Ex Parte Parkhe

Patent Trial and Appeal Board

Oct 25, 2017

12892219 (P.T.A.B. Oct. 25, 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.
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
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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12—19 are withdrawn.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
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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.
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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).
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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
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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
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