Ex Parte Gum et al

Patent Trial and Appeal Board

Dec 29, 2016

12826446 (P.T.A.B. Dec. 29, 2016)

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. 12/826,446 06/29/2010 Jeffrey C. Gum G2048-700319 3383 37462 7590 01/03/2017 LANDO & ANASTASI, LLP ONE MAIN STREET, SUITE 1100 CAMBRIDGE, MA 02142 EXAMINER HASSANZADEH, PARVIZ ART UNIT PAPER NUMBER 1716 NOTIFICATION DATE DELIVERY MODE 01/03/2017 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): docketing @ L ALaw .com CKent@LALaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY C. GUM and CHAD FERO Appeal 2015-007469 Application 12/826,446 Technology Center 1700 Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal the Examiner’s final rejection of claims 1-12 and 26-28. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this decision, we refer to the Final Office Action appealed from, mailed October 3, 2014 (“Final Act.”); the Appeal Brief dated March 5, 2015 (“App. Br.”); the Examiner’s Answer to the Appeal Brief dated June 8, 2015 (“Ans.”); and the Appellants’ Reply Brief dated August 7, 2015 (“Reply Br.”). 2 Appellants identify GTAT Corporation as the Real Party in Interest. App. Br. 3. Appeal 2015-007469 Application 12/826,446 The Claimed Invention Appellants’ disclosure relates to systems and methods of recovering and utilizing heat energy to reduce power consumption during semiconductor fabrication. Claims 1 and 12 are illustrative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 11, 13): 1. A chemical vapor deposition system of a semiconductor material fabrication facility, the chemical vapor deposition system comprising: a reaction chamber comprising: a base plate; a bell jar securable to the base plate, the bell jar comprising a cooling conduit having a conduit inlet port and a conduit outlet port; and a radiation shield comprised of a nickel layer disposed on an interior surface of the bell jar, and a gold layer disposed on the nickel layer, the cooling conduit of the bell jar in thermal communication with the radiation shield; and a heat exchanger fluidly connected at a first thermal side thereof to the cooling conduit and further fluidly connected at a second thermal side thereof to at least one unit operation of the semiconductor material fabrication facility. 12. A chemical vapor deposition system comprising a reaction chamber comprising: a base plate; a bell jar securable to the base plate and comprising a cooling conduit having a conduit inlet port and a conduit outlet port; and a radiation shield comprised of a nickel layer disposed on an interior surface of the bell jar, and a gold layer disposed on the nickel layer, the cooling conduit in thermal communication with the radiation shield. 2 Appeal 2015-007469 Application 12/826,446 The References The Examiner relies on the following references as evidence in rejecting the claims on appeal: Smith Hoddinott Olsen et al., (hereinafter “Olsen”) Gum et al., Ijuin et al., (hereinafter “Ijuin”) Oguro et al., (hereinafter “Oguro”) US 4,364,242 US 4,620,984 US 6,319,556 US 2011/0159214 JP 61281009 A JP 1208312 A Dec. 21, 1982 Nov. 4, 1986 Nov. 20, 2001 3 June 30, 2011 Dec. 11, 1986 Aug. 22, 1989 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 12 and 28 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ijuin3 4 in view of Oguro5 and Olsen. Ans. 2-3. 2. Claims 1-11, 26, and 27 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ijuin in view of Oguro, Olsen, and Smith. Ans. 5. 3 This reference is referred to in the Examiner’s double patenting rejections as “copending Application No. 12/934,160” or “US ’160.” Ans. 11, 13, and 15. 4 The Examiner’s rejections refer to the English translation of the Ijuin reference mailed October 22, 2013. Ans. 2. 5 The Examiner’s rejections refer to the English translation of the Oguro reference from the Applicants’ IDS. Ans. 2-3. 3 Appeal 2015-007469 Application 12/826,446 3. Claims 7 and 11 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ijuin in view of Oguro, Olsen, and Smith as applied to claims 6 and 10 above and further in view of Hoddinott. Ans. 9. 4. Claims 1-3, 8, 9, 12, and 26-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-20, and 22-26 of copending Application No. 12/934,160 in view of Olsen. Ans. 11. 5. Claims 4-7, 10, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5- 20, and 22-26 of copending Application No. 12/934,160 in view of Olsen as applied to claims 1 and 9 above, and further in view of Smith. Ans. 13. 6. Claims 7 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-20, and 22-26 of copending Application No. 12/934,160 in view of Olsen and Smith as applied to claims 6 and 10 above, and further in view of Hoddinott. Ans. 15. OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner’s rejections for the reasons set forth in the Answer and Final Office Action appealed from, which we adopt as our own. Nevertheless, we highlight and address specific findings and arguments for emphasis as follows. 