Ex Parte Sidhwa

Board of Patent Appeals and Interferences

Jul 31, 2007

10131455 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARDESHIR JEHANGIR SIDHWA
____________

Appeal 2006-1512
Application 10/131,455
Technology Center 1700
____________

Decided: July 31, 2007
____________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM,
and JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 5-19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

Appeal 2006-1512
Application 10/131,455

I. BACKGROUND
The invention relates to a clamp rings for securing substrates to a
support member within a deposition chamber. The clamp ring has an edge
exclusion lip with a variable bottom surface to a support member within a
deposition chamber (Specification 1). Claim 1 is illustrative of the subject
matter on appeal:
1. A clamp ring for securing a substrate comprising:

a body;

one or more substrate contacting surfaces projecting from the
body; and an edge exclusion lip projecting from the body, the lip sized
and adapted to project over an edge of any substrate beneath the one
or more contacting surfaces, the lip spaced from the substrate at an
innermost edge of the lip by a first distance and spaced from the
substrate at the substrate edge by a second distance smaller than the
first distance, the lip that having a first bottom surface extending
outwardly from the innermost edge of the lip and a second bottom
surface projecting inward from the body over the substrate edge,

wherein at least the second distance permits deposition of a
layer of pre-selected material to a predefined thickness on each of a
predetermined number of substrates secured by the clamp ring without
bridging between the substrate and the clamp ring, and

wherein the first bottom surface is sloped from the first distance
to the second distance and the second bottom surface is substantially
parallel to the substrate.

The Examiner relies on the following prior art references to show
unpatentability:
Takashi JP 09143716 A Jun. 3, 1997
Stevens US 5,810,931 Sep. 22, 1998
Lee US 6,162,336 Dec. 19, 2000
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Application 10/131,455

The rejections as presented by the Examiner are as follows:
1. Claims 6 and 7 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. Claims 6, 7, and 11-17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lee.
3. Claims 6, 7, 11-13, and 15-17 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Stevens.
4. Claims 14, 18, and 19 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Stevens.
5. Claims 1, 8, and 9 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Lee in view of Takashi.
6. Claims 5 and 10 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Lee and Takashi in view of Stevens.
II. DISCUSSION
A. Indefiniteness under 35 U.S.C. § 112, ¶ 2
Claims 6 and 7 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. The Examiner contends that the phrase “second
distance” is indefinite because this distance is to be selected based upon the
material to be deposited on the substrate.
For this ground of rejection, the issue before us is: Is there is a
reasonable basis to believe that the ordinary artisan in the art of deposition
technology would not be able to determine the scope of the claim? We
answer this question in the affirmative.
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“The legal standard for definiteness [under the second paragraph of
35 U.S.C. § 112] is whether a claim reasonably apprises those of skill in the
art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
1759 (Fed. Cir. 1994). The inquiry is to determine whether the claim sets
out and circumscribes a particular area with a reasonable degree of precision
and particularity. The definiteness of the language employed in a claim
must be analyzed not in a vacuum, but in light of the teachings of the
particular application. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971). This is especially true in a situation involving a relative
claim expression since the Specification must provide some standard for
defining or measuring its meaning. Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984).
After consideration of the present record, we determine that a person
of ordinary skill in the art would not have recognized the scope of the
disputed relative claim language. Appellant has not directed us to specific
portions of the Specification, from which a clear meaning of the phrase
could be gleaned. That is, we have not been directed to portions of the
Specification that provide guidance to determine the “second distance” that
is selected based upon the material to be deposited on the substrate. The
claimed subject matter is directed to a ring for securing a substrate. The
claimed invention does not limit the material that is deposited on the
substrate. The Specification does not provide guidance for determining the
proper distance for coatings deposited in the chamber.
Appellant contends the claim language does not restrict the selection
of the second distance to be based only on the material to be deposited
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(Reply Br. 2). The Appellant points to the disclosure of the Specification
referencing the deposition of aluminum layers and the deposition of
aluminum-copper layers as examples of materials to be deposited (Reply Br.
3-4). The cited portion of the Specification referring to the deposition of
aluminum layers is not supportive of Appellant’s position because this
discussion refers to the prior art (i.e. US 5,810,931). Thus, Appellant has
only referred to the deposition of aluminum-copper layers in support of their
claimed invention. However, the claimed invention is not limited to the
application of aluminum-copper layers. The claimed invention is
sufficiently broad to encompass the application of any type of material layer
suitable for deposition, such as, copper, aluminum, and titanium-tungsten.
The Appellant has not directed us to portions of the Specification that
describe the other conditions required for selecting the appropriate distance.
That is, Appellant has not identified other characteristics that must be met in
order to determine the appropriate “second distance” for a clamp ring
designed for deposition of a layer formed from a material other than
aluminum-copper.
A person of ordinary skill in the art of deposition technology forming
clamp rings would not understand what “second distances” would infringe
the claimed invention. See All Dental Prodx, LLC v. Advantage Dental
Products, Inc., 309 F.3d 774, 779-80, 64 USPQ2d 1945, 1949 (Fed. Cir.
2002) (“The primary purpose of the definiteness requirement is to ensure
that the claims are written in such a way that they give notice to the public of
the extent of the legal protection afforded by the patent, so that interested
members of the public, e.g., competitors of the patent owner, can determine
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whether or not they infringe.). A person of ordinary skill in the art designing
a clamp ring for the deposition of metal films would not appreciate when the
claimed invention has been infringed. This is because the Specification
describes that the “second distance” is not the same for all types of layers.1
(See the discussion of aluminum layers versus aluminum-copper layers)
B. Anticipation under 35 U.S.C. § 102(b)
Implicit in our review of the Examiner’s anticipation analysis is that
the claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). During prosecution
before the Examiner, the claim language should be given its broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account any
definitions or enlightenment contained in the written description of
Appellant’s Specification. See In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997). “[T]he specification ‘is always
highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.’” See Phillips v.
AWH Corp., 415 F.3d 1303, 1315, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005)
(en banc).
Applying the preceding legal principles we determine that the claims
on appeal are directed to a clamp ring for securing a substrate comprising a
body, one or more substrate contacting surfaces projecting from the body,

