Ex Parte Moffatt et al

Patent Trial and Appeal Board

Jan 30, 2014

12212157 (P.T.A.B. Jan. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/212,157 09/17/2008 STEPHEN MOFFATT AM13561/FEP/PJT 9820
44257 7590 01/31/2014
PATTERSON & SHERIDAN, LLP - - APPM/TX
3040 POST OAK BOULEVARD, SUITE 1500
HOUSTON, TX 77056
EXAMINER
NIESZ, JAMIE C
ART UNIT PAPER NUMBER
2822
MAIL DATE DELIVERY MODE
01/31/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEPHEN MOFFATT,
ABHILASH J. MAYUR,
SUNDAR RAMAMURTHY,
JOSEPH RANISH,
and AARON HUNTER
__________

Appeal 2011-009073
Application 12/212,157
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009073
Application 12/212,157

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A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 13-19 and 21-34. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and enter new grounds of rejection.
The subject matter on appeal is directed to an apparatus for thermally
treating a substrate. Claims 13 and 23 are the only independent claims on appeal
and are reproduced below from the Claims Appendix of the Appeal Brief dated
October 28, 2010 (“Br.”).
13. An apparatus for thermally treating a substrate, comprising:
a movable substrate support;
a first energy source for directing annealing energy in a first
shape toward a first portion of a surface of the substrate support;
a second energy source for directing preheat energy in a second
shape different from the first shape toward a second portion of the
surface of the substrate support; and
an optical assembly housing the first and second energy
sources.
23. A process chamber for annealing a semiconductor substrate,
comprising:
a substrate support disposed in the chamber and defining a
processing area;
a first energy source configured to direct a first energy toward a
first region of the processing area; and
a second energy source configured to direct a second energy
toward a second region of the processing area, wherein the first region
and the second region have different shapes and are each smaller than
the processing area, and wherein the first energy is different from the
second energy.
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Application 12/212,157

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The claims on appeal stand rejected as follows:
(1) claims 13, 14, 18, 19, 22-25, 27, and 29-34 under 35 U.S.C. § 102(b)
as anticipated by Nikitin;1
(2) claims 15, 21, 26, and 28 under 35 U.S.C. § 103(a) as unpatentable
over Nikitin in view of Gat;2 and
(3) claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over
Nikitin.
B. DISCUSSION
1. Claim 13
Claim 13 recites an apparatus for thermally treating a substrate. The
limitations at issue in claim 13 are:
a first energy source for directing annealing energy in a first
shape toward a first portion of a surface of the substrate support [and]
a second energy source for directing preheat energy in a
second shape different from the first shape toward a second portion of
the surface of the substrate support[.]
Br., Claims App’x (emphasis added).
These limitations are functional limitations, i.e., they define the first and
second energy sources by what they do. See Ans. 4.3 Elements of an apparatus
may be recited either structurally or functionally. However, where, as here, the
Appellants have chosen to define elements functionally, the apparatus must be
distinguished from the prior art in terms of structure rather than function. See In re

1 US 2002/0050488 A1, published May 2, 2002.
2 US 7,038,174 B2, issued May 2, 2006.
3 Examiner’s Answer dated December 21, 2010.
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Application 12/212,157

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Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well settled that patentability of
apparatus claims must depend upon structural limitations and not upon statements
of function.”). Thus, we turn to the Appellants’ Specification to identify the
structure that performs the claimed functions.
The Appellants disclose that the first energy source is generally adapted to
deliver electromagnetic energy to anneal certain desired regions of the substrate
surface and “[t]ypical sources of electromagnetic energy include, but are not
limited to optical radiation sources (e.g., lasers), electron beam sources, ion beam
sources, microwave energy sources, visible light sources, and infra-red sources.”
Spec., para. [0055]. In one embodiment, the energy source may be a laser that is
adapted to deliver radiation at a wavelength between about 500 nm and about 11
micrometers, and in some embodiments, the laser energy may be delivered in
pulses. Spec., paras. [0055], [0056]. The Appellants also disclose that the first
energy source generally delivers a power density of at least 1 W/cm2 to a substrate
surface. Spec., para. [0050]. The Appellants disclose that the second energy
source may also be a laser. Spec., paras. [0056], [0080].
Nikitin discloses an apparatus for thermally processing quartz objects
comprising, inter alia, laser 510 and laser 505. See, e.g., Nikitin, para. [0067].
The Examiner finds laser 510 corresponds to the first energy source recited in
claim 13 and is capable of directing annealing energy in a first shape toward a first
portion of a substrate support. The Examiner also finds laser 505 corresponds to
the second energy source recited in claim 13 and is capable of directing preheat
Appeal 2011-009073
Application 12/212,157

