Ex Parte Koo et al

Patent Trial and Appeal Board

Dec 12, 2017

14633904 (P.T.A.B. Dec. 12, 2017)

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.
14/633,904 02/27/2015 Bon-Woong Koo 2011-133-lCon 6257
140488 7590 12/12/2017
Nields, Lemack & Frame, LLC - Varian
176 E. Main Street
Suite #5
Wes thorough, MA 01581
EXAMINER
SMITH, BRADLEY
ART UNIT PAPER NUMBER
2817
MAIL DATE DELIVERY MODE
12/12/2017 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 BON-WOONG KOO, RICHARD M. WHITE,
SVETLANA B. RADOVANOV, KEVIN M. DANIELS,
ERIC R. COBB, and DAVID W. PITMAN
Appeal 2017-004310
Application 14/633,9041
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 15—20.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM and also enter a NEW GROUND OF REJECTION
under 37 C.F.R. § 41.50(b).
1 Appellant is the Applicant, Varian Semiconductor Equipment Associates,
Inc., which, according to the Brief, is the real party in interest (Appeal Br.
3).
Appeal 2017-004310
Application 14/633,904
Independent claim 15 is illustrative of the subject matter on appeal
(emphasis added):
15. A method for processing a substrate, the method
comprising:
ionizing a first material and second material in an ion
source chamber of an ion source, the first material being boron
(B) containing material, wherein the first material is a fluoride
of B, and the second material being Gelf;
generating first ions containing B and second ions
containing Ge; and
extracting the first and second ions from the ion source
chamber and directing the first and second ions toward the
substrate.
The Examiner maintains the following rejections:
(a) claims 15, 16, and 19 under 35 U.S.C. § 102(b) as being
anticipated by Gupta (US 7,655,931 B2, issued Feb. 2, 2010) (“Gupta”);
(b) claims 17 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Gupta in view of Iwasawa (US 2003/0151004 Al,
published Aug. 14, 2003) (“Iwasawa”); and
(c) claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
Gupta.
ANALYSIS
The § 102(b) rejection over Gupta
Claims 15, 16, and 19 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Gupta. Appellant argues claims 15 and 19 as a group and
claim 16 as a separate group (Appeal Br. 6—11). We address these groups
separately below.
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Claims 15 and 19
Appellant’s principal argument regarding claim 15 is that Gupta does
not expressly or inherently disclose “ionizing a first material and second
material in an ion source chamber of an ion source, the first material being
boron (B) containing material, wherein the first material is a fluoride of B,
and the second material being GeH4,” as recited in claim 15 (Appeal Br. 6—
10; Reply Br. 2—5). Specifically, Appellant asserts that Gupta does not
disclose that the species listed in the columns of Table 1 can be used with
any other species in that table, especially since Gupta discloses that the
diluent gas used by Gupta can have the same co-species as the dopant
species of the dopant gas (Appeal Br. 6—7).
Appellant’s arguments are not persuasive. Gupta discloses the use of
an ion source in which a dopant gas comprising a dopant species and a
diluent gas are mixed to improve performance of the ion source and extend
its lifetime (Gupta 4:22—33). Gupta discloses the diluent gas may comprise
a co-species that may be the same as or different from the dopant species {id.
4:49-58, 9:10—16). Specifically, Gupta discloses:
Although the advantages of using a dopant gas having the same species
as that of a diluent gas are disclosed above, it should be appreciated that
co-species with different electronegativities may also be used to
balance the net concentrations of etching and/or depositing effects in
the plasma 20.
id. 9:10-16.
Gupta discloses the dopant gas can be a halogen-containing gas or a
hydrogen containing gas and the diluent gas can be a hydrogen-containing
gas, an inert gas, or a halogen-containing gas {id. at 4:34—37, 4:42-47, 6:17—
21). Further, Table 1 of Gupta lists dopant species as well as hydrides and
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halogenated gases for the dopant species, which include GeH4 and BF3 (id.
at 6:25-37).
