Ex Parte Steger

Board of Patent Appeals and Interferences

Feb 1, 2011

10608091 (B.P.A.I. Feb. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/608,091 06/30/2003 Robert J. Steger 015290-682 8130
7590 02/02/2011
BURNS, DOANE, SWECKER & MATHIS, L.L.P.
P.O. Box 1404
Alexandria, VA 22313-1404
EXAMINER
DHINGRA, RAKESH KUMAR
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
02/02/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT J. STEGER
____________________

Appeal 2009-010219
Application 10/608,091
Technology Center 1700
____________________

Before TERRY OWENS, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-3, 5-12, 15-23, 32, and 33. We have jurisdiction
under 35 U.S.C. § 6(b).

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 2009-010219
Application 10/608,091

We AFFIRM-IN-PART.
Appellant’s invention relates to a substrate support used in a plasma
processing apparatus. Claims 1 and 15 are illustrative:2
1. A substrate support useful in a reaction chamber of a
plasma processing apparatus, the substrate support comprising:
a ceramic member;
a metallic heat transfer member overlying the ceramic
member, the heat transfer member having a maximum thickness
of about ¼ inch, the heat transfer member including at least one
flow passage through which a liquid can be circulated to heat
and cool the heat transfer member;
an electrostatic chuck overlying the heat transfer
member, the electrostatic chuck having a support surface for
supporting a substrate in a reaction chamber of a plasma
processing apparatus;
a source of temperature controlled liquid in flow
communication with the at least one flow passage; and
a controller operable to control the volumetric flow rate
and/or the temperature of the liquid circulated through the at
least one flow passage, so as to control heating and cooling of
the heat transfer member at a rate of from about 0.25-2°C/sec,
wherein heating is performed solely by the heat transfer
member.

15. A substrate support useful in a plasma processing
apparatus, comprising:
a source of temperature controlled liquid;
a ceramic member;
a metallic heat transfer member overlying the ceramic
member, the heat transfer member including at least one flow
passage in fluid communication with the liquid source and

2 Paragraph indents have been added to claim 15.
2
Appeal 2009-010219
Application 10/608,091

through which the liquid can be circulated to heat and cool the
heat transfer member at a rate of from about 0.25-2 °C/sec;
an electrostatic chuck overlying the heat transfer
member, the electrostatic chuck having a support surface for
supporting a substrate in a reaction chamber of a plasma
processing apparatus; and
a controller operable to control the volumetric flow rate
and/or the temperature of the liquid circulated through the at
least one flow passage, wherein heating is performed solely by
the heat transfer member.

The Examiner maintains the following rejections: 3
1. Claims 1, 2, 10, 12, 15, 16, 21 and 23 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yatsuda (US 6,488,863 B2; issued Dec. 3,
2002) in view of Chiang (US 6,800,173 B2; issued Oct. 5, 2004) and
Ramanan (US 6,529,686 B2; issued Mar. 4, 2003);
2. Claims 3, 5 rejected under 35 U.S.C. § 103(a) as unpatentable over
Yatsuda in view of Chiang and Ramanan and further in view of Kadotani
(US 2001/0018828 A1; pub. Sep. 6, 2001);
3. Claims 6 and 17 rejected under 35 U.S.C. § 103(a) as unpatentable
over Yatsuda in view of Chiang and Ramanan and further in view of Yang
(US 6,635,580 B1; issued Oct. 21, 2003);
4. Claims 7 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable
over Yatsuda in view of Chiang and Ramanan and further in view of Tamura
(US 2001/0009178 A1; Jul. 26, 2001);

