Ex Parte Ohnishi

Patent Trial and Appeal Board

Aug 3, 2016

12746021 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121746,021 06/03/2010
25944 7590 08/05/2016
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Masato Ohnishi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
145686 6081
EXAMINER
KENDALL, BENJAMIN R
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
08/05/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT AND TRIAL APPEAL BOARD
Ex parte MASATO OHNISHI
Appeal2014-006194
Application 12/746,021
Technology Center 1700
Before CATHERINE Q. TIMM, BEYERL YA. FRANKLIN,
and DONNA M. PRAISS Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-006194
Application 12/746,021
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 8-27. We have jurisdiction under 35 U.S.C. § 6.
Appellant's invention "is directed to an epitaxial growth susceptor
having a pocket that horizontally supports a single-crystal substrate in an
epitaxial growth apparatus." App. Br. 2. Claim 8, the sole independent
claim, is illustrative of the subject matter on appeal and reproduced below
from the Claims Appendix to the Appeal Brief (key limitation in dispute is
italicized):
8. An epitaxial growth susceptor having a pocket that horizontally
supports a single-crystal substrate in an epitaxial growth apparatus,
wherein the pocket has
a tapered outer peripheral region with which the single-crystal
substrate comes into contact to be supported; and
a central region that is surrounded by the tapered outer peripheral
region and does not come into contact with the single-crystal substrate,
one or more through holes that pierce the epitaxial growth susceptor
are formed in the central region of the pocket, and
the tapered outer peripheral region is inclined with a tilt angle that is
greater than 0° and less than 1 ° in such a manner that a depth increases
toward the central region, and also has a horizontal width that is 3.3% or
more and equal to or below 7% of a diameter of the single-crystal substrate
to be supported.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Kai US 2004/0144323 Al
Narahara et. al., US 2007/0227441 Al
(hereinafter "N arahara")
Kanaya et al., US 2006/0180086 Al
(hereinafter "Kanaya")
Kono JP 2003/318116
2
July 29, 2004
Oct. 4, 2007
Aug. 17, 2006
Nov. 7, 2003
Appeal2014-006194
Application 12/746,021
Appellant, App. Br. 3, requests review of the following
rejections from the Examiner's final office action: 1
1. Claims 8-25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Narahara and Kanaya.
2. Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) over
Narahara, Kanaya, and Kono.
3. Claims 8-25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kai and Kanaya.
4. Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) over
Kai, Kanaya, and Kono.
OPINION
The dispositive issue for this rejection is: Did the Examiner reversibly
err in determining that each of the combinations of ( 1) N arahara and Kana ya
and (2) Kai and Kanaya would have suggested to one of ordinary skill in the
art an epitaxial growth susceptor having a tapered outer peripheral region
having a horizontal width that is 3 .3 % or more and equal to or below 7% of
a diameter of the single-crystal substrate to be supported as required by the
subject matter of independent claim 8? 2
1 The rejections of claims 8-27 under 35 U.S.C. §§ 112(a) and (b) have been
withdrawn by the Examiner. Ans. 18.
2 We will limit our discussion to independent claim 8. Appellant has not
argued the dependent claims separately. App. Br. 12-13, 18-19.
Accordingly, claims not argued separately will stand or fall together with
independent claim 8. See 37 C.F.R. § 41.41(b)(2)(2013).
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Appeal2014-006194
Application 12/746,021
After thorough review of the respective positions provided by
Appellant and the Examiner, we answer in the negative and AFFIRM for the
following reasons.
Obviousness over Narahara and Kanaya
The Examiner finds that Narahara teaches all of the limitations of
claim 8 except for the ranges claimed for the tilt angle and the horizontal
width of the tapered outer peripheral region. Final Act. 4--5. The Examiner
also finds that Narahara "teaches the relationship between the horizontal
width of the tapered outer peripheral region (33) and a thickness profile [fig
31-33 & examples 4-6]." Id. at 5. The Examiner additionally finds that "[i]t
would have been obvious to one of [] ordinary skill in the art at the time of
the invention to discover the optimum range of the horizontal width of the
tapered outer peripheral region (33) through routine experimentation in order
to achieve the desired thickness profile [fig 31-33 & examples 4-6]." Id.
