Ex Parte Kumar et al

Patent Trial and Appeal Board

Aug 15, 2013

10882084 (P.T.A.B. Aug. 15, 2013)

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.
10/882,084 06/30/2004 Ajay Kumar 009400/ETCH/MASK-ETCH/MDD 8689
44257 7590 08/15/2013
PATTERSON & SHERIDAN, LLP - - APPM/TX
3040 POST OAK BOULEVARD, SUITE 1500
HOUSTON, TX 77056
EXAMINER
LUND, JEFFRIE ROBERT
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
08/15/2013 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 AJAY KUMAR, MADHAVI CHANDRACHOOD,
SCOTT ALAN ANDERSON, PETER SATITPUNWAYCHA, and
WAI FAN YAU
____________

Appeal 2012-007340
Application 10/882,084
Technology Center 1700
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007340
Application 10/882,084

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-7, 9, 21, and 23-33. Oral arguments were
presented by Appellants and by the Examiner on August 6, 2013.1 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

Claim 27 is representative of the claimed subject matter:
27. An apparatus for plasma etching,
comprising:
a process chamber;
a substrate support pedestal disposed in the
process chamber and adapted to receive a
photomask reticle thereon;
an RF power source;
an antenna positioned to inductively couple
power from the RF power source to a plasma
within the process chamber; and
an ion-radical shield disposed in the
chamber above the pedestal and comprises a
plurality of apertures arranged in a square grid
pattern and adapted to control the spatial
distribution of charged and neutral species of the
plasma; wherein the ion-radical shield has an areal
extent larger than an areal extent of the substrate
support pedestal, wherein a plurality of legs are
utilized to support the ion-radical shield about 1.5
inches (3.81 cm) to about 4 inches (10.16 cm)
above the pedestal.

1 Any argument raised for the first time at the oral hearing that was not
timely raised in the answer or briefs has not been considered on appeal. 37
C.F.R. § 41.47(e)(1) (2010).
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The other independent claims 1, 21, and 33 similarly recite an
apparatus for plasma etching, and recite further and/or different details of the
apparatus.
The Examiner maintains, and Appellants appeal, the following
rejections:
Claims 24 and 30 under 35 U.S.C. § 112, second paragraph as
indefinite;
Claims 1-7, 9, 21, 23-25, 27-30, 32, and 33 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wu (U.S. Patent Application
Publication 2002/0142612 A1, pub. Oct. 3, 2002) in view of Inomata (U.S.
Patent Application Publication 2004/0079725 A1, pub. Apr. 29, 2004), Luo
(U.S. Patent 6,335,293 B1, issued Jan. 1, 2002), and Yudovsky (U.S. Patent
6,521,292 B1, issued Feb, 18, 2003);2
Claims 1-7, 9, 21, 23, 25, 27-30, 32, and 33 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Inomata in view of Luo, Festa
(U.S. Patent 6,676,800 B1, issued Jan. 13, 2004), and Yudovsky.
The Examiner also made a provisional3 rejection of all the claims
under obviousness-type double patenting over Application No. 10/880,754
(Ans. 15). This rejection is summarily affirmed as Appellants do not present
any substantive arguments regarding the rejection (App. Br. 26 (“Applicants
will consider submitting a Terminal Disclaimer”)).

2 While the Examiner rejects claims 3, 23, 24, and 30 separately, the
rejection is based on the same combination of prior art as for all the other
claims (Ans. 9; see also Ans. 13, 14 for the same separate treatment in the
other 103 rejection).
3 Application No. 10/880,754 is now US Patent 8,349,128, issued Jan. 8,
2013, with claims that appear to be of the same scope as those relied upon in
the provisional rejection.
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ANALYSIS
The § 112 Rejection
The Examiner rejected claims 24 and 30 which each recite that “the
plurality of apertures have size, spacing, and geometric arrangement that
vary across the ion-radical shield” because the independent claims from
which they depend require “a plurality of apertures arranged in a square grid
pattern”. Ans. 5.
During prosecution, “the PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Notably, Appellants’ Specification describes that the apertures may be
“arranged in a square grid pattern”, or “other geometric or random patterns
utilizing other size holes or holes of various sizes” (Spec. para. [0024];
emphasis added). This description reinforces the Examiner’s reasonable
position that other geometric arrangements of the apertures would conflict
with the square grid pattern required by claims 1 and 27.
The Appellants’ conclusory argument that “apertures may vary in
spacing and geometric arrangement and still follow a square grid pattern”
(Reply Br. 2) is not sufficient to overcome the Examiner’s reasonable
position that the claim meaning is unclear since it is not understood how the
apertures can vary across the shield in their “geometric arrangement” and
still fulfill the “square grid” requirement of independent claims 1 and 27.
Accordingly, this § 112 rejection is sustained.
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The § 103 Rejections
Although each independent claim recites further and/or different
details of the apparatus, Appellants generally argue claims 1, 2, 4-7, 9, 21,
25, 27, 28, 32, and 33 as a group for each ground of rejection (generally
App. Br. 13-17, 22-23)4. We further note that only claim 1, one of the four
independent claims, recites an edge ring. Appellants separately argue the
grouping of claims 3, 24, 29, and 30 for each ground of rejection (App. Br.
19, 20, 25).
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record does not support the Examiner’s rejection of the claims over the prior
art of Wu in view of Inomata, Luo, and Yudovsky. We respect the
Examiner’s position that Wu generically teaches optimizing a plate size,
location, and geometry (Wu para. [0034], Fig. 7; Ans. 7). However, since
the discussion of Wu’s shielding plate 110 for selectively controlling the
etch rate focuses on a (solid) shield plate that is smaller than the reticle and
substrate support (Wu, paras. [0021] to [0026], App. Br. 14), a
preponderance of the evidence supports Appellants’ position that there is no
apparent reason to redesign the apparatus of Wu based on the other applied
references to have a shield with an areal extent larger than the substrate

