Ex Parte Logsdon

Board of Patent Appeals and Interferences

Dec 31, 2009

10833778 (B.P.A.I. Dec. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE LOGSDON
____________

Appeal 2009-004019
Application 10/833,778
Technology Center 1700
____________

Decided: December 31, 2009
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/833,778

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-16 and 24-30.1 (App. Br. 4). We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant describes a delivery system for dispensing photoresist
material from a packet onto a semiconductor wafer. (Spec. [0016]-[0017]).
Claims 1, 2, 5, 6, and 11, reproduced below, are representative of the subject
matter on appeal.
1. A delivery system for dispensing photoresist material from a
packet of photoresist material onto a semiconductor wafer,
comprising:
an opening device operable to open a packet of
photoresist material; and
a dispensing device operable to dispense the photoresist
material from the packet of photoresist material onto the
semiconductor wafer without depositing debris on the
semiconductor wafer.

2. The delivery system of Claim 1, further comprising a packet
reservoir containing a plurality of packets of photoresist
material; and a retrieval device operable to retrieve a packet of
photoresist material from said packet reservoir.

5. The delivery system of Claim 4, the opening device
comprising a piercing tool and the dispensing device
comprising a clamping system.

1 Claims 17-23 have been canceled. (Appeal Brief filed August 24, 2007,
hereinafter “App. Br.,” 4).
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6. The delivery system of Claim 1, the packet of photoresist
material comprising one of a plurality of packets of photoresist
material forming a tube.

11. The dispense machine of Claim 9, further comprising a
packet discard device coupled to the delivery system, the packet
discard device operable to discard the packet of photoresist
material after the photoresist material is dispensed from the
packet.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Thorsheim 4,258,862 Mar. 31, 1981
O’Malley 4,984,704 Jan. 15, 1991
Giannuzzi 5,184,757 Feb. 9, 1993
Brown 5,431,307 Jul. 11, 1995

There are four grounds of rejection for review on appeal:
(1) the Examiner rejected claims 1-4, 6, 8-10, 13, 14, 16, 24, 25, 27,
28, and 30 under 35 U.S.C. § 102(b) as being anticipated by Giannuzzi2;
(2) the Examiner rejected claims 1, 3, 4, and 8 under 35 U.S.C. §
102(b) as being anticipated by Thorsheim;
(3) the Examiner rejected claims 5, 7, 15, and 29 under 35 U.S.C. §
103(a) as being unpatentable over Giannuzzi in view of Brown; and
(4) the Examiner rejected claims 11, 12, and 26 under 35 U.S.C. §
103(a) as being unpatentable over Giannuzzi in view of O’Malley.

2 The Examiner lists claim 30 as being rejected under 35 U.S.C. § 102(b), but
states that claim 30 should have been rejected under 35 U.S.C. § 103(a)
along with claim 29. (Ans. 3 and 13).
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Rejection 1
ISSUES
Based on Appellant’s contentions, the issues on appeal are:
Has Appellant shown that the Examiner reversibly erred in finding
that Giannuzzi dispensing device is operable to dispense photoresist material
“without depositing debris on the semiconductor wafer” as recited in claim
1?
Has Appellant shown that the Examiner reversibly erred in finding
that Giannuzzi discloses a packet reservoir containing a plurality of packets
as recited in claim 2?
Has Appellant shown that the Examiner reversibly erred in finding
that Giannuzzi discloses that the packet of material may be “one of a
plurality of packets of photoresist material forming a tube” as recited in
claim 6?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant’s Specification states that photoresist materials are prone
to crystallization due to contact with the atmosphere. (Spec.
[0005]).
2. Appellant’s Specification states that disadvantages of using
conventional application methods include use of a Teflon-type
tubing line for transporting pump output to a nozzle, where the
nozzle may be damaged resulting in depositing metal debris onto
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the wafer or contamination with crystallized material. (Spec.
[0007]).
3. Appellant’s Specification also states that conventional application
methods dispense some of the material onto dummy wafers to
“avoid introducing any crystallized material when a dispense has
not been performed within a relatively short amount of time, such
as approximately 30 minutes.” (Spec. [0007]).
4. Appellant’s delivery system dispenses material from packets
whereby an opening device in the form of a piercing tool is used to
open the packets. (Spec. [0017] and [0022]).
5. Giannuzzi’s Figure 4 is reproduced below:

Figure 4 depicts a double barrel injection gun including barrels 10
and 11, foil packs 20 and 21, blades 28 and 31 [sic, 30], pistons 41
and 42, mixing manifold 25, and mixing nozzle 36. (Col. 5, ll. 10-
54; col. 6, ll. 4-9).
6. In operation, the pistons 41 and 42 advance through the barrels 10
and 11 forcing front ends of the foil packs 20 and 21 against the
cutting blades 28 and 30. (Col. 6, ll. 55-68).

