Ex Parte Mardian et al

Board of Patent Appeals and Interferences

Jun 5, 2008

10150388 (B.P.A.I. Jun. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALLEN P. MARDIAN, PHILIP H. CAMPBELL,
CRAIG M. CARPENTER, RANDY W. MERCIL,
and SUJIT SHARAN
____________

Appeal 2008-2369
Application 10/150,388
Technology Center 1700
____________

Decided: June 5, 2008
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 5-7, 9-11, and 47-62, which are the only claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

I. BACKGROUND
Appeal 2008-2369
Application 10/150,388

The invention relates to a chemical vapor deposition apparatus.
Representative claims 1 and 7 read as follows:
1. A chemical vapor deposition apparatus comprising:

a deposition chamber defined at least in part by a chamber sidewall, a
chamber top wall, and a chamber base wall opposing the chamber top wall;

a substrate holder within the chamber, the substrate holder having an
upper surface over which a substrate to be deposited upon within the
chamber is to be received, the upper surface being elevated relative to the
chamber base wall;

at least one process chemical inlet to the deposition chamber
configured to introduce a process chemical into the deposition chamber
through the chamber top wall; the chamber sidewall comprising a chamber
surface extending from elevationally higher than the substrate holder upper
surface to elevationally lower than the substrate holder upper surface, the
chamber surface having a plurality of purge gas inlets to the chamber therein
which are received at least elevationally lower than the substrate holder
upper surface, the purge gas inlets being distinct from the at least one
process chemical inlet and being disposed at multiple elevations along the
chamber sidewall; and

a purge gas inlet passageway in fluid communication with the purge
gas inlets, the apparatus being configured to provide purge gas through the
purge gas inlets while providing a process chemical through the process
chemical inlet.

7. A chemical vapor deposition apparatus comprising:

a deposition chamber defined at least in part by a chamber sidewall
and a chamber base wall;
a substrate holder within the chamber,
at least one process chemical inlet to the deposition chamber, the at
least one process chemical inlet passing through a chamber lid within
opposes the chamber base wall;
a chamber outlet;
2
Appeal 2008-2369
Application 10/150,388

at least one of the chamber sidewall and chamber base wall
comprising a chamber surface having a plurality of purge gas inlets to the
chamber therein, the purge gas inlets being separate from the at least one
process chemical inlet;
a purge gas inlet passageway in fluid communication with the purge
gas inlets; and
wherein the purge gas inlets are of at least two different inlet sizes, at
least some of the purge gas inlets further from the chamber outlet being
larger than at least some of the purge gas inlets closer to the chamber outlet.

The Examiner relies upon the following prior art as evidence of
unpatentability:
Hirose 4,633,809 Jan. 6, 1987
Barbee 4,640,221 Feb. 3, 1987
Yuuki 5,618,349 Apr. 8, 1997
Sakai (as translated) JP 2002-371361 Dec. 26, 2002

Claims 1, 6, 9, 10, 11, 47, 52, 53, 54, and 56 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Yuuki.
Claims 3, 7, 55, 57, and 59-62 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yuuki in view of Hirose.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yuuki in view of Barbee.
Claims 48-51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yuuki in view of Sakai.
Claim 58 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yuuki and Hirose in view of Barbee.
3
Appeal 2008-2369
Application 10/150,388

Appellants do not separately argue with any reasonable specificity the
individual claims rejected under 35 U.S.C. § 102(b), except for claims 52-
54 (Br. 11-13). Therefore, we select the broadest independent claim 1 and
dependent claims 52-541 to decide this issue on appeal. With the exception
of independent claim 7, Appellants do not separately argue the various
rejections made under 35 U.S.C. § 103 of the remaining claims (Br. 13-17).
Therefore, we will separately address claim 7 below.

ISSUES ON APPEAL
The first issue is whether the Appellants have shown that the
Examiner reversibly erred in rejecting claims 1, 6, 9, 10, 11, 47, 52, 53, 54,
and 56 as anticipated by Yuuki.
For the reasons which follow, we determine that while the Examiner
has established a reasonable belief that claims 1, 6, 9, 10, 11, 47, and 56 are
anticipated by Yuuki, claims 52-54 are not anticipated by Yuuki.
The second issue is whether Appellants shown reversible error in the
Examiner’s determination that a person having ordinary skill in the art
would have found it obvious to arrive at the claimed invention of the
remainder of the claims in view of the applied prior art.
For the reasons which follow, we determine that the Appellants have
not shown that the Examiner erred with respect to claims 3, 5, 48-51, 57, and
58-62, but have shown reversible error with respect to claims 7 and 55.

