Ex Parte Musaka

Board of Patent Appeals and Interferences

Sep 23, 2002

08888499 (B.P.A.I. Sep. 23, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KATSUYUKI MUSAKA
____________
Appeal No. 1999-2512
Application No. 08/888,499
____________
ON BRIEF
____________
Before WARREN, WALTZ, and POTEATE, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 29 through 40 and 42 through 45, which are the
only claims remaining in this application. We have jurisdiction
pursuant to 35 U.S.C. § 134.
According to appellants, the invention is directed to a plasma
enhanced chemical vapor deposition process for depositing a
halogen-containing silicon dioxide onto a substrate from a mixture
of tetraethoxysilane (TEOS) and a halogen-containing gas, where the
plasma is formed by simultaneously turning on a plurality of power
Appeal No. 1999-2512
Application No. 08/888,499
1Of course, for the ground of rejection of claim 31 alone
under 35 U.S.C. § 103(a) over Nishiyama, we must consider claim
31. See In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465
(Fed. Cir. 2002).
2
sources having different frequencies (Brief, page 2). Appellants
state that claims 29-38 and 44 should be considered as one group
and claims 39-40, 42-43 and 45 should be considered as a second
group (Brief, page 4). Appellants do provide reasonably specific,
substantive arguments for the separate patentability of each group
(e.g., Brief, page 8). Accordingly, pursuant to the provisions of
37 CFR § 1.192(c)(7)(1997), we select one claim from each group
(i.e., claims 29 and 39) and decide the grounds of rejection in
this appeal on the basis of these claims alone, with the other
claims in each group standing or falling together.1 A copy of
illustrative claim 29 is attached as an Appendix to this decision.
The examiner has relied upon the following references as
support for the rejections on appeal:
Kuyel 4,282,267 Aug. 04, 1981
Yamazaki 4,461,783 Jul. 24, 1984
Ishihara et al. (Ishihara) 4,818,563 Apr. 04, 1989
Lane et al. (Lane) 4,894,352 Jan. 16, 1990
Chebi et al. (Chebi) 5,279,865 Jan. 18, 1994
Homma 5,288,518 Feb. 22, 1994
Nguyen et al. (Nguyen) 5,356,722 Oct. 18, 1994
Nishiyama et al. (Nishiyama) 5,429,995 Jul. 04, 1995
Musaka et al. (Musaka) 5,571,571 Nov. 05, 1996
Appeal No. 1999-2512
Application No. 08/888,499
2 For reasons of judicial economy, we have merged the
examiner's three separate rejections under section 112 since the
same claims have been rejected in each rejection.
3
The following rejections are before us for consideration in
this appeal:
(1) claims 29-38 and 44 stand rejected under the first and
second paragraphs of 35 U.S.C. § 112, as containing subject matter
which was not described in the specification in such a way as to
reasonably convey to one skilled in the art that the inventor has
possession of the subject matter in question (Answer, page 7), for
lack of enabling disclosure (Answer, page 4), and as indefinite
(id.);2
(2) claims 29-30, 32-34, 38 and 44 stand rejected under
35 U.S.C. § 102 (e) as anticipated by Nishiyama (Answer, page 8);
(3) claims 39-40, 42-43 and 45 stand rejected under 35 U.S.C.
§ 103 (a) as unpatentable over Nishiyama (Answer, page 9);
(4) claim 31 stands rejected under 35 U.S.C. § 103 (a) as
unpatentable over Nishiyama in view of Chebi (Answer, page 10);
(5) claims 29-40 and 42-45 stand rejected under 35 U.S.C.
§ 103 (a) as unpatentable over Lane in view of Ishihara and
Yamazaki or Kuyel or Chebi (Answer, page 11);
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Application No. 08/888,499
4
(6) claims 29-32, 38-40 and 42-45 stand rejected under
35 U.S.C. § 103 (a) as unpatentable over Homma in view of Chebi or
Nguyen (Answer, page 17); and
(7) claims 29-33, 38-40 and 42-45 stand rejected under the
judicially created doctrine of obviousness-type double patenting
over claims 1-10 of Musaka (Answer, page 19).
We reverse the examiner's rejections based on 35 U.S.C. § 112,
first and second paragraphs, and the section 103 (a) rejections
with Lane or Homma as the primary references. We affirm the
rejection for obviousness-type double patenting and all of the
examiner's rejections under section 102(e) or 103 (a) with
Nishiyama as a primary or sole reference. Accordingly, the
decision of the examiner is affirmed-in-part. Our reasons follow.
