Ex Parte Miyano et al

Board of Patent Appeals and Interferences

Oct 15, 2007

10273147 (B.P.A.I. Oct. 15, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JUNICHI MIYANO,
KIYOHIKO TOSHIKAWA, and YOSHIKAZU MOTOYAMA
______________

Appeal 2007-0496
Application 10/273,147
Technology Center 1700
_______________

Decided: October 15, 2007
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 12 in the Office Action mailed
June 2, 2004 (Office Action). 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. §
41.31(a) (2005).
We affirm-in-part the decision of the Primary Examiner.
Claims 1 and 10 illustrate Appellants’ invention of a CVD apparatus,
and are representative of the claims on appeal:
1. A CVD apparatus comprising:

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Application 10/273,147
a chamber for storing therein an object to be processed;
a gas supply pipe for supplying a material gas to the chamber;
a light source formed outside of the chamber, the light source
providing vacuum ultraviolet light;
a transparent plate provided in the chamber, for allowing the vacuum
ultraviolet light to pass therethrough; and
a heater for heating the transparent plate, which is provided directly
on the transparent plate.
10. A CVD apparatus comprising:
a chamber for storing therein an object to be processed;
a gas supply pipe for supplying a material gas to the chamber;
a light source formed outside of the chamber, the light source
providing vacuum ultraviolet light;
a transparent plate provided in the chamber, for allowing the vacuum
ultraviolet light to pass therethrough; and
a mask member for controlling the transmitted amount of the vacuum
ultraviolet light, which is provided on the transparent plate and between said
transparent plate and said light source.
The Examiner relies upon the evidence in these references (Answer1
3):
Anderson US 5,551,982 Sep. 3, 1996
Suzuki US 5,593,608 Jan. 14, 1997
Ito US 6,072,162 Jun. 6, 2000
Lee US 6,086,679 Jul. 11, 2000
Shi US 6,284,050 Sep. 4, 2001
Appellants request review of the following grounds of rejection under
35 U.S.C. § 103(a) advanced on appeal (Br.2):

1 We refer to the second Examiner’s Answer mailed July 14, 2006, pursuant
to the Board Order entered October 27, 2005, which required certain
procedural changes in the first Answer mailed January 11, 2005.
2
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Application 10/273,147
claims 1, 2, 4 through 7, and 9 as unpatentable over Anderson in view of Lee
(Office Action 23);
claims 11, 12, 21, 23, and 24 as unpatentable over Anderson in view of Lee
and Ito (id. 5);
claims 3, 10, and 20 as unpatentable over Anderson in view of Lee and Shi
(id. 8);
claim 8 as unpatentable over Anderson in view of Lee and Suzuki (id. 9);
claims 17 and 18 as unpatentable over Anderson in view of Lee, Shi, and Ito
(id.);
claim 19 as unpatentable over Anderson in view of Lee, Shi, and Suzuki (id.
10); and
claim 22 as unpatentable over Anderson in view of Lee, Ito, and Shi (id.).
Appellants argue the claims in the first, second, and fourth grounds of
rejection as a group; claims 10 and 20 as a group; and the remainder
separately. Thus, we decide this appeal based on claims 1, 3, 8, 10, 11, 17,
18, 19, and 22. 37 C.F.R. § 41.37(c)(1)(vii) (2005).
The issues in this appeal are whether the Examiner has carried the
burden of establishing a prima facie case in each of the grounds of rejection
advanced on appeal.

