10483809 (B.P.A.I. Nov. 8, 2010)

Ex Parte Ishibashi et al

Board of Patent Appeals and InterferencesNov 8, 2010

10483809 (B.P.A.I. Nov. 8, 2010)

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. 10/483,809 01/15/2004 Masayuki Ishibashi ABE-012 4126 20374 7590 11/08/2010 KUBOVCIK & KUBOVCIK SUITE 1105 1215 SOUTH CLARK STREET ARLINGTON, VA 22202 EXAMINER KACKAR, RAM N ART UNIT PAPER NUMBER 1716 MAIL DATE DELIVERY MODE 11/08/2010 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 MASAYUKI ISHIBASHI, JOHN F. KRUEGER, TAKAYUKI DOHI, DAIZO HORIE, and TAKASHI FUJIKAWA ____________ Appeal 2010-001700 Application 10/483,809 Technology Center 1700 ____________ Before CHARLES F. WARREN, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, 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 2010-001700 Application 10/483,809 2 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-10. An oral hearing was held on October 13, 2010. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of Appellants’ invention (emphasis added): 1. An epitaxial growth susceptor comprising a substantially circular bottom wall and a sidewall encompassing the bottom wall to form a pocket for mounting a semiconductor wafer, having a clearance between a back surface of the semiconductor wafer to be mounted on the susceptor and the bottom wall and a plurality of through-holes having a substantially circular or polygonal opening uniformly in the bottom wall and only within a portion of the bottom wall which is up to approximately half the radius of the bottom wall from the outer periphery to the center, wherein a portion of said plurality of through-holes is in a bottom wall area located under the semiconductor wafer with the remaining portion of said plurality of through-holes being in a bottom wall area between the periphery of the semiconductor wafer and said side wall; and a total opening surface area of the plurality of through-holes is between 0.05 to 55% of the surface area of the bottom wall. The Examiner maintains, and Appellants appeal, the following rejections under 35 U.S.C. § 103(a):2 1) Claims 1-4 and 6-9 as unpatentable over Nakamura3; and 2 The rejections of claims 23 and 24 (Ans. 6, 7) are moot since Appellants cancelled these claims in an amendment filed concurrently with the Reply Brief on August 25, 2009, which was entered by the Examiner in the Advisory Action mailed November 17, 2009. 3 US 6,159,047, issued Oct. 10, 2000. Appeal 2010-001700 Application 10/483,809 3 2) Claims 5 and 10 as unpatentable over Nakamura with either of Yang4 or Ries5. Appellants argue the rejected claims in the first ground of rejection as a group, and also do not set forth any separate arguments for separately rejected claims 5 and 10 (App. Br. 6-13). Thus, we select independent claim 1 as the representative claim on which our discussion will focus. ISSUE ON APPEAL Did the Examiner err in determining that the claimed susceptor would have been obvious over Nakamura, because, as alleged by Appellants, nothing in Nakamura “discloses or remotely suggests or otherwise provides a motive for providing through-holes under any portion of the wafer” (App. Br. 11)? We answer this question in the negative. PRINCIPLES OF LAW In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. 4 US 6,444,027 B1, issued Sept. 3, 2002. 5 US 2001/0037761 A1, published Nov. 8, 2001. Appeal 2010-001700 Application 10/483,809 4 “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). ANALYSIS with Factual Findings We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. Appellants’ main contention in the Briefs is that there is no motivation or suggestion to provide a plurality of holes in the susceptor (that is, the wafer holder) of Nakamura such that some of them are located underneath the wafer (see generally App. Br.; Reply Br.). This argument is of no persuasive merit. We agree with the Examiner’s finding that “Nakamura teaches that holes could have any number of configurations of size and number as long as mechanical strength will allow. (Col 3 line 66 to Col 4 line19).” (Ans. 3; see also Ans. 7). Indeed, Appellants’ Counsel admitted in the oral hearing that Nakamura’s teachings may encompass a number of small through-holes radially distributed at the edge of the susceptor (Oral Hearing Tr. 7:5-21). Thus, the holes in susceptors within the teachings of Nakamura would reasonably meet the claim limitation “plurality of through- holes is in a bottom wall area located under the semiconductor wafer with the remaining portion of said plurality of through-holes being in a bottom Appeal 2010-001700 Application 10/483,809 5 wall area between the periphery of the semiconductor wafer and said side wall.” It is well established that while the features of an apparatus claim may be recited functionally, the apparatus must be distinguished from the prior art in terms of structure, rather than function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Appellants’ claims are to an apparatus, which, as claimed, does not include the compositions, materials, and articles which are being transformed by the machinery. See In re Rishoi, 197 F.2d 342, 345 (CCPA 1952) (“[T]here is no patentable