Ex Parte Kaeppeler

Board of Patent Appeals and Interferences

Jun 30, 2009

10751390 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JOHANNES KAEPPELER
______________

Appeal 2009-002355
Application 10/751.390
Technology Center 1700
_______________

Decided: 1 June 30, 2009
_______________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1 and 3 through 19 in the Office Action

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the Decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002355
Application 10/751.390
2
mailed October 1, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. §
41.31(a) (2007).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellant’s invention of a device for depositing
crystalline layers on a crystalline substrate, and is representative of the
claims on appeal:
1. A device for depositing in particular crystalline layers on an in
particular crystalline substrate, having:
a high-frequency-heated substrate holder heated by electrical
conduction and made from conductive material holding a substrate with
surface-to-surface contact,
said substrate holder having a first zone and a second zone, said first
zone formed of a material having a higher electrical conductivity than the
second zone, the first zone having a surface temperature (t1) and the second
zone having a surface temperature (t2) when the substrate holder is heated by
electrical conduction, where t1 is greater than t2,
characterized in that the first zone of higher electrical conductivity
substantially corresponds to an area of the supported surface of the substrate.
The Examiner relies upon the evidence in these references (Ans.2 3):3
Burk US 5,788,777 Aug. 4, 1998
Rupp (Rupp ‘324) US 2001/0052324 A1 Dec. 20, 2001
Rupp (Rupp ‘167) US 6,740,167 B1 May 25, 2004
Appellant requests review of the following grounds of rejection
advanced on appeal by the Examiner (App. Br. 5-6):

2 We consider these documents: Appeal Brief filed October 31, 2007;
Examiner’s Answer mailed January 22, 2008; and Reply Brief filed
February 22, 2008.
3 The Examiner also relies on the “Electrical Conductivity of the Elements
Table” (www.standnes.no/chemix/periodictable/electrical-conductivity-
elements.htm) to show fact (Ans. 3 and 4). We do not find a discussion of
this reference necessary to our decision.
Appeal 2009-002355
Application 10/751.390
3
claims 1, 3, 8, 10, 11, 14, and 17 through 19 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
obvious over Rupp ‘324 (Ans. 3);
claims 9 and 12 under 35 U.S.C. § 103(a) as unpatentable over Rupp ‘324
(Ans. 6);
claims 1, 3, 8, 10, 11, and 14 through 19 under 35 U.S.C. § 103(a) as
unpatentable over Rupp ‘167 in view of Burk (Ans. 74); and
claims 4 through 7 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Burk in view of Rupp ‘167 or Rupp ‘324 (Ans. 9).
Appellant argues the ground of rejection under § 102(b) based on
independent claims 1, 14, 18, and 19 as a group, relying on essentially same
arguments for these claims. App. Br. 7 and 9. Appellant argues the grounds
of rejection under § 103(a) generally based on claim 1. App. Br. 8-11.
Thus, we decide this appeal based on claims 1, 4, 9, and 18 as representative
of the grounds of rejection. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Issues
The issues in this appeal are whether Appellant has shown that the
evidence in Rupp ‘324 does not support the Examiner’s finding of prima
facie anticipation with respect to the device encompassed by claims 1 and
18, and conclusion of prima facie obviousness with respect to the device
encompassed by claims 1, 9, and 18; 5 whether Appellant has shown that that
the evidence in the combined teachings of Rupp ‘167 and Burk does not
support the Examiner’s conclusion of prima facie obviousness with respect

4 The Examiner restated the claims subject to this ground of rejection in the
Communication mailed July 28, 2008, pursuant to the Order returning
Undocketed Appeal To Examiner entered by the Board on July 16, 2008.
5 Alternative grounds of rejection under §§ 102 and 103(a) require separate
consideration under each statutory provision. See, e.g., In re Spada,
Appeal 2009-002355
Application 10/751.390
4
to the device encompassed by claim 1; and whether Appellant has shown
that that the evidence in the combined teachings of Burk, Rupp ‘167 and
Rupp ‘324 does not support the Examiner’s conclusion of prima facie
obviousness with respect to the device encompassed by claim 4.
Claim Interpretation
The issue entails the interpretation of claims 1, 4, 9, and 18 by giving
the terms thereof the broadest reasonable interpretation in their ordinary
usage in context as they would be understood by one of ordinary skill in the
art in light of the written description in the Specification unless another
meaning is intended by Appellant as established therein, and without reading
into the claims any disclosed limitation or particular embodiment. See, e.g.,
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007);
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and
cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We determine claim 1 specifies, as illustrated by the embodiments
depicted in Specification Figures 2-4 pointed out by Appellant (App. Br. 3),
a device, capable of depositing at least any crystalline layers on any
crystalline substrate, having at least a substrate holder capable of being
heated by electrical conduction by high-frequency coil 5. The substrate
holder has first zone 3 of any material having a higher electrical conductivity
than the material of second zone 2 such that the surface temperature t1 of
first zone 3 is greater to any extent than the the surface temperature t2 of
second zone 2, and the area of first zone 3 substantially, that is, largely but
not wholly, corresponds to any area of any supported substrate. Spec. ¶¶