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PRINCIPLES OF LAW
A patent applicant is free to recite features of an apparatus either
structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). Where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on. Id. The structure of the prior art apparatus must merely be capable of
performing the claimed functional recitation. Id., at 1478-79.

ANALYSIS
Appellant has separately listed each of the claims subject to ground of
rejection 1. However, Appellant relies on similar arguments for many of the
claims. In addition, although each of the claims is listed under a separate
heading, for some of the claims, Appellant merely repeats the claim
limitations and states that the claim limitations are not taught by Giannuzzi
without specifically identifying how the Examiner erred. A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. (See 37 C.F.R. § 41.37 (c)(l)(vii)).
Accordingly, we confine our discussion to appealed claims 1, 2, and 6,
which contain claim limitations representative of the arguments made by
Appellant pursuant to 37 C.F.R. § 41.37(c)(1)(vii).3

3 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make have not been considered and are deemed to be waived. See 37 C.F.R.
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Regarding claim 1, the Examiner found that Giannuzzi discloses a
delivery system that is capable of dispensing material without depositing
debris on the semiconductor wafer. (Examiner’s Answer entered June 11,
2008, hereinafter “Ans.,” 3). Specifically, the Examiner found that
Giannuzzi’s mixing manifold 25 and mixing nozzle 36 would be capable of
preventing debris from being deposited onto the substrate. (Ans. 8).
Appellant contends that Giannuzzi, as in the prior art described in
Appellant’s Specification, describes a device that dispenses material through
a delivery tube. (App. Br. 11). Appellant argues that Giannuzzi does not
disclose a dispensing device that avoids depositing debris from partially set
material in its nozzle or material that may be shed from the nozzle. (Id.).
Appellant also contends that nothing in Giannuzzi indicates that manifold 25
and nozzle 36 would be capable of depositing material without depositing
debris or crystallized material on a semiconductor wafer. (Reply Brief filed
August 11, 2008, hereinafter “Rep. Br.,” 3).
We are unpersuaded by Appellant’s arguments. The Examiner’s
findings that Giannuzzi’s dispensing device, particularly manifold 25 and
nozzle 36, allow photoresist material to be deposited on a substrate without
depositing debris, were sufficient to shift the burden to Appellant to show
that Giannuzzi’s device is incapable of depositing photoresist material
“without depositing debris on the semiconductor wafer.” Appellant has not
provided any persuasive evidence that the material in Giannuzzi’s device
would be exposed to the atmosphere for a sufficient period of time to result
in crystallization of the photoresist material before being deposited on the

§ 41.37(c)(1)(vii)(2009). Appellant’s Reply Brief has been considered to the
extent that the arguments therein are responsive to the Examiner’s Answer.
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substrate. Indeed, both Giannuzzi’s device and Appellant’s device employ
sealed packets of material that are opened during operation. (FF 4-6). In
addition, because both Appellant and Giannuzzi open packets of material
through use of piercing tools or blades (FF 4 and 5), there would be no
reason to expect that any portion of Giannuzzi’s packet would be deposited
on a substrate as debris. Moreover, Appellant’s claims do not exclude a step
of depositing material containing debris on dummy wafers in order to expel
any debris prior to depositing the material on the desired semiconductor
wafer as known in the prior art. (See FF 3). Thus, Appellant’s argument
that Giannuzzi is similar to the prior art disclosed in the Specification is
insufficient to demonstrate that the Examiner erred.
Regarding claim 2, we are unpersuaded by Appellant’s arguments that
Giannuzzi fails to disclose a structure containing a plurality of packets
because each barrel in Giannuzzi discloses a single packet. (App. Br. 13).
The Appellant has not shown error in the Examiner’s apparent interpretation
that both barrels in Giannuzzi, when taken collectively, constitute a packet
reservoir as recited in the claims. (Ans. 3, 4, and 10).
In addition, because Appellant has not shown error in the Examiner’s
position that Giannuzzi’s packets 20 and 21 read on a capsule as recited in
claim 4, we also affirm the Examiner’s rejection of claims 14 and 28.
Regarding claim 6, Appellant contends that Giannuzzi does not
disclose that the packet of photoresist material comprises one of a plurality
of packets forming a tube, because packets 20 and 21 are separate and do not
form a tube. (App. Br. 16). We agree with Appellant. Contrary to the
Examiner’s position, claim 6 requires that the packet is part of a plurality of
packets forming a tube. Thus, that Giannuzzi discloses that each packet 20
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and 21 forms a tube (Ans. 11) is not sufficient to meet the requirements of
claim 6. Accordingly, we will not sustain the Examiner’s rejection of claim
6.
Regarding claim 30, the Examiner acknowledges that Giannuzzi fails
to disclose all of the limitations recited in the claim. (Ans. 13).
Accordingly, we also reverse the Examiner’s rejection of claim 30.