In order to anticipate, a reference must identity something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of § 102 (In re Schaumann, 572 F.2d
312, 317 (CCPA 1978)). Further, it is well established that specific
examples of the claimed subject matter are not necessary to establish
anticipation. Rather, to anticipate, one skilled in the art must be able to “at
once envisage” the claimed subject matter in the prior art disclosure. In re
Petering, 301 F.2d 676, 681 (CCPA 1962). Although Gupta does not spell
out the use of GeH4 and a fluoride of boron together as gases in its ion
source, Gupta discloses a limited number of specific species that can be used
as source gases for its ion chamber and further discloses the species can
differ (i.e., have different electronegativities) to balance etching and/or
depositing effects. Id. (“[W]e think it is immaterial that Karrer did not
expressly spell out the limited class as we have done here.”). As a result,
one of ordinary skill in the art would have been able to at once envisage
pairings of the species listed in Table 1, including compounds having
species that differ from one another and have different electronegativities
(e.g., GeH4 and BF3).
Appellant acknowledges that Gupta discloses “the dopant species may
be different from the co-species” but argues this is not an explicit disclosure
of the species recited in claim 15 (i.e., a fluoride of boron and GeH4)
because Gupta only discloses that co-species with different electronegativies
can be used to balance the etching and/or depositing effects of the plasma
used in Gupta’s ion source (id. at 7—8).
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To the extent the disclosure of Gupta lacks a specific disclosure or
preference for the pairing of GeH4 and BF3, we note that courts have not
required particular emphasis for a finding of anticipation (see Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (“This court
rejects the notion that one of [14 listed] ingredients cannot anticipate
because it appears without special emphasis in a longer list.”)). Moreover,
one of ordinary skill in the art would have inferred the use of GeH4 and BF3
based upon the disclosure of Gupta that the species of a dopant gas and a
diluent gas may differ and the electronegativities of the species may differ to
balance the effects of etching and/or depositing. In re Preda, 401 F. 2d 825,
826 (CCPA 1968) (In determining whether a reference anticipates the
subject matter recited in a claim, “it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom.”). In fact, the
Examiner finds the electronegativities of boron and germanium differ and
thus follow Gupta’s disclosure of using species having different
electronegativies to balance etching and/or depositing effects (Ans. 2—3).
Thus, as the Examiner finds, the class of species that falls within the genus
of gases having different species but also different electronegativies, as
disclosed by Gupta, is so limited “a person of ordinary skill in the art can ‘at
once envisage each member of this limited class.’” In re Gleave, 560 F.3d
1331, 1338 (Fed. Cir. 2009).
Appellant contends the Miller Declaration filed under 37 C.F.R.
§ 1.132 on May 6, 2015 (“Miller Declaration”) demonstrates that a fluoride
of boron and GeH4 would not have balanced etching and deposition effects
because these species result in a coating on the wall of an ion chamber (id. at
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8—10). This argument is not persuasive because the Miller Declaration
provides no supporting evidence persuasively showing germanium and
fluorine do not have electronegativies that differ so the effects of etching
and/or depositing from a plasma would be balanced, as disclosed by Gupta
(See In re Altenpohl, 500 F.2d 1151, 1158 (CCPA 1974) (lack of factual
support rendered an affidavit of little probative value in overcoming
obviousness rejection). The Miller Declaration makes conclusory statements
about the deposition effect of germanium being unbalanced with the etching
effect of fluorine because a coating is formed on a quartz window (Miller
Declaration 3 4). However, the declarant does not determine what material
the coating comprises or state the operating conditions for the test to
demonstrate the conditions were those commonly used in the art.
The declarant also describes a test that resulted in a coating of
germanium on an alumina window and states this shows a lack of balance
between a deposition effect of a diluent gas and an etching effect of the
dopant gas (id. at 5—7). As above, the declarant concludes an imbalance
between deposition and etching exists simply because a coating of
germanium was discovered without providing sufficient supporting facts,
such as the operating conditions for the test, to persuasively show GeH4 and
BF3 would not have different electronegativities to balance etching and/or
depositing effects, as disclosed by Gupta. As a result, we give the Miller
Declaration little weight with regard to the arguments directed to
anticipation by Gupta and a preponderance of the evidence supports a
finding of anticipation.
In view of the above, Appellant’s arguments do not identity a
reversible error in the Examiner’s rejection of claims 15 and 19.
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Claim 16
Claim 16 depends from claim 15 and further recites “implanting the
first and second ions into the substrate.” Appellant asserts Gupta does not
anticipate claim 16 because Gupta discloses an ion implanter 100 in Figure 1
that includes an analyzer magnet 110, which would select a particular ion
and exclude others (Appeal Br. 11).
