Thomas Plach et al.

Patent Trials and Appeals Board

Oct 7, 2020

14414795 - (D) (P.T.A.B. Oct. 7, 2020)

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.
14/414,795 01/14/2015 Thomas Plach BE11077WO(US) 5087
22203 7590 10/07/2020
KUSNER & JAFFE
Paragon Center II
6150 Parkland Boulevard
Suite 105
Mayfield Heights, OH 44124
EXAMINER
PHAM, THOMAS T
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
10/07/2020 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):
mail@kusnerjaffe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS PLACH, KURT HINGERL,
MARKUS WIMPLINGER, and CHRISTOPH FLÖTGEN
Appeal 2019-006343
Application 14/414,795
Technology Center 1700
Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
JEFFREY R. SNAY, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 15–17, 23–29, 31–33, and 35.
See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as EV GROUP
E. THALLNER GMBH. Appeal Br. 3.
Appeal 2019-006343
Application 14/414,795
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CLAIMED SUBJECT MATTER
The claims are directed to a method for bonding substrates with a
bond force as high as possible at a temperature that is as low as possible.
Spec. ¶ 7. The method involves receiving a first substrate and a second
substrate into a plasma chamber and generating a plasma of ionized gas that
forms a reservoir (e.g., reservoir 5 of pores and channels in Figures 1a and
1b) by plasma treatment in at least the first substrate. Spec. ¶¶ 79–90. After
plasma treatment, the reservoir is at least partially filled with a first educt
(e.g., water) and the contact areas of the first and second substrates are
brought together to form a hydrophilic pre-bond as shown in Figures 1a and
1b. Spec. ¶¶ 78, 92, 95. The second substrate has a growth layer (growth
layer 8 shown in Figures 1a and 1b), which may be a thin layer of native
oxide. Spec. ¶¶ 55, 91. A permanent bond is formed by reacting the first
educt (e.g., water) with the growth layer (termed a second educt in claim 1).
Spec. ¶¶ 55, 91. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for bonding of a first contact area of a first
substrate to a second contact area of a second substrate, the
second substrate or each of the substrates having at least one
reaction layer, said method comprising the steps of:
receiving the first and second substrates into a plasma
chamber, the plasma chamber having at least first and second
generators,
generating alternating current or alternating voltage at a
first electrode with a first frequency (f21) with the first
generator to produce plasma for forming a first reservoir in a
first reservoir formation layer on the first contact area of the
first substrate,
generating alternating current or alternating voltage at a
second electrode with a second frequency (f22) with the second
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Application 14/414,795
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generator, the second frequency (f22) being different from the
first frequency (f21),
at least partially filling the first reservoir with a first
educt or a first group of educts,
forming a pre-bond interconnection between the first and
second contact areas, the forming comprising bringing first
portions of the first contact area of the first substrate into
contact with first portions of the second contact area of the
second substrate such that gaps are formed between second
portions of the first contact area of the first substrate and second
portions of the second contact area of the second substrate that
are not brought into contact with each other, and
forming a permanent bond between the first and second
contact areas, the permanent bond being at least partially
strengthened by a reaction of the first educt filled in the first
reservoir with a second educt contained in the at least one
reaction layer of the second substrate, the reaction comprising
deforming a growth layer provided between the second contact
area and the at least one reaction layer of the second substrate,
the deforming of the growth layer serving to reduce a distance
between the second portions of the first contact areas of the first
substrate and the second portions of the second contact area of
the second substrate by bulging the second portions of the
second contact area of the second substrate toward the second
portions of the first contact area of the first substrate to close
the gaps and at least partially strengthen the permanent bond.
Appeal Br. 20–21.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Koshiishi US 2006/0037701 A1 Feb. 23, 2006
Kerdiles ’642 US 2006/0240642 A1 Oct. 26, 2006
Kerdiles ’072 US 2009/0294072 A1 Dec. 3, 2009

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Application 14/414,795
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REJECTION
Claims 1, 3, 4, 15–17, 23–29, 31–33, and 35 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Kerdiles ’642 and
Kerdiles ’072, and Koshiishi. Non-Final Act. 3.