2 We refer to the Amended Brief filed December 2, 2005, pursuant to the
Board Order entered October 27, 2005. We refer to the first Reply Brief
filed March 7, 2005, which was appropriately noted by the Examiner in the
communication mailed March 17, 2005. See 37 C.F.R. §§ 41.41(a)(1) and
41.43(a)(1) (September 2004). We observe the second Reply Brief filed
July 25, 2005, duplicates the first Reply Brief. The second Reply Brief was
noted by the Examiner with respect to the filing date of the first Reply Brief
in the communication mailed October 17, 2006.
3 The Examiner states that the grounds of rejection are set forth in the Office
Action. Answer 3-4.
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We first consider the ground of rejection of claim 10 over the
combined teachings of Anderson, Lee and Shi. The plain language of this
claim specifies a CVD apparatus comprising at least, among other things,
with reference to Specification Fig. 3, any vacuum ultraviolet light (VUV)
source 3 outside of the chamber and any manner of transparent plate 2 in any
part, exterior or interior, of the chamber, with any manner of mask member
30 provided between VUV source 3 and plate 2 which controls to any extent
the amount of VUV light passing through plate 2.
We find Anderson would have disclosed to one of ordinary skill in
this art a CVD apparatus that has, with reference to Fig. 1, high intensity
lamps 34, emitting visible or infrared (IR) frequencies, mounted around
chamber 12 on unlabeled brackets; the light from the lamps is transmitted
through upper and lower domes 14,16 which are transparent to the type of
electromagnetic radiation, and is generally quartz; and the light heats both
sides of susceptor 20 that, in turn, heats gases leading to the deposit of a film
on a substrate on susceptor 20. Anderson, e.g., col. 1, ll. 8-13; col. 2,
l. 63 to col. 3, l. 7; col. 3, ll. 40-42; col. 3, l. 61, to col. 4, l. 9; and col. 7, ll.
8-34.
We find Lee would have disclosed to one of ordinary skill in this art a
CVD apparatus that has, with reference to Fig. 4, tube 420 attached to
deposition chamber 432, wherein the tube which is transparent to the type of
electromagnetic radiation used, IR, UV, or VUV, the material of the tube
thus selected from certain materials since VUV light does not pass easily
through quartz; and chamber 432 is surrounded by heater 436. Lee, e.g., col.
20, l. 41, to col. 21, l. 24, and col. 23, l. 40-61.
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Application 10/273,147
We find Shi would have disclosed to one of ordinary skill in this art a
CVD apparatus that has, with reference to Fig. 1, UV lamp 154 positioned
over optical window 140 which transmits UV light into deposition chamber
104 to wafer 112 on chuck 108, wherein window 140 is heated by UV lamp
154 or “a separate heater (not shown) . . . installed adjacent the window;”
and optical shutter 144 can be mounted directly below window 140 “to
control the exposure of the wafer surface to UV light without turning the
lamp on and off.” Shi, e.g., col. 2, ll. 12-23, and col. 3, l. 22 to col. 4, l. 46.
The Examiner concludes, among other things, it would have been
obvious to one of ordinary skill in this art to add Shi’s optical shutter 140
between the VUV and other lamps and the transparent plate of the CVD
apparatus taught by the combined teachings of Anderson and Lee, with the
expectation of controlling the exposure of the wafer as taught by Shi. Office
Action 8-9; Answer 8-10. Appellants contend Shi’s shutter 144 is between
transparent window 140 and wafer 112, and not positioned between UV
lamp 154 and transparent window 140 as required by the position limitation
of the mask member in claim 10. Br. 15. Appellants contend the claimed
position of the mask member prevents light from passing into the transparent
plate, and if the mask member is positioned as taught by Shi, the mask
member will be subject to fogging by the formation of a film thereon,
arguing that the criticality of the claimed arrangement is thus established.
Id. 15-16; see Specification 3:22-26.
We determine the combined teachings of Anderson, Lee and Shi, the
scope of which we determined above, provide convincing evidence
supporting the Examiner’s case that the claimed invention encompassed by
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claim 10, as we interpreted this claim above, would have been prima facie
obviousness to one of ordinary skill in the CVD arts familiar with CVD
apparatus configurations. There is no dispute that the combined teachings of
Anderson and Lee would have lead to a CVD apparatus having a VUV light
and a transparent plate as claimed. We agree with the Examiner that, prima
facie, one of ordinary sill in this art routinely following the combined
teachings of Anderson, Lee and Shi would have reasonably positioned Lee’s
optical shutter as a mask between the VUV light and the transparent plate
with the reasonable expectation of controlling the exposure of the substrate
to the VUV light as taught by Shi. We determine that this person would
have recognized from Shi that the optical shutter would function as a mask
regardless of the side of the transparent plate on which it was positioned.
Thus, one of ordinary skill in this art would have arrived at the claimed CVD
apparatus encompassed by claim 10, including all of the limitations thereof
arranged as required therein, without recourse to Appellants’ Specification.
See, e.g., KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d
1385, 1396 (2007) (“if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”); In re Kahn, 441 F.3d 977,
985-88, 78 USPQ2d 1329, 1334-37 (Fed. Cir. 2006); In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981);4 In re Sovish, 769 F.2d 738,