1 These claims depend from claim 7.
4
Appeal 2008-2369
Application 10/150,388

OPINION
We determine the following Factual Findings (FF) from the record in this
appeal:
1. Yuuki describes a thermal treatment furnace in which
semiconductor wafers are subjected to an oxidation process, an impurity
diffusion process, or the like (col. 1, ll. 14-17). The furnace has a chamber
(see, e.g., Figs. 1, 2), a substrate holder (see, e.g., Fig. 6, wafer holder 115),
at least one first gas inlet configured to introduce a process chemical into the
chamber through the top chamber wall (see, e.g., Fig. 2, gas supply pipe
20a, 20A communicating with gas inlets Hu), a second gas inlet distinct
from the first gas inlet configured to introduce another gas into a plurality of
second gas inlets at multiple elevations along the sidewall (see, e.g., Figs. 1,
2, gas supply pipe 20b, 20B communicating with gas inlets Hb).
2. Yuuki introduces a vapor and forms an oxide film layer on the
wafers in the furnace (see, e.g., col. 2, ll. 18-29; col. 5, ll. 45-60).
3. Yuuki describes that “[f]or example, the gas inlet holes Ha2 and
Hb have a diameter of 3 mm and a hole density of one hole per 2 cm square”
(col. 3, ll. 32-34). Likewise, Yuuki describes that the holes Hu of Fig. 2 may
have a diameter of 3 mm and a hole density of one hole per 2 cm square
(col. 5, ll. 5-11).
4. Yuuki does not describe that the second gas inlets Hb are of at least
two different sizes, with at least some of the gas inlets Hb further from the
chamber outlet being larger than at least some of the gas inlets Hb closer to
the chamber outlet.

2 The gas inlet holes designated Ha in Fig 1A of Yuuki correspond to the gas
inlet holes designated Hu in Fig. 2.
5
Appeal 2008-2369
Application 10/150,388

Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
However, the law of anticipation does not require that the reference
‘teach’ what the subject patent teaches. Assuming that a reference is
properly ‘prior art,’ it is only necessary that the claims under attack, as
construed, ‘read on’ something disclosed in the reference, i.e., all limitations
of the claim are found in the reference, or ‘fully met’ by it. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
It is well established that while the features of an apparatus claim
may be recited functionally, the apparatus must be distinguished from the
prior art in terms of structure, rather than function. See In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997). Further, where patentability rests
upon a property (or function) of the claimed material (or structure) not
disclosed within the art, the PTO often has no reasonable method of
determining whether there is, in fact, a patentable difference between the
prior art materials and the claimed material. Therefore, where the claimed
and prior art products are identical or substantially identical, the PTO can
require an applicant to prove that the prior art products do not necessarily
possess the characteristics of his claimed product. In re Best, 562 F.2d 1252,
1255 (CCPA 1977); see also In re Schreiber, 128 F.3d at 1478.
The § 102 Rejection over Yuuki
We choose claim 1 to represent the claim grouping of claims 1, 6, 9,
10, 11, 47, and 56.
6
Appeal 2008-2369
Application 10/150,388

Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has properly identified
factual findings and reasoning for establishing a prima facie case of
anticipation of claims 1, 6, 9, 10, 11, 47, and 56 based on Yuuki.
The Examiner correctly finds that all the structure set out in claim 1 is
found in Yuuki (Ans. 3-5; FF 1). Appellants, however, contend that Yuuki
does not disclose a chemical vapor deposition apparatus. We disagree.
It is axiomatic that during examination proceedings, claims are given
their broadest reasonable interpretation consistent with the specification. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
Examiner has stated that the furnace of Yuuki is a chemical vapor deposition
apparatus (Ans. 3, 15). Yuuki does indeed introduce a vapor and does form
an oxide film layer on the wafers (FF 2). Appellants’ Specification does not
provide any specific definition of what constitutes a chemical vapor
deposition apparatus. Thus, Yuuki appears to describe all the structure
required for a chemical vapor deposition apparatus in accordance with
representative claim 1 (see, e.g., FF 1). While unnecessary to the
Examiner’s anticipation position for the claimed apparatus, Yuuki seemingly
describes the steps necessary for a chemical vapor deposition process to
occur (see, e.g., FF 2). For these reasons, we find that the furnace of Yuuki
reasonably appears to be a chemical vapor deposition apparatus as found by
the Examiner.
Even assuming arguendo that Appellants are correct that the furnace
of Yuuki is not de facto a chemical vapor deposition apparatus, the
Examiner also states the furnace of Yuuki is capable of being used as a
chemical vapor deposition apparatus (Ans. 15). We agree with the
7
Appeal 2008-2369
Application 10/150,388

