Ex Parte Ruby et al

Patent Trial and Appeal Board

Feb 11, 2013

11293346 (P.T.A.B. Feb. 11, 2013)

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.
11/293,346 12/02/2005 Ward Ruby STI-002 3262
23410 7590 02/12/2013
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
LUND, JEFFRIE ROBERT
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
02/12/2013 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 WARD RUBY, KURT VON DESSONNECK, and
BRIAN MOECKLY
____________________

Appeal 2011-007425
Application 11/293,346
Technology Center 1700
____________________

Before RICHARD E. SCHAFER, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL

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Ward Ruby, Kurt Von Dessonneck, and Brian Moeckly (Applicants) appeal
from an Examiner’s decisions rejecting claims 1-5, 7, 9, 44-48, 53, and 54 under
35 U.S.C. § 103(a). 35 U.S.C. §§ 6(b) and 134(a). We affirm.
EXEMPLARY CLAIMS
Claim 1.
A heater for growing a thin film on substrates comprising:
a plurality of heater elements configured to radiatively
heat the substrates to a uniform temperature, wherein at least
two of the plurality of heater elements are moveable with
respect to one another;
an oxygen pocket member at least partially surrounded
by the plurality of heater elements; the oxygen pocket member
comprising an upper surface and a lower surface and an
opening extending between the upper surface and the lower
surface, the opening being configured to provide access to a
source chamber adapted to contain a source of flux, the upper
surface of the oxygen pocket member including a recessed
pocket therein, the recessed pocket being operatively connected
to a pressurized oxidizer source, wherein the recessed pocket
contains a localized region of pressurized oxidizer; and
a substrate support member configured to hold the
substrates, the substrate support member supportable on a
vertically oriented spindle configured for rotation about an axis,
the spindle being further configured for movement in the
vertical direction so as to dynamically adjust a gap formed
between the substrate support member and the upper surface of
the oxygen pocket member during the process of thin film
formation, the gap having a width small enough to minimize
leakage of the pressurized oxidizer from the recessed pocket.
Brief, 23 (Claims Appendix).
Claim 44.
The heater of claim 1, further comprising
a vertically oriented support plate;
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a motor assembly mounted on the vertically oriented
support plate, the motor assembly comprising a shaft
operatively coupled to the spindle; and
a moveable cam having first and second inclined surfaces
configured to engage with the vertically oriented support plate,
wherein movement of the cam against the vertically oriented
support effectuates vertical movement of the support plate,
motor assembly, and spindle.
Brief, 24-25 (Claims Appendix).
REJECTIONS
In the Answer, the Examiner maintained the following rejections, all based
on 35 U.S.C. § 103(a):
1. Claims 1-3, 5, 53, and 54 over the combined teachings of Matijasevic,1and
Kuznetsov;2
2. Claim 7 over Matijasevic and Kuznetsov as applied to claims 1-3, 5, 53,
and 54 combined with the teachings of Amano;3
3. Claim 9 over Matijasevic and Kuznetsov as applied to claims 1-3, 5, 53,
and 54 combined with the teachings of Shrader;4
4. Claims 44-48 over Matijasevic and Kuznetsov as applied to claims 1-3, 5,
53, and 54, combined with the teachings of Oda;5.
5. Claims 1-5, 53, and 54 over the combined teachings of Moeckly,6
Kuznetsov, and Matijasevic;