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energy in a second shape toward a second portion of the substrate support. Supp.
Ans. 2;4 Ans. 4.
The Examiner’s findings are supported by the record. Nikitin discloses that
quartz objects are thermally processed as follows:
[The] method . . . begins with applying a first of the beams of laser
energy to the quartz object, the first beam having a first wavelength,
energy level or focal characteristic. Such focal characteristics may
include, but is [sic, are] not limited to, focal length, beam geometry,
and energy distribution profile. Next, a second of the beams of laser
energy is combined with the first beam to form a composite beam.
The second beam may have a second wavelength, energy level and/or
focal characteristic that is different from that of the first beam. The
composite beam is then used to thermally process (e.g., selectively
heat, fusion weld, etc.) the quartz object.
Nikitin, para. [0013]. We find the first beam of laser energy (i.e., the beam
generated by laser 505) preheats the quartz object. See Nikitin, para. [0059]
(preheating is preferably applied with a laser); Nikitin, para. [0067] (welding with
the composite beam is performed after preheating).
Nikitin discloses that first laser 505 (which generates the first beam of laser
energy) and second laser 510 (which generates the second beam of laser energy)
can be selectively turned on/off or modulated to deliver a desired amount of energy
within their beams. Nikitin also discloses that laser 505 and laser 510 may be
implemented as programmably controllable sealed CO2 lasers that selectively
provide Gaussian beam energy distribution profiles at powers of up to 3000W.

4 Corrected Examiner’s Answer dated February 1, 2011.
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Nikitin, para. [0067]. In one embodiment, laser 505 generates a laser beam at a
wavelength of 10.6 microns.5 Nikitin, para. [0079].
Nikitin discloses that adjustments to wavelength, energy level, and/or focal
characteristics may be made to one or both of the laser beams generated by laser
505 and laser 510. Nikitin, para. [0070]. According to Nikitin:
It is contemplated that setting these characteristic differences or
adjusting the beams to create such differences is typically done as of
an initialization procedure within laser energy source 170 (e.g.,
Laser[ ]1[ ]505 and Laser[ ]2[ ]510). However, it may be made while
the laser energy source 170[6] is already generating a composite beam
and a different type of thermal processing of the quartz is desired,
such as going from simply heating the quartz to fusion welding the
quartz. It is further contemplated that these adjustments may be made
manually to the lasers or programmatically (e.g., via signals sent by
controller 100 to laser power supply 171 or directly to the laser energy
source).
Nikitin, para. [0076].
Based on the foregoing, we find laser 510 may be adjusted within a broad
range of parameters, including parameters which overlap or are encompassed by
parameters disclosed by the Appellants as useful for directing annealing energy to
a substrate support. Thus, the evidence of record supports the Examiner’s finding
that laser 510 is capable of directing annealing energy toward a substrate support.
We note that the Examiner’s finding is further strengthened by the fact that claim
13 is not limited to a particular substrate.

5 As pointed out above, the Appellants disclose that the first energy source may be
a laser that is adapted to deliver radiation at a wavelength between about 500 nm
and about 11 micrometers. Spec., para. [0055]. 10.6 microns is equal to 10.6
micrometers and falls within this range.
6 Laser energy source 170 comprises Laser 1 (505) and Laser 2 (510). Nikitin,
para. [0067].
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For the reasons set forth above, we affirm the § 102(b) rejection of claims
13, 14, 18, 19, and 22. However, since the Examiner did not expressly rely on
portions of the record identified in this decision, we designate our affirmance a
new ground of rejection.
Claims 15-17 and 21 depend from claim 13. Therefore, the § 103(a)
rejection of claims 15-17 and 21 is also affirmed and designated a new ground of
rejection.
2. Claim 23
The Appellants reproduce claim 23 and generally argue that Nikitin does not
“teach, show, suggest, or make obvious” the subject matter recited in claim 23.7
Br. 11.
Claim 23 does not recite the functional limitations recited in claim 13 (i.e.,
“a first energy source for directing annealing energy” and “a second energy source
for directing preheat energy”) (emphasis added). Claim 23 merely recites, inter
alia, “a first energy source configured to direct a first energy toward a first region
of the processing area” and “a second energy source configured to direct a second
energy toward a second region of the processing area.” Br., Claims App’x.
The Examiner finds Nikitin discloses a first energy source (510) configured
to direct a first energy toward a first region of the processing area and a second
energy source (505) configured to direct a second energy toward a second region
of the processing area. Supp. Ans. 3. The Appellants do not direct us to any error
in the Examiner’s findings. Therefore, the § 102(b) rejection of claim 23 is

7 The Appellants incorrectly identify independent claim 23 as “claim 24” on pages
11 and 12 of the Appeal Brief. Br. 11.
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sustained for the reasons set forth in the corrected Examiner’s Answer dated
February 1, 2011.
The Appellants do not present substantively distinct arguments in support of
the separate patentability of dependent claims 24, 25, 27, and 29-34. Therefore,
the § 102(b) rejection of claims 24, 25, 27, and 29-34 is sustained.
As for dependent claims 26 and 28, the Appellants merely argue that Gat
does not remedy the deficiencies of Nikitin with respect to independent claim 23.
Br. 12. For the reasons set forth above, there are no deficiencies in Nikitin that
require curing by Gat in the rejection of claim 23. Therefore, the § 103(a) rejection
of claims 26 and 28 is also sustained.
C. DECISION
The decision of the Examiner is affirmed. However, the § 102(b) rejection
of claims 13, 14, 18, 19, and 22, and the § 103(a) rejection of claims 15-17 and 21
have been designated as new grounds of rejection. 37 C.F.R. § 41.50(b) provides
that “[a] new ground of rejection . . . shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .
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Application 12/212,157

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(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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
(37 C.F.R. § 41.50(b))

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