4 The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
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743, 226 USPQ 771, 774 (Fed. Cir. 1985) (skill is presumed on the part of
one of ordinary skill in the art); In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969) (“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”);
see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
Appellants’ contentions do not successfully rebut the prima facie case.
We determine that the advantage of not exposing the mask member to film
forming gases if positioned outside of the deposition chamber between the
transparent light and the VUV light relied on by Appellants would have been
apparent to one of ordinary skill in this art, and thus, on this record, this
advantage does not establish an unexpected critical result.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Anderson, Lee and Shi with Appellants’
countervailing evidence of and argument for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 10 and 20 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).

references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425, 208 USPQ at 881.
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Considering now the ground of rejection of claim 18, dependent on
claim 10, we determine the plain language of this claim does not specify that
the claimed apparatus has a heater. The teachings of Ito, added to the
combined teachings of Anderson, Lee, and Shi, do not address the limitation
of the position of the transparent plate relative to the internal surface of the
chamber in claim 18, which limitation in any event is not argued by
Appellants. See Office Action 9-10; Br. 19.
Accordingly, the Examiner having established a prima facie case of
obviousness, we affirm the ground of rejection of claim 18 under 35 U.S.C.
§ 103(a) on the combined teachings of Anderson, Lee, Shi, and Ito for the
reasons discussed with respect to claim 10 and the combined teachings of
Anderson, Lee, and Shi.
With respect to the ground of rejection of claim 19, dependent on
claim 10, which specifies that the apparatus of claim 10 has a stirring fan
within the deposition chamber, the Examiner’s contention that one of
ordinary skill in the art would have used Suzuki’s stirring fan 12 in the CVD
apparatus of the combined teachings of Anderson, Lee, and Shi is not
disputed by Appellants in relying on arguments advanced with respect to
claim 10 and the combined teachings of Anderson, Lee, and Shi which we
addressed above. See Office Action 10; Br. 20.
Thus, the Examiner having established a prima facie case of
obviousness, we affirm the ground of rejection of claim 19 under 35 U.S.C.
§ 103(a) the combined teachings of Anderson, Lee, Shi, and Suzuki as well.
We do not reach the same conclusion with respect to claim 17, also
dependent on claim 10. The plain language of claim 17 attempts to modify
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claim 10 with the limitation “the heater is formed of at least one circular
heater,” and claim 10 does not contain “a heater” limitation necessary as
antecedent basis for the limitation of claim 17. Thus, claim 17 is indefinite
35 U.S.C. § 112, second paragraph. Therefore, we determine it is impossible
to ascertain the propriety of the Examiner’s ground of rejection of claim 17
under § 103(a) over the combined teachings of Anderson, Lee, Shi, and Ito.
See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970);
In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962).
Accordingly, we reverse the ground of rejection of claim 17 under
35 U.S.C. § 103(a) pro forma.5
The grounds of rejection of claim 1 and of claims 2 through 9
dependent thereon, are each based principally on the combined teachings of
Anderson and Lee, the scope of which references we determined above. The
plain language of claim 1 specifies a CVD apparatus comprising at least,
among other things, with reference to Specification Fig. 1, any VUV source
3 outside the chamber and any manner of transparent plate 2 in any part,
exterior or interior, of the chamber, wherein heater 20 is provided directly on
plate 2 for heating the plate.
The Examiner contends Anderson’s lamps 34 are heaters for
transparent domes 14,16 and are “provided directly on” the domes because
lamps 34 are mounted around chamber 12 and the “unlabelled mounting
pieces of Figure 1 supporting lamps 34 must be structurally tied to
Anderson’s chamber 12.” The Examiner argues the claim limitation
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“directly on” is broadly analogous to “supported by” or “supported on.”
Office Action 2; Answer 5. Appellants contend Anderson’s lamps 34 “are
disposed over, and spaced away from” dome 14, and not supported thereon.
Appellants argue lamps 34 are not “provided directly on” the dome because
the limitation “directly” means “without intervening space” such that “the
heater is supported by the transparent plate, without any intervening space.”
Br. 7; Reply Br.6 2-3.
We agree with Appellants that the subject claim limitation requires
that it is the heater which is” directly on” the transparent plate, wherein the
term “directly” is used consistent with the disclosure in the Specification and
with the common, dictionary meaning thereof.7 See Specification 7-8 and
Fig. 1. We further agree with Appellants that Anderson’s lamps 34 are the
heaters and are removed from the surface of upper and lower domes 14,16.
The Examiner has not established that one of ordinary skill in this art would
situate Anderson’s lamps 34 directly on upper and/or lower domes 14,16.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the grounds of rejection of claims 1 through 9 under 35 U.S.C.

