Ex Parte Wang et al

Board of Patent Appeals and Interferences

Mar 29, 2012

11096820 (B.P.A.I. Mar. 29, 2012)

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.
11/096,820 04/01/2005 Ing-Yann Wang 7103/445 4536
757 7590 03/30/2012
BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
ZERVIGON, RUDY
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
03/30/2012 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 ING-YANN WANG, JAROSLAW W. WINNICZEK,
DAVID J. COOPERBERG, ERIK A. EDELBERG, ROBERT P. CHEBI
____________

Appeal 2011-000616
Application 11/096,820
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision finally rejecting claims 1-25 and 33-35. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appellants claim an apparatus for delivering a gas to a substrate held
on a chuck within a cavity formed by upper and lower chamber bodies, a gas
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source in fluid communication with the cavity via an injector, and an exhaust
unit to remove gas from the cavity, wherein the injector includes a plurality
of continuous, independent channels extending therethrough and in
communication with both the cavity and the gas source. Each channel is
bent sufficiently to prevent any light ray which enters the channel from
exiting without reflecting from a surface in the channel. (Claim 17).
Representative claim 17 reads as follows:
17. An apparatus comprising:

upper and lower chamber bodies forming a cavity;

a gas source in fluid communication with the cavity;

an exhaust unit adapted to remove gas in the cavity;

a chuck disposed in the cavity; and

an injector containing a plurality of continuous channels
extending therethrough, each channel in communication with the
cavity and the gas source, wherein each channel is independent from
one another and bent sufficiently to prevent any light ray which enters
the channel from exiting the channel without reflecting from a surface
in the channel.

The references listed below are relied upon by the Examiner as
evidence of anticipation and/or obviousness:
Umotoy 6,302,965 B1 Oct. 16, 2001
Kim 6,453,992 B1 Sep. 24, 2002
Maydan 5,643,394 Jul. 1, 1997

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The Examiner rejects claims 1-3, 8-11, 17, 19 and 20 under 35 U.S.C.
§ 102 (b) as being anticipated by, and in the alternative, under 35 U.S.C. §
103(a), as unpatentable over Umotoy.
In addition, under 35 U.S.C. § 103(a), the Examiner rejects:
Claim 33-35 as being unpatentable over Umotoy;
Claims 4-7, 14-16, 18 and 23-25 as being unpatentable over Umotoy
in view of Kim; and
Claims 12, 13, 21 and 22 as being unpatentable over Umotoy in view
of Maydan.

Appellants have separately argued claims 1, 2, 17 and 33, and
acknowledges that claims 3-16, 18-25, and 34-35 stand or fall with
independent claims 1, 17 and 33, respectively (Br. 4, 13, 15, 16). For
purposes of this appeal, we therefore select claims 1, 17 and 33 to decide the
issues raised by the rejections.1 See 37 C.F.R. § 41.37(c)(1)(vii) (“When
multiple claims subject to the same ground of rejection are argued as a group
by appellant, the Board may select a single claim from the group of claims
that are argued together to decide the appeal with respect to the group of
claims as to the ground of rejection on the basis of the selected claim
alone.”).
ISSUES

1 Although Appellants separately argue dependent claim 2, we need
not reach the separate patentability of this claim in light of our decision with
regard to the rejections of independent claim 1 from which it depends.