OPINION
A. The Rejections under 35 U. S. C. § 112
Any analysis of the claims for compliance with section 112
must first begin with the requirements of the second paragraph. See
In re Moore, 439 F.2d 1232, 1234-35, 169 USPQ 236, 238 (CCPA 1971).
The legal standard for definiteness under the second paragraph of
section 112 is whether one of ordinary skill in the art would have
Appeal No. 1999-2512
Application No. 08/888,499
5
been apprised of the scope of the claims when read in light of the
specification. See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). As with any rejection for
unpatentability, the initial burden of proof rests with the
examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). In the rejection on appeal, the examiner
fails to state any reasons or evidence to support the rejection
under section 112, second paragraph (see the Answer, page 4).
Since the examiner uses the terms "confusing" and "confusion in the
intended meaning" when discussing the rejection for lack of
enablement under the first paragraph of section 112 (id.), we will
consider the explanation on pages 4-7 of the Answer to also apply
to the rejection under the second paragraph of section 112.
With regard to the rejection under the first paragraph of
section 112 for lack of enablement, the examiner finds appellants'
terminology "confusing" since the term "vacuum deposition chamber"
is allegedly unclear since it appears to include both the "plasma
creation chamber 80" and the "deposition chamber 78" while the
specification defines this term differently (Answer, page 4). The
examiner finds that the term "vacuum deposition chamber" as read in
light of the specification would appear to refer to chambers 78 or
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6
38, except when microwaves are supplied the term refers to the
plasma creation chamber where no deposition takes place. Id.
As correctly argued by appellants, parallel plate reactors and
ECR chambers were well known in the art at the time of the present
invention (Brief, page 5; Reply Brief, page 2). The examiner has
not met the initial burden of establishing that one of ordinary
skill in this art would not have been apprised of the scope of the
claimed term "forming a plasm in said chamber." We determine that
one of ordinary skill would have known where the plasma was formed
depending on the power source, as taught by appellants'
specification (pages 7-9 and 11-13). Similarly, with regard to
enablement, the examiner has not found any underlying factual
criteria that would support a conclusion of lack of enabling
disclosure. See In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510,
1513 (Fed. Cir. 1993); In re Wands, 858 F.2d 731, 735, 8 USPQ2d
1400, 1404 (Fed. Cir. 1988). The examiner has failed to show that
one of ordinary skill in this art would not know how to make and
use the invention from appellants' original disclosure, regardless
of the terms employed to denote where the plasma is created or
deposited.
With regard to the rejection based on the "written
description" requirement of section 112 (Answer, page 7), the
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Application No. 08/888,499
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examiner states that there is no description in the original
specification to support the claimed term "a plurality of power
sources connected to said chamber." The examiner refers to Figures
3 and 5 for the showing that no power sources are connected to the
chamber, but they are "enclosed or associated therewith." Id.
Again as correctly argued by appellants, one of ordinary skill
in the art knew how to use two power sources and connect them to
the chamber (Brief, page 6; see also the specification, page 4).
The examiner apparently has construed "connected to said chamber"
as meaning directly connected to the chamber. However, the
examiner's construction is not reasonable in light of the
specification, as shown by Figures 3 and 5. See In re Morris, 127
F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). In view of
this claim construction, we determine that the subject matter in
question was described in the original specification in such a
manner that would have reasonably conveyed to one of ordinary skill
in the art that appellants were in possession of the claimed
invention. See In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ
465, 467 (CCPA 1978).
For the foregoing reasons, we determine that the examiner has
not met the initial burden of establishing noncompliance with the
written description, enablement, and definiteness requirements of
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Application No. 08/888,499
8
35 U.S.C. § 112. Accordingly, we cannot sustain any of the
examiner's rejections based on the first and second paragraphs of
35 U.S.C. § 112.
B. The Rejections over Nishiyama
The examiner sets forth findings of fact and conclusions of
law based on Nishiyama on pages 8-10 of the Answer. Appellants do
not challenge either the examiner's factual findings or conclusions
of law. The only argument concerning Nishiyama presented by
appellants is that Nishiyama is not "prior art," and appellants
rely on their priority date to overcome this reference (Brief,
pages 6-7). This argument is not well taken since appellants have
not filed a certified translation of their foreign priority
document and thus are not entitled to their priority date of Apr.
