Ex Parte Kraus et al

Patent Trial and Appeal Board

Mar 28, 2017

12956988 (P.T.A.B. Mar. 28, 2017)

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.
12/956,988 11/30/2010 Harald KRAUS 4303-1044 1341
91286 7590
Harness, Dickey & Pierce, P.L.C. (Lam)
P.O. Box 828
Bloomfield Hills, MI 48303
EXAMINER
RINEHART, KENNETH
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
s stevens @ hdp .com
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARALD KRAUS, MARCO NARDONI, and
MICHAEL BRUGGER
Appeal 2015-006595
Application 12/956,988
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Harald Kraus et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1, 4, 6—11, and 13—17. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellants’ invention relates to an apparatus for treating surfaces of
wafer-shaped articles.
Independent claims 1 and 10, reproduced below, are illustrative:
Appeal 2015-006595
Application 12/956,988
1. Apparatus for processing wafer-shaped articles,
comprising a chuck having a platform dimensioned to hold a
wafer-shaped article of a predetermined size; and a gas
dispenser mounted so as to be positionable above said platform;
said gas dispenser comprising a gas showerhead having nozzles
for discharging an inert gas above said platform; said gas
dispenser overlapping the platform in an area that is from 5 to
50% of an area of an upwardly facing surface of a wafer-shaped
article of said predetermined size; said gas dispenser being
positionable above said platform at a predetermined operating
distance, and said gas dispenser being laterally movable relative
to said platform while positioned above said platform at said
predetermined operating distance; wherein said gas dispenser
comprises an annular nozzle configured to dispense inert gas
substantially parallel to a major surface of a wafer-shaped
article positioned on said platform; and wherein said gas
dispenser further comprises a conduit for dispensing process
liquid onto a wafer shaped article, said conduit terminating in a
nozzle directed downwardly from said gas dispenser toward
said platform.
10. A method for processing wafer shaped articles,
comprising:
positioning a wafer-shaped article on a holder;
positioning a gas dispenser above the wafer-shaped
article at a defined operating distance;
dispensing an inert gas above the wafer-shaped article;
dispensing an etching liquid onto the wafer-shaped article
simultaneously with said dispensing an inert gas above the
wafer-shaped article; and
moving the gas dispenser laterally relative to the wafer­
shaped article while dispensing said inert gas;
2
Appeal 2015-006595
Application 12/956,988
wherein the etching liquid is dispensed from a nozzle
carried by the gas dispenser.
THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 1, 4, 6, 9, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Kraus (US 2010/0206338 Al, published Aug. 19, 2010),
Shinbara (US 6,273,104 Bl, issued Aug. 14, 2001), Miya (US
2009/0107400 Al, published Apr. 30, 2009), and Ono (US 6,807,974 B2,
issued Oct. 26, 2004)1;
(ii) claims 7 and 8 under 35 U.S.C. § 103(a) as being unpatentable
over Kraus, Shinbara, Miya, Ono, and Inoue (US 2008/0314870 Al,
published Dec. 25, 2008)2;
(iii) claims 10, 11, and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Taniyama (US 6,096,233, issued Aug. 1, 2000), and
Shinbara; and
(iv) claims 13, 15, and 17 under 35 U.S.C. §103(a) as being
unpatentable over Taniyama, Shinbara, and Miya.
1 The heading of the rejection does not include Ono. This appears to be
an inadvertent error in that Ono is discussed in the ensuing analysis, and in
the restatement of the rejection in the Answer. See Final Act. 4—6; see also
Ans. 2.
2 Because claims 7 and 8 depend from claim 1, the omission of Ono
from the heading of this rejection is understood to be an inadvertent error.
See id. at 8.
3
Appeal 2015-006595
Application 12/956,988
ANALYSIS
Claims 1, 4, 6, 9, and 16—Kraus/Shinbara/Miya/Ono
Claims 7 and 8—Kraus/Shinbara/Miya/Ono/Inoue
As set forth below, pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a new ground of rejection of claims 1, 4, 6—9, and 16
under 35 U.S.C. § 112, second paragraph, as being indefinite. Before a
proper review of the rejections under § 103(a) can be made, the subject
matter encompassed by the claims on appeal must be reasonably understood
without resort to speculation. Because we have concluded that limitations in
claim 1, and, thus, claims 4, 6—9, and 16, depending therefrom, are
indefinite, the prior art rejections of claims 1, 4, 6—9, and 16 must fall
because they are necessarily based on a speculative assumption as to the
meaning of the claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962).
We therefore reverse the rejections under 35 U.S.C. § 103(a) of claims
1, 4, 6, 9, and 16 as being unpatentable over Kraus, Shinbara, Miya, and
Ono, and of claims 7 and 8 as being unpatentable over Kraus, Shinbara,
Miya, Ono, and Inoue. It should be understood, however, that our decision
in this regard is based solely on the indefmiteness of the claimed subject
matter, and does not reflect on the adequacy of the prior art evidence applied
in support of the rejection.
New Ground of Rejection
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
4
Appeal 2015-006595
Application 12/956,988
Claims 1, 4, 6—9, and 16—§ 112, second paragraph—Indefiniteness
Claim 1 is directed to an apparatus for processing wafer-shaped
articles, comprising, inter alia, “a chuck having a platform dimensioned to
hold a wafer-shaped article of a predetermined size” and “a gas dispenser
mounted so as to be positionable above said platform,” “said gas dispenser
overlapping the platform in an area that is from 5 to 50% of an area of an
upwardly facing surface of a wafer-shaped article of said predetermined
size.” Appeal Br. 10, Claims Appendix. The language of claim 1 attempts
to claim a degree of overlap of the gas dispenser in relation to an area of a
surface of a wafer-shaped article of a predetermined size. Claim 1 fails to
