Ex Parte Yoon et al

Patent Trial and Appeal Board

Mar 31, 2014

11736519 (P.T.A.B. Mar. 31, 2014)

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.
11/736,519 04/17/2007 Hyungsuk Alexander Yoon LAM2P605 3935
119049 7590 04/01/2014
MPG, LLP and Lam Research Corp.
Albert Penilla
710 Lakeway Drive
Suite 200
Sunnyvale, CA 94085
EXAMINER
SLUTSKER, JULIA
ART UNIT PAPER NUMBER
2891
MAIL DATE DELIVERY MODE
04/01/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HYUNGSUK ALEXANDER YOON
MIKHAIL KOROLIK, FRITZ C. REDEKER,
JOHN M. BOYD, and YEZDI DORDI
____________

Appeal 2012-001864
Application 11/736,519
Technology Center 2800
____________

Before PETER F. KRATZ, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001864
Application 11/736,519
2
On March 31, 2011, the Examiner rejected claims 1-13 and 25-41 of
Application 11/736,519 under 35 U.S.C. § 103(a) as obvious. The Examiner
also entered a provisional obviousness-type double patenting rejection of
claims 1-8 and 25-30. Appellants1 seek reversal of the rejections based upon
§ 103(a) pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
For the reasons set forth below, we REVERSE but enter new grounds
of rejection under 37 C.F.R. § 41.50(b).
BACKGROUND
The ’519 application describes an apparatus for using atomic layer
deposition (“ALD”) to create conformal layers as part of a semiconductor
fabrication process. Spec. ¶¶ 2-7.
Claim 1 is representative of the ’519 application’s claims and is
reproduced below:
Claim 1. A chamber for performing surface treatment and
film deposition, comprising:
a first proximity head for substrate surface treatment
configured to dispense a first treatment gas to treat a portion of
a surface of a substrate under the first proximity head for
substrate surface treatment; and
a second proximity head for atomic layer deposition
(ALD) configured to sequentially dispense a first reactant gas
and a first purging gas to deposit a first ALD film under the
second proximity head for ALD, the second proximity head
covering only a portion of the substrate surface, a region
between the second proximity head and the substrate defining a

1 Lam Research Corp. is identified as the real party in interest. (App. Br. 1.)
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Application 11/736,519
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first reaction volume, the second proximity head including at
least one gas channel for dispensing the first reactant gas and
the first purging gas, and at least one vacuum channel for
pumping away an excess amount of the first reactant gas or the
first purging gas from the first reaction volume.
(App. Br. 11 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-8 and 25-30 are provisionally rejected for obviousness-
type double patenting as unpatentable over claims 1, 4-6, 9, 10, 13,
16, 18, and 20 of copending Application 12/555,736. (Ans. 5.)
2. Claims 1-7, 9, 10, 12, 13, 25-29, 31, 32, and 34-41 are rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Strang,2 Basceri,3 and Nakamura.4 (Ans. 6.)
3. Claims 8, 11, 30, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Strang, Basceri, Nakamura,
Ravkin,5 and Wu.6 (Ans. 10.)