Examiner. What method steps are actually performed in the furnace of
Yuuki is irrelevant; the issue is whether the apparatus of Yuuki is capable of
being used as a chemical vapor deposition apparatus. Likewise, the issue is
whether the two gas inlets 20a, 20b near the valves V1 and V2 reasonably
appear to have the capability to function as claimed. See, e.g., In re
Schreiber, 128 F.3d at 1478.
Appellants have provided no evidence, nor any persuasive line of
technical reasoning explaining why the furnace of Yuuki is not a chemical
vapor deposition apparatus. Nor have Appellants established why Yuuki’s
furnace is not capable of being used as a chemical vapor deposition
apparatus. Further, Appellants have not provided any evidence that the
apparatus of Yuuki (namely, the respective separate gas inlet ports 20a, 20b
which lead to separate gas inlets Ha/Hu and Hb) could not be used to
introduce a chemical process gas and a purge gas “while providing a process
chemical through the process chemical inlet” as set forth in claim 1.
The geometry of Yuuki’s furnace appears to be very similar to that
disclosed by Appellants; compare, e.g., Fig. 1 of Appellants’ with Figs. 1A
and 2 (with wafer holder 115 shown in Fig 6) of Yuuki. Given the structural
identity and similarity of Yuuki’s apparatus to Appellants’ apparatus as
claimed and disclosed respectively (see also FF 1), we determine that the
Examiner was justified in concluding that the furnace of Yuuki appears
reasonably capable of being used as a vapor deposition apparatus. We also
determine that the Examiner was justified in concluding that the furnace of
Yuuki appears reasonably capable of being used to introduce a chemical
process gas via 20a, 20A, Hu and a purge gas via 20b, 20B, Hb “while
8
Appeal 2008-2369
Application 10/150,388

providing a process chemical through the process chemical inlet” as set forth
in claim 1.
For these reasons, we determine that the Examiner has established that
the apparatus of the prior art (i.e., Yuuki) reasonably appears to be the same
as that claimed. Thus, the burden shifts to Appellants to prove that the
claimed apparatus is not the same as the prior art (e.g., establish with
evidence that Yuuki will not inherently function as claimed). See In re Best,
562 F.2d 1252, 1255 (CCPA 1977) (the burden shifts to applicant to prove
lack of a (i.e., a different) recited functional limitation if evidence shows
products (including apparatus) or processes are the same or similar); see
also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971), and In re Schreiber,
128 F.3d at 1478.
As discussed above, the Appellants have not submitted any evidence
to rebut the Examiner’s position.
Thus, we affirm the rejection of claim 1 as anticipated by Yuuki.
Dependent claims 52-54
Dependent claims 52-54 depend from independent claim 7. Claim 7
is not included in the rejection under § 102 based on Yuuki.
We agree with Appellants that the Examiner has not established that
claim 7 is anticipated by Yuuki (Br. 13).
Independent claim 7 requires that “the purge gas inlets are of at least
two different inlet sizes, at least some…further from the chamber outlet
being larger than at least some… closer to the chamber outlet”. Yuuki does
not teach such a feature (see, FF 3, 4). Indeed, the Examiner agrees that
claim 7 does not include this feature (Ans. 10, section (i)). The only
rejection of claim 7 is under 35 U.S.C. § 103 (Ans. 8).
9
Appeal 2008-2369
Application 10/150,388

We are constrained by these circumstances to reverse the Examiner’s
§ 102 rejection based on Yuuki of claims 52-54.
The § 103 Rejection over Yuuki and Hirose
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
Claims 7 and 55
Applying the legal principles with respect to obviousness to the
factual findings in this record, we determine that the Examiner has not
properly identified factual findings and reasoning for establishing a prima
facie case of obviousness based on Yuuki in view of Hirose with respect to
claims 7 and 55.
As discussed above, Yuuki does not describe the two different inlet
sizes as recited in claim 7. The Examiner does not rely upon Hirose to
teach or suggest this feature; the Examiner merely concludes that “[i]t
would have been obvious to one of ordinary skill in the art…to optimize
the dimension of Yuuki’s purge gas... inlets…Further, it is well established
that changes in apparatus dimensions are within the level of ordinary skill
in the art.” (Ans. 11-12) 3.