5 The Examiner should consider the issue of the compliance of claim 17
with 35 U.S.C. § 112, second paragraph, upon further prosecution of the
appealed claims subsequent to the disposition of this appeal.
6 We refer to the first Reply Brief filed March 7, 2005, which was
appropriately noted by the Examiner in the communication mailed March
17, 2005. See 37 C.F.R. §§ 41.41(a)(1) and 41.43(a)(1) (September 2004).
We observe the second Reply Brief filed July 25, 2005, duplicates the first
Reply Brief. The second Reply Brief was noted by the Examiner with
respect to the filing date of the first Reply Brief in the communication
mailed October 17, 2006.
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§ 103(a).
The grounds of rejection of claim 11 and of claims 12 and 21 through
24 dependent thereon, are each based principally on the combined teachings
of Anderson, Lee, and Ito. The plain language of claim 11 is similar to claim
1 and specifies a CVD apparatus comprising at least, among other things,
with reference to Specification Figs. 1 and 2, ring heater 20 provided
directly on transparent plate 2 for heating the plate so that a central portion
of transparent plate 2 keeps its temperatures low relative to the peripheral
portion of the plate. We determined the scope of Anderson and Lee above.
Ito would have disclosed to one of ordinary skill in this art heat diffusion
plate 11 having heater 14 which has heating elements concentrically
arranged, that holds and heats a substrate. Ito, e.g., col. 6, ll. 4-46, col. 7,
ll. 1-14, col. 8, ll. 24-65, col. 10, ll. 31-48, and Figs. 1, 2, and 7-9.
The Examiner contends Ito’s plate 11 is transparent and concludes one
of ordinary skill in the art would have replaced one of Anderson’s “heaters
with Ito’s flush heater” so that the a central portion of the transparent plate
keeps its temperatures low relative to the peripheral portion of the plate as
claimed to control regional heating in Anderson’s processing chamber. The
Examiner contends the transparency of plate 11 is evinced by Ito’s
requirement for transmission of heat through the plate. Office Action 7-8;
Answer 6-8. Appellants contend there is no disclosure in Ito evincing plate
11 is or can be transparent, including no disclosure the transparency of plate
11 is necessary to transiting heat therethrough, and thus no disclosure or

7 See, e.g., directly, The American Heritage Dictionary of the English
Language 512 (4th ed., Boston, Houghton Mifflin Company, 2000).
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suggestion Ito’s plate 11 satisfies the limitation of a ring heater directly on a
transparent plate as required by claim 11. Appellants contend Ito provides
no motivation to heat Anderson’s upper dome 14 so that the dome 14 is
heated as specified in claim 11. Br., e.g., 11-13; Reply Br. 4-6.
The difficulty we have with the Examiner’s position is the structure of
Anderson’s CVD apparatus that would result from the replacement of one or
more lamps 34 with Ito’s plate 11 is unclear, particularly with respect to the
position therein of non-transparent plate 11. We determined that Anderson’s
lamps 34 did not constitute a heater on dome 14 which satisfied the
requirements of a heater directly on the transparent plate with respect to
claim 1, which language is also specified in claim 11. See above pp. 10 and
11. We determine here that one of ordinary skill in the art would not replace
any of Anderson’s lamps 34, transparent dome 14 with non-transparent plate
11 or susceptor 20 with non-transparent plate 11 as any of these
modifications would render Anderson’s apparatus unsatisfactory for its
intended purpose of heating both sides of susceptor 20 and thus, the
substrate thereon by the transmission of light from lamps 34 through upper
and lower domes 14, 16. See, e.g., In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). None of the possible structures
resulting from the Examiner’s proposed modifications result in the claimed
structural limitations of a transparent plate in a chamber allowing for the
transmission therethrough of VUV light, and the transparent plate having
directly thereon a ring heater that can heat different portion of the plate to
achieve different temperature as claimed, as Appellants point out. See
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Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,1050-54, 5 USPQ2d
1434, 1438-41 (Fed. Cir. 1988).
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the grounds of rejection of claims 11, 12, and 21 through 24 under
35 U.S.C. § 103(a).
In summary, we affirm the grounds of rejection of claims 10 and 18
through 20, and reverse the grounds of rejection of claims 1 through 9, 11,
12, 17, and 21 through 24.
The Primary Examiner’s decision 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)(1)(iv) (2007).
AFFIRMED-IN-PART

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