Rejection 2
The Examiner found that Thorsheim disclose a delivery system
“comprising an opening and a dispensing device (crimp valve elements 17
exerting pressure against the bag 18) to open a packet of material (flexible
bag or container).” (Ans. 5-6).
Appellant contends that Thorsheim does not disclose a device
operable to open the bag 18 where Thorsheim does not disclose how the
orifice 19 is formed in the flexible bag. (App. Br. 32).

ISSUE
Thus, the dispositive issue on appeal is: Has Appellant shown that the
Examiner erred in finding that Thorsheim discloses “an opening device
operable to open a packet of photoresist material” as recited in claim 1?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
7. Thorsheim’s Figure 1 is reproduced below:
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Figure 1 depicts a liquid dispenser 10 including an inner flexible
bag or container 18, outlet opening 15, an outlet orifice 19, air inlet
16, and opposing crimp valve elements 17. (Col. 2, ll. 4-25).
8. Thorsheim is silent as to how the bags of material are opened to
create outlet orifice 19.

PRINCIPLES OF LAW
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).

ANALYSIS
We agree with Appellant that Thorsheim does not disclose a device
operable to open the packet of material. The Examiner stated that the crimp
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valve elements 17 “are capable of being used to let the material out of the
bag (packet) by gravity (as the crimp elements opened pressure exerted on
the flexible bag somehow let the outlet orifice of the bag opened so the
coating material dispensed out of the bag).” (Ans. 13). However, the
Examiner’s explanation relates to the flow of material out of the bag 18, and
does not explain how the crimp valve elements 17 would be structurally
capable of opening bag 18, to create orifice 19 as required in claim 1.
Indeed, Thorsheim is silent as to how orifice 19 is created. Accordingly, we
will not sustain the Examiner’s decision to reject the claims as being
anticipated by Thorsheim.

Rejection 3
The Examiner found that Giannuzzi does not disclose a dispensing
device comprising a clamping or roller system as required in claims 5, 7, 15,
and 29. (Ans. 7). The Examiner found that Brown discloses a clamping
system in the form of rollers 14a and 14b and plate 16 for dispensing
material. (Id.). The Examiner concluded “[i]t would have been obvious to
one of ordinary skill in the art at the time the invention was made to include
a clamping system in Giannuzzi to mechanically press the packet as an
alternative way of discharging material from the packet.” (Ans. 7).
Appellant contends that the Examiner has not explained how all
elements of the claims are disclosed by Giannuzzi in view of Brown, or how
Brown’s system could be incorporated into the epoxy gun of Giannuzzi.
(App. Br. 40-43; Rep. Br. 8).
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ISSUE
Thus, the dispositive issue on appeal is: has Appellant shown error in
the Examiner’s rationale that it would have been obvious to incorporate
Brown’s roller/plate system into Giannuzzi’s dispensing apparatus?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
9. Brown discloses a dispensing apparatus including pinch rollers 14a
and 14b that are positioned to pinch or compress flexible tubes
when a stop plate 16 engages the tube. (Col. 3, ll. 48-66; Fig. 3).

PRINCIPLES OF LAW
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “‘[R]ejections on
obviousness grounds 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.’” KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006).

