Fang, Tong et al.

Patent Trials and Appeals Board

Aug 16, 2019

13793454 - (R) (P.T.A.B. Aug. 16, 2019)

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.
13/793,454 03/11/2013 Tong Fang 1797-2US 1004
91286 7590 08/16/2019
Harness, Dickey & Pierce, P.L.C. (Lam)
P.O. Box 828
Bloomfield Hills, MI 48303
EXAMINER
CROWELL, ANNA M
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
08/16/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
sstevens@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TONG FANG, YUNSANG KIM, KEECHAN KIM,
and GEORGE STOJAKOVIC
____________________

Appeal 2018-006975
Application 13/793,454
Technology Center 1700
____________________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and LILAN REN,
Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants1 request rehearing of our May 14, 2019 Decision (“Op.”).
Request for Rehearing filed July 10, 2019 (“Request”). In the Decision, we
affirmed the Examiner’s rejection of claims 12–14, 21–35, 37, and 38 as
unpatentable over the respective prior art combinations. Op. 7–13.2 The prior

1 The real party in interest is identified as “Lam Research Corporation.”
Appeal Brief of January 9, 2018 (“Br.”), 3.
2 In this Rehearing Opinion, we also refer to the Appeal Brief of January 9,
2018 (“Br.”), the Final Office Action of September 11, 2017 (“Final Act.”),
the Examiner’s Answer of May 4, 2018 (“Ans.”) and the Reply Brief of June
25, 2018 (“Reply Br.”).
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art references relied upon by the Examiner in rejecting the claims on appeal
are:
Fujimoto US 5,413,673 May 9, 1995
Choi
Lim
Park
Koshiishi
Sexton3
US 2004/0238488 A1
US 2005/0173067 A1
US 2005/0263484 A1
US 2007/0169891 A1
US 2009/0114244 A1
Dec. 2, 2004
Aug. 11, 2005
Dec. 1, 2005
July 26, 2007
May 7, 2009

In a request for rehearing, an appellant is charged with stating the
points believed to have been misapprehended or overlooked by the Board.
37 C.F.R. § 41.52. We review the points of the Decision contested by
Appellants and determine whether we erred in fact finding or applying the
law, and further determine whether any such error changes the outcome of
the Decision when viewing all the evidence and arguments anew in light of
the preponderance of the evidence standard. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“patentability is determined on the totality of
the record, by a preponderance of evidence with due consideration to
persuasiveness of argument”).
In this case, the Examiner rejects independent claim 12 (upheld in our
Decision) and finds allowable dependent claim 36, both claims are
reproduced below.
12. A bevel etcher to etch a bevel edge of a semiconductor
wafer having a predetermined outer diameter, wherein the bevel
edge is subjected to plasma during a cleaning operation in the
bevel etcher, the bevel etcher comprising:
a power electrode having a cylindrical upper facing
portion;

3 The Examiner corrects the citation to the Sexton reference in the
Examiner’s Answer. Ans. 2.
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a first plasma-exclusion-zone (PEZ) ring supported on
the support, wherein the first PEZ ring has a top surface on
which the semiconductor wafer is supported;
a dielectric component disposed above the power
electrode and having a cylindrical bottom portion opposing the
cylindrical upper facing portion of the power electrode;
a second PEZ ring surrounding the cylindrical bottom
portion of the dielectric component, wherein the second PEZ
ring is disposed above and opposes the first PEZ ring, wherein
a size of an annular space between the first PEZ ring and the
second PEZ ring limits the extent to which the bevel edge is
cleaned by the plasma, wherein the second PEZ ring is
configured to guide a reaction gas along an outer peripheral
edge of the second PEZ ring; and
at least one radio frequency (RF) power source adapted
to energize the reaction gas into the plasma during the cleaning
operation to etch the bevel edge,
wherein the first PEZ ring and the second PEZ ring are
adapted to respectively shield the power electrode and the
dielectric component from the plasma during the cleaning
operation, and
wherein a bottom portion of the second PEZ ring closest
to the semiconductor wafer has an outer diameter at least equal
to the predetermined outer diameter of the semiconductor wafer
to limit, during the cleaning operation, an amount of etching of
the semiconductor wafer radially inward from the bevel edge.
36. A system comprising:
the bevel etcher of claim 12; and
the semiconductor wafer having the predetermined outer
diameter.
Claims Appendix (Br. 31–32, 36).
In the Request, Appellants argue that the Board erred “when it stated
that ‘Appellants do not explain whether the scope of independent claim 12
would remain broader than claim 36 as required under 35 U.S.C. § 112,
second paragraph.’” Request 6 (emphasis omitted). Appellants argue that we
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overlooked or misapprehended the respective scope of these claims because
although “claim 12 does have a broader . . . scope than claim 36” (Request
6), “[i]t is illogical and contradictory to allow claim 36, but not allow claim
12” (Request 2).
Contrary to Appellants’ assertion, our statement, when read in its
entirety, provides:
Had claim 12 been limited to a particular semiconductor wafer
as Appellants argue, Appellants do not explain whether the
scope of independent claim 12 would remain broader than
claim 36 as required by 35 U.S.C. § 112, second paragraph. See
also 37 C.F.R. § 1.75(c) (providing that dependent claims are
by definition narrower than the claims from which they
depend).