911 F.2d 705, 707 n.3 (Fed. Cir. 1990).
Appeal 2009-002355
Application 10/751.390
5
00015-00019. See, e.g., York Prods., Inc. v. Central Tractor Farm & Family
Ctr., 99 F.3d 1568, 1572-73, (Fed. Cir. 1996) (“In this case, the patent
discloses no novel uses of claim words. Ordinarily, therefore, ‘substantially’
means ‘considerable in . . . extent,’ American Heritage Dictionary Second
College Edition 1213 (2d ed. 1982), or ‘largely but not wholly that which is
specified,’ Webster’s Ninth New Collegiate Dictionary 1176 (9th ed.
1983).”). While the substrate holder must be capable of being heated by
electrical conduction by high-frequency coil, there is no requirement that the
material of second zone 2 must be heated in this manner Thus, second zone
2 can be heated by radiation from the material of first zone 3 which heated
by electrical conduction.
Claim 4, dependent on claim 1, specifies the substrate holder has one
or more substrate-bearing disks 4, which disks can consist, in whole or in
part, of first zone 3 material. Spec. ¶¶ 00017-00019 and Figs. 2-4. Claim 9,
dependent on claim 1, specifies “the substrate holder is surrounded by an HF
coil,” which does not specify the manner in which the substrate holder is
“surrounded” by the HF coil. Spec. ¶¶ 00020-00021 and Figs. 5-6.
Independent claim 18, in pertinent part, as illustrated by the
embodiments depicted in Specification Figure 3, specifies a similar device to
that encompassed by claim 1 as comprising at least a substrate holder having
similar first and second zones, wherein t1 is greater to any extent than t2, and
further requires that first zone 3 directly contacts substrate 1 and transfers to
substrate 1 an increased amount of energy compared to second zone 2. See
Spec. ¶¶ 00018 and 00015-00016.
Appeal 2009-002355
Application 10/751.390
6
The transitional term “comprising” opens claim 18 to encompass a
device which contains any manner of additional structural components. See,
e.g., KCJ Corp. v. Kinetic Concepts Inc., 223 F.3d 1351, 1356 (Fed. Cir.
2000); Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377,
1383 (Fed. Cir. 2000); In re Baxter, 656 F.2d 679, 686 (CCPA 1981). With
respect to claims 1, 4, and 9, we interpret the transitional term “having” to
have its ordinary meaning of opening the claims to include device which
contains any manner of additional structural components because we find no
basis in the claim language or in the written description in the Specification
to interpret the term “having” in a limiting manner. Compare University of
California v. Eli Lilly and Co., 119 F.3d 1559, 1573, 43 USPQ2d 1398,
1409-10 (Fed. Cir. 1997)(in a claim encompassing a “cDNA having” an
unspecified sequence, “[t]he word ‘having’ still permitted inclusion of other
moieties.”) with In re Deuel, 51 F.3d 1552,1555,1558, 34 USPQ2d 1210,
1212, 1215 (claims 5 and 7 to a “cDNA . . . having the “ recited sequence
defined “the precise cDNA molecules”).
Findings of Fact
We find Rupp ‘324 would have evinced it was known in the art that in
silicon carbide (SiC) epitaxy processes conducted on SiC substrates at high
temperatures, it was known to use in the hot areas of the reactor such
materials as graphite, molybdenum, tungsten, tantalum, and niobium. Rupp
‘324 ¶¶ 0003-0005.
We find Rupp ‘324 would have disclosed to one of ordinary skill in
this art, as illustrated by embodiments depicted in Figures 1 and 2, a device
for producing and processing SiC substrates at high temperatures,
Appeal 2009-002355
Application 10/751.390
7
comprising susceptor 1 that is covered by cover plate 5 having cutout area 6
such that semiconductor substrate 2 can rest on susceptor 1. Rupp ‘324, e.g.,
¶¶ 0030-0040; see also ¶¶ 0010-0022 and 0045-0046. The material of the
susceptor can be graphite, molybdenum, tungsten, tantalum, and niobium,
and the material of cover plate 5 can be SiC, molybdenum carbide, tungsten
carbide, tantalum carbide, and niobium carbide. Rupp ‘324, e.g., ¶¶ 0019,
0034, and 0036.
Rupp ‘324 discloses that in Figure 1, “susceptor 1 is preferably
arranged in a non-illustrated tube” and “inductively heated . . . [by] a coil 4 .
