Ex Parte Schroder et al

Patent Trial and Appeal Board

May 24, 2018

14540639 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/540,639 11/13/2014
124676 7590 05/29/2018
Russell Ng PLLC
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
FIRST NAMED INVENTOR
KURT A. SCHRODER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NCC.001007A 3096
EXAMINER
TRAN, THIEN S
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
05/29/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
s tephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT A. SCHRODER, STEVEN C. McCOOL,
and DOUGLAS K. JACKSON
Appeal2016-002858
Application 14/540,639 1
Technology Center 3700
Before GEORGE R. HOSKINS, BRANDON J. WARNER, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
decision, as set forth in the Final Office Action dated June 26, 2015 ("Final
Act."), and as further explained in the Advisory Action dated August 3,
1 Appellant is the Applicant listed on the Application Data Sheet,
NCC Nano, LLC. See Application Data Sheet (filed Nov. 13, 2014). The
Application was assigned to NCC Nano, LLC, according to an assignment
recorded with the Office on April 22, 2015. In the Appeal Brief,
N ovacentrix Corporation is identified as the assignee and the real party in
interest. Appeal Br. 3.
Appeal2016-002858
Application 14/540,639
2015, rejecting claims 1and3-16.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
BACKGROUND
The disclosed subject matter relates "to an apparatus for providing
transient thermal profile processing for thin films on a moving substrate."
Spec. 2:12-13. Claim 1, the sole independent claim, is reproduced below,
with emphasis added:
1. An apparatus for curing a thin film on a
moving substrate, said apparatus comprising:
a conveyance system for moving said thin
film mounted on said substrate;
a jlashlamp controller for modifying pulse
widths of multiple micropulses according to a
specific thermal profile to generate a specific
waveform, wherein said specific thermal profile is
designed according to a stack property of said thin
film and substrate, wherein said flashlamp
controller includes
a computer for storing said specific
thermal profile for curing said thin film;
[a] waveform generator; and
an encoder for providing trigger
signals to said computer that sends control
2 The Examiner considers claim 2 to have been cancelled. Final Act.
2. Appellant takes the position that claim 2 is pending. See Appeal Br. 9
(Claims App.) (listing claim 2). Because the Final Office Action did not
address claim 2, we do not address that claim on appeal. See 37 C.F.R.
§ 41.31 ( c) (2015) ("An appeal, when taken, is presumed to be taken from the
rejection of all claims under rejection .... " (emphasis added)).
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Application 14/540,639
signals to said waveform generator to
generate said specific waveform;
a flashlamp for providing an electromagnetic
pulse according to shapes and timing of said
specific waveform, wherein said electromagnetic
pulse is utilized to cure said thin film while said thin
film is being moved in relation to said flashlamp.
EVIDENCE RELIED ON BY THE EXAMINER
Flicstein US 5,221,561 June 22, 1993
Timans US 2003/0183612 Al Oct. 2, 2003
Ott
Govek
Kusuda
Pope
Schroder '419
Zhenhua
US 2006/0021975 Al
US 2006/0174508 Al
US 2009/0067823 Al
US 2009/0181184 Al
WO 2006/071419 A2
Abstract of CN 201229800 (Y)
REJECTIONS
Feb.2,2006
Aug. 10,2006
Mar. 12, 2009
July 16, 2009
July 6, 2006
Apr. 29, 2009
1. Claims 1, 8, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Govek, Timans, and Kusuda.
2. Claims 3-7 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Govek, Timans, Kusuda, and Schroder '419. 3
3 The Examiner relies on Schroder '419 in Rejection 2 but states to
"us[e] Schroder (US 2008/0020304) as an English language equivalent for
Schroder (W02006071419)." Final Act. 7. We will refer to US
2008/0020304 Al as "Schroder '304."
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3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Govek, Timans, Kusuda, and Zhenhua.
4. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Govek, Timans, Kusuda, and Flicstein.
5. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Govek, Timans, Kusuda, and Ott.
6. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Govek, Timans, Kusuda, and Pope.