OPINION
Appellant does not argue any claim apart from the others. Appeal Br.
13–19. We select claim 1 as representative for deciding the issues on appeal.
Because Appellant has not identified a reversible error in the
Examiner’s well-supported rejection, we affirm. In doing so, we adopt the
findings of fact, analysis, and conclusions stated by the Examiner in the
Office Action appealed from (Non-Final Act. of Nov. 19, 2018 at 3–8) as
well as the Examiner’s well-reasoned responses to Appellant’s arguments
(Ans. 6–10). We add the following primarily for emphasis.
At the heart of the Examiner’s rejection is the finding that the process
suggested by Kerdiles ’642 as modified by Kerdiles ’072 is identical to the
process recited in claim 1. Ans. 7. Based on this finding of identity, the
Examiner finds that the method steps the ordinary artisan would perform
using the method of the combination would inherently result in the
formation of the various structures and bonds recited in claim 1. We
determine the Examiner has provided a reasonable basis to conclude that,
based on the similarities of the methods of the prior art, the formation of
reservoirs, pre-bonds with gaps, growth layer deformation and bulging
would inherently take place and the burden was shifted to Appellant to show
that these results would not, in fact, necessarily occur in the method
suggested by the prior art. Where an examiner has reason to believe that a
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characteristic or functional limitation in a claim may, in fact, be an inherent
characteristic of the prior art, the examiner possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic the applicant is relying on for
patentability. In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977) (quoting In
re Swinehart, 439 F.2d 210 (CCPA 1971). An examiner’s belief is
reasonable where starting materials and processing of the prior art are so
similar to those disclosed by the applicant that it appears that the claimed
function or property would naturally result when conducting the process as
taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990);
In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Best, at 1255. In making
this determination we are cognizant of the fact that the Examiner’s finding is
based on a combination of steps in two references. Thus, the burden for
establishing inherency is high and must be carefully circumscribed in the
context of obviousness. Persion Pharm. LLC v. Alvogen Malta Operations
Ltd., 945 F.3d 1184, 1191 (Fed. Cir. 2019). But it remains true that
“‘inherency may supply a missing claim limitation in an obviousness
analysis’ where the limitation at issue is ‘the natural result of the
combination of prior art elements’.” Id. (quoting PAR Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014).