The Examiner further finds that "[i]t would have been obvious to one skilled
in the art at the time of the invention to modify the susceptor ofNarahara
with the tilt angle of Kanaya to provide an angle large enough to prevent
scratching as a result of the inner peripheral edge of the substrate from
contacting the substrate support yet small enough to prevent slippage
[Kanaya, i-fi-10010--0011]." Id. at 6. According to the Examiner, Kanaya
teaches a tilt or inclination angle of more than 0° and 1 ° or less. Id. at 5---6
(citing Kanaya i127, Fig. 27).
Appellant argues that the Examiner erred because "the teachings of
Narahara would not lead a skilled artisan to use a ledge having a greater size
than that disclosed in Example 5 of the reference[,]" which Appellant
calculates to be 1 % of the diameter of the substrate to be supported by the
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Appeal2014-006194
Application 12/746,021
susceptor. App. Br. 8-9. According to Appellant, ''Narahara, at paragraph
[0123], discloses that the thickness distribution of the epitaxial layer in the
circumferential part in an area to be utilized for a device has improved from
0.90% in Example 4 to 0.53% in Example 5." Id. at 9. Appellant also
asserts that, based on paragraphs 173 and 174 ofNarahara, "a skilled artisan
would utilize a ledge no greater than 6 mm for a 300 mm substrate [the ledge
size of Example 4, which Appellant calculates to be 2% of the diameter of
the substrate] because a larger ledge would cause large variation in thickness
of the substrate in the usable area." Id. at 10.
Appellant also contends that the claimed horizontal width of the
tapered outer peripheral region is a "feature [that] provides a susceptor of
claim 8 with superior properties that are unexpected." Id. According to
Appellant, "[ s ]ilicon deposition on a back surface of a substrate is a problem
in the art." Id. Appellant asserts that Figure 4 "shows a relationship
between the susceptor shape and an obtained back surface ZDD value[;]"
which Appellant describes as a geometry parameter for evaluating "grown
thickness of the deposition layer on the back surface of the epitaxial
substrate." Id. at 10-11 (citing Spec. i-fi-137--41). Figure 4 is reproduced
below:
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Application 12/746,021
Fl GA
Figure 4 charts ZDD values for various horizontal widths of the outer
peripheral region as a percentage of the substrate diameter, ranging from
1.1%to6.7%, and for various tilt angles, ranging from 0.5° to 4°.
According to Appellant, "[a] lower absolute value of the back surface ZDD
value equates to a lower amount of deposition of silicon." Id. at 11. Based
on Figure 4, Appellant contends that "[ e ]ven for tilt angles not within the
claimed ranges, having a horizontal width 3 .3 % or more and equal to or
below 7% results in superior ZDD values for substrates over comparative
examples outside the claimed range of horizontal width." Id. at 12. Because
Narahara and Kanaya are "silent with respect to this feature[,]" Appellant
concludes "these superior results are completely unexpected." Id.
The Examiner responds that "Narahara merely discloses the thickness
distribution of example 5 is superior to example 4 when not considering the
area 2.00mm from the edge of the wafer to the outer peripheral edge of the
wafer." Ans. 21 (citing Narahara i-f 123). The Examiner also observes that
Example 5 in Narahara has "a steeper change in film thickness toward the
edge of the substrate" than shown for Example 4. Id. at 20. Regarding
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Application 12/746,021
Appellant's alleged unexpected results, the Examiner responds that
"applicant is attempting to combine two separate variables to establish
unexpected results." Id. at 23. The Examiner further asserts that "the longer
ledge depicted in figure 5 of the instant application shows a more gradual
thickness distribution towards the edge of the substrate, as in figure 31 of
Narahara." Id. Thus, the Examiner concludes that "the same predictable
results are obtained as a result of changing the ledge length." Id. (emphasis
omitted).
In the Reply Brief, Appellant responds that "Narahara teaches that the
overall increase in thickness is important" and "does not teach that the slope
of increase may be controlled, or even that the slope of increase is
important." Reply Br. 4. In that regard, Appellant states that "Example 5
has a much smaller increase than Example 4 (see FIGS. 31 and 32), which
contributes to the overall flatness of the substrate." Id. Regarding the
showing of unexpected results, Appellant responds that "[ r ]egardless of tilt
angle, the back surface ZDD value is superior at the claimed ratio of
horizontal width/substrate diameter than outside the claimed range, as shown
in FIG. 4 .... " Id. at 5. Appellant further states that Figure 5 of the instant
application "demonstrate[ s] the thickness of silicon deposition on the back
surface of the wafer" rather than the thickness towards the edge of the
substrate shown in Narahara's Figures 31 and 32. Id.
