Ex Parte Kwan et al

Board of Patent Appeals and Interferences

Sep 26, 2005

09920891 (B.P.A.I. Sep. 26, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte MICHAEL KWAN
and ERIC LIU
______________

Appeal No. 2005-1668
Application 09/920,891
_______________

ON BRIEF
_______________

Before WARREN, WALTZ and DELMENDO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the supplemental answer mailed February 3, 2005, and
appellants, in the brief, the reply brief and the supplemental reply brief filed March 25, 2005,1
and based on our review, find that we cannot sustain the ground of rejection advanced in the
supplemental answer: appealed claims 17 through 22 under 35 U.S.C. § 103(a) as being
unpatentable over Hong et al. (Hong) in view of Papasouliotis et al. (Papasouliotis) as evidenced

1 The supplemental answer was filed in response to our remand entered January 19, 2005, in
Appeal No. 2005-0003 in this application, and appellant filed the supplemental reply brief in
response.
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Application 09/920,891
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by Orczyk et al. (Orczyk), Kholodenko et al. (Kholodenko) and Sherstinsky et al. (Sherstinsky)
(supplemental answer, pages 4-6).2,3
Our consideration of the ground of rejection requires that we initially interpret
representative appealed independent claim 17 by giving the terms thereof the broadest
reasonable interpretation in their ordinary usage as they would be understood by one of ordinary
skill in the art in light of the written description in the specification, including the drawings, as
interpreted by this person, unless another meaning is intended by appellants as established in the
written description of the specification, and without reading into the claims any limitation or
particular embodiment disclosed in the specification. See, e.g., In re Morris, 127 F.3d 1048,
1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). The plain language of claim 17 specifies a computer-
readable storage medium having a computer-readable program embodied therein for directing
operation of a substrate processing system in accordance with the steps, among others, of “(b)”
generating a first high-density plasma in the process chamber to deposit a first portion of the film
on the substrate by HDP-CVD, “(c) thereafter, cooling the substrate,” “(d) thereafter, flowing an
etchant gas into the process chamber,” “(e) thereafter, providing a second gaseous mixture to the
process chamber,” and “(f)” generating a second high-density plasma in the process chamber for
a second HDP-CVD step. Similar claim language appears in appealed independent claim 20.
The issues in this appeal involve the interpretation of claim term “thereafter.” We
determine that one of ordinary skill in the art would recognize from the written description in the
specification that this term is used in its ordinary, dictionary meaning in context of “[f]rom a
specific time onward; from then on.”4 Thus, the computer-readable program must include a
separate substrate cooling step after completion of the first HDP-CVD step; a separate etching

2 Appealed claims 17 through 22 are all of the claims in the application. See the appendix to the
brief.
3 The examiner includes Wang et al. in the listing of Prior Art of Record (supplemental answer,
page 3) but does not mention the patent in the remainder of the supplemental answer.
4 See, e.g., The American Heritage Dictionary, Second College Edition 1261 (Boston, Houghton
Mifflin Company, 1982); Webster’s II New Riverside University Dictionary 1200 (Boston,
Houghton Mifflin Company. 1988).
Appeal No. 2005-1668
Application 09/920,891
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step after completion of the separate substrate cooling step; and a separate step of providing a
second gaseous mixture for the HDP-CVD step after completion of the separate etching step.
We agree with appellants that the examiner has not identified a disclosure of a separate
cooling step in any of the applied references (supplemental reply brief, page 2). In this respect,
we further agree with appellants (supplemental reply brief, pages 3-4) that Kholodenko (col. 1,
l. 56, to col. 2, l. 3) and Sherstinsky (col. 2, ll. 15-27) would have disclosed that the substrate
should be cooled during the etching step to maintain the substrate within a narrow temperature
range, while Papasouliotis (col. 8, ll. 6-45) would have disclosed that the temperature can be
modulated during etching by cooling or heating the substrate. We note here that the examiner
relies on Orczyk to show that “chemical vapor deposition typically requires elevated
temperature” (supplemental answer, page 5). We find that Hong is silent with respect to etch
temperature (e.g., col. 5, l. 40, to col. 6, l. 35, col. 10, l. 40, to col. 11, l. 3 and col. 12 ll. 13-28).
The examiner attempts to fill the gap between the evidence provided in the combined
teachings of the references and the invention encompassed by the appealed claims by alleging
that the “[r]elationship of deposition and etch to temperature is well known to people of ordinary
skill in the art,” and in this respect, relies on the teachings of Kholodenko and Sherstinsky to
support the conclusion that a separate cooling step before the etch step “to be able to control the
substrate temperature properly for etch” was within the ordinary skill in the art (supplemental
answer, page 5). The examiner further alleges that the “general” teachings in Papasouliotis,
Hong and Orczyk establish that “it would have been obvious that in general a cooling step after
deposition may be needed in preparation for etching, at least in case, change of temperature in
Papasouliotis turns out to be cooling for a specific purpose,” and that, in view of the teachings in
Sherstinsky and Kholodenko, “[a]s plasma and ion bombardment is the cause of substrate heat
during etch, it would be obvious and prudent to make sure that the cooling system is ready
before the plasma is turned on for etching since, [sic] cooling is never instantaneous” (id., pages
7-8).
We find no evidence in the record establishing the actual temperature range(s) at which
etching steps are conducted in the vapor deposition arts or the relationship of actual etch
temperature range(s) to actual deposition temperature range(s) in this art, even though the
examiner alleges that such information is well known to those of ordinary skill in this art. In the
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Application 09/920,891
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absence of such evidence, it is apparent that the examiner’s position is one of speculation, which,
of course, is not the standard for the application of prior art to a claimed invention under
§ 103(a). See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir.
1998) (“hindsight” is inferred when the specific understanding or principal within the knowledge
of one of ordinary skill in the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained.); In re Dow Chem. Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for determination of
obviousness is whether the prior art would have suggested to one of ordinary skill in the art that
[the claimed process] should be carried out and would have a reasonable likelihood of success
viewed in light of the prior art. [Citations omitted] Both the suggestion and the expectation of
success must be founded in the prior art, not in the applicant’s disclosure.”).
Accordingly, in the absence of a prima facie case of obviousness within the meaning of
35 U.S.C. § 103(a), we reverse the ground of rejection.
The examiner’s decision is reversed.

Reversed
Appeal No. 2005-1668
Application 09/920,891
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CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

Appeal No. 2005-1668
Application 09/920,891
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Applied Materials, Inc.
2881 Scott Blvd. M/S 2061
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