. . which surrounds the tube and is supplied with a HF voltage.” Rupp ‘324
¶ 0033. In Rupp ‘324 Figure 2, in a vertical reactor, “susceptor 1 is
inductively heated by a flat coil 4.” Rupp ‘324 ¶ 0039-0040.
Rupp ‘324 discloses the embodiments provide “good thermal contact
between the semiconductor substrate and the susceptor” such that the
substrate “is not simply heated indirectly via an SiC covering or an
intermediate layer.” Rupp ‘324 ¶¶ 0018 and 0022. “[T]he heat is transferred
from . . . the susceptor[] to the SiC covering and the SiC substrate by
radiation with substantially the same thermal coupling. This makes the
temperature distribution on the substrate and its immediate vicinity more
homogeneous.” Rupp ‘324 ¶ 0022.
Rupp ‘324 discloses:
To make the distribution of heat on the substrate as
homogeneous and uniform as possible, it is necessary for the
temperature to be as identical as possible throughout, even in
the area surrounding the substrate. In other words, the
temperature on the freely accessible surface of the substrate
must be the same as on the surface of the covering 5.
Appeal 2009-002355
Application 10/751.390
8
Therefore, the covering 5 is preferably arranged directly on the
susceptor 1, so that there is good conductance of heat between
susceptor 1 and covering 5. . . . The thermal coupling between
the susceptor 1 and the covering 5 means that the covering 5
reaches substantially the same temperature as the substrate 2.
. . . .
Rupp ‘324 ¶ 0044.
We find Rupp ‘167 would have evinced it was known in the art that in
SiC epitaxy processes conducted on SiC substrates at high temperatures, it
was known to use transition materials such as molybdenum and tantalum as
susceptors. Rupp ‘167 col. 1, l. 16 to col. 2, l. 10.
We find Rupp ‘167 would have disclosed to one of ordinary skill in
this art, as illustrated by embodiments depicted in Figure 1, a device for
mounting a substrate for production of an epitaxial layer wherein susceptor 1
is separated from substrate 3 by insert 2. Rupp ‘167 col. 4, l. 43 to col. 5, l.
16; see also, e.g., col. 2, l. 33 to col. 4, l. 18. Rupp ‘167 discloses susceptor
1 can be graphite or transition metals such as tantalum,
molybdenum, and tungsten. Rupp ‘167, e.g., col. 4, ll. 46-49, and col. 6,
ll. 16-19. Rupp ‘167 discloses insert 2 is a temperature stable carbide such
as tantalum carbide, molybdenum carbide, niobium carbide, and tungsten
carbide. Rupp ‘167 col. 5, ll. 3-16; see also, e.g., col. 2, l. 49 to col. 3, l. 20.
We notice one of ordinary skill in this art would recognize that the
susceptor metals and the metal carbides of Rupp ‘324 and of Rupp ‘167
would have different electrical conductivities.
We find Burk would have disclosed to one of ordinary skill in this art,
as illustrated by embodiments depicted in Figure 1, epitaxial growth reactor
10 having susceptor assembly 20, wherein susceptor assembly 20 has a
Appeal 2009-002355
Application 10/751.390
9
plurality of cavities 21 each of which accommodate a wafer holder 22, and
an RF heating coil arrangement 28 is deposed below susceptor assembly 20.
Burk, abstract and col. 2, ll. 30-42. Burk discloses a source gas is supplied
“to gas passageways within the susceptor assembly 20 to cause rotation of
the individual wafer holders 22.” Burk col. 2, ll. 59-64; see also, e.g.,
abstract, col. 3, l. 66 to col. 4, l. 25, col. 4, l. 65 to col. 5, l. 3, and Figs. 4, 5,
and 7.
Discussion
We considered the totality of the record in light of Appellant’s
arguments with respect to claims 1, 4, 9, and 18 and the grounds of rejection
advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is
submitted by the applicant in response, patentability is determined on the
totality of the record, by a preponderance of evidence with due consideration
to persuasiveness of argument.”) (citing, inter alia, Spada, 911 F.2d at 707
n.3).
Claims 1 and 18: Rupp ‘324 - §§ 102(b) and 103(a)
We are of the opinion Appellant has not established that the evidence
in Rupp ‘324 does not support the Examiner’s finding of prima facie
anticipation and conclusion of prima facie obviousness with respect to the
