Ex Parte Aderhold et al

Board of Patent Appeals and Interferences

Jun 28, 2010

10788979 (B.P.A.I. Jun. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WOLFGANG ADERHOLD, SUNDAR RAMAMURTHY, and
AARON HUNTER
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Appeal 2009-003417
Application 10/788,979
Technology Center 3700
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Decided: June 28, 2010
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Wolfgang Aderhold et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-5, 7-9, 12-15, 19, and 30-32.
Appeal 2009-003417
Application 10/788,979

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Appellants have canceled claims 6, 10, 11, 16, 17, 18, and 20-29. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
Appellants’ inventions are to methods and an apparatus for the heat
treatment of semiconductor wafers. Spec. 1:2-3.
Claims 1 and 12, reproduced below, are illustrative of the subject
matter on appeal.
1. A method of thermally processing a substrate in a
reactor comprising a radiant heat source, comprising the steps
of:
disposing a substrate to be thermally processed on a front
side thereof facing downwardly to form features therein with a
back side opposite said front side facing said radiant heat
source; and
pyrometrically monitoring said front side of said
substrate.

12. A thermal processing apparatus, comprising:
a radiant heat source for directing radiant energy
downwardly;
means including an annular ring for holding a wafer with
a back side thereof facing said radiant heat source, a front side
of said wafer opposite said back side being processible in said
thermal processing apparatus to form features on said front
side; and
a reflector disposed on a downward side of said wafer to
reflect back to said front side radiation produced by said radiant
heat source and emitted from said front side, wherein said
radiant heat source is disposed above said reflector.

Appeal 2009-003417
Application 10/788,979

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The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Moslehi (hereinafter “Moslehi ’499”) US 4,891,499 Jan. 2, 1990
Moslehi (hereinafter “Moslehi ’538”) US 4,956,538 Sep. 11, 1990
Ballance US 6,090,210 Jul. 18, 2000
Anderson US 6,113,703 Sep. 5, 2000

The Rejection
The following Examiner’s rejection is before us for review:
Claims 1-5, 7-9, 12-15, 19, and 30-32 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ballance or Anderson in view of
Moslehi ’499 or Moslehi ’538.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Issue
In light of the Appellants’ contentions and the Examiner’s positions,
the issues joined in this appeal are as follows:
Whether the Examiner has met the burden of setting forth a basis for
rejecting the claims as obvious so as to put Appellants on notice of the
reasons why Appellants are not entitled to patented claims with the claim
scope sought.

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Application 10/788,979

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Analysis
Method Claims
The Examiner has failed to meet the initial burden of setting forth a
basis for the obviousness rejection of claims 1-5, 7, 9, 30, and 31. These
claims are directed to methods of thermally processing a substrate in a
reactor. The Examiner’s obviousness rejection fails to point out where
Ballance, Anderson, Moslehi ’499, and Moslehi ’538 describe each
limitation of claims 1-5, 7, 9, 30, and 31. Ans., passim. Moreover, the
Examiner’s rejection fails to cogently explain how the disclosed structure
within the combined teachings of Ballance, Anderson, Moslehi ’499, and
Moslehi ’538 would perform the claimed steps within claims 1-5, 7, 9, 30,
and 31. Thus, the Examiner has failed to meet the initial burden requisite for
a conclusion of obviousness for the claimed subject matter within claims 1-
5, 7, 9, 30, and 31.
Apparatus Claims
Claims 12 and 19
The Examiner has set forth findings and analysis sufficient to
establish a prima facie case of obviousness for the subject matter called for
in claim 12. Ans. 4.
Claim 12, properly construed, requires a thermal processing apparatus
having a radiant heat source, means for holding the wafer with the back side
of the wafer facing the heat source, and a reflector disposed below the heat
source such that the front side of the wafer receives reflected radiation from
the heat source by the reflector.
Ballance satisfies the structural features of claim 12, viz., a radiant
heat source, an annular ring wafer holder, and a reflector, wherein the
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Application 10/788,979