ANALYSIS
We agree with Appellant that the Examiner has failed to provide
sufficient rational underpinning to support a conclusion of obviousness.
Specifically, the Examiner has not sufficiently explained how one of
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ordinary skill in the art would have incorporated the pinch rollers and stop
plate of Brown’s apparatus into Giannuzzi’s epoxy gun. Brown’s dispensing
apparatus dispenses material through the action of the pinch rollers against
the stop plate, whereas Giannuzzi’s apparatus operates through compression
of pistons against the rear of packets of material. (See FF 5, 6, and 9). Thus,
Brown’s apparatus and Giannuzzi’s apparatus have different modes of
operation. The Examiner’s rationale does not explain how one of ordinary
skill in the art would have reconciled these differences in incorporating
Brown’s pinch rollers and stop plate into Giannuzzi’s device. Therefore, we
will not sustain the Examiner’s rejection.4

Rejection 4
The Examiner found that Giannuzzi fails to teach a packet discard
device and a spent packet receptacle. (Ans. 7). The Examiner stated: “it is
well known in the art to provide a container to discard packet material after
use for recycling purposes; for instance O’Malley discloses (see Fig 1 and
column 4, lines 35-41) a packet discard device and spent packet receptacle
(people discarding different category of trash including packets to separate
containers 29 in the household or other facility).” (Ans. 7-8).
Appellant contends that O’Malley fails to disclose a packet discard
device operable to discard the packet after dispensing, rather it is people who
discard the trash in O’Malley. (App. Br. 46).

4 To the extent that the Examiner’s rejection would also apply to claim 30,
we reverse this rejection as well due to the dependency of claim 30 from
claim 29.
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ISSUE
The dispositive issue is: Has Appellant shown reversible error in the
Examiner’s determination that Giannuzzi in view of O’Malley discloses a
packet discard device?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
10. Appellant’s Specification describes the packet discard device as “a
device that is operable to remove spent packets” and may comprise
“a tong-like device,” a “suction device,” or “a gravity-based device
that is operable to remove the spent packets using gravity along
with a guiding mechanism that guides the packets to an appropriate
location.” (Spec. [0025]).
11. O’Malley discloses a trash container supporting apparatus to store
a plurality of trash containers for recycling trash. (Col. 4, ll. 35-41;
Fig. 1).

PRINCIPLE OF LAW
It is well settled that all the claim limitations must be taught or
suggested by the prior art to establish a prima facie case of obviousness.
In re Royka, 490 F.2d 981, 984-85 (CCPA 1974).

ANALYSIS
We agree with Appellant, that the combination of Giannuzzi in view
of O’Malley fails to disclose a packet discard device. The claims positively
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recite “a packet discard device,” which as described in Appellant’s
Specification, requires a structural component in order to perform the recited
function. (FF 10). O’Malley, on the other hand, discloses a trash container
supporting apparatus. (FF 11). The Examiner has not identified any
structure in O’Malley that would correspond to a packet discard device. The
Examiner’s position that “O’Malley teaches receptacles (containers 29) that
are capable of accepting spent packets by gravity” (Ans. 16), fails to remedy
this deficiency. Indeed, as indicated by Appellant’s Specification, gravity by
itself is insufficient to constitute the packet discard device. (See FF 10).
Accordingly, Appellant has demonstrated reversible error in the Examiner’s
position that the prior art discloses a packet discard device as recited in the
claims.

ORDER
We affirm the Examiner’s decision rejecting claims 1-4, 8-10, 13, 14,
16, 24, 25, 27, and 28 under 35 U.S.C. § 102(b) as being anticipated by
Giannuzzi.
We reverse the Examiner’s decision rejecting claims 6 and 30 under
35 U.S.C. § 102(b) as being anticipated by Giannuzzi.
We reverse the Examiner’s decision rejecting claims 1, 3, 4, and 8
under 35 U.S.C. 102(b) as being anticipated by Thorsheim.
We reverse the Examiner’s decision rejecting claims 5, 7, 15, and 29
under 35 U.S.C. § 103(a) as being unpatentable over Giannuzzi in view of
Brown.
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We reverse the Examiner’s decision rejecting claims 11, 12, and 26
under 35 U.S.C. § 103(a) as being unpatentable over Giannuzzi in view of
O’Malley.
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-IN-PART

kmm

Munck Carter/NSC
P.O. Drawer 800889
Dallas, TX 75380