combination between a device and the material upon which it works.”); In re Young, 75 F.2d 996, 998 (CCPA 1935) (Inclusion of material worked upon by machine as an element in claim may not lend patentability when the claim is not otherwise allowable.) As Appellants’ Counselor admits, the “claim does not specifically say anything about the size of the wafer.” (Oral Hearing Tr. 6:21-22). Counselor also argued that a susceptor is designed with “a slight curvature so that the wafer fits on the outer most portion” (Oral Hearing Tr. 6:19-20), and that “it is inherent in the art that there would only be a small portion of the susceptor outside the edge of the wafer” (Oral Hearing Tr. 6:22-24). Claim 1’s limitation that some of the through-holes are “located under the semiconductor wafer” depends on the size of the wafer, but the claim is not limited to an epitaxial growth susceptor in combination with a wafer of a specified size. Accordingly, in light of the Specification (generally, Spec.) and consistent with Appellants’ admission during the Oral Hearing, the claim encompasses a susceptor that must fit at least one wafer such that the through-holes are arranged as claimed. However, since the semiconductor Appeal 2010-001700 Application 10/483,809 6 wafer to be worked on is not a part of the claimed apparatus (consistently, Appellants’ Counselor admits there is no claim limitation on the size of the wafer), Nakamura renders obvious the subject matter of claim 1 if the size of a wafer that may be used thereon would fit the arrangement of through-holes in the manner claimed, even if other sized wafers may also be processed. Appellants have not provided any evidence or persuasive technical reasoning why a wafer could not have been of an appropriate size such that some of the holes encompassed by Nakamura’s generic teachings would have been underneath the wafer. In any event, Appellants admit in their Specification that it was known in the prior art to locate holes throughout the susceptor underneath the wafer per se (e.g., Fig. 23; Spec. 5:8-13).6 Accordingly, upon properly considering the prior art reference as a whole, we agree with the Examiner that one of ordinary skill in the art would have been led to optimize the location of the through-holes of Nakamura, with a reasonable expectation of successfully promoting epitaxial growth as desired therein (Ans., e.g., 4). Appellants’ contention that Nakamura teaches that the diameter or width of the through-hole can only be sized such that the holes would not have been located under the wafer is unavailing, since Nakamura at best teaches that this situation is only “preferable” (Nakamura, col. 4, ll. 16-19). It is well established that, “in a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.”’ Merck & Co. Inc. v. Biocraft Labs Inc., 874 F.2d 804, 807 6 Additionally, as relied upon by the Examiner in the rejections of dependent claims 5 and 10 (Ans. 4, 5), Yang and Ries also exemplify the use of susceptor through-holes underneath a wafer to promote epitaxial growth. Appeal 2010-001700 Application 10/483,809 7 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples.” (citations omitted)). Thus, in our view, the Examiner properly concluded that one of ordinary skill would have considered the use of through-holes as claimed obvious from the teachings of Nakamura. Furthermore, skill is presumed on the part of one of ordinary skill in the art. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); see also KSR, 550 U.S. at 421(“ [a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). The Examiner’s position is reasonable in view of Nakamura, especially when considered in context of the admitted prior art, and Appellants have not provided any convincing technical reasoning nor evidence that one of ordinary skill in the art would not have, using no more than ordinary creativity, successfully used at least two rows of radially disposed holes in Nakamura in the claimed location (see generally App. Br.; Reply Br.). In this context, the use of numerous through-holes both outside and underneath the wafer would have been nothing more than using a known technique in accordance with its known function for the predictable result of promoting epitaxial growth on the wafer of Nakamura. See KSR, 550 U.S. at 415-16 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Appellants have not offered any evidence of unexpected results on this record. Appeal 2010-001700 Application 10/483,809 8 Accordingly, the evidence as a whole supports the Examiner’s conclusion of obviousness, and on the record before us, Appellants have not shown a lack of motivation to provide through-holes in the susceptor where they could be underneath a wafer, we sustain the § 103 rejection of claims 1- 10 as maintained by the Examiner.7 DECISION We affirm the Examiner’s § 103 rejections. 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 bar KUBOVCIK & KUBOVCIK SUITE 1105 1215 SOUTH CLARK STREET ARLINGTON, VA 22202 7 Only those arguments actually made by Appellants have been considered in this decision. Arguments which could have made but that Appellants chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).