We agree with the Examiner that Narahara's disclosure of the
relationship between the horizontal width of the tapered outer peripheral
region of a susceptor pocket and a thickness profile would have suggested to
one skilled in the art to optimize the range of horizontal width of the tapered
outer peripheral region through routine experimentation in order to achieve a
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Appeal2014-006194
Application 12/746,021
desired thickness profile. See Final Act. 5; Ans. 20; Narahara Examples 4--
6, Figs. 31, 32. Appellant has not adequately disputed this finding by the
Examiner. Appellant's argument that Narahara teaches that Example 5 "is
superior to Example 4" (App. Br. 9) on the basis that Example 5 shows "the
thickness distribution of the epitaxial layer in the circumferential part in an
area to be utilized for a device has improved" (id.) does not amount to a
teaching away from a horizontal width of the tapered region having the
relative dimensions of Example 4 or greater. In order for a reference to be
said to teach away, a person of ordinary skill in the art, upon reading the
reference, would have to be discouraged from following the path set out in
the reference, or be led in a direction divergent from the path that was taken
by the Appellant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Narahara's disclosure of more than one alternative for the horizontal width
of the tapered region of a susceptor pocket does not criticize, discredit, or
otherwise discourage modifying the horizontal width to be larger than that of
Example 5. In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Appellant
concedes that one of ordinary skill in the art reading Narahara's disclosure
would have followed the teachings ofNarahara's Example 4, which uses a 6
mm horizontal width for a 300 mm substrate, despite the alleged superior
results of Example 5, which uses a 3 mm horizontal width for a 300 mm
substrate. See App. Br. 10 ("a skilled artisan would utilize a ledge no greater
than 6mm for a 300 mm substrate .... "). We find Appellant's argument
that "a larger ledge would cause large variation in thickness of the substrate
in the usable area" (id.) to be unpersuasive given the lack of evidence in
support thereof. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
(argument by counsel cannot take the place of evidence). Moreover,
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Application 12/746,021
Appellant's argument is contradicted by the breadth of the claims contained
in Narahara's disclosure. See, e.g., Narahara, Claim 18 ("wherein the
predetermined length of the ledge part is variable along a circumferential
direction on the opening such that it can be modified in accordance with
respective shapes of the semiconductor wafer and the opening.").
We also agree with the Examiner's determination that unexpected
results with respect to the horizontal width has not been adequately
established. Ans. 23. We are unpersuaded by Appellant's argument that
Figure 4 accompanying and described in the Specification demonstrates
unexpected results. Appeal Br. 12; Reply Br. 5. For the reasons discussed
below, Appellant has not adequately explained why the back surface ZDD
values are superior at the claimed ratio of horizontal width/substrate
diameter compared to results outside the claimed range.
It is well settled that Appellant has the burden of showing unexpected
results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Appellant to
proffer factual evidence that actually shows unexpected results relative to
the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991 ), and that is reasonably commensurate in scope with the
protection sought by claim 8 on appeal, In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re
Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the showing relied
upon by Appellant must reasonably support the entire scope of the claims at
issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Appellant has not adequately explained why the ZDD data contained
in Figure 4 is representative of the entire range(s) claimed. Consequently,
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Appeal2014-006194
Application 12/746,021
the evidence relied on by Appellant is not commensurate in scope with the
subject matter of independent claim 8, which spans the ranges of (I) 3.3% or
more and equal to or below 7% for the horizontal width of the tapered outer
peripheral region and (2) greater than 0 and less than 1 for the tilt angle.
Figure 4 provides no evidence for horizontal widths in the ranges 3.3-3.4%
and 6.7-7.0% nor does Figure 4 provide evidence for tilt angles in the ranges
of 0--0.5° and 0.75-1°.
Furthermore, it is only in the briefs that Appellant states that the
results are unexpected, but a statement by the attorney is not enough. See In
re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that argument
by counsel cannot take the place of evidence). Rather than describing any
criticality or surprising results with respect to the claimed range of 3 .3-7%,
the Specification further describes as "particularly preferable" the
"horizontal width that is equal to or above 5.5% and less than 7%." Id. A
preference does not adequately indicate that the results would have been
unexpected. Moreover, what would have been expected is not clear from the
Specification. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed.
Cir. 2007) (A proper evaluation of a showing of unexpected results
considers what properties were expected).
