Ex Parte Tabat et al

Patent Trial and Appeal Board

Nov 20, 2014

12428945 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARTIN D. TABAT, MATTHEW C. GWINN,
ROBERT K. BECKER, AVRUM FREYTSIS, and MICHAEL GRAF
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Appeal 2012-010546
Application 12/428,945
Technology Center 2800
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Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KAISER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the
Examiner finally rejecting claims 1–13,16, 18–20, 23, 25–42, 45, 47–50, 53,
and 55–58 (“Final Rej.”). We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

OPINION
Appellants’ invention “relates to a system with multiple nozzles for
irradiating substrates using a gas cluster ion beam (GCIB), and a method for
irradiating substrates to dope, grow, deposit, or modify layers on a substrate
using the multiple nozzle GCIB system.” Spec. ¶ 2.
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Claim 1, reproduced below, is representative of the appealed subject
matter:
1. A nozzle and skimmer assembly for a gas cluster ion
beam (GCIB) system, comprising:
a gas skimmer,
a set of at least two nozzles for forming and emitting gas
clusters beams, the set of at least two nozzles arranged in
mutual close proximity to at least partially coalesce the gas
cluster beams emitted from the set of at least two nozzles into a
single gas cluster beam and to direct the single gas cluster beam
into the gas skimmer,
a first gas supply in fluid communication with a first
subset of nozzles, the first subset of nozzles comprising at least
one nozzle from the set of at least two nozzles, and
a second gas supply in fluid communication with a
second subset of nozzles, the second subset of nozzles being
different than the first subset of nozzles and comprising at least
one nozzle from the set of at least two nozzles,
wherein the first gas supply is configured to supply a first
gas mixture, the second gas supply is configured to supply a
second gas mixture, and the first gas mixture and second gas
mixture are different.
Appeal Br. 13.
The Examiner rejected claims 1–5, 12, 13, 18–20, 25–34, 41–42, 47–
50, and 55–58 under 35 U.S.C. § 102(e) as anticipated by Renau.1 The
Examiner also rejected claims 6–11 and 35–40 under 35 U.S.C. § 103(a) as
obvious over the combination of Renau and Sherman,2 as well as claims 16,

1 Renau et al., US 2008/0149826 A1, published June 26, 2008 (hereafter
“Renau”).
2 Sherman et al., US 2007/0184656 A1, published Aug. 9, 2007 (hereafter
“Sherman”).
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23, 45, and 53 under 35 U.S.C. § 103(a) as obvious over the combination of
Renau and Hautala.3

Anticipation Rejection of
Claim 1 and Its Dependent Claims

With respect to the rejection of claim 1 and its dependent claims as
anticipated by Renau, Appellants argue that Renau fails to disclose the
claimed two subsets of nozzles, each fed by a gas mixture, wherein the gas
mixtures being supplied to each subset of nozzles are different. Appeal Br.
5–6. According to Appellants, Renau “discloses a source gas supply, which
may include one or more gases together in a single gas mixture, and the
source gas supply feeds that single gas mixture to all the nozzles, although
the amount of that single gas mixture fed to each nozzle may differ.” Id. at 6
(citing Renau ¶ 26).
The Examiner responds that Renau discloses multiple rows of nozzles,
with each row “attached to a different gas tube,” as well as “a wide variety
of gases that may be supplied to the nozzles.” Answer 12 (citing Renau
¶¶ 4, 21, 27, Fig. 3). Accordingly, argues the Examiner, “it stands to reason
that each ‘row’ of nozzles in [Figure] 3 would be considered a different
subset of nozzles, and . . . the variety of distinct gases . . . may be provided
to each different gas tube.” Id.
We note first that we are not persuaded by Appellants’ argument that,
because Renau does not teach supplying different gas mixtures to different
subsets of nozzles, Renau cannot anticipate claim 1. The requirement of