17, 1993. See the Manual of Patent Examining Procedure (MPEP),
§ 201.15, 7th ed., Rev. 1, Feb. 2000. It is noted that the
effective U. S. filing date of Nishiyama is July 16, 1993, but we
see no relevance, and appellants have not explained the relevance,
of the submission of a translation of Nishiyama's earliest foreign
priority document (Brief, page 7).
The examiner has combined Chebi with Nishiyama in the
rejection of claim 31 for the teaching in Chebi that microwave
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9
frequency power sources produce advantageous results for the
deposition of silicon dioxide in high aspect ratio substrates
(Answer, page 10). From these findings, the examiner concludes
that it would have been obvious to use the technique of producing
plasma taught by Chebi in the process of Nishiyama for the
desirable results achieved with high aspect ratio substrates (id.).
We agree.
Appellant concedes that microwave power sources were known at
the time of the present invention (Brief, page 8) but argues that
Chebi is not directed to depositing a fluorine-containing silicon
dioxide layer, nor using TEOS and a halogen-containing gas as
precursors (Brief, page 7). Appellant's argument is correct but
not persuasive. As found by the examiner, the process of Chebi is
directed to the same purposes as appellant's process, namely
deposition of silicon dioxide from precursor gases where spacing
between wires is very small, i.e., where the aspect ratio is high
(Answer, page 10). Accordingly, we determine that it would have
been well within the ordinary skill in this art to use other well
known power sources to create a plasma, as shown by Chebi, in the
process of Nishiyama, with a reasonable expectation of success.
See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991).
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For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
anticipation and obviousness which has not been adequately rebutted
by appellant. Accordingly, the rejections of claims 29, 30, 32-34,
38 and 44 under 35 U.S.C. § 102(e) over Nishiyama; claims 39-40,
42-43 and 45 under 35 U.S.C. § 103 (a) over Nishiyama; and claim
31 under 35 U.S.C. § 103(a) over Nishiyama in view of Chebi are
affirmed.
C. The Rejection for Obviousness-type Double Patenting
The examiner finds that claims 29-33, 38-40 and 42-45 are not
patentably distinct from the claims of Musaka since both sets of
claims require the presence of halogen in silicon dioxide as it is
deposited from TEOS and a source of fluorine when using a plasma
process of like frequencies (Answer, page 19). Appellant only
argues that "[t]his application [sic, patent] is not prior art"
(Brief, page 14) and "Musaka ... is not prior art" (Reply Brief,
page 3). Appellant contends that "the issue here is one of prior
art, not obviousness." Id.
As correctly argued by the examiner (Answer, page 20),
appellant's contention is not well taken. To support a rejection
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under the judicially created doctrine of obviousness-type double
patenting, the reference need only be commonly assigned and
copending, not prior art under 35 U.S.C. § 102/§ 103. See In re
Braithwaite, 379 F.2d 594, 600 n.4, 154 USPQ 29, 34 n.4 (CCPA
1967).
For the foregoing reasons and those set forth in the Answer,
we determine that the examiner has established a prima facie case
of obviousness-type double patenting in view of Musaka, which has
not been adequately rebutted by appellant. Accordingly, the
examiner's rejection for obviousness-type double patenting is
affirmed.
D. The Rejection over Lane
As correctly surmised by the examiner, the "main issue" or
dispositive issue in the rejection over Lane as the primary
reference is whether Lane discloses or suggests the formation of a
silicon dioxide film containing a halogen (fluorine). See the
Answer, pages 13 and 20. As correctly argued by appellant, Lane
teaches that no fluorine was found in the silicon dioxide deposited
in the process of Lane (Brief, page 8). See Lane, col. 5, 11.
29-43. The examiner argues that the sensitivity of the RBS test in
Lane is not known, and thus there could be some fluorine in the
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film of Lane which would read on the film recited in the claims
since the amount of halogen is not specified in the claims on
appeal (Answer, page 13). However, the examiner incorrectly places
the burden of proof on appellant to "differentiate" over the amount
of fluorine that might be present in Lane, when the correct burden
of proof rests with the examiner. See In re Oetiker, supra. Since
the examiner has not met this burden of proof, by establishing the
amount of fluorine sensitivity in the RBS tests of Lane, on this
record we cannot sustain the examiner's rejection over Lane. We
note that the secondary references to Ishihara, Yamazaki, Kuyel,
and Chebi do not remedy the deficiency in Lane discussed above.