1 It is noted that the Specification describes the invention as solving a need
in the art for aluminum-copper alloy deposition (page 4). However the
claims are not so limited.
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and an edge exclusion lip projecting from the body, the lip sized and adapted
to project over an edge of any substrate beneath the one or more contacting
surfaces, the lip spaced from the substrate at an innermost edge of the lip by
a first distance and spaced from the substrate at the substrate edge by a
second distance smaller than the first distance.
We will treat the claim language appearing in the last stanza of claims
6, 7, and 11 beginning with the word “wherein” as equivalent to a process
limitation. The limitation describes a process parameter that must be
considered in determining the “second distance” (or the second lower
surface of claim 11)2. Thus, a clamp ring product that comprises the
elements discussed above would render the claimed invention unpatentable.
It has long been held that “‘[i]f the product in a product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.’” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,
1317, 78 USPQ2d 1097, 1101 (Fed. Cir. 2006) (quoting In re Thorpe,
777 F.2d 695, [697], 227 USPQ 964, 966 (Fed. Cir. 1985)).
Claims 6, 7, and 11-17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lee.

2 The subject matter of claim 11 is directed to a clamp ring comprising a roof
having upper and lower surfaces, at least one substrate contacting surface
extending downwardly from the lower roof surface, and a lip forming an
inner terminus of the roof, wherein the lip is sized and adapted to extend
inwardly over the edge of the substrate while remaining vertically spaced
from the substrate, the lip having a variable lower surface comprising at least
first and second lower surfaces, the first surface disposed inwardly from the
second surface.
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A claimed invention is anticipated under 35 U.S.C. § 102 when all of
the elements of the claimed invention are found in one reference. See
Scripps Clinic & Research Found. V. Genentech Inc., 927 F.2d 1565, 1576,
18 USPQ2d 1001, 1010 (Fed. Cir. 1991). The prior art reference must
disclose every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1433
(Fed. Cir. 1997).
The issue presented for review with respect to this rejection is: Does
the Lee reference have a disclosure that anticipates the claimed subject
matter? The issue turns on whether Lee describes a clamp ring for securing
a substrate comprising a body, one or more substrate contacting surfaces
projecting from the body, and an edge exclusion lip projecting from the
body, the lip sized and adapted to project over an edge of any substrate
beneath the one or more contacting surfaces, the lip spaced from the
substrate at an innermost edge of the lip by a first distance and spaced from
the substrate at the substrate edge by a second distance smaller than the first
distance. We answer this question in the affirmative.
The Examiner finds that Lee describes a clamp ring that comprises all
of the above components (Answer 3-4).
Appellant has not disputed the Examiner's findings. Rather, Appellant
contends that the limitation appearing in the last stanza of claim 6 and 7 is
not described in Lee (Br. 8-9). Appellant’s contention is not persuasive for
the reasons set forth above. It has not been disputed that Lee describes a
clamp ring that comprises all of the above structural components. Appellant
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has not directed us to evidence that establishes that the clamp ring described
by Lee is patentably distinct from the claimed invention.
Regarding claims 11-17, Appellant has not argued that Lee does not
disclose a clamp ring comprising a roof having upper and lower surfaces, at
least one substrate contacting surface extending downwardly from the lower
roof surface, and a lip forming an inner terminus of the roof. Appellant also
has not argued that the lip of Lee is sized and adapted to extend inwardly
over the edge of the substrate while remaining vertically spaced from the
substrate or that the lip has a variable lower surface comprising at least first
and second lower surfaces wherein the first surface is disposed inwardly
from the second surface. Rather, Appellant contends that the limitation
appearing in the last stanza of claim 11 is not described in Lee (Br. 12-13).3
Appellant’s arguments are not persuasive of patentability. We agree with
the Examiner that the clamp ring is designed to reduce the probability of
sticking and bridging (accumulation of the positive material) between the
substrate and the clamp ring (Answer 8). Appellant has not directed us to
evidence that establishes that the clamp ring described by Lee is patentably
distinct from the claimed invention.
Claims 6, 7, 11-13, and 15-17 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Stevens.
The issue presented for review with respect to this rejection is: Does
the Stevens reference have a disclosure that anticipates the claimed subject
matter? The issue turns on whether Stevens describes a clamp ring for