1 Matijasevic, US Patent 6,527,866 B1.
2 Kuznetsov, US Patent Application Publication 2003/0209200 A1.
3 Amano, US Patent 6,565,662 B2.
4 Shrader, US Patent 4,002,141.
5 Oda, US Patent 6,606,154 B1.
6 Moeckly, US Patent Application Publication 2005/0116204 A1.
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6. Claim 7 over Moeckly, Kuznetsov, and Matijasevic applied to claims 1-5,
53, and 54 combined with Amano’s teachings,
7. Claim 9 over Moeckly, Kuznetsov, and Matijasevic applied to claims 1-5,
53, and 54 combined with Shrader’s teachings;
8. Claims 44-48 over Moeckly, Kuznetsov, and Matijasevic as applied to
claims 1-5, 53, and 54 combined with Oda’s teachings.
DISCUSSION
I. Rejections of Claims 1-3, 5, 7, 9, 53 and 54 relying on Matijasevic,
Kuznetsov, Amano and Shrader
Applicants contend that the Examiner erred in rejecting claims 1, 3-5, 7, 9,
53 and 54 because Matijasevic:
does not disclose or otherwise suggest any structure that is
capable of dynamically adjusting in real time a gap formed
between a substrate support holder and the recessed pocket of
the oxygen pocket member (a feature in independent claims 1
and 53). Rather, Matijasevic . . . discloses that the gap is
adjusted prior to beginning the deposition process. Col. 8, lines
58-59.
Brief, 8 (emphasis omitted).
We disagree. We find that Matijasevic suggests dynamically adjusting the
gap between the substrate support holder and the recessed pocket:
In some instances, either the chamber 142 or the substrate
holder 104 and rotation/support members 110 is movable to
permit adjustment of the gap between the walls of the chamber
142 and the substrate holder 104. For example, the substrate
holder 104 can be held using a bellows arrangement or some
other adjustable arrangement that can be adjusted to move the
substrate holder up or down to reduce the space between the
substrate holder and the chamber walls, while still allowing free
rotation. In some embodiments, the gap between the substrate
holder 104 and the walls of the chamber 142 is no more than 2
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mm and can be 0.5 mm or less. Typically, this adjustment is
made prior to beginning the deposition process.
Matijasevic, 8:46-59 (emphasis added). Matijasevic’s statement that the
adjustment is “typically” made prior to the beginning of the deposition process is
suggestive that the adjustment can be made dynamically, i.e., during the deposition
process, even if it is not typical. In evaluating the teachings of the references it is
appropriate to consider express teachings as well as the inferences one having
ordinary skill in the art would be reasonably expected to draw. In re Preda, 401
F.2d 825, 826 (CCPA 1968). References are good for everything they teach by
way of technology and are not limited to the particular invention they attempt to
protect. EWP Corp., v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir.
1985), cert. denied, 474 U.S. 843 (1985). Applicants have not alleged or provided
evidence that Matijasevic’s disclosure is not enabling or is not capable of dynamic
adjustment of the gap. The Matijasevic reference is a U.S. patent which is
presumed valid. 35 U.S.C. § 282. Accordingly, the reference’s specification is
presumptively enabling as to everything disclosed therein including “non-typical”
embodiments. Accord, Renz v. Jacob, 326 F.2d 792, 796 (CCPA 1964) (the filing
of an application effects a constructive reduction to practice of everything
disclosed therein regardless of what is claimed).
Applicants further contend that the Examiner erred in applying the teachings
of the Kuznetsov reference. Brief, 12-15. The Examiner found that the difference
between the subject matter of Claim 1 and Matijasevic was the use of movable
heating elements. Answer, 5. The Examiner further found that Kuznetsov teaches
a reactor that includes multiple heating elements that are moved apart when the
reactor is loaded and unloaded. Answer, 5. The Examiner concluded that it would
have been obvious to incorporate movable heating elements into Matijasevic’
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heater to provide a method or alternative method of loading or unloading the
heater. Answer, 6. Applicants have not challenged the Examiner’s finding relating
to Kuznetsov’s teaching or the Examiner’s conclusion based upon that finding.
Rather, Applicants argue that because Matijasevic’s heater heats by radiation and
Kuznetsov’s heats by conduction, one skilled in the art would not look to a device
using conductive heating to improve a device that used radiant heating. Brief, 10.
On this point we agree with the Examiner’s reasoning expressed in the
paragraph bridging pages 19 and 20 of the Answer. Additionally, the Examiner
relied upon Kuznetsov for the concept and the benefits of using moveable heating
elements not for the specific type of heating. On this point we note that
Matijasevic specifically teaches that multiple heaters can be used “to tailor the
temperature to the particular desirable reaction or reaction rate in a particular
reaction zone.” Matijasevic, 9:39-42. Kuznetsov’s adjustable heating elements
allow the heating pattern applied to the substrate to be “tuned” to obtain the desired