Op. 10 (emphasis added). In deciding so, we declined Appellants’ invitation
to limit claim 12 to a particular semiconductor wafer to preserve the
Examiner’s determination of allowing dependent claim 36. Id. Our approach
is consistent with Appellants’ statement in the Request that they are “seeking
claim scope coverage for (i) the bevel etcher recited in claim 12, and (ii) the
system including the bevel etcher and the semiconductor wafer recited in
claim 36.” Request 6; see also Request 5 (“The semiconductor wafer is not
positively recited in claim 12.”). That is, Appellants provide that dependent
claim 36 is narrower in scope than claim 12 because of the inclusion of the
semiconductor wafer in the bevel etcher recited in claim 12. See Request 5,
6. As a result, our Decision preserves the Examiner’s determination to allow
claim 36.
Based on Appellants’ assertion that our decision to uphold the
Examiner’s decision to reject independent claim 12 while the Examiner
allows dependent claim 36 is “illogical” (Request 2), we have no choice but
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to understand that Appellants argue that claim 36 should stand or fall with
claim 12, which the Examiner may consider if prosecution continues.
We further decline to comment on Appellants’ prediction that “if
claim 36 is allowed and claim 12 is not allowed, Appellant is unable to sue
the manufacturer for direct infringement because claim 36 requires both the
bevel etcher and the semiconductor wafer, which the manufacturer does not
produce and/or sell.” Request 6 (stating that Appellants believe that courses
of action “such as contributory infringement or induced infringement” “are
more difficult to prove”). What is pending before the Board is solely an
appeal under 35 U.S.C. § 134 of the rejections of claims drafted by
Appellants.
Appellants next repeat the argument that “[t]he Examiner erred by
stating that the hypothetical prior art structure ‘can operate to clean a smaller
sized wafer.’” Request 3 (emphasis omitted); see Br. 22. From the outset,
Appellants’ statement does not accurately reflect the evidence in the record.
As stated in the rejection, the Examiner finds that both references teach a
bevel etcher with various relevant components. Final Act. 3–4. Without
structurally distinguishing the prior art apparatus, Appellants instead argue
that “the [claimed] structural relationship” is not taught in the prior art. Br.
23; Request 3. That is, Appellants do not dispute that the prior art teaches an
apparatus having “a bottom portion of [the] . . . second PEZ ring [which is]
closest to the semiconductor wafer,” but only that the prior art does not teach
or suggest the recited “outer diameter” of the bottom portion being “at least
equal to [the] . . . predetermined outer diameter of the semiconductor wafer.”
Br. 12 (arguing that the claim limitation is “the structural relationship or
difference between the second PEZ ring and the semiconductor wafer”).
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As the Decision states and consistent with the Examiner’s finding that
Park discloses shielding member 160 and that the edge of wafer W may be
cleaned by adjusting shielding rings 162/164/166/168 of the shielding
member 160 (Final Act. 3–4 (citing Park ¶¶ 48–50, Fig. 3); Park Fig. 3),
Appellants acknowledge that “Park discloses adjusting a size of an etching
area radially inward of a bevel edge of a semiconductor wafer by adjusting
positions of rings 162, 164, 166, 168.” Br. 24. The Examiner’s findings that
the recited apparatus is not structurally distinguished and that the prior art
apparatus “can operate to clean a smaller sized wafer” are therefore
supported by undisputed evidence in the record. Final Act. 4.
Despite Appellants’ repeated argument that there are certain
“structural aspects of the second PEZ ring” not taught or suggested in the
prior art, Appellants only identify as missing in the prior art a dimension of
the structure, i.e., the outer diameter of a portion of the PEZ ring. Br. 12
(arguing that the claim limitation not taught is “the structural relationship or
difference between the second PEZ ring and the semiconductor wafer”); see
Request 2, 4 (arguing that the prior art does not teach or suggest “structural
features” of claim 12 without specifying what structure is missing); see also
Br. 22–24. In addition to our analysis in the Decision regarding the
Examiner’s fact finding that the recited device is not structurally
distinguished from the prior art (Op. 7–11), we further note that changes in
relative dimensions that do not alter function are ordinarily obvious
variations. See In re Rice, 341 F.2d 309, 314 (CCPA 1965) (holding that the
Examiner properly found that claimed dimensional relationship between
collection chamber and walls of main air chamber “does not produce any
different effect or result”); Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349
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(Fed. Cir. 1984) (finding that where the only difference between the prior art
and the claims was a recitation of relative dimensions of the claimed device
and a device having the claimed relative dimensions would not perform
differently than the prior art device, the claimed device was not patentably
distinct from the prior art device); In re Rose, 220 F.2d 459, 463 (CCPA
1955) (stating that “the size of the article under consideration . . . is not
ordinarily a matter of invention”); In re Rinehart, 531 F.2d 1048, 1053
(CCPA 1976) (holding that mere scaling up of a prior art process capable of
being scaled up, if such were the case, would not establish patentability in a
claim to an old process so scaled).
Based on the resolution of the dispositive issue on this record that: (1)
the evidence supports the Examiner’s fact finding of a lack of structural
distinction between the apparatus claim and prior art and (2) Appellants do
not identify reversible error in these fact findings in support of the rejection,
we decline Appellants’ invitation to address Appellants’ remaining
arguments that MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”)
§ 2115 does not apply in this case and that certain case law supports
Appellants’ argument. See Request 3–6. We further note that Appellants’
arguments of case law and the MPEP are generally limited to repeating the
claim limitation at issue and asserting, without elaboration,4 that claim 12
“recites structural limitations and a nonobvious relationship.” See id.

