Ex Parte Ou-Yang

Board of Patent Appeals and Interferences

May 31, 2011

10725795 (B.P.A.I. May. 31, 2011)

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.
10/725,795 12/02/2003 Chieh Ou-Yang VOSS-35194US1 3335
116 7590 05/31/2011
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
EXAMINER
JOLLEY, KIRSTEN
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
05/31/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHIEH OU-YANG
____________________

Appeal 2009-012624
Application 10/725,795
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

Opinion for the Board by TIMM, Administrative Patent Judge.

Dissenting Opinion by SMITH, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 5-10, 12, and 13. Specifically, Appellant seeks
review of the Examiner’s decision to reject:
A. claims 1 and 6-8 under 35 U.S.C. § 102(b) as anticipated by, or
under 35 U.S.C. § 103(a) as obvious over, Shirley (US 6,322,626 B1; issued
Nov. 27, 2001);
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B. claims 1, 5-10, and 12-13 under 35 U.S.C. § 103(a) as obvious
over Kim et al. (US 5,932,009; issued Aug. 3, 1999) in view of Thakur (US
6,174,651 B1; issued Jan. 16, 2001);
C. claim 9 under 35 U.S.C. § 103(a) over Shirley in view of
Mandal et al. (US 6,238,735 B1; issued May 29, 2001); and
D. claims 10, 12, and 13 under 35 U.S.C. § 103(a) over Shirley.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is the only independent claim and reads as follows:
1. A method for distributing a viscous liquid over a
surface of a substrate, comprising the steps:
- placing a substrate essentially horizontal on a support,
- applying a viscous liquid onto a surface of said
substrate,
- rotating the substrate to distribute the liquid radially
outwards, and
- conditioning the liquid on the substrate thermally, to
influence its viscosity locally by creating a locally selective
temperature gradient;
said thermal conditioning being effected by a thermal
source of heat or cold placed above the surface of the substrate;
said thermal source comprising a stream of heated or
cooled gas, or a source of electromagnetic radiation.
II. DISPOSITIVE ISSUE
The issues in this case focus on the question of whether the prior art as
applied by the Examiner describe or render obvious a spin coating process
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with a thermal conditioning step “effected by a thermal source of heat or
cold placed above the surface of the substrate” as required by the claims.
We agree with Appellant that the Examiner has not established a
proper basis for rejecting the claims.
III. DISCUSSION
A. ANTICIPTION BY SHIRLEY
As explained by Appellant, the Examiner’s rejection over Shirley for
anticipation rests on a faulty interpretation of column 5, lines 10-14 of
Shirley (Ans. 5; Br. 12-14). This portion of Shirley reads as follows:
In another embodiment, the bowl temperature controller 50b
can include a plurality of heat exchangers 52b and manifolds
54b, arranged in a manner generally similar to that discussed
above with reference to the plate temperature controller 50a.
(Shirley, col. 5, ll. 10-14.)
When the passage in column 5 is read in the context of the reference
as a whole, it becomes clear that Shirley’s statement “arranged in a manner
generally similar to that discussed above” refers to the use of a plurality of
heat exchangers and manifolds instead of the single exchanger 52b and
single manifold 54b shown in Figure 1 and described in the previous
paragraph (Shirley, col. 4, ll. 58-67). Contrary to the findings of the
Examiner, this passage does not somehow expand Shirley’s teaching of
placing orifices 55a of the chill plate assembly 20 proximate the front side
72 of the substrate to a description of placing orifices 55b of the coater bowl
assembly 30 proximate the front side.
Shirley teaches a process of spin coating a substrate 70 in a coater
bowl assembly 30 (left side of Fig. 1) after a step of adjusting the heat
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profile of the substrate 70 on a chill plate assembly 20 (right side of Fig. 1)
(Shirley, col. 3, ll. 13-16). Both the chill plate assembly and coater bowl
assembly have temperature controllers (50a and 50b), which are shown in
Figure 1 as delivering heating/cooling fluid from a fluid supply (51a, 51b) to
orifices (55a, 55b) (Shirley, col. 3, ll. 19-23).
In the specific embodiment of Figure 1, the chill plate assembly 20
includes multiple heat exchangers 52a and manifolds 54a so fluid at different
temperatures can be delivered to different locations of the substrate 70
(Shirley, col. 3, ll. 25-52). For example, the manifolds 54a and orifices 55a
can be arranged in an annular and/or concentric fashion so different annular
regions of the substrate 70 can be separately temperature controlled (Shirley,
col. 4, ll. 12-17). In the embodiment shown in Figure 1, the orifices 55a
direct fluid against the bottom of the substrate 70 (back side 71) (Shirley col.
3, 37-41).
The coater bowl assembly is shown with only one heat exchanger 52b
and manifold 54b (Fig. 1). Heat can be adjusted in the coater bowl assembly
by adjusting the flow rate through each orifice 55b or “the bowl temperature
controller 50b can include a plurality of heat exchangers 52b and manifolds
54b, arranged in a manner generally similar to that discussed above with
reference to the plate temperature controller 50a.” (Shirley, col. 5, ll. 9-14.)
The paragraph in column 5 containing the language cited by the Examiner is
a discussion of alternative methods of delivering fluid so that the substrate is
selectively heated or cooled by region.
While Shirley, in discussing the chill plate assembly 20, further
discloses an alternate embodiment in which the orifices 55a of the chill plate
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assembly 20 “can be positioned proximate to the front side 72 (rather than
the back side 71) of the substrate to transfer heat directly to or from the front
side 72,” (col. 4, ll. 20-24), there is no analogous disclosure of placing
orifices 55b of the coater bowl assembly 30 proximate the front side 72
(Shirley, generally).
Given that the paragraph containing the “discussed above” language
only refers to using multiple exchangers and manifolds instead of a single
set as an alternate method of selectively heating, we cannot agree with the
Examiner’s finding that Shirley describes placing the orifices 55b of the
coater bowl assembly 30 proximate the front side 72 in a similar manner to
positioning the orifices 55a of the chill plate assembly 20 proximate the
front side.