3 Appellant has grouped the arguments for these claims together (Br. 12-13).
Therefore, we will limit our consideration to claim 11.
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securing a substrate comprising a body, one or more substrate contacting
surfaces projecting from the body, and an edge exclusion lip projecting from
the body, the lip sized and adapted to project over an edge of any substrate
beneath the one or more contacting surfaces, the lip spaced from the
substrate at an innermost edge of the lip by a first distance and spaced from
the substrate at the substrate edge by a second distance smaller than the first
distance. We answer this question in the affirmative.
The Examiner finds that Stevens describes a clamp ring that
comprises all of the above components (Answer 6).
Appellant has not disputed the Examiner's findings. Appellant’s
arguments for this rejection are substantially the same as those presented for
the discussion of claims 6 and 7 in the rejection over Lee discussed above.
Specifically, Appellant contends that Stevens does not teach that the height
of the first stepped surface closest of the substrate edge is selected based on
the material to be deposited (Br. 10). Appellant’s arguments are not
persuasive. This argument is directed to the process limitation described in
the last stanza of the claim. Appellant has not directed us to evidence that
establishes that the clamp ring described by Stevens is patentably distinct
from the claimed invention.
Regarding claims 11-13, and 15-17, Appellant has not argued that
Stevens does not disclose to a clamp ring comprising a roof having upper
and lower surfaces, at least one substrate contacting surface extending
downwardly from the lower roof surface, and a lip forming an inner
terminus of the roof. Appellant also has not argued that the lip of Stevens is
sized and adapted to extend inwardly over the edge of the substrate while
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remaining vertically spaced from the substrate or that the lip has a variable
lower surface comprising at least first and second lower surfaces wherein the
first surface is disposed inwardly from the second surface. Rather,
Appellant contends that the limitation appearing in the last stanza of claim
11 is not described in Stevens (Br. 14-15).4 Appellant’s arguments are not
persuasive of patentability. We agree with the Examiner that the clamp ring
is designed to reduce the probability of sticking and bridging (accumulation
of the positive material) between the substrate and the clamp ring (Answer
8). Appellant has not directed us to evidence that establishes that the clamp
ring described by Stevens is patentably distinct from the claimed invention.
C. The Obviousness Rejections
Claims 14, 18, and 19 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Stevens.
Appellant argues that Stevens does not disclose that the height of the
first stepped surface, closest to the substrate, is selected to minimize
accumulation of deposited materials on the side wall adjacent to the first
stepped surface. This is the same argument that was presented for claim 11
(See Brief 17). Appellant’s argument is not persuasive for the reasons set
forth above. Furthermore, Appellant’s argument does not address the
Examiner’s basis of rejecting the claims. Specifically, Appellant has not
addressed the Examiner’s position that the selection of the aspect ratios of
the roof surfaces was determined to minimize sticking due to the
accumulation of deposited materials.

4 Appellant has grouped the arguments for these claims together (Br. 14-15).
Therefore, we will limit our consideration to claim 11.
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Claims 1, 8, and 9 stand rejected under 35 U.S.C § 103(a) as
unpatentable over Lee in view of Takashi; and Claims 5 and 10 are rejected
under 35 U.S.C § 103(a) as unpatentable over Lee and Takashi in view of
Stevens.
Appellant has grouped the arguments for these rejections together.
(See Brief 20). Appellant has not presented separate arguments directed to
the individual claims within these rejections. We select claim 1 as
representative.
Appellant contends that the combination of Lee and Takashi or the
combination of Lee Takashi and Stevens does not teach or suggest an edge
exclusion lip having at least a portion of a bottom surface slope from a first
height to a second height smaller than the first height as specified in the
claimed invention (Br. 20). Appellant further contends that the chamfered
part of Takashi does not teach or suggest a surface slope from the first height
to a second height (Br. 20).
Appellant’s contentions are not persuasive. The Examiner cites
Takashi for teaching that it was obvious to slope the bottom surface of the
clamp ring to reduce stress on the film to prevent peeling and possible
contamination of the deposited film (Answer 5). As such a person of
ordinary skill in the art would have reasonably expected that the clamp ring
of Lee could include a slope from the first bottom surface to the second
bottom surface with the expectation of gaining the advantages described by
Takashi.
As a final point, we note that Appellant’s has not relied upon evidence
of unexpected results in response to the Examiner's obviousness rejections.
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III. DECISION
The rejection of claims 6 and 7 under 35 U.S.C. § 112, second
paragraph, is affirmed. The prior art rejections of claims 1, and 5-19 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tf/ls

Lisa K. Jorgenson
STMicroelectronics, Inc.
1310 Electronics Drive
Carrollton, TX 75006
13