Ex Parte Fujii et al

Patent Trial and Appeal Board

Sep 27, 2016

12025903 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/025,903 02/05/2008
25191 7590 09/27/2016
BURR & BROWN, PLLC
POBOX7068
SYRACUSE, NY 13261-7068
FIRST NAMED INVENTOR
Tomoyuki FUJII
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
815_098 2110
EXAMINER
STACHEL, KENNETH J
ART UNIT PAPER NUMBER
1787
MAILDATE DELIVERY MODE
09/27/2016 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 TOMOYUKI FUJII and AKIO SUZUKI
Appeal2015-001587
Application 12/025,903
Technology Center 1700
Before PETER F. KRATZ, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 5 and 7-9. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a semiconductor
supporting device comprising a susceptor, a cooling device, and a single
layer of a specified bonding material that joins the susceptor to the board.
The single layer of bonding material comprises a cured sheet and is in direct
contact with silane coupling primer layers, which primer layers include a
primer layer only on bonded interfaces between the bonding material and the
susceptor and between the bonding material and the coo ling board. The
primer layers directly contact the susceptor and the board, respectively.
Appeal2015-001587
Application 12/025,903
Claim 5, the sole independent claim on appeal, is illustrative and
reproduced below:
5. A semiconductor supporting device comprising:
a susceptor for a semiconductor manufacturing device;
a coo ling board;
a single layer of bonding material that joins the susceptor to the
cooling board; and
a silane coupling primer layer only on bonded interfaces between the
bonding material and the susceptor and between the bonding material and
the cooling board;
wherein the single layer of bonding material directly contacts the
silane primer layers, which in tum directly contact the susceptor and the
cooling board, respectively, and
wherein the bonding material is formed of a cured sheet consisting
essentially of an addition curable silicone adhesive agent comprising an
organopolysiloxane containing two or more vinyl groups per molecule, an
organopolysiloxane resin containing a unit (hereinafter, "M") represented by
R3Si0112 (Risa monovalent hydrocarbon group having 1 to 6 carbon atoms
and containing no aliphatic unsaturated bond) and a unit (hereinafter, "Q")
represented by Si0412 in a molar ratio (M/Q ratio) equal to or more than 0.6
to equal to or less than 1.6, an organohydrogenpolysiloxane containing a
silicon atom-bonding hydrogen atom, a platinum catalyst, and a heat
conductive filler whose content falls within a range of 20 vol% or more to
50 vol% or less.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Toya
Matsunaga
Bhagwagar
Fujii
Randa
us 5,021,494
US 6,256, 187 B 1
US 6,433,057B1
JP 2002-231797
US 2006/0120011 Al
Jun.4, 1991
Jul. 3, 2001
Aug. 13, 2002
Aug. 16, 2002
Jun. 8,2006
The Examiner maintains the following grounds of rejection:
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Application 12/025,903
Claims 5 and 7-9 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Claims 5, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujii in view of Matsunaga, Bhagwagar, and Randa.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujii in view of Matsunaga, Bhagwagar, Randa, and
Toya.
We reverse the stated rejections. Our reasons follow.
Written Description Rejection
In rejecting claims for failure to comply with the written description
requirement of§ 112, first paragraph, the Examiner bears the initial burden
of establishing that, prima facie, the disclosure in the Specification, claims,
and drawings as filed as a whole would not have reasonably conveyed to
those skilled in the art that Appellants were in possession of the subject
matter of the appealed claims, including all of the limitations thereof, at the
time the Application was filed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane); In re Alton, 76 F.3d 1168, 1172,
1175-76 (Fed. Cir. 1996) (citing In re Wertheim, 541F.2d257, 262-64
(CCPA 1976)). The written description in the original disclosure as a whole
does not have to describe the invention later claimed in haec verba, but the
original disclosure "must ... convey with reasonable clarity to those skilled
in the art that ... [appellant] was in possession of the invention ... now
claimed." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991); Wertheim, 541 F.2d at 262 ("The function of the description
requirement is to ensure that the inventor had possession, as of the filing
date of the application relied on, of the specific subject matter later claimed
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Application 12/025,903
by him; how the specification accomplishes this is not material.") (citations
omitted).
The Examiner finds that there is no support in the Specification, as
filed, for the "directly contacts the silane primer layers" and "directly
contacts the susceptor and the cooling board" limitations of Appellants'
claim 5 notwithstanding the disclosures at pages 2, 7, 9, 10, and 11, and
drawing Figure 1 that pertain to the application of a layer/sheet of bonding
material between a susceptor coated with a silane primer layer and a cooling
board coated with a silane primer layer so as to join the susceptor to the
cooling board with the bonding material (claim 5; Final Act. 2-3; Ans. 3-7).
The Specification, as filed, discloses that the bonding material is
provided between a susceptor and a cooling board for joining the cooling
board and the susceptor (Spec. 2, 11. 14--24; Spec. 8, 1. 25 -9, 1. 7; Fig. 1).
Example 1 and original claims 1 and 5 provide further original disclosures
specifying how the joining of a susceptor to a cooling board is accomplished
using a sheet of bonding material by insertion of the bonding material sheet
between the susceptor and the cooling board so as to provide for their
joinder (Spec. 9, 1. 11 - 10, 1. 4; Spec. 18, 19).
Also, Appellants disclose that a silane coupling primer can be applied
to the bonding surfaces between the bonding material and the susceptor and
between the bonding material and the cooling board such as by previous
application to the joining surfaces of the components (susceptor and cooling
board) joined together by the bonding material (Spec. 7, 11. 13-18; Spec. 10,
11. 5-9). Furthermore, the application of the silane primer to the joining