Before we can consider the inherency aspect of Appellant’s
arguments, we must first determine whether Appellant has identified a
reversible error in the Examiner’s finding of a suggestion to perform the
method steps of the Kerdiles references together. We determine that
Appellant has not identified such an error.
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Both Kerdiles ’642 and Kerdiles ’072 are, like Appellant, concerned
with bonding two semiconductor wafers together. Kerdiles’642 ¶ 7;
Kerdiles’072 ¶ 39; Spec. ¶ 7. Both Kerdiles ’642 and Kerdiles ’072 describe
their methods as useful in a Smart-Cut process. Kerdiles ’642 ¶ 10, 103;
Kerdiles ’072 ¶ 111. Like Appellant, Kerdiles ’642 seeks to enhance the
bonding of two semiconductor wafers using a temperature as low as
possible. Compare Kerdiles ’642 ¶ 9, with Spec. ¶ 7. Kerdiles ’072 also
describes this as a conventional technique. Kerdiles ’072 ¶ 17. While
Kerdiles ’642 focuses on improvements to the plasma activation step of the
bonding process (Kerdiles ’642 ¶¶ 10, 11), Kerdiles ’072 is concerned with
other surface modification steps such as controlling the quantity of water
absorbed at the surface. Kerdiles ’072 ¶¶ 30, 71.
The Examiner acknowledges that Kerdiles ’642 is silent as to the step
of at least partially filling the first reservoir with a first educt, but relies on
Kerdiles ’072 to support a finding for including such a step. Appellant
couches the arguments in terms of a lack of a suggestion to combine the
teachings of the Kerdiles references (Appeal Br. 13–16), but Appellant fails
to address the specific factual support offered by the Examiner. Specifically,
that each of the Kerdiles references disclose the use of their steps in a Smart-
Cut process. A preponderance of the evidence supports the Examiner’s
finding that the Kerdiles references suggest using the combination of steps
together in a Smart-Cut process.
Given Appellant has not identified a reversible error in the Examiner’s
finding of a reason to use the steps of the Kerdiles references together, the
next question is whether Appellant has identified a reversible error in the
Examiner’s finding that the resulting process is so similar to Appellant’s
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process that it is reasonable to believe it inherently creates the structures and
performs the acts as recited in claim 1.
Appellant has not identified reversible error in the Examiner’s
inherency findings.
Like Appellant, Kerdiles ’642 subjects the surface of at least one of
the wafers to plasma activation. Compare Kerdiles ’642 ¶ 66, with Spec. ¶
23. Kerdiles ’642 performs plasma activation “so as to create a disturbed
region.” Kerdiles ’642. The Examiner finds that this disturbed region “acts
as a reservoir suitable for receiving the gases and other elements on the
surfaces to enhance subsequent bonding.” Non-Final Act. 3–4. Kerdiles ’642
supports this finding. Kerdiles ’642 ¶ 75. Thus, a preponderance of the
evidence supports the Examiner’s finding that Kerdiles ’642 forms the
reservoirs required by claim 1.
As to the step of “at least at least partially filling the first reservoir
with a first educt or a first group of educts,” Appellant’s Specification
indicates that this limitation is met by applying water or exposing the
reservoir to ambient atmosphere or atmospheric humidity. Spec. ¶¶ 43, 59.
As found by the Examiner, Kerdiles ’072 discloses applying water so it is
absorbed at the surface of the wafer to a thickness that is controlled. Kerdiles
’072 ¶ 71. Indeed, we disagree with Appellant that “the monolayers of
Kerdiles ’072 are not filled in reservoirs in the substrate, but are on the
surface of the substrate.” Appeal Br. 14. Kerdiles ’072 specifically uses the
term “absorbed.” Kerdiles ’072 ¶ 71. The water is absorbed at the surface, it
is not on the surface. It is absorbed to a thickness albeit to a thickness less
than that of the earlier prior art. Id. Kerdiles ’072 also provides evidence that
it was known in the art to provide several monolayers of absorbed water.
Kerdiles ’072 ¶ 20 (“As a function of their degree of hydrophily, the
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surfaces of the substrates have, after drying, several monolayers of adsorbed
water, with these monolayers being at the origin of the intermolecular forces
responsible for adhesion during contacting of the surfaces.”); see also ¶ 71.
Nor can we agree with Appellant that the evidence supports a finding
that “a monolayer of educt is not sufficient to induce a reaction that closes
gaps by bulging the second portions of the second contact area of the second
substrate toward the second portions of the first contact area” or that the
disturbed and undisturbed regions of the substrate would react in a different
manner than claimed. Appeal Br. 14–15. As pointed out by the Examiner
(Ans. 8–9), this argument contradicts Appellant’s Specification, which states
that “[t]he reaction is suitable for allowing the growth layer to grow by 0.1
to 0.3 nm for a conventional wafer surface of a circular wafer with a
diameter from 200 to 300 mm with 1 monolayer (ML) of water.” Spec. ¶ 19.
And even if true, Kerdiles ’072 suggests using several monolayers and that
substrates having several monolayers absorbed were conventional. Kerdiles
’072 ¶¶ 20, 71. Native oxide on the Kerdiles’s silicon wafers would be thin
as well and Appellant provides no persuasive evidence or technical
argument indicating that the process parameters of the Kerdiles’s processes
would not result in the transformations recited in claim 1. A preponderance
of the evidence supports the Examiner’s finding of inherency given the
similarities in the materials and processes.
Appellant’s arguments against the Examiner’s interpretation of
paragraphs 88 and 89 of Kerdiles ’642 (Appeal Br. 17–18) are unpersuasive
for the reasons given by the Examiner. Ans. 9–10.
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CONCLUSION
The Examiner’s decision to reject claims 1, 3, 4, 15–17, 23–29, 31–
33, and 35 is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 15–
17, 23–29,
31–33, 35
103(a) Kerdiles ’642,
Kerdiles ’072,
Koshiishi
1, 3, 4, 15–
17, 23–29,
31–33, 35

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED