Ex Parte Tong et al

Board of Patent Appeals and Interferences

Dec 29, 2006

10251179 (B.P.A.I. Dec. 29, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSE TONG
and
ERIC H. LENZ
____________

Appeal 2006-3124
Application 10/251,179
Technology Center 1700
____________

Decided: December 29, 2006
____________

Before THOMAS A. WALTZ, JEFFREY T. SMITH, and LINDA M.
GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-9 and 13-20, the only claims pending in
this application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 134.
Appeal 2006-3124
Application 10/251,179

INTRODUCTION
The invention is directed to an apparatus and method for reducing
polymer deposition on a substrate and substrate support. A prior art apparatus
is illustrated in Figure 1 below:

Figure 1 shows the vertical gap 30 between a surrounding ring 16 and the
overhanging substrate edge in the prior art device. Para. [0012]. The gap 30
is said to prevent the overhanging edge of the substrate from being lifted and
thereby avoid a reduction in clamping force applied by the substrate holder
14. Para. [0011]. The Specification states that a drawback of the clearance
gap 30 is that it provides additional opportunity for polymer buildup which
may flake off and contaminate the substrate S or the electrostatic chuck 14'.
2
Appeal 2006-3124
Application 10/251,179

Para. [0011]. Thus, the invention is directed to the adjustment of the gap
between a substrate holder and a substrate to reduce polymer deposition on
exposed surfaces of the substrate holder and bottom surfaces of the substrate.
Br. 15-16.
Claims 1 and 8 are illustrative:
1. A plasma processing apparatus comprising:

a processing chamber;

a power source which energizes process gas in an interior of the
processing chamber into a plasma state for processing a substrate;

a substrate support which supports a substrate within the interior of the
processing chamber, the substrate support having an upper surface;

an upper ring surrounding the substrate support, the upper ring having a
portion extending under a substrate when the substrate is located on the
substrate support; and

a coupling ring surrounding the substrate support, the coupling ring
having a first ring rotatable with respect to a second ring to adjust height of
the coupling ring and adjust a gap between the upper ring and the substrate.

8. An adjustment mechanism for adjusting a gap between a substrate
and a surrounding ring in a plasma processing apparatus, the adjustment
mechanism comprising:

a first ring having at least three projections extending from the first ring
in a direction parallel to an axis of the first ring; and

a second ring having at least three sets of a plurality of steps arranged to
receive each of the at least three projections, wherein a total thickness of the
first and second ring rings is adjustable by rotation of the first ring with
respect to the second ring.
3
Appeal 2006-3124
Application 10/251,179

The Examiner relies on the following prior art references to show
unpatentability:
Fukuyama1 JP 2-11781 Jan. 16, 1990
Tanaka2 JP 2000-150623 May 30, 2000
Maeda US 6,624,084 B2 Sept. 23, 2003
Koike US 6,726,799 B2 Apr. 27, 2004
Tong US 2004/0083975 A1 May 6, 2004
(Appellants’ Admitted Prior Art (AAPA))

The rejections as presented by the Examiner are as follows:
1. Claims 8, 9, and 18-20 are rejected under 35 U.S.C § 103(a) over
Tanaka;
2. Claims 1-7 and 13-17 are rejected under 35 U.S.C. § 103(a) over AAPA
in view of Koike and Tanaka;
3. Claims 1-7 and 15-17 are rejected under 35 U.S.C. § 103(a) over AAPA
in view of Fukuyama and Tanaka;
4. Claim 13 is rejected under 35 U.S.C. § 103(a) over AAPA in view of
Fukuyama and Tanaka, and further in view of Maeda; and
5. Claim 14 is rejected under 35 U.S.C. § 103(a) over Tanaka in view of
Maeda.
We reverse all grounds of rejection for essentially the reasons stated in
Appellants’ Brief and Reply Brief.

1 The Examiner relies on the English Abstract. For convenience, we refer to
the complete translation in describing Figure 1 below.
2 The Examiner relies on the English Abstract. For convenience, we refer to
the complete translation in describing Figure 1 below.
4
Appeal 2006-3124
Application 10/251,179

OPINION
Claims 8, 9, and 18-20 are rejected under 35 U.S.C § 103(a) over
Tanaka.
The Examiner relies on Tanaka for a disclosure of an adjustable
mechanism for adjusting a gap comprising a rotatable ring (26) with at least
three projections extending in a direction of its axis and a stage (24) with
conforming projections and steps disposed over it. Answer 3. The Examiner
concedes that stage (24) does not appear to have an explicit hole, but
maintains that it is “clear from the drawing that the lower conforming part of
the stage with the projections and steps is of the shape of a ring,” with the part
that holds a substrate being “a plate fixed to the top of the ring.” Answer 3.
The Examiner maintains that it would have been obvious to one of ordinary
skill in the art at the time of invention to use a part without a continuous top,
i.e., more like a ring with an explicit hole, as the stage (24). Answer 4.
The initial burden is on the Examiner to produce evidence sufficient to
support a showing of obviousness, and only then does the burden shift to the
applicant. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788, (Fed.
Cir. 1984). Appellants argue, and we agree, that the Examiner has failed to
provide the requisite evidentiary support to establish a prima facie case of
obviousness. See In re Kahn, 441 F.3d 977, 985-86, 78 USPQ2d 1329, 1335
(Fed. Cir. 2006). Like Appellants, we fail to see any basis for the Examiner’s
finding that stage (24) could be disassembled so as to provide two separate
5
Appeal 2006-3124
Application 10/251,179

elements, i.e., a top plate and a separate ring-like structure. See Br. 11.
Similarly, the Examiner has not explained the underlying basis for his
conclusion that “the disclosed adjustment apparatus could be easily
configured to lift a ring and is therefore an obvious variation and art
recognized equivalent." (Answer 8). See Br. 11.
To establish prima facie obviousness, the Examiner must also provide
reasons why one of ordinary skill in the art would have possessed the
knowledge and motivation to make the claimed invention. See In re Kahn,
441 F.3d at 988, 78 USPQ2d at 1336 . In our view, the Examiner’s assertion
that “it would be obvious to one of ordinary skill in the art at the time of
invention to realize that a part without the continuous top . . . would be usable
. . .” establishes, at best, a “general incentive” to use a ring in place of a solid
top. While a "general incentive" may make an approach "obvious to try" it
does not make the invention obvious. In re Deuel, 51 F.3d 1552, 1559, 34
USPQ2d 1210, 1216 (Fed. Cir. 1995). See In re O'Farrell, 853 F.2d 894, 903,
7 USPQ2d 1673, 1680 (Fed. Cir. 1988) (“Obvious to try" is not the standard
of obviousness under 35 U.S.C. § 103.).
The rejection of claims 8, 9 and 18-20 as unpatentable over Tanaka is
reversed.
Claim 14 is rejected under 35 U.S.C. § 103(a) over Tanaka in view of
Maeda. Claim 14 depends from claim 8. The Examiner’s reliance on Maeda is
limited to its disclosure of a focus ring made of quartz. Accordingly, the
rejection of claim 14 is reversed for the same reasons discussed in connection
with claim 8.
Claims 1-7 and 13-17 are rejected under 35 U.S.C. § 103(a) over AAPA
in view of Koike and Tanaka. Claims 1-7 and 15-17 are rejected under
6
Appeal 2006-3124
Application 10/251,179

35 U.S.C. § 103(a) over AAPA in view of Fukuyama and Tanaka. Claim 13
is rejected under 35 U.S.C. § 103(a) over AAPA in view of Fukuyama and
Tanaka, and further in view of Maeda.
The Examiner relies on AAPA for a disclosure of the invention as
claimed in independent claim 1 with the exception of an adjustment for ring
height. Figure 2 of the present application, shown below, illustrates a prior art
device.

The Examiner describes Figure 2 as illustrating a substrate support (i.e.,
electrostatic chuck 14’) and an upper ring (hot edge ring 42) having a portion
which extends under a substrate. Answer 5.
The Examiner relies on Koike and Fukuyama for disclosures of a plasma
process chamber where the height of a focus ring is controlled to have
uniformity of processing under diverse processing conditions. Answer 5
7
Appeal 2006-3124
Application 10/251,179

(citing Koike, col. 1, ll. 11-25 and co1. 2, ll. 32-36) and 6 (citing Fukuyama,
Abstract).
Figure 1 of Koike is illustrated below.

Koike Figure 1 illustrates a plasma etching apparatus. A focus ring 4 is
disposed around the circumference of the substrate 3 for controlling plasma
deposition. Koike, col. 2, ll. 32-35. Drive mechanism 6 is used to adjust the
height of the focus ring 4. Id. l. 43.
Figure 1 of Fukuyama is shown below.

8
Appeal 2006-3124
Application 10/251,179

Fukuyama Figure 1 illustrates a vacuum chamber 1 in which the surface of a
sample 6 is etched with radicals and ions of the plasma 5. Etching uniformity
is controlled by adjusting the height of ring 11 via a displacement converting
member 12 by using a pulse motor 13. Fukuyama, p. 5.
The Examiner relies on Tanaka for a disclosure of height adjustment by
using relative rotational position of two rings. Answer 5 & 7. Figure 1 of
Tanaka is shown below.
9
Appeal 2006-3124
Application 10/251,179

Tanaka Figure 1 illustrates a vertical fine motion feeder 20 having a stage 24
for mounting a semiconductor wafer 22 and an elevating ring 26 that is
arranged below the stage 24 for vertically moving the stage. Tanaka [0014].
The Examiner maintains that it would have been obvious for one of
ordinary skill in the art at the time of invention to have modified the AAPA
device to have the capability of height adjustment in order to gain the
advantage of uniform processing under different processing conditions as
taught by Koike or Fukuyama. The Examiner further states that it would have
been obvious to use the method of adjustment taught by Tanaka to gain the
advantage of uniformity and reduction of contamination by having a simpler
lift mechanism, which could also be used manually. Answer 5-7.
Appellants note that Tanaka’s device is not used in connection with
plasma deposition, but to allow inspection of a semiconductor wafer. As
10
Appeal 2006-3124
Application 10/251,179

such, Appellants assert that Tanaka’s feed gear 20 is structurally and
functionally different from the claimed "adjustment mechanism for adjusting a
gap between a substrate and a surrounding ring in a plasma processing
apparatus." Br. 10. According to Appellants, Tanaka’s feed gear 20 is
constructed specifically to support a substrate (wafer 22) on its top face 28
and to elevate and lower the substrate supported on the top face 28 via
elevating/lowering ring 26 under stage 24. Appellants note that both
Fukuyama and Koike relate to adjustment of a single ring disposed along the
circumferential part of, but not underlying, the substrate. Thus, Appellants
disagree with the Examiner’s finding that one of ordinary skill in the art
would have been motivated to use Tanaka’s mechanism as the drive
mechanism for elevating and lowering a ring as in Fukuyama’s or Koike’s
devices. See Br. 17-19 and 22-24.
An obviousness analysis is based on several factual inquiries: (1) the
scope and content of the prior art; (2) the differences between the prior art and
the claims at issue; (3) the level of ordinary skill in the art at the time the
invention was made; and (4) objective evidence of nonobviousness, if any.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Where the Examiner combines various components described in separate prior
art references, he must identify a reason for the combination: a teaching, a
motivation, an incentive, or a suggestion. In re Laskowski, 871 F.2d 115, 117,
10 USPQ2d 1397, 1398-99 (Fed. Cir. 1989). This requires the Examiner to
consider the thinking of one of ordinary skill in the art at the time of the
invention, “guided only by the prior art references and the then-accepted
wisdom in the field.” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d
1614, 1617 (Fed. Cir. 1999).
11
Appeal 2006-3124
Application 10/251,179

Although the Examiner offers reasons for combining the applied prior
art, we do not find his explanation sufficient to meet the requirement for a
showing of a “teaching or motivation to combine” the prior art references.
See Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617. In particular, the
Examiner fails to explain why one of ordinary skill in the art would have been
motivated to modify a lifting mechanism such as that of Koike and Fukuyama
based on Tanaka’s device, which has a different structure and function.
Moreover, as noted above, the Examiner has not identified the prior art
teaching, suggestion, or motivation to disassemble Tanaka’s stage 24 so as to
provide the claimed “coupling ring having a first ring rotatable with respect to
a second ring.” See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-74 (Fed. Cir. 1992) (“The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the modification.”).
When the Examiner does not explain the motivation, or the suggestion or
teaching that would have led the skilled artisan at the time of the invention to
the claimed combination as a whole, there is an inference that the Examiner
relied on hindsight to conclude that the invention was obvious. In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002). See In re
Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed.Cir.1988) ("One
cannot use hindsight reconstruction to pick and choose among isolated
disclosures in the prior art to deprecate the claimed invention.").
In view of the foregoing, we reverse the rejection of claims 1-7 and 13-
17 as unpatentable over AAPA in view of Koike and Tanaka and the rejection
of claims 1-7 and 15-17 as unpatentable over AAPA in view of Fukuyama and
12
Appeal 2006-3124
Application 10/251,179

Tanaka. We also reverse the rejection of claim 13 as unpatentable over
AAPA in view of Fukuyama and Tanaka, and further in view of Maeda, the
Examiner’s reliance on Maeda being limited to its disclosure of a focus ring
made of quartz.
The Examiner's decision is reversed.
REVERSED

cam

Peter K. Skiff
BURNS, DOANE, SWECKER & MATHIS, LLP
P.O. BOX 1404
Alexandria, VA 22314-1404

13