3 Where claims are rejected in separate rejections, but over the same prior
art, we combine the rejections and list them as one.
3
Appeal 2009-010219
Application 10/608,091
5. Claims 8 and 19 rejected under 35 U.S.C. § 103(a) as unpatentable
over Yatsuda in view of Chiang and Ramanan and further in view of
Mahawili (US 6,007,635; issued Dec. 28, 1999);
6. Claims 9 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable
over Yatsuda in view of Chiang and Ramanan and further in view of
Mimura (US 7,022,616 B2; issued Apr. 4, 2006) and Tamura;
7. Claims 11 and 22 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yatsuda in view of Chiang and Ramanan and further in
view of Wang (US 2002/0075624; pub. Jun. 20, 2002); and
8. Claims 32 and 33 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yatsuda in view of Chiang and Ramanan and further in
view Gaylord (US 5,849,076; issued Dec. 15, 1998).
II. DISCUSSION
A. REJECTION OF CLAIMS 1, 2, 10, 12, 15, 16, 21, AND 23 OVER
YATSUDA, CHIANG, AND RAMANAN
Appellant’s arguments are directed to limitations found in claims 1
and 15. As none of the other claims are argued separately, we select these
two claims as representative for resolving the issues on appeal for Rejection
1.
With regard to claims 1 and 15, the Examiner finds that Yatsuda
describes a substrate support having a ceramic member (insulating member
20), a metallic heat transfer member (worktable 18), and an electrostatic
chuck 28 (Ans. 5). The heat transfer member includes passageways 34 and
the wafer W is kept at a predetermined temperature by causing a coolant to
flow in the passageways (Ans. 5; Yatsuda, col. 3, ll. 53-55).
4
Appeal 2009-010219
Application 10/608,091
The Examiner acknowledges that Yatsuda does not teach either a
thickness for the heat transfer member or the use of a controller as claimed
(Ans. 6).
With respect to the thickness, the Examiner finds that Ramanan
provides evidence that the thickness of a heating transfer member was a
known result effective variable that could be optimized to obtain a desired
thermal mass, required as per process limitations (Ans. 7).
The Examiner further finds that both Ramanan and Chiang provide
evidence that controllers operable to control coolant flow rate and/or
temperature were known in the art and it would have been obvious to use
such a controller to provide precise control of the temperature of Yatsuda’s
heat transfer member (Ans. 6-7).
Based on this evidence, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art to obtain the claimed
thickness (maximum of ¼ inch) through routine experimentation, and
provide a controller operable as claimed to provide precise control of the
temperature of the heat transfer element (Ans. 6-8).
1. CLAIM 1
Appellant contends that neither Ramanan nor Chiang teaches or
suggests a metallic heat transfer member having a maximum thickness of
about ¼ inch including at least one flow passage (Br. 11-12).4 Appellant
further contends that Ramanan provides no recognition that the thickness of
the cooling member is a result-effective variable (Br. 12-13).
The issue is: Does the evidence as a whole support the Examiner’s
finding that the thickness would have been understood to be a result-
5
Appeal 2009-010219
Application 10/608,091

effective variable optimizable through routine experimentation to
thicknesses that are at a maximum about ¼ inch?
Yatsuda’s “heat transfer member” is worktable 18, which includes
passageways 34 for circulating coolant (Fig. 1, col. 3, ll. 23-25). Yatsuda
desires to keep the wafer at a predetermined temperature during plasma
processing through the use of coolant flowing in the passageways (Yatsuda,
col. 3, ll. 53-55; col. 10, ll. 11-14). Yatsuda is silent with regard to the
thermal mass and thickness of the worktable 18.
Ramanan teaches a heating and chilling apparatus with a low thermal
mass heating member (bakeplate 20) positioned over a high thermal mass
heat sink (cooling member 26) (Fig. 1a-c; col. 13, ll. 18-21). The low
thermal mass of the bakeplate allows a workpiece supported by the
bakeplate to be heated, but also allows the high thermal mass cooling
member to cool the workpiece when the bakeplate thermally contacts the
cooling member (Ramanan, col. 8, ll. 17-24). The low thermal mass heating
member, which has a thickness of 0.06 to 0.25 inches, is said to have a
thermal mass significantly less than the thermal mass of conductive layers of
conventional heating members (col. 8, ll. 55-66).
We agree with the Examiner that Ramanan provides evidence that it
was known in the art that thermal mass is related to the size, e.g., the
thickness and diameter, of the heat transfer member (Ramanan, col. 8, ll. 33-
55). Ramanan states that low thermal mass, preferably combined with high
thermal conductivity, is desirable in a heating member thermally conductive
layer to facilitate efficient and rapid heating and cooling of a workpiece
(Ramanan, col. 9, ll. 6-13). This is useful in bake/chill operations (col. 9, ll.

4 References to the Brief (Br.) are to the Amended Second Appeal Brief filed
6
Appeal 2009-010219
Application 10/608,091

9-13). However, a thicker (higher mass) heat transfer member will have
slower heating and cooling rates, but provide more uniform temperature
(col. 9, ll. 49-57).
The evidence tends not to support a conclusion that one of ordinary
skill in the art would have used a worktable 18 with a maximum thickness of
0.25 inches in the apparatus of Yatsuda. This is because Yatsuda desires to
maintain a substrate at a uniform temperature by counteracting heating by
the plasma processing, and Ramanan teaches that temperature uniformity is
best maintained by using high thermal mass heat transfer members. On the
present record, the optimal thickness of a cooling worktable such as that of
Yatsuda would be much greater than the thickness of the low mass bakeplate
of Ramanan. The teachings as a whole indicate that optimizing the thickness
of Yatsuda’s worktable would result in worktables of higher than ¼ inch
thickness.
Because the evidence as a whole tends not to support the Examiner’s
obviousness conclusion, we cannot sustain the rejection of claims 1, 2, 10,
and 12 over Yatsuda in view of Chiang and Ramanan.
2. CLAIM 15
The rejection of claim 15, however, stands on a different footing. At
the outset, we note that claim 15 does not contain a number of limitations
contained in claim 1. For the arguments directed to those limitations not
contained in claim 15, Appellant’s arguments fail from the outset. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 15 does recite that “heating is performed solely by the heat
transfer member,” and in this regard, Appellant contends that the Examiner

September 25, 2008.
7
Appeal 2009-010219
Application 10/608,091
misinterpreted Chiang, and that Chiang provides no suggestion of heating
solely by the heat transfer member (Br. 12). However, the claim limitation
at issue is functional in nature, and contained in a claim directed to an
apparatus. “A machine is a concrete thing, consisting of parts, or of certain
devices and combination of devices.” See Burr v. Duryee, 68 U.S. 531, 570
(1863) (defining "machine"). Because an apparatus is a structure, the
apparatus must be distinguished from the prior art on the basis of structure,
and where there is reason to conclude that the structure of the prior art is
inherently capable of performing the claimed function, the burden shifts to
the applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA
1981).
When claim 15 is properly interpreted as an apparatus claim, the
limitation “wherein heating is performed solely by the heat transfer
member” does not structurally distinguish the claimed substrate support
from the substrate support of Yatsuda. Yatsuda describes a substrate support
with a heat transfer member (worktable 18) having passageways 34 through
which a heat transfer fluid can be circulated (Yatsuda, col. 3, ll. 53-55; Fig.
1). The passageways of the worktable are the sole heat transfer mechanism
within the support member. Whether one introduces cold fluid or hot fluid,
the structure of the worktable remains unchanged. Therefore, Yatsuda has a
substrate support having a structure capable of being heated solely by the
heat transfer member (by way of the liquid in passageways 34) as claimed.
Appellant further contends that the Examiner provided no articulated
reasoning for the combination of Yatsuda, Chiang, and Ramanan (Br. 17).
However, the Examiner provided reasoning, which appears on its face to be
8
Appeal 2009-010219
Application 10/608,091
reasonable (Ans. 5-8). Appellant does not provide a sufficiently specific
argument directed to the limitations of claim 15 to call that reasoning into
question. We emphasize that claim 15 does not require the thickness
limitation of claim 1, nor does it limit the controller in the same way as
claim 1. In claim 15, the rate of temperature change only applies to the
structure of the flow passage. It is reasonable to conclude that the flow
passageway of Yatsuda would be capable of circulating liquid to result in the
claimed 0.25-2 °C/sec temperature change based upon the temperature of the
liquid within the passageway. We cannot say that the rate limitation
structurally distinguishes the claimed flow passage from the passageways 34
of Yatsuda.
We sustain the rejection of claims 15, 16, 21 and 23 as unpatentable
over Yatsuda in view of Chiang and Ramanan.
B. REJECTION OF CLAIMS 8 AND 19 OVER YATSUDA,
CHIANG, RAMANAN AND MAHAWILI
1. CLAIM 8
Claim 8 is dependent on claim 1 and Mahawili does not cure the
deficiency discussed above with respect to the rejection of claim 1.
Therefore, we do not sustain the rejection of claim 8 over Yatsuda, Chiang,
Ramanan, and Mahawili.
2. CLAIM 19
Claim 19 depends from claim 15 and also requires that the heat
transfer member be laterally spaced from the flange.
Appellant contends that,
[g]iven these differences in construction [between the
apparatus of Yatsuda and that of Mahawili], the final Office
Action has provided no articulated reasoning for modifying
worktable 18 and [sic] of Yatsuda with Mahawili’s
9
Appeal 2009-010219
Application 10/608,091
disclosure to include the claim feature of “the heat transfer
member … laterally spaced from the flange.”