In sum, we are not persuaded by Appellant's arguments that
patentability of the claimed range is supported by unexpected results. In re
Mayne, 104 F.3d 1339, 1343-34 (Fed. Cir. 1997) (explaining that
unsupported assertions are insufficient to make a showing that "the claimed
invention exhibits some superior property or advantage that a person of
ordinary skill in the relevant art would find surprising or unexpected"); In re
Lindner, 457 F.2d 506, 508 (CCPA 1972) (mere conclusory statements of
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Application 12/746,021
superiority in the Specification and/or Appellant's brief~ unsupported by
factual evidence, are of little probative value).
Accordingly, we affirm the Examiner's rejection of claim 8 under 35
U.S.C. § 103(a) as unpatentable over the combination ofNarahara and
Kanaya for the reasons given above and presented by the Examiner in the
Final Action. Final Act. 4--6.
Obviousness over Kai and Kanaya
The Examiner finds that Kai teaches all of the limitations of claim 8
except the claimed range of the horizontal width of the tapered ledge and the
tilt angle. Final Act. 12-14. The Examiner also finds that it would have
been obvious to one of ordinary skill in the art to optimize the horizontal
width disclosed by Kai, which the Examiner calculates to be 8% of the
diameter of the substrate, because "discovering the optimum or working
ranges involves only routine skill in the art." Id. at 13. The Examiner
further finds that it would have been obvious to modify the angle of Kai's
tapered surface with the tilt angle disclosed by Kanaya for the reason
described by Kanaya, namely, "to prevent scratching as a result of the inner
peripheral edge of the substrate from contacting the substrate support yet
small enough to prevent slippage[.]" Id. at 14 (citing Kana ya i-fi-f l 0-11 ).
Appellant does not dispute that Kai teaches a tapered section having a
horizontal width that is 8-9% of the diameter of its substrate as calculated by
the Examiner. App. Br. 14--15. Appellant also does not dispute that Kanaya
discloses the claimed tilt angle. Id. at 14--19. Appellant contends that "Kai
does not recognize the horizontal width as a result-effective variable" and
that the claimed range for the horizontal width of the tapered region is a
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Application 12/746,021
feature that "provides a susceptor of claim 8 with superior properties that are
unexpected." Id. at 16.
The Examiner responds that "changing the horizontal width of the
tapered region is well known in the art to be a result effective variable"
based on the Examiner's discussion with respect to Narahara and because
"where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or working ranges involves only routine skill in the
art." Ans. 25 (citations omitted). The Examiner provides the same response
to Appellant's unexpected results argument as discussed above. Id. at 26.
In the Reply Brief, Appellant responds that (1) Narahara is not applied
to the rejection of claim 8 over Kai and Kanaya, (2) "[t]he teaching of two
separate ranges in different references in no way suggests a range separate
from and in between the ranges, absent an indication of the effectiveness of
the ranges[,]" and (3) "Kai is completely silent with respect to the
effectiveness of the width." Reply Br. 7. Appellant further responds that
"[Appellant has] clearly overcome this finding by showing the criticality of
the claimed range as discussed above and in the Brief."
We agree with the Examiner that Kai discloses the general conditions
of the horizontal length of the tapered region of the susceptor that involve
only routine skill in the art to optimize. In addition to providing the
examples of 8-9% of the substrate diameter for the horizontal length, Kai
discloses that
[t]he inner surface of the wafer pocket 13 has a tapered
configuration so as to be in contact only with the outer peripheral
portion of the wafer, and measures are taken to minimize the
surface contact of the wafer 12 and the inner surface of the wafer
pocket 13.
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Application 12/746,021
Kai il 7 (referring to Figure 2). Because Kai provides general conditions for
optimizing the horizontal length of the tapered region, we find Appellant's
argument to the contrary unpersuasive.
For essentially the same reasons discussed above in connection with
the rejection of claim 8 over Narahara and Kanaya, we also find
unpersuasive Appellant's unexpected results argument and evidence. In
addition, Appellant has not established unexpected results over the 8-9%
horizontal width of the tapered region disclosed by Kai because Figure 4
does not include ZDD data for horizontal widths beyond 6. 7%. Therefore,
Appellant has not supported adequately the full scope of the claimed range.
Accordingly, we affirm the Examiner's rejection of claim 8 under 35
U.S.C. § 103(a) as unpatentable over the combination of Kai and Kanaya for
the reasons given above and presented by the Examiner in the Final Action.
Final Act. 12-14.
On this record and for the above reasons, we affirm the Examiner's
rejections of claim 8 as well as claims 9-27, which stand or fall with claim
8.
DECISION
The Examiner's decision is affirmed.
ORDER
AFFIRMED.
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