4 Appeal 2015-007469 Application 12/826,446 Rejection 1 Initially, we note that Appellants argue claims 12 and 28 as a group. We select claim 12 as representative of this group and claim 28 stands or falls with claim 12. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the prior art combination of Ijuin, Oguro, and Olsen suggests a chemical vapor deposition system satisfying all of the limitations of claim 12 and concludes that the combination would have rendered claim 12 obvious. Ans. 2-4 (citing Ijuin, Abstract, Fig. 1; Oguro, Fig. 1, “Means for Solving the Problem,” | 12, “Embodiment,” || 1-10; Olsen, Figs. 1, 3, col. 3,11. 25^42, col. 6,11. 22-58, col. 9,11. 45-52). The Examiner finds that the combination of Ijuin and Oguro suggests the majority of claim 12’s limitations, but that it does not “expressly teach wherein the radiation shield comprising a nickel layer disposed on the interior surface of the bell jar . . . with the gold layer disposed on the nickel layer,” as recited in the claim. Id. at 4. The Examiner, however, relies on Olsen for disclosure of this missing limitation. Id. In particular, the Examiner finds that Olsen teaches a chemical vapor deposition “(CVD)” system wherein a radiation shield 100 having a base plate 102 is disposed on the interior surface of the reaction chamber wall 52 and can be provided with a nickel flash layer followed by a gold plating layer using a known electroplating technique. Ans. 4 (citing Olsen, Figs. 1, 3, col. 3,11. 25^12, col. 6,11. 22-58, col. 9,11. 45-52). Based on the above findings, the Examiner concludes that It would have been obvious to one of ordinary skill in the art, at the time of the invention, following the suggestion of Olsen, to modify the radiation shield of Ijuin to comprise a base plate, a nickel flash layer, and a gold plating layer, in order to 5 Appeal 2015-007469 Application 12/826,446 manufacture the desired reflective gold layer using a known electroplating technique. Ans. 4. Appellants argue that the Examiner’s rejection should be reversed because “no proper prima facie case of obviousness has been established.” App. Br. 8. In particular, Appellants argue that because “Olsen teaches an entirely different reactor configuration than Oguro and Ijuin,” one of ordinary skill in the art would not have combined the teachings of these references to arrive at the claimed invention. App. Br. 6. Appellants further argue that “none of the references teach any benefit to such modification” and that “[tjhere is no teaching or suggestion of how providing a radiation shield comprised of a nickel layer and a gold layer on the interior of a reactor chamber would provide any benefits or advantages over a radiation shield comprised of a gold layer only.” Id. at 6-7. Appellants also argue that “[tjhere is no motivation provided in any of the references, or combinations thereof, to include a radiation shield comprising a nickel and gold layer on the interior of a bell jar” and that the “Examiner has not provided a proper reason for the desirability of the combination.” App. Br. 7. We do not find Appellants’ arguments persuasive. Based on the record before us, the Examiner’s conclusion and finding (Ans. 2-4) that the combination of Ijuin, Oguro, and Olsen suggests all of claim 12’s limitations are supported by a preponderance of the evidence and based on sound technical reasoning. Ijuin, Abstract, Fig. 1; Oguro, Fig. 1, “Means for Solving the Problem,” 112, “Embodiment,” || 1-10; Olsen, Figs. 1, 3, col. 3,11. 25^12, col. 6,11. 22-58, col. 9,11. 45-52. 6 Appeal 2015-007469 Application 12/826,446 Contrary to what Appellants argue, the Examiner does provide a reasonable basis and identifies a preponderance of evidence in the record to evince why one of ordinary skill would have combined the teachings of the references to arrive at Appellants’ claimed invention. Ans. 4 (explaining that one of ordinary skill would have combined the prior art’s teachings “in order to manufacture the desired reflective gold layer using a known electroplating technique”); Ijuin, Abstract, Fig. 1; Oguro, Fig. 1; Olsen, Figs. 1 and 3, col. 3,11. 25^12, col. 6,11. 22-58, col. 9,11. 45-52. Appellants fail to direct us to adequate evidence or provide an adequate technical explanation to show why the Examiner’s articulated reasoning for combining the teachings of the prior art to arrive at the claimed invention lacks a rational underpinning or is otherwise based on some other reversible error. Appellants’ assertions that there is “no motivation” to combine the references as found by the Examiner and that “Examiner has not provided a proper reason for the desirability of the combination” (App. Br. 7) are conclusory and unpersuasive of reversible error. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants’ argument that there is no motivation to “include a radiation shield comprising a nickel and gold layer on the interior of a bell jar” (App. Br. 7) is equally unpersuasive because, contrary to what the argument suggests, Ijuin does not teach away from providing a nickel flash layer. Rather, as the Examiner finds (Ans. 18), Ijuin is merely silent as to how the electroplating is performed. Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 964 (Fed. Cir. 2014) (explaining that “silence does not imply teaching away”). 7 Appeal 2015-007469 Application 12/826,446 Moreover, Appellants’ disagreement with the Examiner’s reasoning for combining the references, without more, is insufficient to establish reversible error. KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed). We do not find Appellants’ argument that “Olsen teaches an entirely different reactor configuration than Oguro and Ijuin” (App. Br. 6) persuasive for the well-stated reasons provided by the Examiner at pages 16 through 18 of the Answer. In particular, as the Examiner correctly points out (Ans. lb- 17), Appellants’ argument is premised on the physical, bodily incorporation of Olsen’s reactor configuration into modified Ijuin’s chemical vapor deposition system. The test, however, for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined teachings of those references would have suggested to one of ordinary skill in the art. Id. at 425. As the Examiner finds (Ans. 17), Ijuin teaches that the gold coating can be formed by many different methods, including thermal spray, vapor deposition, and electroplating (Ijuin, || 3 and 4 of the “Constitution of the invention”) and the skilled artisan would have readily turned to Olsen’s CVD system and teaching regarding how to electroplate gold (Olsen, col. 6, 11. 54-58, col. 9,11. 45-52) and had a reasonable expectation of success in applying Olsen’s teachings to Ijuin’s CVD system (Ijuin, Abstract, Fig. 1). Appellants’ argument reveals no reversible error in the Examiner’s analysis and factual findings in this regard. 8 Appeal 2015-007469 Application 12/826,446 Accordingly, we affirm the Examiner’s rejection of claims 12 and 28 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Ijuin, Oguro, and Olsen. Rejections 2 and 3 In response to the Examiner’s Rejections 2 and 3, stated above, Appellants do not present any additional substantive arguments. Rather, with respect to Rejection 2 and claims 1-11, 26, and 27, Appellants contend that “Smith does not cure the deficiencies of the cited references as described above” and that “there is no disclosure, teaching, or suggestion anywhere in Smith, or any of the other cited references, of a chemical vapor deposition system or a method of facilitating fabricating a semiconductor material in a semiconductor fabrication facility as presently claimed.” App. Br. 8. Similarly, with respect to Rejection 3 and claims 7 and 11, Appellants contend that “Hoddinott does not cure the deficiencies of the cited references” and that “there is no disclosure, teaching, or suggestion anywhere in Hoddinott of a radiation shield having a gold layer and a nickel layer disposed on its inner surface,” as claimed. App. Br. 9. We do not find Appellants’ arguments in this regard persuasive because they are conclusory and, without more, insufficient to establish reversible error in the Examiner’s analysis and findings. De Blauwe, 736 F.2d at 705. Moreover, Appellants’ naked assertions that the prior art fails to teach or suggest a claim’s limitations are not arguments in support of separate patentability sufficient to weigh in favor of non-obviousness. Cf. In reLovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); see also 37 C.F.R. § 41.37(c)(l)(iv). 9 Appeal 2015-007469 Application 12/826,446 Accordingly, we affirm the Examiner’s Rejections 2 and 3 stated above. Rejections 4, 5, and 6 With respect to the Examiner’s rejections for nonstatutory double patenting, i.e., Rejections 4, 5, and 6 stated above, the Appellants offer no substantive argument on the merits in the Appeal Brief. Rather, Appellants request that these rejections be “held in abeyance.” App. Br. 10. Accordingly, because the Examiner’s Rejections 4, 5, and 6 have not been withdrawn and the Appellants offer no substantive argument on the merits, we summarily affirm the rejections. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008); Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (“If an appellant fails to present arguments on a particular issue - or, more broadly, on a particular rejection - the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)). DECISION/ORDER The Examiner’s rejections of claims 1-12 and 26-28 are affirmed. It is ordered that the Examiner’s decision is affirmed. 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 10