DISCUSSION
Rejection 1 - Claims 1, 8, 11, and 12
For this Rejection, Appellant argues the patentability of independent
claim 1 and does not provide separate arguments for claims 8, 11, and 12,
which depend from claim 1. Appeal Br. 4---6; Reply Br. 2--4. Thus, we
address claim 1, with claims 8, 11, and 12 standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
For claim 1, the Examiner relied on a combination of Govek, Timans,
and Kusuda. See Final Act. 3-7; see also Ans. 5---6. As to the language in
claim 1 shown with emphasis above, the Examiner found (1) that Govek
discloses a "flashlamp controller" (Final Act. 3), (2) that Timans
discloses the flashlamp (Fig 1, arc/flash lamps 46, 0064)
controller (Fig 1, computer/ controller arrangement 0061)
modifying the pulse-width of the multiple micropulses (Fig 14,
pre-pulse 238, treatment pulse 242, 0136, 0137, modulating the
power discharge) according to said specific thermal profile (Fig
14, 0136, required temperature-time cycle for the object that is
undergoing treatment) to generate a specific waveform (Fig 14)
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(Final Act. 4), and (3) that Timans discloses the remainder of the language
shown with emphasis (id. at 5). The Examiner articulated reasoning to
modify Govek based on Timans and to modify the combination of Govek
and Timans with Kusuda. See Final Act. 5-7; Ans. 5---6.
First, Appellant generally argues that Timans' s "teachings are not
applicable to the claimed flashlamp controller" as recited in the language
shown with emphasis above. Appeal Br. 5-6. As part of this argument,
Appellant first focuses on the requirement that the "specific thermal profile
is designed according to a stack property of said thin film and substrate."
Appeal Br. 9 (Claims App.). Appellant asserts that "heating profile 230 in
Figure 14 [of Timans] is generated in response to the power delivered by the
heater, as depicted by incident power plot 232" and that "[t]he temperatures
on heating profile 230 (such as Ti and T2) are reactions to the incident
powers on incident power plot 232 (such as P1 and P2)." Id. at 5. 4 "In other
words," Appellant argues, "heating profile 230 is not 'designed according to
a stack property of said thin film and substrate,' as claimed" because
"heating profile 230 is a result of the heat source, instead of directing the
heat source, which is different from the purpose of the claimed specific
thermal profile." Id. Appellant argues that Timans's "heat source power
modulation is not based on a 'specific thermal profile."' Id.
Appellant does not apprise us of error based on this part of the first
argument. We agree with the Examiner that Timans discloses that the
identified "specific thermal profile"-temperature profile 230 in Figure 14
4 Throughout this Decision, we remove any bolding by Appellant for
reference numerals and figure numbers and we remove any italicization for
prior art references.
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(see Timans i-f 136}-is "designed according to a stack property of said thin
film and substrate" as claimed. See Ans. 5.
Appellant has not proposed a construction for the phrase "stack
property of said thin film and substrate." The Specification discloses
various parameters of a thin film stack that may be relevant when controlling
a flashlamp controller, "such as the number of layers [in the stack] as well as
thickness, thermal conductivity, density, heat capacity, and optical
absorption depth of each layer." Spec. 10:25-28.
As noted by the Examiner, paragraph 136 of Timans, in describing
Figure 14, provides: "the processing is performed by modulating the power
discharged from the heat source so as to generate the required temperature-
time cycle for the wafer or object that is undergoing treatment." Ans. 5.
The Examiner interprets this passage as addressing the claim language at
issue because it indicates that temperature profile 23 0 "is designed by the
controller arrangement 4 7 ... to thermally process the specific properties
(material type, size, layer structure) of [the] wafer or object that is
undergoing the treatment." Ans. 5 (emphasis added); see also id. at 6
(stating that the "required temperature-time-cycle" in paragraph 136 of
Timans "fully discloses a 'specific thermal profile' because the recited cycle
of Timans includes the required temperature for the wafer or object that is
undergoing treatment"). We agree with the Examiner's position. The
passage discloses that the "temperature-time cycle" (e.g., temperature profile
230 in Figure 14) is the profile "required . .. for the wafer or object that is
undergoing treatment." Timans i-f 136 (emphasis added).
In other words, temperature profile 230 is not merely the sensed result
of incident power plot 232 in Figure 14; rather, as indicated by the passage
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highlighted by the Examiner, the system effectively uses the "required"
temperature-time cycle for the wafer or object undergoing treatment (e.g.,
profile 230) as a target, with the system "modulating the power discharged
from the heat source" (e.g., plot 232) in an effort to reach that target.
Although the cited passage at issue does not use the same terms as the claim
language at issue (e.g., "stack property"), Appellant has not adequately
explained how the claim language at issue distinguishes from the identified
disclosure in Timans.
As to the other part of this first argument, Appellant turns to the claim
language "for modifying pulse widths of multiple micropulses according to a
specific thermal profile to generate a specific waveform." Appeal Br. 9
(Claims App.). Appellant states that, in Timans, "the power discharged from
the heat source is modulated in order to generate the required temperature-
time cycle" and Appellant argues that, "[i]n contrast, the claimed flashlamp
controller modifies pulse widths of multiple micropulses according to a
specific thermal profile to generate a specific waveform." Id. at 5.
Appellant argues that Timans' s "heat source power is different from 'pulse
widths of multiple micropulses. "' Id.; see also Reply Br. 2 (arguing that
"modulating power from a heat source is clearly different from modifying
pulse widths of micropulses because power is different from pulse widths").
With these statements, Appellant recites certain aspects of the claim
language at issue and contends that Timans does not disclose those aspects,
but does not adequately explain why. See 37 C.F.R. § 41.37(c)(l)(iv) ("The
arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant."). As noted above, to address the language
"modifying pulse widths of multiple micropulses" in claim 1, the Examiner
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cited the following aspects of Timans: Figure 14; pre-pulse 238 and
"modulating the power discharge[d]" in paragraph 136; and treatment pulse
242 in paragraph 137. See Final Act. 4. On the record here, Appellant has
not fully addressed or shown error in these findings.
Appellant also argues that Timans's "generated required temperature-
time cycle is not analogous to [a] 'specific waveform."' Appeal Br. 5.
With this, Appellant has not shown error in the Examiner's reliance
on temperature profile 230 as the "specific waveform." See Ans. 5 (stating
that temperature profile 230 "is designed by the controller arrangement 47 to
have the specific waveform (peaks, valleys, time separation) to thermally
process the specific properties (material type, size, layer structure) of [the]
wafer or object that is undergoing the treatment" (emphasis added)).
Supporting the Examiner's finding is the fact that the Specification describes
the "simulated thermal profiles" in Figures 3 through 9 as "waveforms." See
Spec. 5: 14.
For procedural reasons, we will not address the untimely discussion in
the Reply Brief in which Appellant presents a new argument that "unlike the
claimed specific waveform, Timans' s temperature-time cycle is not intended
for controlling a flashlamp to provide an electromagnetic pulse." Reply Br.
2; see 37 C.F.R. § 41.41(b)(2) ("Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer ... will not be considered by the Board for
purposes of the present appeal, unless good cause is shown."). This
argument addresses language in the final clause of claim 1 (beginning "a
flashlamp for providing an electromagnetic pulse"), which was not
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addressed in either the Appeal Brief or the Answer. Appellant has not
shown good cause for failing to provide this argument in the Appeal Brief.
We tum now to Appellant's second argument. Appellant states that
"Govek teaches a substrate being moved during curing while Kusuda
teaches a semiconductor wafer being held stationary during annealing" and
Appellant argues, "[t]hus, there is an apparent conflict between the teachings
of Govek and Kusuda in terms of conveyance." Appeal Br. 6. According to
Appellant, "[ u ]nder MPEP § 2143.01, when there is a conflict between the
teachings of two or more prior art references, 'the Examiner must weigh the
power of each reference to suggest solutions to one of ordinary skill in the
art, considering the degree to which one reference might accurately discredit
another."' Id. (quoting MPEP § 2143.0l(II), with emphasis added by
Appellant). Appellant asserts that "[t]he Examiner has seemingly neglected
to provide such" analysis. Id.
The guidance from the decision discussed in the cited section of the
MPEP-Jn re Young, 927 F.2d 588 (Fed. Cir. 1991}-does not apply to the
facts here. In that decision, the court stated that "[ w ]hen prior art contains
apparently conflicting references, the Board must weigh each reference for
its power to suggest solutions to an artisan of ordinary skill" and that "[t]he
Board, in weighing the suggestive power of each reference, must consider
the degree to which one reference might accurately discredit another."
Young, 927 F.2d at 591. The potential "discrediting" in Young arose from
statements in a prior art article expressly discussing (and potentially drawing
into question) aspects of the primary reference in the rejection. See id. at
591-92. In contrast, here, neither Govek nor Kusuda discusses the other at
all. Although Govek relates to moving substrates while Kusuda relates to
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stationary substrates, that difference does not result in a "conflict[]"
precluding the combination of references. See id. at 591. Moreover, neither
Govek nor Kusuda discourages one of ordinary skill in the art from
combining their relevant teachings as set forth in the Rejection.
Here, the Examiner relied on Kusuda to address the "waveform
generator" and "encoder" clauses in claim 1. See Final Act. 6-7. Appellant
has not shown that the identified difference between Govek and Kusuda-
i.e., moving substrates as opposed to stationary substrates-undermines
either the Examiner's reliance on Kusuda or the reasoning articulated to
modify the combination of Govek and Timans with Kusuda. See id.; see
also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("[F]amiliar
items may have obvious uses beyond their primary purposes, and in many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle."). In the Reply Brief, Appellant
addresses the Examiner's discussion of Govek and Kusuda as analogous art
(see Ans. 6) but (for the same reasons discussed above) does not show error
in the Rejection based on the originally identified difference between Govek
and Kusuda-moving substrates as opposed to stationary substrates. See
Reply Br. 3.