B. OBVIOUSNESS OVER SHIRLEY
To support the rejection based on obviousness over Shirley, the
Examiner states that it would have been obvious to have positioned the
orifices 55b above the substrate 70 with the expectation of similar and
successful results “because both Shirley’s chill plate and coater assemblies
have similar structures, effects, and purposes – to similarly provide heating
or cooling to selected areas of a substrate to provide a temperature gradient
on the substrate, and because Shirley specifically teaches the incorporation
of the features of the chill plate assembly into the coater bowl assembly.”
(Ans. 5.)
We agree with Appellant that the art does not support a finding of a
suggestion to make the modification. We further agree that the Examiner
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has not provided convincing objective evidence that the modification would
have been within the capabilities of the ordinary artisan.
As discussed above, Shirley does not disclose positioning orifices 55b
proximate the front side 72 of the substrate. Moreover, as pointed out by
Appellant, Kim, the only other reference cited by the Examiner using
temperature control fluid to regulate substrate temperature or viscosity, also
controls temperature only from the backside of the substrate (Br. 16).
Shirley, in fact, discloses a third process that was conventionally used and it
also directs fluid only against the backside of the substrate (Shirley, col. 2, ll.
5-8). The weight of the evidence supports the Appellant’s argument that
there was no suggestion to make the modification absent hindsight.
Nor does the evidence support a determination that the combination of
these elements is one according to known methods and yielding predictable
results. In Shirley, heating/cooling in the spin coating operation is different
from heating/cooling an idle unchanging substrate. In the chill plate
assembly, no other process other than heat transfer occurs. In the coater
bowl assembly, a liquid coating is applied while rotating and controlling the
temperature of the substrate (Shirley, col. 4, ll. 43-45 and ll. 58-59). If the
heating/cooling fluid were aimed at the top side of the substrate, the fluid
would impinge the coating material as it was spun onto the substrate. The
heating/cooling fluid would have effects on the coating liquid as it spreads
radially outward that are not present in the heating/cooling process
undergone on the substrate when it is on the chill plate. The evidence
supports Appellant’s contention that there would have been unpredictable
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effects (Br. 16-17). The Examiner has not convincingly addressed this
argument (Ans. 13).
The Examiner’s application of Mandal to reject claim 9 does not cure
the deficiency described above.
C. OBVIOUSNESS OVER KIM AND THAKUR
With regard to the rejection relying upon the combination of Kim and
Thakur, we agree with Appellant that one of ordinary skill in the art would
not have replaced the heat conditioning assembly located below the substrate
of Kim with the lamps 24, 26 of Thakur as proposed by the Examiner.
Contrary to the findings of the Examiner, Thakur does not teach a spin
coating process, but an atomizing process meant to replace spin coating
(Thakur, col. 2, ll. 57-59 and col. 3, ll. 33-48). The purpose of Thakur’s
lamps 24, 26 is to solidify the coating material, and is different than the
purpose of the differential heating of the chuck 113 of Kim (Kim, col. 4, ll.
25-27). Moreover, Thakur isothermally heats, rather than selectively heats
different regions (Thakur, col. 8, ll. 4-6). The evidence as presented by the
Examiner does not support a finding that there is a suggestion in the prior art
for thermal conditioning from above as claimed.
IV. CONCLUSION
On the record before us, we do not sustain the rejections maintained
by the Examiner.
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V. DECISION
The decision of the Examiner is reversed.

