Ex Parte Lee

Board of Patent Appeals and Interferences

Mar 30, 2009

10331406 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAE-WAN LEE
____________

Appeal 2008-2811
Application 10/331,406
Technology Center 3700
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Decided1: March 30, 2009
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Before JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited 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).
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Application 10/331,406

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STATEMENT OF THE CASE
Tae-Wan Lee (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1-14, the only claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellant’s claimed invention is to an apparatus for manufacturing a
semiconductor device, including a process chamber forming a reaction
region, a susceptor having a heater therein, positioned in the reaction region,
and a reflector in the reaction region over the susceptor for reflecting heat
radiating from a wafer positioned on the susceptor. (Appeal Br., Claims
Appendix, Claim 1). The invention is said to provide an advance over prior
semiconductor manufacturing devices by providing a wafer temperature
compensator in the form of a reflector to reduce the amount of radiated heat
from the wafer. (Specification, ¶¶[0004], [0006]; Figs. 1-2). Claim 1,
reproduced below, is representative of the claimed subject matter:
1. An apparatus for manufacturing a
semiconductor device, comprising:

a process chamber forming a reaction region;

a susceptor in the reaction region, and having a
heater therein, wherein a wafer is loaded on the
susceptor; and

a reflector in the reaction region and over the
susceptor compensating a temperature of the
wafer, wherein the reflector reflects a radiant heat
that is radiated from the wafer.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hill US 4,284,867 Aug. 18, 1981
Ohmura US 4,848,272 Jul. 18, 1989
Loewenstein US 4,904,621 Feb. 27, 1990
Samoilov US 6,494,959 B1 Dec. 17, 2002

