Ex Parte Ricci et alDownload PDFPatent Trial and Appeal BoardDec 30, 201310882484 (P.T.A.B. Dec. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANTHONY J. RICCI and BABAK KADKHODAYAN ____________ Appeal 2012-008283 Application 10/882,484 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and GEORGE C. BEST, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-008283 Application 10/882,484 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 19, 24, 26, 27, 29, 32 through 34, 38, 39, 44, 49, 51, 52, and 58 through 63. We have jurisdiction under 35 U.S.C. § 6. Appellants’ invention is directed to a method for making a gas distribution plate for use in a plasma processing apparatus. (App. Br. 4.) Claim 19 is illustrative of the subject matter on appeal and is reproduced below: 19. A method of making a gas distribution plate for use in a plasma processing apparatus, said method comprising: machining a material to form the gas distribution plate; subsequently annealing at least a portion of the gas distribution plate, reducing damage caused by machining the material, wherein the material of the gas distribution plate is a ceramic including at least one of Si3N4 or SiC, wherein said annealing occurs at a controlled temperature between 1500 degrees Celsius to 1600 degrees Celsius for a prolonged time; and machining at least a section of the gas distribution plate following said annealing so as to re-establish one or more manufacturing tolerances. The Examiner relied on the following references in rejecting the appealed subject matter: Herchen US 5,819,434 Oct. 13, 1998 Chen US 5,824,605 Oct. 20, 1998 Aihara (Aihara I) US 5,945,363 Aug. 31, 1999 Aihara (Aihara II) US 6,258,440 B1 Jul. 10, 2001 Takahashi JP 60-081076 A May 9, 1985 Wicker WO 98/14980 A1 Apr. 9, 1998 Appeal 2012-008283 Application 10/882,484 3 Appellants, App. Br. 8, request review of the following rejections from the Examiner’s final office action: I. Claims 19, 24, 26, 39 and 58 rejected under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, and Aihara I. II. Claims 27, 38 and 44 rejected under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, Aihara I, and Chen. III. Claims 29, 32-34, 49, 51, 52 and 59 rejected under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, Aihara I, Chen, and Aihara II. IV. Claims 60 and 61 rejected under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, Aihara I, and Yoshimura. V. Claims 62 and 63 rejected under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, Aihara I, Chen, Aihara II, and Yoshimura. OPINION Rejections under 35 U.S.C. § 103(a) The first issue on appeal is: Did the Examiner err in determining that the combined teachings of Wicker and Aihara I would have led one skilled in the art to a method of making a gas distribution plate comprising the step of annealing a portion of a gas distribution plate material prior to subsequently machining the gas distribution plate material as required by the subject matter of independent claims 19 and 29?1, 2 1 We limit our initial discussion to independent claim 19. 2 A discussion of Herchen and Takahashi is unnecessary for disposition of the present appeal. The Examiner relied upon these references for features not related to the dispositive issue. Appeal 2012-008283 Application 10/882,484 4 After review of the respective positions provided by Appellants and the Examiner, we AFFIRM for the reasons presented by the Examiner and add the following. The Examiner found that Wicker teaches machining a material, such as silicon nitride, to form a gas distribution plate for a plasma processing apparatus. Ans. 5; Wicker Abstract, 10-11. The Examiner found that Wicker does not explicitly teach annealing the gas distribution plate to reduce damage caused by machining the silicon nitride and subsequently machining the silicon nitride after annealing. Ans. 5-6. The Examiner found that Aihara I teaches annealing silicon nitride at 1500 degrees Celsius for a prolonged period of time (0.5-10 hours) to increase the strength of the material and subsequently machining the annealed silicon nitride to make a product of high dimensional accuracy. Ans. 5-6; Aihara I col. 2, ll. 38-39, col. 4, ll. 56-58. The Examiner concluded that it would have been obvious to one of ordinary skill in the art to modify Wicker’s method of making a gas distribution plate to incorporate the annealing step of Aihara I prior to additional machining of the silicon nitride in view of the benefit disclosed by Aihara I. Ans. 5-6. Appellants’ principal argument is that the combined teachings of the prior art would not have led one skilled in the art to anneal the silicon nitride in the presence of an inert gas because Aihara I’s heat treatment in the presence of air is not an annealing treatment. App. Br. 9-11. In support of this argument, Appellants proffer a declaration under 37 C.F.R. § 1.132 by Appeal 2012-008283 Application 10/882,484 5 co-inventor and declarant Anthony J. Ricci (Ricci Declaration).3 Declarant states that his understanding is that Aihara I’s heat treatment is for improving oxidation resistance of the silicon nitride at near ambient temperatures. Ricci Declaration 1-2. Declarant further declares that “[s]uch a process is not an annealing process, which by definition is a heating process whereby the microstructure of a material is changed to improve properties such as strength, hardness and ductility and also to relieve stress.” Id. at 2. Declarant further states that Aihara I’s heat treatment in air is one factor that indicates that the heat treatment in Aihara is not an annealing process to improve properties such as strength, hardness, ductility, and to relieve stress. Id. We are unpersuaded by these arguments and agree with the Examiner’s determination of obviousness. The Examiner correctly determined that independent claim 19 