2 U.S. Patent Application Publication No. 2005/0284370 A1, published Dec.
29, 2005.
3 U.S. Patent Application Publication No. 2004/0035358 A1, published Feb.
26, 2004.
4 U.S. Patent Application Publication No. 2004/0238124 A1, published Dec.
2, 2004.
5 U.S. Patent Application Publication No. 2005/0155629 A1, published July
21, 2005.
6 U.S. Patent Application Publication No. 2004/0251547 A1, published Dec.
16, 2004.
Appeal 2012-001864
Application 11/736,519
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DISCUSSION
Rejection 1. The Examiner maintains a provisional obviousness-type
double patenting rejection of claims 1-8 and 25-30 of the ’519 application.
(Ans. 5.) Appellants do not seek review of this provisional rejection (App.
Br. 4) and state that a terminal disclaimer will be considered if any claims of
the ’519 application proceed to issuance (id. at 10). Thus, we do not express
any opinion regarding this rejection.
Rejection 2. The Examiner rejected claims 1-7, 9, 10, 12, 13, 25-29,
31, 32, and 34-41 as obvious over the combination of Strang, Basceri, and
Nakamura. (Ans. 6.) For the reasons set forth below, we reverse and enter
new grounds of rejection under 37 C.F.R. § 41.50(b). In re Leithem, 661
F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis
and the same prior art references, alone, is insufficient to avoid making a
new ground of rejection when the Board relies on new facts and rationales
not previously raised to the applicant by the examiner.”).
Appellants argue for reversal of this rejection on the basis of
limitations found in independent claim 1. (App. Br. 4-7.) Appellants further
assert that the rejection of independent claim 25 should be reversed because
it “recites subject matter analogous to that of claim 1, and is therefore
patentable . . . for at least the same reasons as claim 1.” (Id. at 7.)
Accordingly, we shall confine our discussion to independent claim 1.
Appellants present four arguments for reversal of this rejection:
(1) the Examiner erred in finding that Strang describes a proximity head that
defines a reaction volume (id. at 5-6), (2) the Examiner has not provided
adequate reasons for a person of ordinary skill in the art to combine Strang
and Basceri (id. at 6), (3) incorporation of Nakamura’s teachings would
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Application 11/736,519
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thwart the operation of Strang’s apparatus (id. at 6-7), and (4) the Examiner
has not provided adequate reasons for a person of ordinary skill in the art to
combine Nakamura with Strang and Basceri (id. at 7). We address these
arguments seriatim.
First, the Examiner finds that Strang describes the claimed first and
second proximity heads. (Ans. 6 (citing Strang, Figs. 2, 4, 5, ¶ 0025).)
Appellants argue that this finding is erroneous. (App. Br. 5-6.) In response,
the Examiner argues that the nozzle assemblies described in Strang are
proximity heads:
First, Strang discloses that heads (144) are in the proximity of
the substrate (Fig.[ ]2), i.e.[,] they are proximity heads. Second,
Strang discloses that the heads (144) introduce process gases in
the specific location, 144A, 144B, and 144C ([0025]), i.e.[,]
they define reaction volumes 144A, 144B, and 144C. Thus,
Strang discloses a proximity head (144) which defines a
reaction volume (144A-C) ([0025]).
(Ans. 11-12.)
As described in Appellants’ Specification, e.g., Figs. 4A, 4B, ¶¶ 17,
18, 43-49, a proximity head is designed and located sufficiently close to the
substrate that the treatment or reactant gases dispensed from a particular
head are effectively confined to a reaction volume located between the
proximity head and the substrate. As Appellants point out (App. Br. 5),
Strang depicts the various treatment and reactant gases dispensed by its
nozzles as spreading throughout the reaction chamber and being removed by
a vacuum pump located under the substrate. See Strang Figs. 1, 2, 4, ¶¶ 24-
26, 32. In particular, Strang’s Figure 4 shows that the nozzle assemblies are
located a considerable distance from the substrate. Furthermore, Strang
describes the use of plasma generators that create plasmas over large areas
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Application 11/736,519
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of the substrate. Id. at ¶ 26. The Examiner’s finding that Strang would have
described or suggested the claimed proximity heads to a person of ordinary
skill in the art at the time of the invention is erroneous.
Second, the Examiner finds that Strang does not describe the use of a
purging gas to remove excess treatment or reactant gas from the reaction
volume. (Ans. 7.) The Examiner asserts that dispensing a purging gas
during an ALD process is well known in the art and cites Basceri as
evidencing this fact. (Id.) Because Strang describes its nozzle assemblies as
capable of dispensing two or more gases, the Examiner finds that a person of
ordinary skill in the art would have known that one of the gases dispensed
from Strang’s nozzle assemblies could be a purging gas. (Id.)
Appellants argue that the Examiner has not provided an adequate
explanation for a person of ordinary skill in the art to combine Basceri and
Strang. (App. Br. 6.)
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In view of
the reasoning cited above, we conclude that the Examiner has met this
burden in this instance.
Third, the Examiner relies upon Nakamura’s description of the
incorporation of a vacuum line for removing excess treatment and reactant
gases into the proximity head. (Ans. 8 (citing Nakamura, Fig. 5B).)
Appellants argue that modification of Strang’s apparatus in such a
manner would thwart its operation. (App. Br. 6-7.) In particular, Appellants
argue that incorporation of a vacuum line in Strang’s nozzle assembly would
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Application 11/736,519
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“remove process gas at the nozzle, thereby preventing it from reaching the
surface of the substrate.” (Id. at 7.)
Appellants’ argument is premised upon their belief that Strang does
not describe proximity heads that define specific reaction volumes located
between the proximity head and the substrate surface. (See id. at 6-7.)
As the Examiner responds, obviousness does not require the bodily
incorporation of the features of a secondary reference into the structure of
the primary reference. (Ans. 12 (citing In re Keller, 642 F.2d 413 (CCPA
1981)).) Rather, the test is what the combined teachings of the references
would have suggested to a person of ordinary skill in the art at the time of
the invention. (Id.) On the record before us, however, the Examiner has not
adequately rebutted Appellants’ argument suggesting that a person of
ordinary skill in the art would not modify Strang’s nozzle assemblies in the
manner suggested by Nakamura.
Fourth, Appellants argue that the Examiner adequately explained why
a person of ordinary skill in the art would have combined Nakamura with
Strang and Basceri in the manner described by the Examiner. (App. Br. 7.)
The Examiner argues that a skilled artisan would have combined
Nakamura with Strang and Basceri because the modification would increase
utilization efficiency of the process gases. (Ans. 13 (citing Nakamura
¶ 0057).)
We are not persuaded by the Examiner’s argument. As Appellants
point out (App. Br. 7), 0057 of Nakamura states that utilization efficiency
can be improved by reusing a portion of the exhaust gas reflux. Nakamura
neither describes nor suggests that the location of the vacuum line used to
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Application 11/736,519
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remove excess gases from the reaction chamber has any effect upon the
ability to improve efficiency in this manner.
In view of the foregoing, we cannot sustain the rejection of claim 1 on
the basis of the Examiner’s findings and reasoning.
New Ground of Rejection
Although we cannot sustain this rejection as expressed by the
Examiner, we conclude that the combination of Strang, Basceri, and
Nakamura would have rendered the subject matter of claim 1 obvious to a
person of ordinary skill in the art at the time of the invention. Our reasoning
is set forth below.
Strang describes a chamber for performing surface treatment and film
deposition comprising a plurality of nozzle assemblies. Strang, Figs. 1, 2, 4,
and associated text. Strang’s apparatus can be used for sequentially
dispensing a first treatment gas from a first nozzle assembly and plurality of
process gases from a second nozzle assembly. Id. at ¶¶ 24-25.
Strang’s nozzle assemblies are described as proximity heads.
Nakamura, however, describes plurality of proximity heads, each of which
defines a reaction volume between proximity head and the substrate.
Nakamura, Figs. 5A-5E and associated text.
Nakamura’s proximity heads include a vacuum line for removal of
excess process gases during use. E.g., id. at Fig. 5B, ¶ 0056. Modification
of Strang’s vacuum system to make use of the vacuum lines included in
Nakamura’s proximity heads is within the level of skill in the art and would
have been obvious to a skilled artisan. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (holding that obviousness rejections that allow for
the inferences and creative steps that a skilled artisan might employ); Perfect
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Application 11/736,519
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Web Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324, 1329 (Fed. Cir. 2009) (an
analysis of obviousness “may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion”).
A person of ordinary skill in the art would have been motivated to
replace Strang’s nozzle assemblies with Nakamura’s proximity heads to
limit the portion of the substrate subjected to treatment with the process gas
or gases. As Nakamura explains, limiting the portion of the surface
subjected to plasma treatment reduces the generation of particulates that can
give rise to defects on the final product. Id. at ¶¶ 0008, 0010. Depending on
the details of the particular process to be carried out, Nakamura’s proximity
heads might also allow elimination of photolithography steps during a
manufacturing process and can facilitate use of a mixture electrode sizes in
the finished product. Id. at ¶¶ 0011, 0012.
The combination of Strang and Nakamura does not expressly describe
the use of a purging gas as one of the process gases that may be used in the
combined apparatus. Use of purging gases to remove excess process gas
from a chamber after completion of a process gas to prevent undesired
reactions is well known in the art. E.g., Basceri, ¶ 0006. Because Strang
describes its nozzle assemblies as capable of dispensing two or more gases,
it would have been obvious to a skilled artisan that one of the gases
dispensed from Strang’s nozzle assemblies could be a purging gas.
Accordingly, we conclude that the subject matter of independent
claims 1 and 25 would have been obvious to a skilled artisan at the time of
Appellants’ invention in view of the combination of Strang, Basceri, and
Nakamura. Furthermore, we adopt the Examiner’s findings that this
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Application 11/736,519
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combination of references also describes or suggests each of the limitations
of dependent claims 2-7, 9, 10, 12, 13, 26-29, 31, 32, and 34-41. Thus, we
also reject these claims pursuant to 35 U.S.C. § 103(a).
Rejection 3. The Examiner maintains the rejection of claims 8, 11,
30, and 33 as obvious over the combination of Strang, Basceri, Nakamura,
Wu, and Ravkin. (Ans. 10.) Appellants argue that this rejection should be
reversed because Wu and Ravkin, whether considered alone or in
combination do not remedy the alleged errors in the Examiner’s rejection of
independent claims 1 and 25. (App. Br. 8.) For the reasons set forth above,
we reverse the Examiner’s rejection of these claims as obvious over the
asserted combination of references and enter a new ground of rejection
under 37 C.F.R. § 41.50(b).
Dependent Claims Argued Separately. Appellants ask us to opine
on the patentability of dependent claims 2, 3, 6-8, and 28-30. (App. Br. 8-9.)
However, Appellants’ arguments for the patentability of these claims
consists of a recitation of the limitation(s) added by the particular claim and
a rote assertion that the cited prior art does not teach this element(s) “in
combination with the elements [of the claim or claims] from which [the
dependent claim] depends.” (See, e.g., id. at 8.)
Because these arguments do not provide any reasoning or analysis to
support Appellants’ assertions of Examiner error in finding to the contrary,
Appellants have not properly presented arguments for separate consideration
of these dependent claims. 37 C.F.R. § 41.37(c)(1)(vii) (2010) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”). We
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therefore deny Appellants request for separate review of each of these
claims.
CONCLUSION
Appellants have not sought review of the provisional obviousness-
type double patenting rejection, and we express no opinion thereupon.
For the reasons set forth above, we reverse the Examiner’s rejections
of claims 1-7, 9, 10, 12, 13, 25-29, 31, 32, and 34-41 as obvious over the
combination of Strang, Basceri, and Nakamura and of claims 8, 11, 30, and
33 as obvious over the combination of Strang, Basceri, Nakamura, Wu, and
Ravkin. We, however, enter new grounds of rejection based upon the these
references.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides that “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Appeal 2012-001864
Application 11/736,519
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED, NEW GROUNDS OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)

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