surfaces is disclosed in original claims 2 and 6. (Spec. 18, 19).
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Appeal2015-001587
Application 12/025,903
Based on the disclosures in the Application as originally filed, we are
not persuaded that the Examiner has established that the original
Specification lacks written description support for the direct contact
limitations, as recited in claim 5. As made plain by the aforementioned
disclosures, the interposed bonding material sheet joins the susceptor to the
cooling board at surfaces that can include a previous application of silane
coupling primer to the joining surfaces of the susceptor and cooling board.
The Specification does not describe any other layers of material as being
present between the silane coupling agent and the susceptor, the silane
coupling agent and the cooling board, and/or between the bonding material
and the silane coupling agent coated interfaces with the susceptor and/or the
cooling board.
Consequently, we concur with Appellants that the Examiner has not
carried the burden of supplying a sufficient factual basis to support a
conclusion that the limitations in question introduce new concepts into the
present Application disclosure (App. Br. 5---6). See In re Alton, 76 F.3d at
1175; see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("the
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability").
Accordingly, the Examiner has not established that the original
Specification would have failed to reasonably convey to those skilled in the
art that Appellants were in possession of the subject matter recited in claim
5. We therefore do not sustain the written description rejection.
Obviousness Rejections
Concerning the Examiner's first stated obviousness rejection, we
concur with Appellants' argument that the Examiner has not furnished a
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Application 12/025,903
sufficient factual basis for the proposed modifications of Fujii (App. Br. 7-
20).
Fujii teaches or suggests a bonding structure Uoining layer) for an
electrostatic chuck that includes three layers including a polyimide middle
layer located between two outermost layer, each of which outermost layers
is constituted of a silicone layer or an acrylic layer (abstract, Fig. 1 ).
Matsunaga, teaches an electrostatic chuck device that includes, inter
alia, an electricity insulating elastic layer 14 located between a metal
substrate 12 and an insulating layer 16, wherein an insulating adhesive layer
42 can be provided adjacent the elastic layer 14 on the metal side (between
elastic layer 14 and metal substrate 12, and preferably adhesive layers 42 are
provided adjacent both surfaces of elastic layer 14 (col. 4, 11. 1---6, col. 8, 1.
48 - col. 9, 1. 25; Figs. 1, 6, 7). Additionally, Matsunaga discloses that
"[r]ubber, silicone resin, or polyimide may be added to insulating adhesive
layer 42" (col. 9, 26-28).
We concur with Appellants that the Examiner has not furnished a
credible explanation as to why one of ordinary skill in the art would have
been led to replace the polyimide inner layer of the three-layer bonding
structure of Fujii with a silicone resin layer based on the teaching of
Matsunaga with respect to the addition of silicone resin, rubber, or
polyimide to the insulating adhesive layer 42 of Matsunaga (App. Br. 7-12,
20). In this regard, the Matsunaga's disclosure of silicone resin, rubber, or
polyimide as optional, alternative additives for the insulating adhesive layer
42 of Matsunaga for the purposes pertaining to Matsunaga's insulating
adhesive layer 42 has not been established by the Examiner as a teaching
that would have directed one of ordinary skill in the art to replace the inner
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Application 12/025,903
polyimide layer of Fujii' s three layer bonding structure with a silicone resin
layer as proposed by the Examiner (Final Act. 5---6; Ans. 8-9; col. 8, 1. 48 -
col. 9, 1. 25; Fujii, abstract, i-fi-19-11; Fig. 1 ). 1
The additional references applied by the Examiner in rejecting claim 5
do not cure the aforementioned defect in the Examiner's obvious rejection;
rather, the Examiner proposes additional modifications based on these
additional references' teachings, which proposals further attenuate the
Examiner's obviousness position substantially for reasons argued by
Appellants (App. Br. 13-20).2 In this regard, "rejections 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" being asserted. In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006) (quoted with approval in KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)). After all, rejections based on 35
U.S.C. § 103(a) must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention from the prior
art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
1 Because we determine that the Examiner has not furnished a prima facie
case of obviousness, we need not address Appellants' Declaration evidence.
2 Hockaday (U.S. Patent Publication No. 2009/0014056) and Birger (U.S.
Patent No. 6,519,152), as referred to by the Examiner in responding to
Appellants' arguments, are not identified in the statement of rejection as
references being relied upon by the Examiner (Final Act. 3; Ans. 9).
Therefore, we do not consider the latter references to be part of the evidence
in support of the Examiner's rejection. Cf In re Hoch, 428 F.2d 1341, 1342
n.3 (CCPA 1970) ("Where a reference is relied on to support a rejection,
whether or not in a 'minor capacity,' there would appear to be no excuse for
not positively including the reference in the statement of rejection.").
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Application 12/025,903
Accordingly, we reverse the Examiner's first stated obviousness
rejection.
As for the Examiner's separate obviousness rejection of dependent
claim 8, the Examiner relies on the additionally cited prior art for teaching
or suggesting the features of independent claim 5, from which claim 8
depends. In other words, the defects in the base rejection of claim 5, are
ameliorated by the additional prior art applied against claim 8.
It follows that we shall reverse the Examiner's obviousness rejection
of claim 8.
CONCLUSION
The Examiner's decision to reject the appealed claims is reversed.
REVERSED
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