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The first issue is whether Umotoy anticipates claims 1 and 17 under
35 U.S.C. § 102(b). The second issue is whether Umotoy, in the alternative,
renders claims 1 and 17 unpatentable under 35 U.S.C. § 103(a). The third
issue is whether Umotoy renders claim 33 unpatentable under 35 U.S.C. §
103(a).
ANALYSIS
Issue 1
The Examiner asserts that Umotoy teaches an apparatus for delivering
a gas to a substrate covering all the claimed limitations. In particular, the
Examiner identifies the injector of Umotoy as the structures in Figure 1,
corresponding to numerals 18, 20 and 24 (Ans. 4). The Examiner identifies
the channels of Umotoy as the structures in Figure 1 corresponding to
numerals 30, 42 and 24 for a first channel, numerals 32, 44 and 24 for a
second channel, and numerals 46 and 24 for a third channel (Ans. 4). To
meet the claim limitation that the channels are independent, the Examiner
indicates that Umotoy’s “[c]hannel(s) 30 is/are independent of channel(s)
32” (Ans. 4-5, footnote 1). In addition, the Examiner directs attention to
channels 712 from Appellants’ Figure 7 for guidance in interpreting the
meaning of the claim term “independent” (id.; Ans. 23). The Examiner finds
that Umotoy’s channels “are independent from one another because none of
the channels share all the same numbered elements” (Ans. 23). To meet the
claim limitation that each channel is sufficiently bent (or has sections
intersecting at an angle) to prevent any light ray that enters the channel from
exiting without reflecting from a surface of the channel, the Examiner
identifies first and second sections at an angle to each other “sufficient to
prevent light rays that enter the first section . . . along the direction of the
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longitudinal axis of the first section . . . from exiting the second section . . .
without reflecting from a surface of the channel” (Ans. para. bridging 4-5).
For the first channel, the Examiner identifies the first section as structures
corresponding to numerals 30 and 24 and the second section as structures
corresponding to numeral 42 (Ans. 4). The Examiner asserts that because
Umotoy’s structure is substantially identical to that claimed, the claimed
properties or functions are presumed inherent (Ans. 5). In addition,
the Examiner further justifies his support for anticipation under
Umotoy because the capacity for Umotoy's apparatus to meet the
claimed use of “...an angle sufficient to prevent light rays...” is a
function of many variables and conditions. For example the
wavelength of the claimed "light rays" will determine if such light
rays will behave as claimed. The wavelength of the claimed light rays
then depends on the plasma chemistry employed by Umotoy (column
5; lines 40-50), etc.. This is not to mention many other factors such as
diffraction, interference, and the radiation properties of Umotoy's
materials. The Examiner is not arguing that the claimed use of “...an
angle sufficient to prevent light rays...” may occur, but that such a
condition must occur based on at least a visual comparison of
Applicant's Figure 7 and Umotoy's Figure 1.

(Ans. 5).

Appellants argue that Umotoy does not in fact anticipate the claims as
the reference fails to teach channels that are independent and channels that
are bent (or has sections intersecting at an angle) sufficiently to prevent any
light ray which enters the channel from exiting the channel without
reflecting from a surface in the channel (Br. 5-12). In this regard,
Appellants argue that the Examiner has improperly compared Appellants’
Fig. 7 to Umotoy, especially in interpreting the claim term “independent”
(Br. 7). Appellants state that Figure 7 does not show the claimed channel
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bend and asserts that Figure 6 shows the claimed channel bend (Br. 7-8).
Appellants further argue that the channels as defined by the Examiner do not
have substantially equal diameters at the intersection between first and
second sections that form the bend therein (Br. 10-11).
Appellants’ argument is persuasive of reversible error. “A rejection
for anticipation under section 102 requires that each and every limitation of
the claimed invention be disclosed in a single prior art reference.” In re
Paulsen, 30 F.3d 1475, 1478-79 (Fed.Cir.1994); see Karsten Manufacturing
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001)
(“Invalidity on the ground of ‘anticipation’ requires lack of novelty of the
invention as claimed .... that is, all of the elements and limitations of the
claim must be shown in a single prior reference, arranged as in the claim.”).
Looking first to the claim term “independent”, the Examiner is
entitled to provide the broadest reasonable interpretation consistent with
Appellants’ disclosure. However, we agree with Appellants that the
Examiner has not properly interpreted this claim term.2 Appellants state that
Figure 7 does not show the claimed channel bend (Br. 8). Thus, neither the
gas source 750 nor the plasma 752 is part of the claimed independent
channel structure (id. 9). While Umotoy’s channels 30 are independent of
channels 32, the Examiner has not interpreted these structures alone to be the
channels of Umotoy for purposes of this rejection. Instead, the Examiner
has interpreted the first channel to include the cup-shaped entrance 24 and