4 Merely pointing out what each claim recites is not a separate argument for
patentability. Regarding the independent claims, Appellants merely restate
the claim limitations and assert that the cited references fail to teach these
limitations. App. Br. 18-19. As such, Appellants' statements are considered
to be nothing more than general allegations of patentability and are not
considered separate patentability arguments. See 37 C.F.R. § 41.37(c)(1)(vii)
(“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”).
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support pedestal, as well as a plurality of apertures in a square grid pattern as
required in each independent claim, and as such, the Examiner’s rejection is
based on impermissible hindsight (e.g., App. Br. 14, 17).
On the other hand, we find that the preponderance of evidence on this
record does support the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art of Inomata in
view of Luo, Festa and Yudovsky. (Ans. 11-15; 17, 28-29).
Here, the Examiner’s rejection relies upon modifying Inomata which
exemplifies a capacitively coupled plasma apparatus with a perforated shield
having an areal extent larger than the substrate to be worked on, with the
teachings of Luo which exemplify that capacitively coupled and inductively
coupled plasma sources are known alternatives (col. 7, ll. 8-19), and that a
perforated shield may be larger than the substrate support as well as the
substrate (Fig. 11; e.g., Ans. 11, 12).
Appellants’ main argument is that the Examiner does not explain how
the objectives of Inomata “may be met by substituting” its “capacitively
coupled” apparatus with an “inductive process, as in Luo” (App. Br. 22).
This argument is unavailing for reasons set forth by the Examiner (e.g., Ans.
28-29), which point out that Luo exemplifies that capacitively coupled and
inductively coupled plasma sources are known alternatives (col. 7, ll. 8-19),
and Festa teaches the advantages of replacing a capacitive source with an
inductive source (col. 6, ll. 30-36).
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
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Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
Appellants have not provided any persuasive reasoning or credible
evidence why one of ordinary skill in the art would not have, using no more
than ordinary creativity, predictably substituted an inductively coupled
source for a capactively coupled source as exemplified in each of Luo and
Festa to be known alternative sources for a plasma apparatus (see generally
App. Br., Reply Br.). See KSR, 550 U.S. at 421 (“[a] person of ordinary skill
is also a person of ordinary creativity, not an automaton.”). See also, Merck
& Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”)(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
We further note that Yudovsky is only relied upon to exemplify that
the feature of an edge ring is known in plasma apparatus. Claim 1 is the only
independent claim which recites an edge ring. We also affirm the
Examiner’s rejection of claim 1 and those that depend therefrom, for the
reasons set out by the Examiner (e.g., Ans. 13). Indeed, Appellants do not
provide any specific reasons why it would not have been obvious to modify
Inomata with the purge ring of Yudovsky (Briefs generally).
We also note that the claims are all directed to an apparatus.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Therefore, the patentability of an apparatus claim depends on the
claimed structure, not on the use or purpose of that structure, Catalina Mktg.
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Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002), or
the function or result of that structure. In re Danly, 263 F.2d 844, 848
(CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1949). On this
record, Appellants have not convinced us of reversible error in the
Examiner’s reasonable obviousness determinations modifying the plasma
apparatus of Inomata with the features of the plasma apparatus of Luo and/or
Yudovsky (Ans.; Briefs generally).5
To the extent the rejection of claims 3, 24, 29 and 30 are argued
separately, we find that a preponderance of the evidence supports the
Examiner’s reasonable position that optimizing the size and/or open area of
the apertures of Inomata as modified would have been optimization of
known result effective variables (Ans. 14, 29).
Accordingly, for the reasons stated above and in the Answer, the
preponderance of the evidence supports the Examiner’s rejection based on
the combined prior art of Inomata, Luo, Festa and Yudovsky on appeal.
DECISION
The Examiner’s obviousness type double patenting rejection is
affirmed.
The Examiner’s rejection of claims 24 and 30 under 35 U.S.C. § 112,
second paragraph is affirmed.

5 The test for obviousness is what the combined teachings of the references
would have suggested to the artisan. Accordingly, one cannot show
nonobviousness by attacking references individually where the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 426
(CCPA 1981).
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The Examiner’s rejection of claims 1-7, 9, 21, 23-25, 27-30, 32, and
33 under 35 U.S.C. § 103(a) as being unpatentable over Wu in view of
Inomata, Luo, and Yudovsky is reversed.
The Examiner’s rejection of claims 1-7, 9, 21, 24, 25, 27-30, 32, and
33 under 35 U.S.C. § 103(a) as being unpatentable over Inomata in view of
Luo, Festa, and Yudovsky is affirmed.
The decision of the Examiner 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).

ORDER

AFFIRMED

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