4 For example, Appellants argue that the claim in Orthokinetics Inc. v. Safety
Travel Chairs Inc., 806 F.2d 1565 (Fed. Cir. 1986) “was deemed definite
and was given patentable weight” without explaining why the definiteness
issue is relevant to the obviousness rejection here. Request 5 (arguing
without providing case or pinpoint cites); see Br. 16 (arguing that claim 12 is
similar to the claim in Orthokinetics which “was definite”).
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Citations to the MPEP and case law does not change the fact that the
Examiner’s fact finding of a lack of structural distinction is supported by the
record and has never been shown to be in error.
Appellants fault the Board for failing to consider the argument that the
Examiner “incorrectly assumes that: (i) one skilled in the art would use the
hypothetical device to etch a smaller sized wafer; and (ii) a viable wafer
structure would result from etching a smaller wafer with the hypothetical
device.” Request 3. As the Decision provides:
“[A]pparatus claims cover what a device is, not what a device
does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990). Because Appellants do not
structurally distinguish the recited apparatus from the prior art,
no reversible error has been identified in the Examiner’s finding
that all recited structural components are taught or suggested in
the prior art.

Op. 9. From the outset, claim 12 does not require “a viable wafer structure”
to result from using the recited apparatus and Appellants’ argument is
therefore not based on the recited claim limitations. Moreover, Appellants
acknowledge that claim 12 recites “the bevel etcher.” Request 6. The
patentability of the recited bevel ether, therefore “depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
Appellants fault the Board for failing to consider the argument that
“[b]evel etchers are also specifically designed to etch a wafer having only
one predetermined diameter.” Request 3 (emphasis omitted). We again
emphasize that this argument does not identify error in the Examiner’s
finding of a lack of structural distinction. Appellants also fault the Board for
failing to consider the argument that the “[u]se of a bevel etcher, as
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suggested by the Examiner, to etch a bevel edge of a smaller wafer than it
was designed for would not be performed by skilled artisans because it
would not work as intended.” Request 3. We note that the argument is not
supported by factual evidence. Johnston v. IVAC Corp., 885 F.2d 1574, 1581
(Fed. Cir. 1989) (“Attorneys’ argument is no substitute for evidence.”). In
any case, we again emphasize that claim 12 is an apparatus claim of a bevel
etcher whose components are not limited to any specific dimension. See
Request 6 (“Appellant is seeking claim scope coverage for (i) the bevel
etcher recited in claim 12, and (ii) the system including the bevel etcher and
the semiconductor wafer recited in claim 36.”).
Rejection of Claim 345
With regard to claim 34, the Decision provides that Appellants do not
address the Examiner’s fact findings in support of the rejection. Op. 11–12;
compare Br. 27–28, with Final Act. 13–14 (providing a rationale, based on
the combined prior art teaching, that a skilled artisan would arrive at the
recited apparatus). We also state in our Decision that we decline to consider
arguments not previously raised in the Appeal Brief. Op. 11, n.7.
Appellants’ argument with regard to claim 34 in the Request does not
identify issues that were misapprehended or overlooked by the Board in the
Appeal Brief and we therefore decline to disturb our Decision. See 37 C.F.R.
§ 41.52.

5 Under the heading of “Claims 23-24, 34, and 37,” Appellants do not raise
separate arguments for claims 23, 24, and 37. Request 7–8 (emphasis
omitted).
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Rejection of Claim 31
Appellants argue that the Board erred in finding that “the Appeal
Brief does not separately argue for the patentability of claim 31.” Request 8
(internal quotation marks and emphasis omitted); see also Op. 12.
A screen shot of the portion of the Appeal Brief discussing “Claims
30-31” is reproduced below:

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Br. 28–29 (arguing solely for the patentability of claim 30 and only that
claim 31 is “allowable for at least similar reasons as claim 1 [sic, 12]”); see
also 37 C.F.R. § 41.37(c)(1)(iv).
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The record before us is self-explanatory. The Examiner’s new ground
of rejection of claims 30 and 31 to correct “[a] wrong US publication
number for the Sexton et al. reference” (Ans. 2) (emphasis omitted) does not
change the fact that Appellants could have raised — but chose not to raise
— arguments for claim 31 in the Appeal Brief. See Br. 28–29.
Accordingly, we have considered the Request, but we deny the relief
sought.
CONCLUSION
For the foregoing reasons, we deny Appellants’ Request for
Rehearing.
DENIED