E. The Rejection over Homma
The examiner finds that Homma teaches production of a silicon
dioxide film with fluorine from a plasma deposition of TEOS and a
halogen containing compound (Answer, page 17). The examiner also
finds that Homma teaches a deposition technique including plasma
produced in a parallel plate reactor with a RF power source but
does not disclose use of dual frequency plasmas (id.). Therefore
the examiner applies Chebi or Nguyen for their "demonstrating the
known use of duel [sic, dual] frequencies with similar reactants
for analogous purposes." Answer, sentence bridging pages 17-18.
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From these findings, the examiner concludes that it would have been
obvious to use other plasma techniques known for silicon dioxide
deposition in the process of Homma (Answer, page 17).
Even assuming arguendo that it would have been obvious to use
the plasma creation techniques taught by Chebi and Nguyen in the
process of Homma, we determine that the limitations of the claims
on appeal would not have been met. The processes recited in claims
29 and 39 on appeal do not merely require a plurality of power
sources, each having a different frequency, but also requires that
the power sources are operated simultaneously. The examiner has
not addressed this limitation of the claimed subject matter nor
pointed to any disclosure or teachings of the secondary references
regarding this limitation. See Nguyen, col. 3, 11. 7-18 and 36-48,
and Chebi, col. 3, 11. 22-34, both of which appear to suggest that
deposition occurs sequentially, each at a specified frequency.
For the foregoing reasons, we determine that the examiner has
failed to establish a prima facie case of obviousness in view of
the reference evidence. Accordingly, we reverse the examiner's
rejection over Homma in view of Chebi or Nguyen.
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F. Other Issues
As discussed above, we have determined that the examiner has
not shown or established that dual frequency plasma generation
occurs simultaneously. However, appellant admits that such a
plasma generation was known in the art for certain precursor gases
(specification, pages 4 and 14; see also Figures 2A-2F). In the
event of further prosecution before the examiner, the examiner and
appellant should consider the patentability of the claimed subject
matter in view of the cited prior art and appellants’ admission of
prior art.
G. Summary
The rejection of claims 29-38 and 44 under 35 U.S.C. § 112,
second paragraph, is reversed. The rejection of claims 29-38 and
44 under 35 U.S.C. § 112, first paragraph, for lack of enabling
disclosure, is reversed. The rejection of claims 29-38 and 44
under 35 U.S.C. § 112, first paragraph, for lack of written
description, is reversed.
The rejection of claims 29-30, 32-34, 38 and 44 under
35 U.S.C. § 102 (e) over Nishiyama is affirmed. The rejection of
claims 39-40, 42-43 and 45 under 35 U.S.C. § 103 (a) over
Nishiyama is affirmed. The rejection of claim 31 under 35 U.S.C.
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§ 103 (a) over Nishiyama in view of Chebi is affirmed. The
rejection of claims 29-40 and 42-45 under 35 U.S.C. § 103 (a) over
Lane in view of Ishihara, Yamazaki, Kuyel, or Chebi is reversed.
The rejection of claims 29-32, 38-40 and 42-45 under 35 U.S.C.
§ 103 (a) over Homma in view of Chebi or Nguyen is reversed. The
rejection of claims 29-33, 38-40 and 42-45 under the judicially
created doctrine of obviousness-type double patenting over claims
1-10 of Musaka is affirmed.
Accordingly, the decision of the examiner is affirmed-in-part.
Appeal No. 1999-2512
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136 (a).
AFFIRMED-IN-PART
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
TAW/jrg
Appeal No. 1999-2512
Application No. 08/888,499
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Patent Counsel
Mail Stop #2634
Legal Affairs Department
Applied Materials, Inc.
3050 Bowers Avenue
Santa Clara, CA 95054
Appeal No. 1999-2512
Application No. 08/888,499
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APPENDIX
29. A plasma enhanced chemical vapor deposition process
for depositing a silicon oxide film containing a halogen from a
mixture of plasma precursor gases including tetraethoxysilane and
a halogen-containing gas onto a substrate mounted in a vacuum
deposition chamber which comprises forming a plasma in said chamber
from said precursor gases by means of a plurality of power sources
connected to said chamber operated simultaneously, each power
source having a different frequency.