REVERSED

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SMITH, Administrative Patent Judge, Concurring-In-Part, Dissenting-
In-Part.
I concur with the majority decision to reverse: (1) the Examiner’s
decision rejecting claims 1, 6-10, and 12-13 under 35 U.S.C. § 102(b) as
anticipated by Shirley; and, (2) the Examiner’s decision rejecting claims 1,
5-10, and 12-13 under 35 U.S.C. § 103(a) as obvious over in view of
Thakur.
However, I respectfully dissent from the majority decision to reverse:
the Examiner’s decision rejecting claims 1, 6-10, and 12-13 under 35 U.S.C.
§ 103(a) over Shirley.
Appellants have failed to adequately explain why a person of ordinary
skill in the art would not have reasonably expected that the orifices which
apply thermal regulating gas could have been positioned proximate to the
front (upper) side of the substrate rather than the back side of the substrate as
disclosed by Shirley. “For obviousness under § 103, all that is required is a
reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04
(Fed. Cir. 1988).
Shirley is concerned with generating a uniform temperature
distribution over the front side of the substrate utilizing different heat
transfer rates. To achieve this objective Shirley discloses locating the
thermal regulating orifices in various positions proximate to the substrate.
(Col. 4, ll. 53-65; col. 4, ll. 20-26; and col. 5, ll. 1-14). Thus, a person of
ordinary skill in the art would have reasonably expected that the orifices
which apply thermal regulating gas could have been positioned proximate to
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the front (upper) side of the substrate. The Examiner (Ans. 5) specifically
stated that:
it would have been obvious to one having ordinary skill in the art to
have incorporated the optional embodiments of the chill plate
assembly, such as positioning the orifices above the substrate rather
than below the substrate, in Shirley's coater assembly, with the
expectation of similar and successful results because both Shirley's
chill plate and coater assemblies have similar structures, effects, and
purposes -- to similarly provide heating or cooling to selected areas of a
substrate to provide a temperature gradient on the substrate, and
because Shirley specifically teaches the incorporation of the features of
the chill plate assembly into the coater bowl assembly.

The Examiner’s determination is consistent with the Supreme Court’s
decision in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f 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.”).
Thus, it is my opinion that the obviousness rejections over Shirley
should have been affirmed on the appeal record before this panel.

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