claimed device encompassed by claims 1 and 18. We find no language in
Appeal 2009-002355
Application 10/751.390
10
claims 1 and 18 which supports Appellant’s argument that both zones of a
substrate holder must underlie a substrate in order to hold the substrate.
Reply Br. 2-3. Indeed, second zone 2 of the illustrative substrate holder
embodiment depicted in Specification Figure 3, which falls within both
claims, does not hold substrate 1. See Spec. ¶ 00016 ; see also above
pp. 4-6. To the extent that the language of claims 1 and 18 requires that the
substrate must be held, the substrate holder of Rupp ‘324 holds the substrate
with the surfaces of susceptor 1 and cover plate 5, wherein susceptor 1
directly contacts substrate 2 as claim 18 requires and claim 1 encompasses.
See above pp. 5-6 and 7.
We further disagree with Appellant’s position that the substrate holder
of Rupp ‘324 does not exhibit two different temperature zones as required
by claims 1 and 18. App. Br. 7-9; Reply Br. 2-4. We find one of ordinary
skill in this art would recognize that the HF coil in the device of Rupp ‘324
conductively heats susceptor 1 which radiates heat to cover plate 5. See
above pp. 7-8. Thus, Rupp ‘324 discloses that the difference in heat
between the surfaces of susceptor 1 and cover plate 5 is not quite
homogenous which is all that is required by the language “t1 is greater than
t2” of claims 1 and 18 and the further requirement of claim 18 that first zone
3 directly contacts substrate 1 and transfers to substrate 1 an increased
amount of energy compared to second zone 2. See above pp. 4-6 and 7-8.
Thus, on this record, the Examiner has established, as a matter of fact,
that Rupp ‘324 describes to one skilled in this art each and every limitation
of the claimed invention encompassed by claims 1 and 18, arranged as
required therein, either explicitly or inherently, within the meaning of
Appeal 2009-002355
Application 10/751.390
11
35 U.S.C. § 102(b). See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997), and cases cited therein; In re Bond, 910 F.2d 831, 832-33 (Fed.
Cir. 1990), and cases cited therein. With respect to the ground of rejection
of these claims under § 103(a), it is well settled that “anticipation is the
ultimate of obviousness.” See In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed Cir. 1991), citing In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of anticipation and of obviousness
found in Rupp ‘324 with Appellant’s countervailing evidence of and
argument for non-anticipation and nonobviousness, and based thereon we
conclude, by a preponderance of the evidence and weight of argument, that
the claimed invention encompassed by appealed claims 1, 3, 8, 10, 11, 14,
and 17 through 19 would have been anticipated as a matter of fact under
35 U.S.C. § 102(b), and would have been obvious as a matter of law under
35 U.S.C. § 103(a).
Claim 9: Rupp ‘324
We are of the opinion Appellant has not established that the evidence
in Rupp ‘324 does not support the Examiner’s conclusion of prima facie
obviousness with respect to the claimed device encompassed by claim 9.
Rupp ‘324 describes an embodiment of a tube reactor partially depicted in
Figure 1 wherein a substrate holder as claimed in claim 1 is surrounded by
an HF coil. See above p. 7. We are not convinced Appellant’s arguments
patentably distinguish claim 9 over Rupp ‘324 for the reasons we discussed
above with respect to claim 1. App. Br. 8-9; Reply Br. 3-4. Indeed,
Appeal 2009-002355
Application 10/751.390
12
“anticipation is the ultimate of obviousness.” See Baxter Travenol Labs.,
952 F.2d at 391, citing Fracalossi, 681 F.2d at 794.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Rupp ‘324
with Appellant’s countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 9 and 12 would have been obvious as a matter of law under 35 U.S.C.
§ 103(a).
Claim 1: Rupp ‘167 and Burk
We are of the opinion Appellant has not established that the evidence
in the combined teachings of Rupp ‘167 and Burk does not support the
Examiner’s conclusion of prima facie obviousness with respect to the