heating profile. Kuznetsov, ¶¶ 52-54. One having ordinary skill in the art would
have recognized that Kuznetsov’s heating element system would give greater
control in tailoring the temperature profile used during thin film deposition with
Matijasevic’s apparatus. It would have been obvious to use adjustable heating
elements in conjunction with Matijasevic’s reactor.
Applicants also argue that Kuznetsov teaches against uniform heating of the
substrate. Brief, 10-11. The Examiner disagreed. Answer, 20-21. We do not find
this argument particularly relevant to the obviousness issue. One having ordinary
skill in the art would understand the need to control the temperature to obtain the
desired end result. In any event, the rejection is premised on employing the
concepts involved in Kuznetsov’s heating system, including moveable heater
elements, in Matijasevic’s reactor. As we noted above, the ability to have better
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control over the heating conditions provides ample reason to use moveable heating
elements as part of the heating system in Matijasevic’s reactor. The use of
moveable heating elements in conjunction with Matijasevic’s reactor would have
been obvious.
Applicants do not provide separate arguments as to the subject matter of
Claims 2-3, 5, 53 and 54. We affirm the rejection of Claims 1-3, 5, 53 and 54.
With respect to the subject matter of Claims 7 and 9, Applicants contend
only that the Amano and Shrader references do not remedy the alleged failure of
Matijasevic and Kuznetsov to teach dynamic gap adjustment. Brief, 11-12. We
held above that Matijasevic suggests a dynamically adjustable gap. We also affirm
the rejections of Claims 7 and 9.
II. Rejection of Claims 44-48 relying on Matijasevic, Kuznetsov, and
Oda
Claims 44-48 depend from Claim 1. These claims add subject matter
directed to the mechanism for vertically moving the spindle and adjusting the gap
formed between the substrate support member and the upper surface of the oxygen
pocket member during thin film formation. The mechanism includes a vertical
support plate, a motor attached to the plate that drives the rotation of the spindle,
and a cam that engages the support plate. The cam causes the support plate, motor
and spindle to move vertically. The claims require that the cam have two surfaces
inclined at different angles. The different angles cause the support plate to move at
different vertical speeds.
The Examiner relies on Oda as suggesting the claimed mechanism. Answer,
7-10.
Applicants challenge the Examiner’s reliance on Oda on three grounds:
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1. That Oda relates to an inspection apparatus for a semiconductor wafer
and not a semiconductor wafer or heater (Brief, 12-13);
2. Oda does not describe a motor coupled to the vertically oriented spindle
that causes rotation of the spindle (Brief, 13-14); and
3. Oda does not teach a cam having first and second inclined surfaces
(Brief, 14-15).
With respect to the first point, we agree with the Examiner’s reasoning and
conclusions on analogous art expressed on page 22 of the Answer. Applicants
have not responded to the Examiner’s arguments.
On the second point, Applicants do not argue that it would not have been
obvious to substitute a known vertical adjustment mechanism of the type taught by
Oda for Matijasevic’s vertical adjustment mechanism. Rather, Applicants argue to
the effect that physical substitution of Oda’s adjustment mechanism into
Matijasevic’s would not result in the claimed mechanism. Specifically, according
to Applicants, the substitution would not result in a motor coupled to a vertically
oriented spindle that causes the shaft to rotate. Brief, 13-14.
It is well established that a determination of obviousness based on teachings
from multiple references does not require an actual, physical substitution of
elements. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s
assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant,
the criterion being not whether the references could be physically combined but
whether the claimed inventions are rendered obvious by the teachings of the prior
art as a whole.”); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not
necessary that the inventions of the references be physically combinable to render
obvious the invention under review.”); In re Keller, 642 F.2d 413, 425 (CCPA
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1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary reference.”).
Oda shows a mechanism for providing vertical movement. One having
ordinary skill in the art would have understood the theory and principles of
operation of Oda’s vertical adjustment mechanism. It would have been within the
skill of the art to make the relatively minor modifications necessary to adapt Oda’s
device to provide vertical movement for Matijasevic’s spindle and motor. The
combination of familiar elements according to known methods and that does no
more than yield the predictable results is generally obvious. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007).
Applicants also argue that Oda fails to describe a moveable cam having two