(Br. 19.)
The Examiner acknowledges that Yatsuda does not teach laterally
spacing the heat transfer member from the flange. The Examiner points out,
however, that Mahawili teaches sizing a heater to permit unrestrained
thermal expansion within the support. The Examiner concludes that it
would have been obvious to provide lateral spacing to allow for thermal
expansion (Ans. 17-18).
While, as pointed out by Appellant, Mahawili teaches laterally
spacing a heating element rather than a cooling element, we cannot say that
this fact undermines the Examiner’s rejection. As pointed out by Appellant,
Yatsuda discloses setting the temperature of the worktable 18 anywhere
from -30°C to 30°C during processing (Br. 19; Yatsuda, col. 6, ll. 19-21 and
ll. 42-43). Appellant asserts that Yatsuda provides a suggestion, presumably
based on this temperature disclosure, that the effects of thermal expansion
are minimal (Br. 21). But the temperature range reasonably supports the
opposite conclusion, i.e., that at such temperatures, particularly temperatures
at the high and low ends of the range, space for expansion and contraction
would have been understood to be desirable. Appellant offers no evidence
in support of their conclusion to the contrary. Therefore, we determine that
the weight of the evidence weighs in favor of the Examiner’s conclusion of
obviousness.
We sustain the rejection of claim 19 over Yatsuda, Chiang, Ramanan,
and Mahwili.
C. REJECTION OF CLAIMS 32 AND 33 OVER YATSUDA,
CHIANG, RAMANAN, AND GAYLORD
10
Appeal 2009-010219
Application 10/608,091
Although claims 32 and 33 are identically worded, claim 32 is
dependent on claim 1 and claim 33 is dependent on claim 15. Both claims
require:
wherein the controller is operable to circulate a liquid having a
first temperature through the at least one flow passage to
control the temperature of the heat transfer member to a first
temperature during processing of the substrate; circulating a
liquid having a second temperature through the at least one
flow passage to control the temperature of the heat transfer
member to a second temperature during processing of the
substrate; wherein the temperature of the heat transfer member
is (i) ramped from the first temperature to the second
temperature, or (ii) changed step-wise from the first
temperature to the second temperature.
With regard to claim 32, the addition of Gaylord to the rejection does
not overcome the deficiencies noted in our discussion of claim 1. Therefore,
we do not sustain the rejection of claim 32.
Claim 33 stands on a different footing as it is dependent on claim 15.
Claim 33 merely recites that the controller “is operable to…” and does not
require that the controller actually operate in accordance with the recited
functions. Therefore, Appellant’s argument that Gaylord’s controller does
not actually operate as recited are not persuasive. The controller need only
be capable of being operable in the claimed manner. Given that Gaylord’s
controller is configured to operate at two different temperature set points, it
appears that the controller would be capable of changing the temperature
during processing.
With regard to Appellant’s argument that Gaylord neither ramps nor
step-wise changes the temperature, the temperature rise of Gaylord
reasonably appears to be ramped from the first temperature to the second
temperature as claimed. This ramping occurs due to passive heating as a
11
Appeal 2009-010219
Application 10/608,091
result of the decreased flow rate of coolant in loop 86 and the residual heat
of the de-energized heat lamps (Gaylord, col. 8, ll. 33-66).
We sustain the rejection of claim 33.
D. REMAINING REJECTIONS
Appellant presents no further arguments directed to the additional
limitations and prior art applied to claims 3, 5-7, 9, 11, 17, 18, 20, and 22.
For the reasons discussed above with respect to the rejection of claim 1, we
do not sustain the rejections of claims 3, 5-7, 9, and 11. For the reasons
discussed above with respect to the rejection of claim 15, we sustain the
rejection of claims 17, 18, 20, and 22.
III. CONCLUSION
On the record before us, we sustain the rejections of claims 15-23 and
33, but we do not sustain the rejections of claims 1-3, 5-12, and 32
maintained by the Examiner.
IV. DECISION
The decision of the Examiner is affirmed-in-part.
V. TIME PERIOD FOR RESPONSE
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-IN-PART

ssl
BURNS, DOANE, SWECKER & MATHIS, L.L.P.
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
12