ULVAC, INC.

Patent Trials and Appeals Board

Apr 1, 2022

2021002044 (P.T.A.B. Apr. 1, 2022)

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. 15/747,283 01/24/2018 Shinya Nakamura 1015-0173 8616 93263 7590 04/01/2022 Tomoko Nakajima Cermak Nakajima & McGowan LLP 2000 Duke Street, Suite 300 Alexandria, VA 22314 EXAMINER MCDONALD, RODNEY GLENN ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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): TNakajima@cnmiplaw.com USPTO@dockettrak.com ip@cnmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHINYA NAKAMURA, MITSUNORI HENMI, and YOSHINORI FUJII __________ Appeal 2021-002044 Application 15/747,283 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) the final rejection of claims 1-3. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as ULVAC, Inc. (Appeal Br. 2). Appeal 2021-002044 Application 15/747,283 2 We AFFIRM. Appellant’s invention is directed to a film-forming method and sputtering apparatus for minimizing the amount of thickness variation in thin films formed on a substrate’s surface (Spec. ¶ 3; Claims 1, 3). Claim 1 is illustrative (emphasis added): 1. A film-forming method for forming a film on a surface of a to-be-processed substrate, which is a production substrate and not a dummy substrate, the method comprising: disposing the to-be-processed substrate and a target inside a vacuum chamber; introducing a sputtering gas into the vacuum chamber; and charging electric power to the target to sputter the target, thereby forming a film on the surface of the to-be-processed- substrate; causing a leakage magnetic field to locally act on a lower side of a sputtering surface by means of a magnet unit disposed above the target in case that surface of the target which is sputtered is defined as the sputtering surface and the sputtering- surface side is defined as the lower side; and rotating the magnet unit, during film formation by sputtering, such that a region of action of the leakage magnetic field on the sputtering surface varies continuously, wherein the method further comprises a step of alternately switching a direction of rotation of the magnet unit into a forward direction or a reverse direction by switching the direction of the rotating axis directly connected to the magnet unit into the forward direction or the reverse direction, during film formation by sputtering either to the to-be-processed substrate or to another to-be-processed substrate, depending on an integral power consumption that is charged to the target. Appellant appeals the rejection of claims 1-3 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement (Final Act. 2). Appeal 2021-002044 Application 15/747,283 3 FINDINGS OF FACT & ANALYSIS We review the appealed rejection for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). Appellant argues the subject matter of claims 1-3 as a group (Appeal Br. 6-10; Reply Br. 1-5). We select claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv) (2019). Claims 2 and 3 stand or fall with claim 1. The Examiner finds the language in claim 1 requiring that “a to-be- processed substrate . . . is a production substrate and not a dummy substrate” lacks written descriptive support (Final Act. 2). The Examiner finds it is unclear where the Specification defines the “to-be-processed substrate” by a negative limitation (Final Act. 2). Appellant argues that if the Specification positively recites alternative elements, these described elements may be explicitly excluded in the claims (Appeal Br. 6 (citing MPEP § 2173.05(i); Reply Br. 2). Appellant argues that “dummy substrates are explicitly excluded” in claim 1 because a “‘to- be-processed substrate’ (production substrates) are written throughout the Specification, as ‘alternative elements’” (Reply Br. 3). We are not persuaded by Appellant’s arguments. With regard to negatively claimed features and the written description requirement, the critical question is whether such negatively claimed features introduce new concepts. Ex parte Grasselli, 231 USPQ 393, 394 Appeal 2021-002044 Application 15/747,283 4 (BPAI 1983), aff’d mem. 738 F.2d 453 (Fed. Cir. 1984). Appellant’s reliance on MPEP § 2173.05(i) is unavailing because the alternative element of a dummy substrate is not positively recited in the Specification. Rather, the recitation “not a dummy substrate” impermissibly introduces a new concept. There is no dispute that “the Specification does not literally mention that ‘to-be-processed’ substrate means production surface and excludes dummy substrate” (Reply Br. 2; Ans. 4 (finding that the Specification “does not distinguish between a production substrate and a dummy substrate, and does not show possession of ‘a to-be-processed substrate’ as excluding a dummy substrate.”)). Paragraph 1 of the Specification describes a “to-be-processed substrate” as “a substrate that is to be processed.” This description does not specify that the processing on the substrate is to produce a finished product or otherwise excludes processing a dummy substrate to test the process. Furthermore, while a negative claim limitation may be “adequately supported when the specification describes a reason to exclude the relevant limitation,” there is no evidence of record indicating that the Specification here provides a reason to exclude dummy substrates. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). Appellant argues that, generally, “‘production substrates’ are substrates to be used for real products,” such as semiconductor chips, whereas “‘dummy substrates’ are substrates mainly used for experiment and test to check the result in a process” (Appeal Br. 6). Appellant contends that a person skilled in the art would understand that the “to-be-processed substrate” is subjected to multiple processes in the claimed method directed to forming a semiconductor chip having a uniform film thickness (Appeal Br. 8). Appellant contrasts the claimed “to-be-processed substrate” with the Appeal 2021-002044 Application 15/747,283 5 explicitly excluded “dummy substrate,” which is purportedly subjected to “only a single certain process” (Appeal Br. 8; Reply Br. 2, 4). Appellant attaches a declaration of named inventor Shinya Nakamura (hereinafter the “Nakamura Declaration”), which is of record to the Evidence Exhibit F of the Appeal Brief. Appellant argues that the Nakamura Declaration evinces that the ordinarily skilled artisan would understand that the written description reasonably conveys that the production substrate is subjected to more than one step (Nakamura Decl. ¶ 3). The Nakamura Declaration avers that “[t]he production substrate and the dummy substrate are so different in nature that one having ordinary skill in the art would never consider” a substrate subjected to multiple processing steps as the claimed “dummy substrate” (Nakamura Decl. ¶ 3). Appellant proffers dictionary definitions, which are of record to the Evidence Exhibits B and C. Appellant also proffers published patent applications having disclosures regarding the disputed claim terms (Exs. A, G, H) and a printout of a website for a commercially available dummy wafer (Ex. D). We have fully considered Appellant’s evidence and argument and the Examiner’s findings regarding this matter. We find that the preponderance of the evidence favors the Examiner’s finding that the claim lacks written descriptive support by its recitation of a to-be-processed substrate, which is not a dummy substrate. While the Specification reasonably conveys support for a to-be- processed substrate, the addition to the claim that the to-be-processed substrate is not a dummy substrate introduces a new concept to the written description. The Nakamura Declaration opines that one of ordinary skill in the art would understand that the to-be-processed substrate as described in the written description as filed is subjected to more than one film formation Appeal 2021-002044 Application 15/747,283 6 process in chronological order (Nakamura Decl. ¶ 3). However, it is undisputed that the written description does not define a “to-be-processed substrate” as excluding “a dummy substrate.” Furthermore, Appellant’s remaining proffered Exhibits A-E, G, and H do not sufficiently rebut the Examiner’s argument that “a dummy wafer substrate can be used for multiple processes for deposition upon” (Ans. 4). Other than a Declaration from a named inventor employed by the real party in interest, we find no indication in the proffered Exhibits that dummy substrates are subjected to only a single process step. Based on a preponderance of the evidence, Appellant has not shown that a dummy substrate would not have been used to test the efficacy of an entire multi-step production process. Accordingly, Appellant’s addition of the negative limitation that excludes dummy substrates constitutes a new concept as found by the Examiner (Ans. 4-5) and thus the claim lacks written description in the originally filed Specification. The Examiner has provided sufficient reasoning to establish that a person having ordinary skill in the art would not have recognized that the inventor was in possession of the invention as claimed in view of the Specification disclosure. Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). On this record, we affirm the Examiner’s § 112(a) written description rejection of claims 1-3. DECISION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3 112(a) Written Description 1-3 Appeal 2021-002044 Application 15/747,283 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2022). AFFIRMED