does not recite that the heat treatment occurs in any specific environment. Ans. 14. Aihara I teaches heat treating silicon nitride at the claimed temperature (1500 degrees Celsius) for a prolonged time (0.5-10 hours) to change the microstructure (precipitating an H phase) and thereby increasing the strength of the silicon nitride. Ans. 5-6, 13; Aihara I col. 2, ll. 14-21, 38- 39, col. 4, ll. 45-49, 56-58. Aihara I’s heat treatment meets the requirements of Aihara I’s definition of annealing advanced on page 2 of the Declaration. Appellants have not adequately explained how the heat treatment of the prior 3 The Declaration under 37 C.F.R. § 1.132 by Anthony J. Ricci, dated March 21, 2011, was entered by the Examiner in the Final Office Action mailed June 9, 2011. Appeal 2012-008283 Application 10/882,484 6 art (Aihara I) differs from the claimed annealing step except on the basis of an unclaimed heating environment. In assessing the probative value of declaratory evidence, one must consider the nature of the matter sought to be established as well as the strength of the opposing evidence. In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). In the Declaration, Ricci provides his opinion with regard to his understanding of Aihara’s process. Opinion declarations are acceptable so long as the opinion is factually based. See In re Carroll, 601 F.2d 1184 (CCPA 1979) (expert opinion on what the prior art taught, supported by documentary evidence and formulated prior to the making of the claimed invention, received considerable deference); see also In re Altenpohl, 500 F.2d 1151, 1158 (CCPA 1974) (lack of factual support rendered an affidavit of little probative value in overcoming obviousness rejection). In the Ricci Declaration, Declarant appears to conclude that Aihara I’s heat treatment is not annealing because it is conducted in an oxygen- containing environment. Ricci Declaration 2. However, Declarant provides no documentary evidence that an annealing process requires an oxygen-free environment to support such a conclusion. Moreover, Declarant’s statements contradict Appellants’ own Specification which states that the heat treatment of the material can be considered an annealing process if conducted at high temperatures. Spec. 6. While this statement acknowledges that annealing occurs at high temperatures, no mention is made of any required environment, oxygen-free or otherwise. Without supporting evidence, Declarant’s statements are insufficient to distinguish Aihara I’s heat treatment from the claimed annealing step. Appeal 2012-008283 Application 10/882,484 7 For the reasons stated above and those presented by the Examiner, we sustain the Examiner’s rejection of claims 19, 24, 26, 39, and 58 under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, and Aihara I (Rejection I). The Examiner rejected independent claim 29 under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, Aihara I, Chen and Aihara II (Rejection III). Like independent claim 19, claim 29 recites the step of annealing a portion of a gas distribution plate material prior to subsequent additional machining of the gas distribution plate. However, the additional references Chen and Aihara II are not relied upon by the Examiner to overcome the alleged deficiencies of the combined teachings of Wicker and Aihara I. Ans. 9-12. Accordingly, we sustain the Examiner’s rejection of claims 29, 32-34, 49, 51, 52, and 59 under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, Aihara I, Chen, and Aihara II. The Examiner rejected dependent claims 27, 38, and 44 (ultimately dependent from claim 19) under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen and Aihara I, and Chen (Rejection II). Ans. 8. In addressing this separate rejection, Appellants rely on the arguments presented when discussing independent claim 19. App. Br. 11-12. Further, Appellants did not substantively address or further distinguish the cited secondary references based on the additional limitations of the rejected claims. Id. Therefore, we sustain this rejection for the reasons given above and by the Examiner. In addition, the Examiner rejected claims 60 and 61 under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, Aihara I, and Appeal 2012-008283 Application 10/882,484 8 Yoshimura (Rejection IV) and claims 62 and 63 under 35 U.S.C. § 103(a) as unpatentable over Wicker, Takahashi, Herchen, Aihara I, Chen, Aihara II, and Yoshimura (Rejection V). Ans. 12-13. Claims 60-63 require that the annealing step be conducted in an oxygen free atmosphere. Appellants argue that Yoshimura does not overcome the deficiencies of Wicker and Aihara I because Yoshimura does not teach annealing and the disclosed heat treatment occurs at a low temperature that is outside the claimed range. App. Br. 17-21. We are unpersuaded by this argument. The Examiner relied on Yoshimura to teach annealing (heat treating) silicon nitride in an oxygen free environment to enhance the strength of the material. Ans. 12-13; Yoshimura col. 9, ll. 17-23. Yoshimura provides the general teaching that it was known to heat treat silicon nitride in an oxygen free environment to strengthen the material. Ans. 12-13. A person of ordinary skill in the art would have reasonably expected that the annealing process of Wicker could occur in an oxygen-free environment. Accordingly, we sustain the Examiner’s rejections of claims 60-63 under 35 U.S.C. § 103(a) (Rejections IV and V) for the reasons given by the Examiner and presented above. ORDER The Examiner’s decision rejecting the claims 19, 24, 26, 27, 29, 32 through 34, 35, 39, 44, 49, 51, 52, and 58 through 63 on appeal under 35 U.S.C. § 103(a) is affirmed. Appeal 2012-008283 Application 10/882,484 9 TIME PERIOD 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). AFFIRMED lp Copy with citationCopy as parenthetical citation