Ex Parte ParkheDownload PDFPatent Trial and Appeal BoardOct 25, 201712892219 (P.T.A.B. Oct. 25, 2017) Copy Citation 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. 12/892,219 09/28/2010 Vijay D. Parkhe 015163/MDP/COPPER/PJT 1847 67251 7590 10/27/2017 SFRVTT T A WHTTNFY T T F/AMT EXAMINER 33 WOOD AVE SOUTH PATEL, VISHAL A SUITE 830 ISELIN, NJ 08830 ART UNIT PAPER NUMBER 3675 NOTIFICATION DATE DELIVERY MODE 10/27/2017 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): docket @ dsiplaw. com j escobar @ dsiplaw. com lmurphy @ dsiplaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VIJAY D. PARKHE Appeal 2016-002694 Application 12/892,219 Technology Center 3600 Before: LINDA E. HORNER, MICHAEL L. HOELTER, and NATHAN A. ENGELS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner’s Final rejection of claims 1—11 and 20—22. App. Br. 5. Claims 12—19 are withdrawn. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2016-002694 Application 12/892,219 THE CLAIMED SUBJECT MATTER The disclosed subject matter “relate[s] to vacuum process chamber components, for example, an electrostatic chuck for holding a substrate in a process chamber, and related methods of manufacture.” Spec. 11. Claims 1 and 20 are independent. Claim 1, illustrative of the claims on appeal, is reproduced below. 1. A component for use a in a vacuum process chamber comprising: a first piece comprising a first material having a first coefficient of thermal expansion, the first piece having a receiving surface to receive a substrate, the receiving surface comprising a plurality of raised mesas formed by intersecting radial grooves that terminate in an inner circular groove; a second piece comprising a second material having a second coefficient of thermal expansion different from the first coefficient of thermal expansion, the second piece including a peripheral ledge having a plurality of holes therethrough; at least one o-ring compressed between the first piece and the second piece, the at least one o-ring defining an outer radial portion and an inner radial portion of the component; and a solder bond joining the first piece to the second piece to provide a hermetic seal between the first piece and second piece such that when one of the outer portion and inner portion is under vacuum pressure and the other of the outer portion and inner is under atmospheric pressure, the hermetic seal prevents a leak between the outer portion and the inner portion, and wherein the o-ring is spaced about 1 mm to about 5 mm from the inner portion of the solder bond. REFERENCES RELIED ON BY THE EXAMINER Heerden et al. “Heerden” US 2006/0032193 Al Feb. 16, 2006 Parkhe et al. “Parkhe” US 2008/0089001 Al Apr. 17, 2008 2 Appeal 2016-002694 Application 12/892,219 THE REJECTION ON APPEAL Claims 1—11 and 20—22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Parkhe and Heerden.1 ANALYSIS Each independent claim (i.e., claims 1 and 20) includes the limitation “wherein the o-ring is spaced about 1 mm to about 5 mm from the inner portion of the solder bond.” See App. Br. 23, 25 (Claims Appendix). The Examiner acknowledges that neither Parkhe nor Heerden discloses this limitation. Final Act. 4. However, the Examiner states that “a material would heat up quicker when it is close to a heat source [than when] the material [is] away from the heat source.” Final Act. 4; see also Ans. 6 (Having “a member such as an O-ring placed away from a heat or fire so it does not melt or catch on fire is a predictable variable.”). The Examiner thus concludes, “[discovering an optimum range of a result effective variable involves only routine skill in the art” and that it would have been obvious to have the spacing of “1 mm to 5mm as a matter of [the] predictable result of heat effect as a matter of design choice.” Final Act. 4: see also Ans. 6 (“[A]ppellant has not provided unexpected result.”). Appellant contends that neither reference has “identified the size of the gap as a results effective variable.” App. Br. 18; see also id. at 19-20; Reply Br. 3. Appellant states, “[t]o be considered a result effective variable, it must be identified in the cited art, not in the Appellants’ disclosure” and 1 The Examiner separately rejects claim 7, but still relies on the combination of Parkhe and Heerden. Final Act. 5. 3 Appeal 2016-002694 Application 12/892,219 further, that a “particular parameter must first be recognized as a result- effective variable.” App. Br. 18; see also Reply Br. 3^4. The Examiner identifies what might be common sense (i.e., “a material would heat up quicker when it is close to a heat source”) but the Examiner does not explain how such knowledge results in the teaching/disclosure of any particular range within which the O-ring is to be located from the heat source. Final Act. 4. In other words, although the Examiner finds that “a gap exist[s] between the solder bond and O-ring” in Heerden (Ans. 6), the Examiner does not present any evidence to the effect that such distance is recognized as a result-effective variable that might then be optimized to a spacing of “about 1 mm to about 5 mm.”2 Accordingly, despite the Examiner’s rebuttal to various other Appellant arguments, we are not persuaded the Examiner provided sufficient rationale for the rejection of this limitation. Thus, the Examiner has not established by a preponderance of the evidence that it would have been obvious (as a matter of the optimization of a result effective variable) to space the O-ring “about 1 mm to about 5 mm from the inner portion of the solder bond” as claimed. See Final Act. 4; see also Ans. 6. We reverse the 2 “It is never appropriate to rely solely on ‘common knowledge’ in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based.” MPEP § 2144.03 (citing In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001). See In re Stepan Company, 868 F.3d 1342, 1346 (Fed. Cir. 2017) (“Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness.”); see also In re Marcel Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017). 4 Appeal 2016-002694 Application 12/892,219 Examiner’s rejection of independent claims 1 and 20, and dependent claims 2-11, 21, and 22. Regarding dependent claim 7, this claim depends from claim 1 and thus its rejection is reversed for the reasons set forth above. However, to further prosecution, we also wish to address the Examiner’s separate rejection of this claim under the same art. Final Act. 5. Claim 7 recites the additional limitation, “wherein the at least one o-ring is made of a perfluoropolymer.” App. Br. 24 (Claims Appendix). The Examiner concludes that it would have been obvious “to have the O-ring be made of perfluoropolymer” because it is within the general skill “to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.” Final Act. 5. The Examiner also states, “[furthermore to have a member be formed of perfluoropolymer will withstand heat and environmental effects (high or low pressures and temperatures).” Ans. 8. Appellant disputes this rejection premised on “the Examiner [having] effectively taken official notice of a technological property without providing sufficient evidentiary support.” App. Br. 21; see also Reply Br. 4. Although it is not certain that the Examiner took official notice, we do agree that the Examiner failed to provide evidentiary support for the expressed conclusion. See also Reply Br. 5. To be clear, the Examiner identifies where Heerden teaches, “the crushable material may include a compressible polymer.” See Heerden 112, see also Final Act. 3^4. However, the Examiner provides no link between this teaching and the Examiner’s conclusion (“perfluoropolymer will withstand heat and environmental effects”) other than suggesting one skilled 5 Appeal 2016-002694 Application 12/892,219 in the art would have been able to select a suitable material. Ans. 8; see also Final Act. 5. Hence, for similar reasons expressed above regarding the lack of evidentiary support and additional reasoning, the Examiner has not established by a preponderance of the evidence that the combination of Parkhe and Heerden renders claim 7 obvious. DECISION The Examiner’s rejection of claims 1—11 and 20—22 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation