Ex Parte Shirley

Board of Patent Appeals and Interferences

Feb 14, 2011

10773968 (B.P.A.I. Feb. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL D. SHIRLEY
____________________

Appeal 2010-008483
Application 10/773,968
Technology Center 1700
____________________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-008483
Application 10/773,968

Claim 1 is representative of the claimed subject matter, reproduced
below:
1. A device for depositing resist onto a substrate, said
device comprising:
a rotatable substrate support comprising a first surface onto
which a layer of solvent-containing resist may be deposited;
a resist dispenser fluidly adjacent said first surface for
depositing said layer on said first surface;
a control fluid supply configured to impart a substantially
solvent-free gaseous control fluid onto a portion of said deposited
layer such that said gaseous control fluid emanating from said supply
effects a local change in evaporation rate of said deposited layer; and
a controller configured to vary the placement of said gaseous
control fluid onto said deposited layer of resist to effect a substantially
uniform thickness layer thereof.

The Examiner maintains, and Appellant seeks review of, the
following rejections:
1. The rejection of claims 1, 2, 16, and 18-20 as anticipated under 35
U.S.C. §102(b) by Fujimoto (US 5,939,139; issued August 17, 1999).
2. The rejection of claims 3 and 4 as unpatentable under 35 U.S.C §
103(a) over Fujimoto and Tateyama (US 5,919,520; issued July 6, 1999).
3. The rejection of claims 1-7, 10, 12-18, and 20 as anticipated under
35 U.S.C. §102(b) by Tateyama.
4. The rejection of claims 8 and 9 as unpatentable under 35 U.S.C. §
103(a) over Tateyama and Matsuyama (US 2002/0176936 A1; published
November 28, 2002).
5. The rejection of claim 11 as unpatentable under 35 U.S.C. § 103(a)
over Tateyama and Chappa (US 7,077,910 B2; issued July 18, 2006).
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Appeal 2010-008483
Application 10/773,968

6. The rejection of claim 19 as unpatentable under 35 U.S.C. § 103(a)
over Tateyama and Fujimoto.
DISPOSITIVE ISSUES
The contention for rejections 1-2 based on Fujimoto as the primary
reference is the same: Appellant contends that the Examiner has failed to
demonstrate that Fujimoto teaches, directly or inherently, a resist dispenser
and a control fluid supply as claimed (App. Br. 5; Reply Br. 2). As
Appellant does not argue any claim apart from the others, we select claim 1
as representative for deciding the first issue on appeal.
The first issue on appeal for the rejections 1-2 is: Does the evidence
as a whole support the Examiner’s finding that Fujimoto describes a device
for depositing resist onto a substrate having a resist dispenser and a control
fluid supply “configured to impart . . . fluid onto a portion of” on the
deposited layer so as to “effect a local change in the evaporation rate” the
deposited resist layer as required by claim 1?
We answer this question in the affirmative.
Similarly, the main contention for rejections 3-6 based on Tateyama
as the primary reference is: Does the evidence as a whole support the
Examiner’s finding that Tateyama describes a device for depositing resist
onto a substrate having a control fluid supply “configured to impart . . . fluid
onto a portion of” on the deposited layer so as to “effect a local change in
the evaporation rate” as required by claim 1?
We also answer this question in the affirmative.
PRINCIPLES OF LAW
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Appeal 2010-008483
Application 10/773,968

A product or apparatus must be distinguished from the prior art in
terms of structure, rather than function. In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997).
Where there is reason to believe that the prior art structure possesses
all the claimed characteristics including the capability of performing the
claimed function, the burden shifts to the applicant to show that the claimed
function, in fact, structurally distinguishes the claimed apparatus from the
prior art apparatus. Schreiber, 128 F.3d at 1478; In re Hallman, 655 F.2d
212, 215 (CCPA 1981); In re Ludtke, 441 F.2d 660, 664
(CCPA 1971).
ANALYSIS
with Findings of Fact
With respect to rejections 1-2, Appellant argues that that the Examiner
has not provided a reasonable basis to conclude that the solvent dispensing
nozzle 21 is a resist dispenser (Reply Br. 1-2). However, the Examiner in
the Final Rejection mailed May 6, 2009 relied upon nozzle 11, not nozzle
21, of Fujimoto as the resist dispenser (Final Rej. 2).2 Appellants did not
dispute the Examiner’s finding that nozzle 11 of Fujimoto may reasonably
be construed as a resist dispenser (App. Br. generally).
Accordingly, the key question at issue for rejections 1-2 is whether the
language “effects a local change in the evaporation rate” in claim 1
structurally distinguishes the claimed control fluid supply from the control

2 The Examiner only refers to nozzle (21) as a resist dispenser in response to
Appellant’s Brief (Ans. 4 and 10), and does not repudiate the finding that
nozzle (11) is a resist dispenser. We find that the evidence supports the
Examiner’s finding that nozzle (11) is a resist dispenser.
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Appeal 2010-008483
Application 10/773,968

fluid supply nozzle 22 described by Fujimoto. The Examiner has provided a
reasonable basis to conclude, based upon the structure of the air nozzle 22
on the moveably supported arm as described, is inherently capable of
effecting a local change in the evaporation rate of the deposited resist layer
(Ans. 9).
Because the Examiner’s finding of inherent capability was reasonable,
the burden shifted to Appellant to show that, in fact, the “effects a local
change in the evaporation rate” language of the claim patentably structurally
distinguishes the claimed control fluid supply from that of Fujimoto.
Appellant’s arguments that Fujimoto does not expressly teach the recited
function are irrelevant to the issue (App. Br. 6-7; Reply Br. 2). The nozzle
need only have a structure allowing it to be capable of the claimed function.
A local change in the evaporation rate need not actually occur for the prior
art to meet the structural limitations of the claim.
The key question at issue for rejections 3-6 is similarly whether the
language “effects a local change in the evaporation rate” in claim 1
structurally distinguishes the claimed control fluid supply from the control
fluid supply described by Tateyama. The Examiner has provided a
reasonable basis to conclude, based upon the structure of the air nozzle 80
on the moveable beam 20, that the nozzle 80 is inherently capable of
effecting a local change in the evaporation rate of the deposited resist layer.
Because the Examiner’s finding of inherent capability was reasonable,
the burden shifted to Appellant to show that, in fact, the “effects a local
change in the evaporation rate” language of the claim patentably structurally
distinguishes the claimed control fluid supply from that of Tateyama.
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Appeal 2010-008483
Application 10/773,968

Appellant’s arguments that Tateyama does not expressly teach the recited
function are irrelevant to the issue (App. Br. 7; Reply Br. 3). The nozzle
need only have a structure allowing it to be capable of the claimed function.
A local change in the evaporation rate need not actually occur for the prior
art to meet the structural limitations of the claim.
Appellant’s argument that the structure of Tateyama is not capable of
this function because air nozzle 80 has a plurality of holes along the entire
length of the moveable beam 20 is unavailing, since as stated by the
Examiner the structure of the nozzle 80 would reasonably be capable of
effecting a local change in evaporation at each location as it traverses the
wafer (Ans. 10, 11). The Specification fails to explicitly define how much
or how little area may be within a “portion” so as to effect a “local change”
as required by claim 1. Indeed, in this regard, we note that Appellant’s
Specification describes that multiple nozzles “can be employed to increase
or tailor area coverage” of the control fluid supply used to dry the resist
layer (Spec. 11:30-31; emphasis added). The nozzle 80 of Tateyama is also
used for drying the surface of the wafer (Tateyama col. 8, ll. 39-58).
Accordingly, the Examiner’s position that the claimed limitation at issue
does not distinguish over the increased coverage provided by the plurality of
holes of the air nozzle 80 of Tateyama is reasonable.
Appellant’s contention that the rejection of claims 8 and 9 is improper
because Matsuyama does not teach a control fluid (App. Br. 8-9) is
unpersuasive for the reasons set forth by the Examiner, that is, that
Matsuyama was not relied upon to teach this feature (Ans. 12).
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Appeal 2010-008483
Application 10/773,968

CONCLUSION
On the record before us, we sustain all of the rejections of the claims
as maintained by the Examiner.
DECISION
The decision of the Examiner is 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).

AFFIRMED
tc

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