3 The Examiner cited several prior legal decisions in support of this
conclusion (Ans. 12). In accordance with MPEP § 2144.04, if the facts in a
prior legal decision are sufficiently similar to those in an application under
10
Appeal 2008-2369
Application 10/150,388

The deficiency of the Examiner’s obviousness conclusion is that
claim 7 does not merely set forth a change in the dimension of the purge
gas inlets. The claim language sets forth a specific geometric relationship
of two different sizes of inlets relative to the chamber outlet in order to
achieve a specific result (namely, a greater volumetric flow of purge gas
further from the chamber outlet than closer thereto, Spec. 8:15-214). We
note that of the cases relied upon by the Examiner, In re Rose, 220 F.2d
459 (CCPA 1955) and In re Rinehart, 531 F.2d 1048 (CCPA 1976)
involved mere scaling up of prior art sizes; whereas Gardner v. TEC
Systems, Inc., 725 F. 2d 1338 (Fed. Cir. 1984) involved a situation wherein
the evidence showed that the claimed dimensional limitations did not
perform any differently than the prior art. The situation before us does not
involve “mere scaling up” of the prior art, nor is there any evidence nor
rationale provided by the Examiner that the claimed dimensional
relationship would not perform any differently than the prior art device.
We therefore must agree with Appellants that no support for the
Examiner’s conclusory statement is found in the applied prior art or
otherwise (Br. 16).
The Examiner has not clearly articulated any reason why an artisan
would have made such a modification to the furnace of Yuuki. We fail to
understand the Examiner’s reasoning that optimizing the dimensions would
be an obvious exercise in order to “accommodate varying
wafers/substrates” in Yuuki, as alleged by the Examiner (Ans. 18). The
examination, the Examiner may use the rationale used by the court. We fail
to see any such similarity of the facts of the prior legal decisions cited by the
Examiner to the facts of the instant application.
4 The drawings do not appear to illustrate this feature of the invention.
11
Appeal 2008-2369
Application 10/150,388

Examiner does not explain how the geometry as recited in claim 7 would
function to “accommodate varying wafers/substrates” in the furnace of
Yuuki.
Thus, the evidence presented by the Examiner falls short of
supporting a prima facie case of obviousness. We are constrained by these
circumstances to reverse the Examiner’s § 103 rejection based on Yuuki
and Hirose of claims 7 and 55.
Claims 3, 57 and 59-62
Appellants do not separately argue the § 103 rejection of these claims.
Rather, Appellants rely upon the same arguments made with respect to
claim 1 for dependent claim 3, independent claim 57 and claims 59-62,
which depend on claim 57 (see, e.g., Br. 15, 17). In this regard, it is noted
that pointing out what claim 57 covers does not amount to a separate
argument for the patentability thereof (Br. 16; 37 C.F.R. § 41.37 (c) (vii)).
Accordingly, we find these arguments unpersuasive for the same reasons
discussed above.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 3,
57, and 59-62 based on the combined teachings of Yuuki and Hirose.
The remaining § 103(a) rejections
Claims 5, 48-51, and 58
Appellants do not separately argue the § 103 rejections of any of the
remaining claims (namely, claims 5, 48-51, and 58). Rather, Appellants rely
upon the same arguments made with respect to claim 1 (Br. 13-17). We find
these arguments unpersuasive for the same reasons discussed above.
Accordingly, we sustain the Examiner’s § 103 rejection of claim 5
based on the combined teachings of Yuuki and Barbee, the § 103 rejection
12
Appeal 2008-2369
Application 10/150,388

of claims 48-51 based on the combined teachings of Yuuki and Sakai; and
the Examiner’s § 103 rejection of claim 58 based on the combined teachings
of Yuuki, Hirose, and Barbee.
CONCLUSION
In summary:
The § 102 rejection based on Yuuki of claims 1-3, 5-8, 16-18, 20, and
21-29 is affirmed for the foregoing reasons and the reasons stated in the
Answer; whereas the § 102 rejection based on Yuuki of claims 52-54 is
reversed.
The § 103 rejection based on Yuuki in view of Hirose of claims 3, 57,
and 59-62 is affirmed. The § 103 rejection based on Yuuki in view of
Hirose of claims 7 and 55 is reversed.
The § 103 rejection based on Yuuki in view of Barbee of claim 5, the
§ 103 rejection based on Yuuki in view of Sakai of claims 48-51, and the §
103 rejection based on Yuuki and Hirose in view of Barbee of claim 58 are
affirmed.
The decision of the Examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

PL Initial:
sld
13
Appeal 2008-2369
Application 10/150,388

WELLS ST. HOHN P.S.
601 W. FIRST AVENUE,
SUITE 1300
SPOKANE, WA 99201
14