Appellant’s argument is unpersuasive. As discussed above, Gupta
discloses that the co-species having different electronegativities can be used
to balance the net effects of etching and/or depositing by a plasma (Gupta
9:10-16). Thus, Gupta discloses the effect of etching, depositing, or the
combined effects of etching and depositing can be balanced. In view of this,
one of ordinary skill in the art would have understood that Gupta discloses
the use of either ion species from a diluent gas and a dopant gas being
implanted as well as both ion species being deposited in order to achieve the
balances disclosed by Gupta.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 102(b) rejection of claims 15, 16, and
19 over Gupta.
The § 103(a) rejection over Gupta in view oflwasama
Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gupta in view of Iwasawa.
For claims 17 and 18, Appellant merely reiterates the arguments set
forth in support of the patentability of claim 1 and contend Musgrave does
not remedy the deficiencies of the references applied in the rejection of
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claim 15 (Appeal Br. 17—18). For the reasons set forth above, there are no
deficiencies in the rejection of claim 15 that require curing by Iwasawa.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103(a) rejection of claims 17 and 18 over Gupta in
view of Iwasawa.
The § 103(a) rejection over Gupta
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gupta. Appellant argues that claim 20 is not obvious over Gupta
because claim 15 is not obvious over Gupta (Appeal Br. 11—16). As
discussed above, we sustain the Examiner’s anticipation rejection of claim
15. Therefore we do not reach Appellant’s arguments regarding non­
obviousness for claim 15 at this stage. In any event, anticipation is the
epitome or ultimate of obviousness, and therefore, the subject matter of
claim 20 would also have been obvious to a person having ordinary skill in
the art. In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
Moreover, Gupta discloses the addition of its diluent gas may reduce
the concentration of fluorine radicals within its source chamber (e.g., via
hydrogen radicals scavenging excessive free fluorine molecules to reduce
the formation of material etched from the walls of the source chamber, such
as WF6), which improves performance and extends the lifetime of an ion
source (Gupta 7:45—63). Therefore, Gupta provides the ordinary artisan
with the guidance needed to perform the routine experimentation required to
determine the workable or optimal range of gas compositions (as the
Examiner concludes (Ans. 5—6)) that reduce the concentration of free
fluorine molecules in a source chamber for an ion beam. As a result, the
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Examiner has set forth a prima facie case of obviousness for the composition
of claim 20 and Appellant’s arguments do not identify a reversible error.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103(a) rejection of claim 20 over
Gupta.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection for claims 15, 16, and 19 under 35 U.S.C.
§ 103(a) over Gupta.2 We present this rejection in addition (or as an
alternative) to the rejection of claims 15, 16, and 19 under 35 U.S.C.
§ 102(b) over Gupta, which we have sustained.
With regard to claims 15 and 19, we find that Gupta discloses the use
of an ion source in which a dopant gas comprising a dopant species and a
diluent gas are mixed to improve performance of the ion source and extend
its lifetime (Gupta 4:22—33). Gupta discloses the diluent gas may comprise
a co-species that may be the same as or different from the dopant species {id.
4:49-58, 9:10—16). Gupta discloses the dopant gas can be a halogen-
containing gas or a hydrogen containing gas and the diluent gas can be a
hydrogen-containing gas, an inert gas, or a halogen-containing gas {id. at
4:34—37, 4:42^47, 6:17—21, and Table 1 at 6:25—37). Further, Table 1 of
Gupta lists dopant species and hydrides and halogenated gases for the dopant
species, which include GeH4 and BF3 {id. at 6:25—37).
2 As noted above, we sustain the Examiner’s rejections of claims 17 and 18
under 35 U.S.C. § 103(a) over Gupta in view of Iwasawa and claim 20 under
35 U.S.C. § 103(a) over Gupta.
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Based on the foregoing, we conclude that it would have been obvious
to select these species from those disclosed in Table 1 of Gupta as dopant
gases and diluent gases having different co-species in view of Gupa’s
disclosure that differing co-species can be used and that both GeH4 and BF3
are useful as gases for an ion source.