2 We note that the term “independent” was added without objection
during examination, and that the Specification does not provide a definition
for this term. Accordingly, we have interpreted this term in light of the
entirety of the disclosure and the arguments submitted.
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annular groove 42. Neither the cup-shaped entrance 24 nor the annular
groove 42 is independent with respect to the plurality of channels 30 and 32.
While the Examiner asserts that any shared portion of the channels may be
excluded in order to meet the “independent” limitation, we do not agree.
Structure cannot be included for one interpretation and excluded for another
within the same claim and rejection. Accordingly, we find that Umotoy’s
channels, as identified by the Examiner, are not independent.
Turning next to the bent channel geometry which prevents any light
ray entering the channel from exiting without reflecting from a surface of the
channel, we agree with Appellants that Umotoy fails to teach such a feature.
The only structures in Umotoy’s injector that may be interpreted to be
independent channels include channels 30 and 32, and these are clearly not
bent so as to prevent any light ray entering the channel from exiting the
channel without reflecting from a surface thereof (Br. 7). Notwithstanding
the Examiner’s assertions of inherency based on such factors as the
wavelength of the light rays, the chemistry of the plasma, diffraction,
interference, and radiation properties, we find none of these factors relevant
to evaluating this claimed feature. Accordingly, we find that the
independent sections of Umotoy’s channels are not sufficiently bent so as to
prevent any light ray entering these channel sections from exiting without
reflection from a surface thereof.
We note that the Examiner states that the function of the claimed
channel geometry “implies that there is no direct line-of-sight between the
processed substrate and the upstream inlet of the channel” (Ans. 20).
However, a more accurate corollary to the claimed channel geometry implies
that there is not direct line-of-sight between the upstream channel inlet and
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the downstream channel outlet, which works in both directions. We do not
find persuasive the Examiner’s reasoning that the only way to achieve such
feature is for the light source to be the substrate itself, which according to
the Examiner is only possible “for non-plasma, i.e. CVD” (id.). This
feature defines the channel geometry only and does not per se necessitate a
light source being upstream or downstream of the channels. Thus, the
location of any light source, the size and/or location of the substrate, and the
process and/or use of the claimed apparatus are each irrelevant to the
comparison between the teachings of Umotoy and the claimed invention.
With regard to the claimed substantially equal diameters at the
intersection of first and second sections of the channels as recited in claim 1,
the Examiner identifies the diameters at numerals 30 and 34 in Umotoy as
substantially equal at their intersection (Ans. 5). However, the Examiner
fails to account for the fact that Umotoy’s arrow 34, showing the flow of
vaporized material into the cavity, is within the annular groove 42. As such,
the Examiner also fails to explain how the diameter of the annular groove at
the intersection with the channel section 30 could be reasonably interpreted
to be substantially equal to the diameter of the channel section 30. We find
that the channel section diameters as identified by the Examiner are not
substantially equal at the intersection thereof.
For these reasons, we will not sustain the § 102 (b) rejection of
independent claims 1 and 17 or of the so-rejected dependent claims as being
anticipated by Umotoy.