inclined surfaces that are configured to engage the vertical support and cause
vertical movement. Oda, while depicting three cam surfaces, shown as 23a, 23b
and 23c in Oda’s Figure 2 (not reproduced), only shows one inclined surface. On
this point the Examiner concluded:
[I]f it is held that the Oda does not teach a first and second
inclined surface, it would be obvious to one of ordinary skill in
the art at the time the invention was made to provide a second
inclined surface with the proper angle. The motivation to do so
is to provide the desired rate of vertical movement to the
spindle.
Answer, 9.
We think the Examiner’s reasoning is sound. One having ordinary skill in
the art would understand the principles by which Oda’s cam movement translates
into vertical movement of the support plate. In light of this understanding, using
multiple cam inclines to provide different vertical speed capabilities would be
within the skill of the art and obvious. The inclusion of multiple inclined plains
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would provide no more than the predictable use of established functions. The
inclusion of multiple inclined surfaces does not provide an unobvious distinction.
The Examiner’s decision holding Claims 44-48 unpatentable is affirmed.
III. Rejections of Claims 1-5, 7, 9, 44-48, 53 and 54 relying on Moeckly,
Matijasevic, Kuznetsov, Amano, Shrader and Oda
Applicants make a single argument with respect to all the rejections based
on the Moeckly reference. Relying on the declarations of Ward Ruby and Brian
Moeckly, two of the three named inventors of the involved application, Applicants
argue only that the Moeckly reference is not prior art as to the involved
application. Brief, 16-20.
Applicants are incorrect. The Examiner relied upon Moeckly as prior art
available under, inter alia, 35 U.S.C. § 102(e): “2005/00116204 [Moeckly] is
applied under 102a or e.” Answer, 28. Under § 102(e)(1) an application by
“another” published under § 122(b) and filed in the U.S. before the invention by
the “applicant” is prior art to the applicant. The application that published as the
Moeckly reference was filed on December 1, 2003, and was published pursuant to
§ 122(b). The only established date of invention for the subject matter of the
involved application is its filing date, December 2, 2005. Thus, the earlier filing
and publication requirements of § 102(e)(1) are met for the Moeckly publication.
Applicants argue that § 102(e) is not applicable with respect to the Moeckly
reference because the Ward and Moeckly declarations identify “that the cited
portions of [the Moeckley reference] is their own work.” Brief, 16. However, that
“work” has not been shown to be the work of the “applicant” of the involved
application --Von Dessonneck, Ruby and Moeckly.
An applicant may “remove” a reference considered to be prior art under
§ 102(e) by means of declarations or other evidence attributing the relevant
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disclosure in the reference to the inventors named in the application. In re
DeBaun, 687 F.2d 459, 463 (CCPA 1982). The relevant question in such cases is
whether the applicant invented the relevant disclosure in the reference. Id. Stated
in terms of the Moeckly reference, the question becomes: have the Applicants, i.e.,
Von Dessonneck, Ruby and Moeckly, demonstrated the relevant portions of the
Moeckly reference to be their work? The declarations attribute the relevant
portions only to Ruby and Moeckly. Ruby and Moeckly are “another” for the
purposes of § 102(e) compared to Von Dessonneck, Ruby and Moeckly. In re
Land, 368 F.2d 866, 875-76 (CCPA 1966) (“‘Another’ clearly means another than
‘the applicant(s).’”) The combination of Ruby and Moeckly, on the record before
us, is not the same as the inventive entity of the involved application. The
Moeckly reference remains the work of “another” compared to the Applicants
(Von Dessonneck, Ruby and Moeckly).7
To the extent that the subject matter of some of the claims may be the
invention only of Ruby and Moeckly (see 35 U.S.C. § 116), Applicants, not the
Office, are uniquely in a position to provide information as to the inventorship of
the individual claims and have not directed us to such information in the record.
Nor have Applicants directed us to evidence showing that the conditions of 35
U.S.C. § 103(c) or 37 C.F.R. § 1.131 have been met.
The Examiner’s decisions rejecting Claims 1-5, 7, 9, 44-48, 53 and 54
relying on the Moeckly, Matijasevic, Kuznetsov, Amano, Shrader and Oda
references are affirmed.

7 The same analysis would be applicable considering the Moeckly publication as
prior art under § 102(a). The Moeckly published application is a printed
publication known by others before Applicants’ “invention” (filing) date of
November 2, 2005. Moeckly was published earlier on June 2, 2005 and thus
publically known.
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DECISIONS
The Examiner’s decisions rejecting Claims 1-5, 7, 9, 44-48, 53 and 54
under 35 U.S.C. § 103(a) are affirmed.
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
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