To the extent Appellant argues it would not have been obvious to
select GeH4 and BF3 from the species disclosed in Table 1 of Gupta, it has
been held that a species claim was obvious over a reference disclosing over
1200 possible combinations of two ingredient types useful in diuretic
compositions, where the claimed combination was but one of those disclosed
(see Merck & Co. Inc. v. Biocraft Labs., Inc. 874 F. 2d 804, 806—807 (Fed.
Cir. 1989) (neither of the claimed ingredients was listed by the reference as
being preferred)). Here, an artisan of ordinary skill would have needed to
only make a choice from a first list of explicitly disclosed materials and a
choice from a second list of explicitly disclosed materials to select dopant
and diluent gases. Thus, in our view, one of ordinary skill would have
considered the use of GeH4 and BF3 (as a dopant gas and a diluent gas
combined together) obvious from the explicit teachings provided by Gupta.
Appellant contends claim 15 is not obvious over Gupta because it
would have involved picking and choosing from amongst the passages of
Gupta, including those that teach away because Gupta discloses the use of
the same co-species to avoid a reduction in ion beam current and discloses
the use of heavy elements, such as germanium, reduces the lifetime of an ion
source (Appeal Br. 12—14). These arguments are unpersuasive because
although Gupta discloses the effect of heavier elements, such as germanium,
upon the lifetime of an ion source (Gupta 3:62-4:14) and the benefit of using
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the same co-species for ion beam current (id. 8:10-48), Gupta nonetheless
discloses dopant and diluent gases with different co-species, including heavy
elements such as germanium, may be used (id. 9:10-16). In other words,
Gupta recognizes the disadvantages when using gases having different co­
species but discloses such gases may still be selected. Thus, Gupta cannot
teach away from the use of gases having different co-species when Gupta
expresses discloses such an embodiment. Further, something that is known
or obvious does not become patentable simply because it has been described
as somewhat inferior to some other product for the same use (In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also In re Mouttet, 686 F.3d
1322, 1334 (Fed. Cir. 2012) (“just because better alternatives exist in the
prior art does not mean that an inferior combination is inapt for obviousness
purposes.”)).
Appellant further argues the deposition and etching effects are not
balanced when GeH4 and BF3 are used, citing the Miller Declaration (Appeal
Br. 14—16).3 As discussed above with regard to the anticipation rejection
over Gupta, the Miller Declaration does not provide factual support for its
conclusions and is of little probative value. In view of the findings above, a
preponderance of evidence supports a conclusion of obviousness for claims
15 and 19.
3 The declarant also discusses advantages for the use of germanium at pages
7—8 of the Miller Declaration. These statements are entitled to little weight
as evidence of unexpected results because there are no supporting facts
demonstrating the advantageous effects discussed by the declarant would be
exhibited by the full scope of the invention recited in claim 15, which
encompasses the use of various fluorides of boron in addition to GeH4.
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With regard to claim 16, Gupta discloses that the co-species having
different electronegativities can be used to balance the net effects of etching
and/or depositing by a plasma (Gupta 9:10-16). Therefore, it would have
been within the skill of one of ordinary skill in the art to select one ion
species for implantation (e.g., via the analyzer magnet 110 disclosed for a
conventional system 100 {id. 1:25—32, Figure 1)) or both ions produced from
an ion source including two different ion co-species in order to balance the
effect of etching, depositing, or the combined effects of etching and
depositing disclosed by Gupta.
Appellant argues claim 16 would not have been obvious over Gupta
because Gupta discloses the use of a mass analyzer (i.e., analyzer magnet
110) and cites the Miller Declaration (Appeal Br. 17). These arguments are
unpersuasive in view of Gupta’s suggestion to balance the effects of etching
and/or deposition. Moreover, the Miller Declaration merely states
Appellant’s invention operates without a mass analyzer and makes the
conclusory statement that implanting a co-species different from a dopant
species is not obvious in view of Gupta (Miller Declaration 7). Therefore,
the Miller Declaration is entitled to little weight with regard to the
obviousness of claim 16 and a preponderance of the evidence weighs in
favor of a conclusion of obviousness.
DECISION
The Examiner’s rejections of claims 15—20 are affirmed. We also
enter a new ground of rejection for claims 15, 16, and 19.
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection . .
. shall not be considered final for judicial review.”
37 C.F.R. § 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. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED:
NEW GROUND OF REJECTION. 37 C.F.R, $ 41.50(b)
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