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Issue 2
Determining obviousness is a legal determination based on underlying
factual inquiries. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17
(1966). These inquiries are (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the art, and (4) any secondary considerations of
nonobviousness. These inquiries require the fact finder to construe the prior
art in light of the claimed subject matter.
The Examiner has the initial duty of supplying the requisite factual
basis and may not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (“To facilitate review, [the obviousness] analysis should be
made explicit.”); 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 some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”), quoted with approval in KSR, 550 U.S. at 418.
The Examiner states that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to optimize the
dimension(s) of Umotoy's apparatus” (Ans. 8). The Examiner further stated
that “[m]otivation to optimize the dimension(s) of Umotoy's apparatus is for
accommodating different sized wafers” (id.). The Examiner then concludes
that “[i]t is well established that changes in apparatus dimensions are within
the level of ordinary skill in the art”, citing to Gardner v. TEC Systems, Inc. ,
725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984); In re
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Rose, 220 F.2d 459 (C.C.P.A. 1955); In re Rinehart, 531 F.2d 1048
(C.C.P.A. 1976); and the Manual of Patent Examination Procedure, Chap.
2144.04 (hereinafter MPEP 2144.04) (Ans. para. bridging 8-9).
Appellants argue that the Examiner fails to articulate reasoning with
some rational underpinning to support the obviousness conclusion (Br. 13).
In particular, Appellants argue that the Examiner has not discussed “why it
would have been obvious to modify the relative angle between the first and
second sections of each channel”, especially with regard to providing an
angle sufficient to prevent light rays from exiting the channel without
reflection from a surface thereof (id.). Appellants state that Umotoy does
not have channels meeting these limitations, nor does the Examiner provide
any basis for concluding these limitations would have been obvious (id. at
13-15).
Appellants’ argument is persuasive of reversible error. The legal
principles cited and relied upon by the Examiner are inapplicable here.
Section IV(A) of MPEP 2144.04 cites the three cases also cited by the
Examiner. A careful reading of these decisions indicates that they are
directed to the issue of the obviousness of relative sizes or proportions of
prior art structures as compared to claimed structures. The issue here is not
one of relative sizes or proportions, but the angular relationship (or bend)
between two sections of independent channels extending continuously
through an injector sufficient to prevent any light ray from exiting the
channel without reflecting from a surface of the channel. The Examiner has
not pointed to anything in Umotoy, nor within the ordinary skill in the art,
which would indicate that this angular relationship may be varied for the
reason given by Appellants, or for any other reason. While optimization of
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an art-recognized result-effective variable is generally considered to have
been obvious, there is no indication anywhere in the applied prior art
teaching or suggesting that this angular relationship is an art-recognized
result-effective variable.
On this record, the Examiner’s obviousness conclusion is merely a
conclusory statement unsupported by rational underpinning. We will not
sustain, therefore, the § 103 rejection of independent claims 1 and 17 or of
the so-rejected dependent claims as unpatentable over Umotoy.

Issue 3
The Examiner rejects claim 33 on the basis that Umotoy teaches all
the claimed limitations except for an injector that comprises a unitary
structure that contains the plurality of channels (Ans. 9-11). Thus, the
Examiner concludes that it would have been obvious “to use a one piece
construction for Umotoy's unitary structure / fixture instead of
interconnected components (In re Larson, 340 F.2d 965, 968, 144 USPQ
347, 349 (CCPA 1965), MPEP 2144.04)” (id. 11, footnote omitted). The
Examiner identified the motivation for such a modification “is for added
structural rigidity” (id.). The Examiner’s interpretation of the structure of
Umotoy includes identifying in Figure 1 thereof, a first channel
corresponding to numerals 30, 42 and 24, a second channel corresponding to
numerals 32, 44, and 24, and a third channel corresponding to numerals 46
and 24 (id. at 9).
Appellants argue that Umotoy’s injector does not include a plurality
of channels extending therethrough, wherein each channel has upper and
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lower sections intersecting at an angle sufficient to prevent any light ray
entering the upper section from exiting the lower section (Br. 14-15).
For the reasons given above in our discussion of Issue 1, we find
Appellants’ argument persuasive of reversible error. In particular, we are
persuaded by the figure on page 7 of Appellants’ Brief that some light rays
may travel through the channels as defined by the Examiner without
reflecting from a surface thereof. In other words, Umotoy’s channels
defined by the Examiner have a direct line-of-sight from the upstream
channel inlet in the cup-shaped entrance 24 to the downstream channel outlet
in the annular groove 42. Accordingly, we will not sustain the § 103
rejection of independent claim 33 or of dependent claims 34 and 35 as
unpatentable over Umotoy.
The Remaining Rejections
The rejections of dependent claims 4-7, 14-16, 18, 23-25, and 12, 13,
21, 22 under 35 U.S.C. § 103(a) as being unpatentable over the Umotoy in
view of Kim and Maydan, respectively, also turn on these issues.
Accordingly, we cannot sustain either of these rejections for the reasons
given above.

Conclusion
The decision of the Examiner is reversed.

REVERSED
tc