3 Hautala et al., US 2009/0140165 A1, published June 4, 2009 (hereafter
“Hautala”).
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claim 1 that the “first gas mixture and second gas mixture [be] different,”
Appeal Br. 13, is an intended use of the claimed apparatus, not a structural
feature of the apparatus. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device
is, not what a device does.”); Roberts v. Ryer, 91 U.S. 150, 151 (1875) (“It is
no new invention to use an old machine for a new purpose). The issue is not
whether Renau discloses supplying different gases to different subsets of
nozzles, but whether Renau teaches that the apparatus of Renau is capable of
being used to supply different gases to different subsets of nozzles.
Even when the issue is stated in this way, however, we are persuaded
that the rejection of claim 1 as anticipated by Renau is in error. Anticipation
of a claim under 35 U.S.C. § 102 occurs when each claimed element and the
claimed arrangement or combination of those elements is disclosed,
inherently or expressly, by a single prior art reference. In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). “[A] prior art reference may anticipate
when the claim limitations not expressly found in that reference are
nonetheless inherent in it. Under the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002). Here, Renau does not disclose that the gases supplied
to the two subsets of nozzles are different, nor does it teach that its apparatus
may be used to supply different gases to different subsets of nozzles. Renau
teaches only that “[t]he amount of source gas supplied to each nozzle 202 as
well as the injection speed and angles may be programmed and fine-tuned to
ensure a desired output.” Renau ¶ 26. It does not disclose that different
nozzles are fed from separate gas supplies or are supplied with gas mixtures
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of different compositions. Indeed, Renau consistently refers to “the source
gas,” suggesting that Renau’s device is not configured to be capable of
supplying different gases to different nozzles. See, e.g., Renau, Abstract
(“. . . configured to inject a source gas . . .”), ¶ 4 (“The nozzle may inject the
source gas . . .”), ¶ 21 (“The source gas may comprise any of a variety of
gases . . .”). Without the identification of any disclosure in Renau of the
Renau apparatus’s capability of being used in the way recited in Appellants’
claim 1, we cannot agree with the Examiner that Renau forms the basis of a
proper anticipation rejection of claim 1 or its dependent claims.

Anticipation Rejection of
Claim 25 and Its Dependent Claims

With respect to the rejection of claim 25 and its dependent claims as
anticipated by Renau, Appellants argue that Renau fails to disclose the
claimed configuration of nozzles “angled to converge each beam axis toward
a single intersecting point to form a set of intersecting gas cluster beams and
to direct the intersecting gas cluster beams into the gas skimmer.” Appeal
Br. 17; see Appeal Br. 8–9. The Examiner argues that Figure 2 of Renau
discloses this claim limitation, because it teaches arranging nozzles and
skimmers so as to intersect the beam axes at a single point. Answer 4–5
(citing Renau ¶¶ 21–28, Fig. 2). We disagree. Claim 25 requires that the
beams from separate nozzles intersect so as to form a mixture of the gases
coming from the separate nozzles, and that the mixture formed at that
intersection then be directed into the gas skimmer. Appeal Br. 17. Figure 2
of Renau depicts multiple gas skimmers 203, one for each nozzle 202.
Renau, Fig. 2. The intersection of the beams from the nozzles occurs
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downstream of the skimmers, so that the mixture formed at the intersection
is never directed into a gas skimmer. Id. Accordingly, Renau does not
disclose the “claimed arrangement or combination of th[e] elements” of
claim 25, so it does not anticipate claim 25 or the claims that depend from
claim 25. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

Obviousness Rejections

With respect to the rejections under 35 U.S.C. § 103(a), neither
Sherman nor Hautala remedies the deficiencies of Renau discussed above.
Accordingly, the rejections over the combinations of Renau and Sherman
and Renau and Hautala are in error.

ORDER
The Examiner’s decision rejecting claims 1–5, 12, 13, 18–20, 25–34,
41–42, 47–50, and 55–58 under 35 U.S.C. § 102(e) as anticipated by Renau;
claims 6–11 and 35–40 under 35 U.S.C. § 103(a) as obvious over the
combination of Renau and Sherman; and claims 16, 23, 45, and 53 under 35
U.S.C. § 103(a) as obvious over the combination of Renau and Hautala is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

REVERSED

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