of raw
material gases charged and the growing rate of the crystal film on the basis
of reflected light intensity changes based on the disparate polycrystalline
sample defect identification system and method of Adams.
On this record, the Examiner’s proposed modification of adding the
polycrystalline material sample crystallographic defects identification
apparatus and/or method of Adams to Manada, as discussed above, has not
even been shown to be compatible with Manada’s epitaxial chemical
compound crystal growing method and system. The Examiner has not
persuasively articulated that Adams’ defect identification system is capable
of use in performing the function of securing uniformity in a plane of a
crystal film of the crystal which is applicable to a wide range of pressures as
Manada’s method and system of controlled chemical compound crystal
growth is directed to.
As Appellants argue (App. Br. 9), a proposed modification that is not
satisfactory for or incompatible with the intended crystal growing function
of Manada evinces a lack of suggestion therefore. See also 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
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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).
The Examiner has furnished no reason that affords a contrary
conclusion with respect to the separately addressed dependent claims.
It follows that we do not sustain the Examiner's § 103 rejections, on
this record.

ORDER
The Examiner’s decision to reject claims 1-21 under 35 U.S.C. §
103(a) as being unpatentable over Manada in view of Adams in separately
stated rejections is reversed.

REVERSED

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1
NAGUMO, Administrative Patent Judge, concurring
I agree with the disposition of this appeal, but I would REVERSE the
Examiner’s rejections for the reasons well-stated by the Appellants in the
Brief at pages 6 through 9. Manada expressly uses an optical monitoring
system to avoid high energy electron diffraction methods that are said to
give rise to defects in growing epitaxial crystal films. Adams teaches using
an electron back scatter diffraction pattern technique—the very sort of
technique Manada seeks to avoid (Br. 9, 1st para.)—to acquire information
about the growing crystal films. This incompatibility suffices to
demonstrate reversible error in the Examiner’s rejection. (It is also
debatable whether Adams actually obtains information about
crystallographic orientation, grain size, or grain morphology, since only
differences in signal are necessary, but that is a distinct issue, not fully
explored during prosecution, that we need not address.) Although the
claimed method and “system” for monitoring and controlling a fabrication
process in which crystallographic parameters are important would seem to
apply to a vast array of processes, including gem-cutting, references selected
to show the obviousness of the claimed steps must be compatible with one
another. As Appellants point out, the Examiner has failed to select
compatible references.

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