Ex Parte Smith et al

Patent Trial and Appeal Board

Apr 28, 2016

12779904 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121779,904 05/13/2010 Jacob Smith
44257 7590 05/02/2016
PATTERSON & SHERIDAN, LLP- - Applied Materials
24 Greenway Plaza, Suite 1600
HOUSTON, TX 77046
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
009381.DOl/FEP/LPCVD/PJT 9478
EXAMINER
DHINGRA, RAKESH KUMAR
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
Pair_Eofficeaction@pattersonsheridan.com
psdocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB SMITH, ALEXANDER TAM,
R. SURY ANARAYANAN IYER, SEAN SEUTTER, BINH TRAN,
NIR MERRY, ADAM BRAILOVE, ROBERT SHYDO, JR.,
ROBERT ANDREWS, FRANK ROBERTS,
THEODORE SMICK, and GEOFFREY RYDING
Appeal2014-005547
Application 12/779,904
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over at least the basic combination of Frankel et al. (U.S.
Patent 6,645,303 B2, issued Nov. 11, 2003, hereinafter "Frankel") in view of
Nishikawa (U.S. Patent 6,213,478 Bl, issued Apr. 10, 2001) for independent
claims 1 and 6, and the basic combination of Frankel in view of Bramhall,
1 The Real Party in Interest is stated to be "Applied Materials, Inc." (App.
Br. 3).
Appeal2014-005547
Application 12/779,904
Jr. et al. (US 4,923,584, issued May 8, 1990, hereinafter "Bramhall") and
Ryding et al. (US 2002/0139307 Al, published Oct. 3, 2002, hereinafter
"Ryding") for independent claim 8.2 An oral hearing was conducted on
April 14, 2016. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Claims 1 and 6 are illustrative of the claimed subject matter:
1. An apparatus for processing a substrate, comprising:
a vapor deposition chamber;
a bellows connected to the vapor deposition chamber;
a substrate support having a heater disposed within the vapor
deposition chamber;
a rotatable shaft extending from the substrate support; and
a seal block connecting the rotatable shaft to the bellows.
6. An apparatus for processing a substrate, comprising:
a vapor deposition chamber;
a rotatable substrate support having a heater disposed within the
vapor deposition chamber and a shaft disposed below the heater;
a bellows connected to the vapor deposition chamber and
surrounding the shaft;
a seal block connecting the shaft to the bellows;
a seal between the seal block and the shaft;
a motor connected to the shaft; and
2 The Examiner also applied Krolak (US 6,592,679 B2, issued July 15,
2003) to independent claim 6 (Ans. 5) and also applied additional prior art to
various dependent claims (see Ans. 2-16 for a full listing of all the
rejections).
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Application 12/779,904
a lift mechanism connected to the bellows.
Independent claim 8 recites a similar apparatus as claim 6 but is
worded such that its motor, seal block and lift mechanism are disposed
within the chamber (Claims App.). During the oral hearing conducted on
April 14, 2016, Appellants' representative stated they would like to
withdraw the appeal of independent claim 8 as amendments were needed to
clarify its language, since the motor, seal block and lift mechanism as
described in the Specification are not disposed within the chamber. In light
of this request, the rejections for independent claim 8 and claims depending
therefrom are summarily affirmed.
ANALYSIS
We have reviewed each of Appellants' arguments for patentability.
However, we are in agreement with the Examiner that the claimed subject
matter is unpatentable under § 103 in view of the applied prior art.
Accordingly, we sustain the Examiner's prior art rejections for the reasons
explained in the Answer, and we add the following primarily for emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). "[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418.
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Appellants urge that absent substantial reengineering, the apparatus of
Frankel could not be combined with apparatus of Nishikawa (e.g., generally
App. Br. 8; Reply Br.). Appellants' arguments fail to adequately consider
the prior art as a whole, and do not directly address the Examiner's
obviousness position. See, e.g., In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992) (it is well established that in evaluating references it is proper to
take into account not only the specific teachings of the references but also
the inferences which one skilled in the art would reasonably be expected to
draw therefrom); see also In re Keller, 642 F.2d 413, 425-26 (CCPA 1981)
("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.").
Appellants have not asserted, nor provided any evidence, that the
proposed modification/reengineering of Frankel to include a rotatable
substrate support/shaft as exemplified in Nishikawa would have been
beyond the capabilities of a person of ordinary skill in the art. Absent such
evidence, we "take account of the inferences and creative steps that a person
of ordinary skill in the art would employ," and find a person of ordinary skill
in the art would have overcome those difficulties within their level of skill.
KSR, 550 U.S. at 418; see also id. at 421 ("A person of ordinary skill is also
a person of ordinary creativity, not an automaton."); Ball Aerosol &
Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed.
Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the
PTO must take account of the "inferences and creative steps," as well as
routine steps, that an ordinary artisan would employ (emphasis omitted)); In
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re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) ("As for resulting in a useful
device, appellants are talking about Esher' s plug not being removable and
being left in the conduit which, they say, 'would prevent effective heat
recovery.' They are assuming that one of ordinary skill would not appreciate
that Esher's hollow member 14 could be removed if it is not wanted, as
insulation or otherwise, and that it would not be removed by a skilled worker
who wished to allow heat recovery of the conduit in which it was placed.
This argument presumes stupidity rather than skill.").
A preponderance of the evidence supports the Examiner's
determination that the use of rotary coupling to provide connection to a
rotating substrate holder is known in the art and thus it would have been
obvious to make the necessary changes in Frankel to provide shaft rotation
for the benefit of obtaining improved uniformity of substrate processing
(e.g., Ans. 20). Appellants' unsupported conclusion that the device of
Frankel would not function properly if the substrate support was rotated falls
short of showing harmful error. An attorney's arguments in a brief cannot
take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
Accordingly, Appellants have not provided persuasive technical
rationale or any credible evidence to refute the Examiner's determination it
would have been obvious to rotate a substrate support (as required by
independent claims 1 and 6), as exemplified to be a known practice in
Nishikawa's semiconductor processing apparatus, in the semiconductor
processing device of Frankel (generally Ans.; App. Br.). KSR, 550 U.S. at
416 (the predictable use of prior art elements according to known methods
for their established functions is likely to be obvious when it does no more
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than yield predictable results). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
Therefore, we affirm the Examiner's § 103 rejections of all the claims
on appeal.
ORDER
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.
AFFIRMED
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