For these reasons, we sustain the rejection of independent claim 1.
Claims 8, 11, and 12 fall with claim 1.
Rejection 2 - Claims 3-7 and 10
A. Claims 3-7
Claims 3-7 depend from claim 1. See Appeal Br. 9-10 (Claims
App.). Appellant does not provide additional arguments for claims 3-7,
aside from those presented for claim 1. For the reasons discussed above, we
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are not apprised of error in the rejection of claim 1. See supra Rejection 1.
As such, we sustain the rejection of claims 3-7.
B. Claim 10
Claim 10 depends from claim 1 and adds "wherein said flashlamp
delivers a pulse having a pulse length of 10 microseconds with a peak power
in excess of 100 kW/cm2." Appeal Br. 10 (Claims App.). Regarding the
additional limitation, the Examiner stated that "Schroder discloses said
flashlamp delivers a pulse having a pulse length of 30 microseconds (0063,
Example 13A, Pulse length 30 microseconds) with a peak power in excess of
100 kW/cm2 (0063, Example 13A, Energy Density 0.88-1.42 J/cm2) is
known in the art." Final Act. 9. 5 The Examiner stated that it would have
been obvious for one of ordinary skill in the art at the time of the invention
"to modify the pulse length to be 10 microseconds, since it has been held
that where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable range involves only routine skill in the
art." Id. at 10. The Examiner articulated reasoning why one of ordinary
skill in the art at the time of the invention would have modified Govek in
view of Timans and Kusuda based on Schroder '419 and routine
optimization, as proposed. Id. at 9, 10.
First, Appellant argues that because "the time scale for the pulses in
Timans Figure 14 is in seconds," "there is a conflict[] in Timans' [ s] long
pulse length and Schroder's very short pulse length." Appeal Br. 6.
Appellant asserts that "the Examiner has not explained how the conflicts
5 The citation to "0063" refers to paragraph 63 in Schroder '304.
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should be resolved in order to properly combine the teachings of Timans and
Schroder." Id. at 6-7.
For the same reasons discussed above in the context of Appellant's
second argument addressing Rejection 1, the guidance from In re Young
does not apply to the facts here because neither Timans nor Schroder
discusses the other at all, such that there is no "conflict[]" to resolve. See
Young, 927 F.2d at 591. In addition, Appellant has not shown that the
identified difference between the time scales for the disclosed pulses in
Timans and Schroder would undermine either ( 1) the Examiner's reliance on
Schroder and routine optimization or (2) the reasoning articulated to modify
the relied-upon combination of prior art to address claim 10. See Final Act.
9-10; Ans. 7 (stating that "one of ordinary skill in the art would know to
modify the long pulse lengths of Timans with the shorter pulse lengths of
Schroder for the purpose of thermally processing different workpiece
materials"); see also KSR, 550 U.S. at 420.
Second, Appellant states that " [ o Jn page 2 of the Advisory Action, the
Examiner asserts that it would have been obvious to modify the pulse length
of Timans in view of the pulse length of Schroder." Appeal Br. 7.
Appellant asserts that "Timans modulate[ s] power discharged from the heat
source, and not pulse length" and that "[h]eat source power is different from
pulse length." Id.
Contrary to Appellant's argument, an express teaching, suggestion, or
motivation in the prior art is not a requirement for an obviousness
determination. See KSR, 550 U.S. at 418-19 (holding that when the
teaching-suggestion-motivation test is applied as a rigid formula, it is
incompatible with Supreme Court precedent). That Timans does not
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expressly teach modifying the disclosed pulse length does not undermine the
Examiner's proposal to modify the pulse length of the combination of Govek
in view of Timans and Kusuda based on Schroder and routine optimization.
Further, Appellant has not addressed or shown error in the reasoning
articulated by the Examiner. See Final Act. 9, 1 O; Ans. 7.
For these reasons, we sustain the rejection of claim 10.
Rejections 3 through 6- Claims 9 and 13-16
Claims 9 and 13-16 depend from claim 1. See Appeal Br. 10-11
(Claims App.). Appellant does not provide additional arguments for claims
9 and 13-16, aside from those presented for claim 1. For the reasons
discussed above, we are not apprised of error in the rejection of claim 1. See
supra Rejection 1. As such, we sustain the rejections of claims 9 and 13-16.
DECISION
We affirm the decision to reject claims 1 and 3-16 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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