positively recite a wafer and to specify a particular size of the wafer. As
such, the wafer of claim 1 could be any size, and thus the amount of overlap
provided by a gas dispenser may or may not fall within the claimed range,
depending on the size of a particular wafer being processed.
With regard to the second paragraph requirement for ‘“particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention,’” it has been stated that the “essence of that
requirement is that the language of the claims must make it clear what
subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970). This has been frequently stated in a shortened form as a
requirement that the claims set forth the “metes and bounds” of their
coverage. See, e.g., In re Venezia, 530 F.2d 956, 958 (CCPA 1976); In re
Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In re Watson, 517 F.2d 465, 477
(CCPA 1975); In re Knowlton, 481 F.2d 1357, 1366 (CCPA 1973). This
requirement is normally viewed from the perspective of a potential infringer,
“so that they may more readily and accurately determine the boundaries of
5
Appeal 2015-006595
Application 12/956,988
protection involved and evaluate the possibility of infringement and
dominance.” Hammack, 427 F.2d at 1382. In the present situation, claim 1
does not permit competitors to ascertain whether a particular device
infringes or does not infringe, until a particular wafer of a particular size is
selected for processing.
Accordingly, the language of claim 1 is not sufficiently definite such
that those skilled in the art would understand what is being claimed when the
claim is read in light of the Specification. Likewise, claims 4, 6—9, and 16
fail to define a specific area of a surface of a wafer-shaped article and thus
are also indefinite under 35 U.S.C. § 112, second paragraph, by virtue of
their dependency from claim 1.
Claims 10, 11, and 14—Taniyama/Shinbara
The Examiner finds that Taniyama discloses most of the limitations of
independent claim 10, but that Taniyama does not dispense an etching liquid
onto the wafer-shaped article simultaneously with an inert gas. Final Act. 9.
Nonetheless, the Examiner finds that Shinbara simultaneously dispenses a
processing liquid and an inert gas. Id. The Examiner concludes that it
would have been obvious to modify Taniyama to dispense inert gas with the
etching liquid to attain “the advantage of creating an inert atmosphere above
the etching liquid layer over the substrate with the benefit of preventing
formation of an oxide film by eliminating exposure to air by the inert gas
film formation thereby improving the quality of wafer etching process.” Id.
at 9-10.
Appellants assert that Taniyama is not pertinent to gas dispensing at
all, and, thus, “absent the teaching of the present invention, there plainly
6
Appeal 2015-006595
Application 12/956,988
would have been no apparent reason to somehow incorporate [the Shinbara]
gas showerhead into the laterally movable liquid dispenser 31 of Taniyama.”
Appeal Br. 6—7. Appellants argue that “[t]he proposed combination of
Taniyama and Shinbara thus relies upon impermissible hindsight with the
benefit of the appellants’ own disclosure, and is therefore improper.” Id. at
7.
The Examiner responds that it would have been obvious to use the
“teachings of Shinbara of supplying inert gas via showerhead to modify the
moving liquid nozzle of Taniyama ... so as to provide a layer of inert
atmosphere while supplying liquid on to the wafer surface via the moving
liquid nozzle.” Ans. 14.
In reply, Appellants argue that the Examiner’s position is conclusory
and is not supported by sufficient factual underpinning. See Reply Br. 4.
We agree with Appellants that the Examiner’s reasoning is not
supported by factual underpinnings. The reason offered by the Examiner,
i.e., to prevent formation of an oxide film, is at odds with Taniyama’s
invention. Taniyama is directed to an etching process in which, “a silicon
oxide film 2 is formed by a batch type CVD method on one surface of a
wafer W.” Taniyama, col. 3,11. 36—38. Taniyama discloses that because
nozzle 31 allows “hydrofluoric acid solution to be spread over the entire
region of the thermal oxide film 2 . . . the entire region of the film 2 is
uniformly etched to decrease the thickness of the film 2 by 2 nm.” Id. at col.
6,11. 44-49. The Examiner does not adequately explain why Taniyama
would, on the one hand, want to form an oxide layer that is to be etched, and
would, on the other hand, want to prevent formation of an oxide film.
Additionally, the processing liquid in Shinbara is de-ionized water, and the
7
Appeal 2015-006595
Application 12/956,988
Examiner does not adequately explain why the process of Shinbara would be
suitable for use with an etching liquid. See Shinbara, col. 5,11. 11—40; see
also Ans. 14. Thus, we agree with Appellants that the Examiner has not
adequately established why one having ordinary skill in the art would have
modified the device of Taniyama in the manner claimed.
Therefore, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claims 10, 11, and 14 as unpatentable over Taniyama and Shinbara.
Claims 13, 15, and 17—Taniyama/Shinbara/Miya
The Examiner does not rely on Miya in any manner that remedies the
deficiencies in the rejection based on Taniyama and Shinbara discussed
above. Thus, for the same reasons, we do not sustain the rejection of claims
13, 15, and 17 as unpatentable over Taniyama, Shinbara, and Miya.
DECISION
The Examiner’s rejections of claims 1, 4, 6—9, and 16 under 35 U.S.C.
§ 103(a) are reversed pro forma.
The Examiner’s rejections of claims 10, 11, 13—15, and 17 under 35
U.S.C. § 103(a) are reversed.
Claims 1, 4, 6—9, and 16 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim that which
Appellants regard as the invention. This is a NEW GROUND OF
REJECTION made pursuant to our authority under 37 C.F.R. § 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
8
Appeal 2015-006595
Application 12/956,988
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED: 37 C.F.R, $ 41.50(b)
9