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radiant heat source is disposed above the reflector and the wafer is disposed
between the heat source and reflector. The RTP chamber 10 schematically
shown in Figure 1 and described therein, in particular the support ring 18, is
readily capable of holding a wafer 16 with its back side facing the radiant
heat source 40. The only difference is essentially the orientation of the
wafer relative to the heat source and reflector. In other words, the difference
is the process of use, i.e., positioning the wafer in the RTP chamber. Claim
12 positions the back side of the wafer to face the heat source. Ballance
positions the back side of the wafer facing the reflector. As such, the
question becomes whether Ballance’s RTP chamber can be used by having
the wafer positioned with the back side of the wafer facing the heat source.
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Although “[a] patent applicant is free to recite features of an apparatus either
structurally or functionally … choosing to define an element functionally,
i.e., by what it does, carries with it a risk.” Id. at 1478. As the court stated
in In re Swinehart, 439 F.2d 210, 213 (CCPA 1971):
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may,
in fact, be an inherent characteristic of the prior art, it
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 relied on.
Where, however, the functional limitation in a claim expressly or impliedly
requires a particular structure different from that in the prior art, the claimed
subject matter is distinguishable from the prior art. Cf. In re Casey, 370
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F.2d 576, 579-581 (CCPA 1967) (holding that a claim to “[a] taping
machine comprising … a brush … being formed with projecting bristles
which terminate in free ends to collectively define a surface to which
adhesive tape will detachably adhere” is obvious over a prior art reference
which taught a machine for perforating sheets, because “the references in
[the claim] to adhesive tape handling do not expressly or impliedly require
any particular structure in addition to that of [the prior art].”)
Here, nothing in Ballance precludes, in essence, flipping the wafer
upside down such that its back side faces the radiant heat source 40 while
the front side faces the reflector 28. Moreover, both Moslehi ’499 and
Moslehi ’538 teach that it is known in the art to have the back side of wafers
face radiant heat sources. See Moslehi ’499, col. 5, ll. 54-64 and Moslehi
’538, col. 6, ll. 33-36, fig. 2. Accordingly, the Examiner has provided ample
reasoning to find that Ballance can be used with the back side of the wafer
facing the radiant heat source
Appellants’ arguments fail to provide any reasoning to show that
Ballance’s support ring is incapable of holding the wafer oriented with its
back side toward the radiant heat source and the front side facing the
reflector or that the Examiner’s reasoning to reach the legal conclusion of
obviousness is flawed. While Appellants contend that the details of the
support ring useful for the inverted wafer are missing (see App. Br. 5), for
claim 12, the details of the support ring are not claimed. As such,
Appellants’ arguments fail to persuade us that the Examiner made an error in
either an underlying finding of fact upon which the conclusion of
obviousness was based or the reasoning used to reach the legal conclusion of
obviousness when rejecting claim 12.
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Claim 19 falls with claim 12 because the argument is just a statement
of what the claim recites. See App. Br. 9. Statements that merely point out
what a claim recites are not considered an argument for separate
patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Claims 13, 14, 15, and 32
Based on the Examiner’s analysis within the Answer, the findings are
too sparse and conclusory to permit a conclusion that the claimed invention
within these claims is rendered obvious by the combined teachings of
Ballance, Anderson, Moslehi ’499, and Moslehi ’538. Claim 13 requires
that the holding means overlaps the front side of the wafer only within the
edge exclusion zone of the wafer. The combined teachings of Ballance,
Anderson, Moslehi ’499, and Moslehi ’538 fail to expressly describe an
annular ring, the holding means, only holding the wafer within the edge
exclusion zone of the wafer.

CONCLUSIONS
The Examiner has failed to meet the burden requisite for a conclusion
of obviousness for the claimed subject matter within claims 1-5, 7, 9, 13-15,
and 30-32.
The Examiner met the burden requisite for a conclusion of
obviousness for the claimed subject matter within claims 12 and 19 and the
Appellants have failed to provide convincing reasoning that Ballance’s
support ring is incapable of holding the wafer oriented with its back side
toward the radiant heat source and the front side facing the reflector.

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Application 10/788,979

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DECISION
The Examiner’s decision to reject claims 1-5, 7, 9, 13-15, and 30-32 is
reversed.
The Examiner’s decision to reject claims 12 and 19 is affirmed.
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) (2007).

AFFIRMED-IN-PART

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