Ex Parte Ellul et al

Patent Trial and Appeal Board

Sep 20, 2012

12191505 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/191,505 08/14/2008 Joseph Paul Ellul 55123P333C 1982
79124 7590 09/21/2012
MAXIM/BSTZ
Blakely Sokoloff Taylor & Zafman LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
BALL, JOHN C
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
09/21/2012 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 PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte JOSEPH PAUL ELLUL,
MELVIN C. SCHMIDT,
VIKTOR ZEKERIYA,
RAJIV L. PATEL, and JACK KELLY
____________

Appeal 2011-003893
Application 12/191,505
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 17-22 and 24. We have jurisdiction under 35 U.S.C. § 6.

STATEMENT OF THE CASE
Claim 17 is representative of the subject matter on appeal and is set
forth below:
Appeal 2011-003893
Application 12/191,505

2
17. A method of improving the uniformity of work piece processing
in a plasma system having a vacuum chamber, a work piece holder within
the chamber for holding a work piece to be processed, an electrode adjacent
a face of the work piece holder, and one or more magnets disposed adjacent
a face of the electrode so that the electrode is between the magnets and the
work piece holder to provide a magnetic field between the magnets and the
work piece holder, comprising:

for each process to be performed by the plasma system, defining a
magnetic filter for disposing between the magnets and the electrode;

the thickness of the magnetic filter versus position being determined
empirically for the plasma system conditions to alter the magnetic field
between the electrode and a work piece on the work piece holder to alter
work piece processing for achieving predetermined work piece processing
results for each process.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Moslehi et al. (Moslehi) 5,082,542 Jan. 21, 1992
Rosenstein et al. (Rosenstein) 6,228,236 B1 May 8, 2001
De Bosscher et al. (De Bosscher) 6,416,639 B1 Jun. 9, 2002

THE REJECTIONS
1. Claims 17, 21, 22, and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rosenstein in view of De Bosscher.
2. Claims 18-20 are also rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenstein in view of De Bosscher as applied to claims
17, 21, 22, and 24 above, and further in view of Moslehi.

Appeal 2011-003893
Application 12/191,505

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ANALYSIS

As an initial matter, Appellants have not presented separate arguments
for all of the rejected claims. Rather, Appellants’ arguments are principally
directed to independent claim 1. Any claim not separately argued will stand
or fall with its respective independent claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).
With regard to the prior art rejections, we essentially adopt the
Examiner’s findings pertinent to the issues raised by Appellants for these
rejections. We therefore incorporate the Examiner’s position as set forth in
the Answer as our own in this decision. We add the following for emphasis
only.
Appellants argue the pole pieces used in De Bosscher are “for an
entirely different purpose.” Br. 5. However, we note that even if the reason
for combining the teachings of Rosenstein in view of De Bosscher is not
identical to that relied upon by Appellants, it is well settled that such reason
for combination need not be identical to that contemplated by Appellants to
establish a prima facie case of obviousness so long as there is a reason to
incorporate the pole pieces of De Bosscher in the system of Rosenstein as
taught by De Bosscher. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992)
("As long as some [reason,] motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor."). See also In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). In
the instant case, the collective teachings of Rosenstein and De Bosscher
support the Examiner’s determination that it would have been obvious to
incorporate the pole pieces of De Bosscher in the plasma system of
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Application 12/191,505

4
Rosenstein, with a reasonable expectation of successfully obtaining the
advantages achieved by De Bosscher (obtaining the desired erosion rate of
the target for deposition). It is noted that Appellants do not dispute the pole
pieces of De Bosscher are magnetic filters as claimed.
Appellants then argue they claim that the thickness of the magnetic
filter versus position is determined empirically rather than by simulation as
in De Bosscher. Br. 5. However, Appellants do not show that the so
claimed thickness of the magnetic filter versus position is excluded by the
thickness and location of the pole pieces taught by De Bosscher. In other
words, defining the thickness and location of the magnetic filter via the so-
called “empirical process” in the claimed method is not shown to be, much
less argued to be, ,distinguishable over r the thickness and location of the
magnetic filter suggested by De Bosscher. In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985)( “[E]ven though product-by-process claims are limited by
and defined by the process, determination of patentability is based on the
product itself.” ); In re Hirao, 535 F.2d 67, 69 (CCPA 1976) (A product-by-
process principle applies even in the context of a process claim that recites a
step of using a product that is defined by the method by which it is
produced.) In any event, the phrase “determined empirically” is broad
enough to encompass the determination by simulation. Appellants have not
shown to the contrary. We therefore are not convinced by this argument.
It follows that we concur with the Examiner that the advantage
(desired target erosion during deposition of a substrate with the target
material) of using the pole pieces having the thickness and location recited
in the claims on appeal, as taught by De Bosscher, would have led one of
ordinary skill in the art to employ such pole pieces in the manner taught by
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Application 12/191,505

5
De Bosscher in the plasma system of Rosenstein, with a reasonable
expectation of successfully depositing a target material on a substrate in the
plasma system of Rosenstein.
In view of the above, we affirm Rejection 1.
With regard to Rejection 2, Appellants argue claim 20 (Br. 7), but do
not convince us of error because they do not specifically address the
Examiner’s rejection (i.e., the combination of references as applied by the
Examiner) as set forth on pages 8-10 of the Answer. See In re Keller, 642
F.2d 413, 426 (CCPA 1981) (the test for obviousness is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art). The Appellants do not explain, in any detail, why the Examiner's
conclusion of obviousness, which is based on the combined teachings of the
applied art, is erroneous. We therefore affirm Rejection 2 also. 
In view of the above, we affirm the Examiner’s decision rejecting the
claims on appeal.

CONCLUSIONS OF LAW AND DECISION
Each rejection 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)(1).

AFFIRMED

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