claimed device encompassed by claim 1. We disagree with Appellant’s
arguments that there is language in claim 1 which requires that first zone 3
must contact a substrate. App. Br. 10. We find no such language, and
indeed, in illustrative embodiments depicted in Specification Figs. 2 and 4
there is no contact between first zone 3 and the substrate. See above
pp. 4-5; see Spec. ¶¶ 00017 and 00019. We also determined that the
language of claim 1 specifies that the area of first zone 3 substantially, that
is, largely but not wholly, corresponds to any area of any supported
substrate, which does not limit the area of the substrate to that of first zone 3
or vice versa. See above pp. 4-5. In this respect, we find no language in
claim 1 or in the Specification which permits a device to be encompassed by
claim 1 based solely on the size of the substrate on which it performs work
Appeal 2009-002355
Application 10/751.390
13
at any one time. Thus, to the extent Appellant’s position intends a method
or intended use concept, it is unpersuasive. App. Br. 9-10; Reply Br. 4-5.
See, e.g., In re Yanish, 477 F.2d 958, 959 (CCPA 1973); In re Casey, 370
F.2d 576, 579-80 (CCPA 1967); In re Otto, 312 F.2d 937, 939-40 (CCPA
1963).
In any event, Rupp ‘167 does not disclose a numerical or spatial
limitation on the relative size of susceptor 1, insert 2, or substrate 3. We
determine one of ordinary skill in this art would have reasonably selected an
appropriate size for susceptor 1 and insert 2 of the device of Rupp ‘167
based on the size of substrate 3.
Furthermore, in the device of Rupp ‘167, the metal of susceptor 1 and
the metal carbide of insert 2 would provide two different temperature zones
and thus, two different heated surfaces, when used in a reactor, such as
disclosed by Burk, that contains an RF heating coil, even if susceptor 1 heats
insert 2 by radiation. See above p. 8. Contrary to Appellant’s arguments,
one of ordinary skill in this art would recognize from the teachings of Rupp
‘167 that the device for mounting a substrate is used for the production of
epitaxial layers on a substrate, and thus can be used in an epitaxial growth
reactor such as that disclosed by Burk. App. Br. 10-11; see above pp. 8.
Accordingly, we determine one of ordinary skill in this art routinely
following the combined teachings of Rupp ‘167 and Burk would have
reasonably arrived at the claimed device encompassed by claim 1, including
all of the limitations thereof arranged as required therein, without recourse to
Appellant’s Specification. See, e.g., KSR Int'l Co. v. Teleflex Inc.,
Appeal 2009-002355
Application 10/751.390
14
550 U.S. 398, 420-421 (2007) (a patent claiming a combination of elements
known in the prior art is obvious if the improvement is no more than the
predictable use of the prior art elements according to their established
functions); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art); In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”); see also In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)
(“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Rupp ‘167 and Burk with Appellant’s countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1, 3, 8, 10, 11, and 14 through 19
would have been obvious as a matter of law under 35 U.S.C. § 103(a).

Claim 4: Burk, Rupp ‘167 and Rupp ‘324
We are of the opinion Appellant has not established that that the
evidence in the combined teachings of Burk, Rupp ‘167 and Rupp ‘324 does
not support the Examiner’s conclusion of prima facie obviousness with
respect to the claimed device encompassed by claim 4. We find no specific
Appeal 2009-002355
Application 10/751.390
15
argument directed to this ground of rejection, and, indeed, Appellant does
not address the combination of Burk and Rupp ‘324. App. Br. 8-11; Reply
Br. 4.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Burk, Rupp ‘167, and Burk ‘324 with Appellant’s
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 4 through 7 and 13 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(iv).
AFFIRMED

PL Initial:
sld

ST. ONGE STEWART JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619