The Examiner has rejected:
(i) claims 1-3, 5, 7-10, 13 and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Samoilov in view of Loewenstein and Ohmura;
(ii) claims 4, 6, 11 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Samoilov in view of Loewenstein, Ohmura, and Hill.
ISSUE
The Examiner concluded that the combined teachings of Samoilov,
Loewenstein and Ohmura would have rendered obvious a semiconductor
producing apparatus having a process chamber with a reaction region, a
susceptor with a built-in heater disposed in the reaction region, and a
reflector disposed over the susceptor to reflect radiated heat.
Appellant urge that there is no motivation or reason to combine the
teachings of the references in modifying the Samoilov device.
The issue joined in this appeal is: has Appellant shown that the
Examiner erred in finding that claimed invention would have been obvious
in view of the cited references?
FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
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1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Samoilov patent discloses an apparatus including a process
chamber having a reaction region 120, a susceptor 130 in the reaction
region, a heater 150, and a reflector positioned outside the chamber 112.
(Samoilov, Fig. 7A; col. 8, ll. 1-21). Samoilov does not disclose that the
susceptor has a heater disposed therein, and does not disclose that the
reflector is to be positioned in a reaction region of the process chamber over
the susceptor.
FF 2. The Loewenstein patent discloses providing a heating element
in a susceptor, in the form of tubes extending through the susceptor
(Loewenstein, Figs. 16, 17; col. 33, l. 66-col. 34, l. 3)
FF 3. The Ohmura patent discloses providing a reflector (reflector
plates 11, 12) in the reaction region of a process chamber of a semiconductor
processing device. (Ohmura, Fig. 1; col. 2, ll. 40-43).
FF 4. A significant aspect of the Samoilov device and process is that
it is desired to obtain a more uniform temperature across the wafer, and to
obtain more reproducible heating from wafer to wafer. (Samoilov, col. 8, ll.
61-67).
FF 5. The reflector in Samoilov appears to be provided to reflect heat
radiated from the heater toward the process chamber, and not to reflect heat
radiated from the wafer itself. (Samoilov, col. 8, ll. 59-61; col. 9, ll. 11-13).
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int’l, 550 U.S. at ___, 127 S. Ct. at
1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”).
Rejections based on obviousness under 35 U.S.C. § 103(a) 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. Id. at ___, 127 S. Ct. at 1741. (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
ANALYSIS
Claims 1-3, 5, 7-10, 13 and 14
Appellants argue claims 1-3, 5, 7-10, 13 and 14 as a group. Claims 1
and 7 are independent. Independent claim 1 will be taken as the
representative claim for the group.
The Examiner rejects these claims, asserting that the Samoilov
apparatus discloses all of the claimed components, but does not disclose that
the susceptor has a heater disposed therein, and does not disclose that the
reflector is to be positioned in a reaction region of the process chamber over
the susceptor. (Answer 3 and FF 1). The Examiner relies on the disclosure
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in Loewenstein of providing a heating element in a susceptor (FF 2), and on
the disclosure in Ohmura of providing a reflector in the reaction region (FF
3), in concluding that it would have been obvious to modify the Samoilov
apparatus to incorporate these teachings, thus rendering the claimed
invention obvious. (Id.). The Examiner states that these modifications will
result in “more efficient treatment of the wafer”, and “more efficient
processing”. (Answer 3, 5).
Appellant contests the rejection, asserting that motivation is lacking
for combining the references, in that the references do not disclose or
suggest that the proposed modifications will lead to any increased efficiency,
and that there is no clear evidence as to what type of “efficiency” would be
improved or increased by the modifications. (Appeal Br. 6-8).
The Supreme Court has held that a rigid and mandatory application of
a “teaching, suggestion, motivation” (TSM) test is inconsistent with its
precedent in assessing the obviousness or non-obviousness of a claimed
invention. KSR Int’l., 550 U.S. at ___, 127 S. Ct. at 1741. Thus, to the
extent that Appellant assigns error to the rejection as failing to meet the
standards of a TSM test, we are constrained to reject such arguments.
Notwithstanding, the Supreme Court also instructed that an analysis of the
purported obviousness of a claimed invention should be made explicit, and
should provide some articulated reasoning supported by rational
underpinning. Id. Appellant’s arguments call into question whether the
obviousness rejection at hand adequately states a reason to combine the
teachings that is supported by rational underpinning.
The Examiner, upon being challenged by Appellant, retreated from
the position that the Loewenstein and Ohmura patents explicitly teach
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particular efficiencies that could be obtained by modifying the Samoilov
apparatus, and now instead asserts that common sense and common
knowledge would lead persons of ordinary skill in the art to make the
proposed modifications to Samoilov. (Compare Answer 5-6 with Answer
3). It is not error, in and of itself, to invoke common sense and knowledge
in the art as part of a foundation for an obviousness rejection, but such
common sense and knowledge must be in harmony with the other evidence
relied upon in reaching the legal conclusion of obviousness.
Here, the Examiner contends that placing the heating source close to
the article to be heated (i.e., placing a heater in the susceptor upon which a
wafer to be heated is positioned), inevitably leads to more efficient heat
treatment of the article. (Answer 5). In addition, the Examiner contends
that positioning a heat reflector close to the article to be heated will
inevitably reflect back most if not all heat radiated from the article, leading
to more efficient heat treatment of the article, in terms of reducing heating
costs. (Answer 6).
Appellant correctly points out that missing from the prima facie case
of obviousness is evidence as to what form or type of efficiency would be
sought by a person of ordinary skill in the art, when considering the
Samoilov apparatus, in view of the other cited references. For example, a
significant aspect of Samoilov is the obtention of a more uniform
temperature across the wafer, and of more reproducible heating from wafer
to wafer. (FF 4). Modifying the Samoilov device to place a heater in the
susceptor might (or might not) reduce the energy input required to heat the
wafer, however, particularly in the case of adopting the heating tube
construction in the susceptor of the Loewenstein device, the ability to
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maintain a uniform temperature distribution would appear to be
compromised.
Similarly, while positioning a reflector in a reaction region closer to
the wafer to be heated will apparently cause heat radiated from a wafer to be
reflected more completely back to the wafer, Samoilov specifically describes
its reflector as being positioned outside the chamber. (FF 1). No rationale
or evidence is presented as to what the overall effect on the Samoilov
process would be, were the reflector instead to be positioned in the reaction
region inside the chamber, nor is any rationale or evidence presented that
one of ordinary skill in the art would view an increase in heat reflected back
to the wafer as providing any particular utility. Indeed, the reflector in
Samoilov appears to be provided to reflect heat radiated from the heater
toward the process chamber, and not to reflect heat radiated from the wafer
itself. (FF 5).
We find that the mere assertions that some “efficiency” is inevitably
obtained in making the modifications proposed in the rejection amount to
nothing more than conclusory statements, and not an articulated reasoning to
combine the teachings adequately supported by rational underpinning in the
form of evidence.
The Examiner further contends, while noting a belief that claim 1
broadly claims the same, that there are many other prior art references that
clearly show a heater with a heat reflector used to heat a wafer on a
susceptor within a process chamber. (Answer 6). Citation is made to a U.S.
patent and to a Korean patent publication. These references are not relied
upon in the rejection now before us. We are constrained to base our decision
on the actual grounds of rejection presented on appeal, and thus these and
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any other references are not germane to our deciding whether to sustain or
overturn the rejection.
Appellant has established that the Examiner erred in concluding that
the invention set forth in claim 1 would have been obvious over Samoilov in
view of Loewenstein and Ohmura. The rejection of claims 2, 3, 5, 7-10, 13
and 14, is also in error, for the same reasons.
Claims 4, 6, 11 and 12
Claims 4, 6, 11 and 12 were rejected as being unpatentable over
Samoilov in view of Loewenstein and Ohmura, and further in view of Hill.
These claims all depend from either claim 1 or claim 7, and, as discussed in
the preceding section, the combination of Samoilov, Loewenstein and
Ohmura has not been shown to establish a prima facie case of obviousness
as to claim 1. The Hill patent is not relied upon in any manner which would
cure the deficiencies of the other three references, and we see no disclosure
in Hill that would aid in curing the deficiencies. The rejection of claims 4,
6, 11 and 12 will thus not be sustained.
CONCLUSION
Appellant has established that reversible error exists in the rejection of
claims 1-14 under 35 U.S.C. § 103(a).
ORDER
The decision of the Examiner to reject claims 1-14 is reversed.

REVERSED

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