William Davis. Lee et al.

Patent Trials and Appeals Board

Aug 14, 2019

14178681 - (D) (P.T.A.B. Aug. 14, 2019)

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.
14/178,681 02/12/2014 William Davis Lee EATNP325US 8838
29393 7590 08/14/2019
Eschweiler & Potashnik, LLC
Rosetta Center
629 Euclid Ave., Suite 1000
Cleveland, OH 44114
EXAMINER
PENCE, JETHRO M
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
08/14/2019 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@eschweilerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM DAVIS LEE and STEVE DRUMMOND
____________

Appeal 2018-008972
Application 14/178,681
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1–13, 15, 21, and 22 of
Application 14/178,681 under 35 U.S.C. § 103 as obvious. Final Act. (Dec.
18, 2017). Appellants1 seek reversal of the rejection pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.

1 Axcelis Technologies Inc. is identified as the applicant and the real party in
interest. Appeal Br. 1.
Appeal 2018-008972
Application 14/178,681

2
BACKGROUND
The ’681 Application describes an electrostatic chuck in a
semiconductor processing system. Spec. 1. According to the Specification,
the electrostatic chuck is configured to flow a plurality of coolants therein
over a large range of temperatures. Id.
Claim 1 is representative of the ’681 Application’s claims and is
reproduced below from Claims Appendix to the Appeal Brief:
1. An electrostatic clamping system, comprising:
an electrostatic chuck having one or more electrodes and
a clamping surface, wherein the electrostatic chuck is
configured to support and electrostatically clamp a workpiece
thereto via an electrical current passed through the one or more
electrodes, and wherein the electrostatic chuck comprises a
fluid passage therethrough;
a plurality of fluid sources having a respective plurality
of fluids associated therewith, wherein each of the plurality of
fluids is chemically distinct from a remainder of the plurality of
fluids and has a respective viable fluid temperature range
associated therewith, wherein at least one of the plurality of
fluids is in a liquid state in the respective viable fluid
temperature range, and wherein at least another one of the
plurality of fluids is in a gaseous state in the respective viable
fluid temperature range;
a thermal unit configured to respectively heat and/or
cool each of the plurality of fluids to one or more
predetermined temperature setpoints within the respective
viable fluid temperature range;
a valve assembly configured to selectively fluidly couple
each of the plurality of fluid sources to the fluid passage of the
electrostatic chuck; and
a controller configured to selectively fluidly couple the
fluid passage of the electrostatic chuck to each of the plurality
of fluid sources via a control of the valve assembly, therein
Appeal 2018-008972
Application 14/178,681

3
providing temperature control over each of the plurality of
viable fluid temperature ranges.
Appeal Br. 11 (Claims App.) (emphasis added).
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1–13, 15, 21, and 22 are rejected under 35 U.S.C. § 103
as unpatentable over the combination of Dawson2 and
Norrbakhsh.3 Final Act. 6; Answer 4.
DISCUSSION
Appellants’ principal Brief only presents substantive arguments with
respect to the rejection of claim 1. See Appeal Br. 3–9.4 Claims 2–13, 15,
21, and 22 are alleged to be patentable solely because they depend from
claim 1. Id. at 9. We, therefore, limit our discussion to claim 1. Dependent
claims 2–13, 15, 21, and 22 will stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).

2 US 2004/0187787 A1, published Sept. 30, 2004.
3 US 6,353,210 B1, issued Mar. 5, 2002.
4 Appellants’ Reply Brief contains, for the first time, specific arguments tied
to the limitations recited in claims 2–13, 15, 21, and 22. Reply Br. 13–19.
These arguments are untimely. We, therefore, will not consider them. Ex
parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining
that arguments and evidence not timely presented in the principal Brief will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative) (“Properly interpreted, the Rules do not require the Board to
take up a belated argument that has not been addressed by the Examiner,
absent a showing of good cause.”).
Appeal 2018-008972
Application 14/178,681

4
Appellants argue, inter alia, that the Examiner has not established a
prima facie case of obviousness for the rejection of claim 1. Appeal Br. 3–4,
6–7.
Claim 1 is directed to an electrostatic clamping system. Figure 1 of
the ’681 Application, reproduced below, illustrates an embodiment of the
claimed electrostatic clamping system.

Figure 1 is a block diagram of an electrostatic
clamping system according to an embodiment of
the claimed invention.
Figure 1 illustrates features of electrostatic clamping system 100,
which includes workpiece 106 and electrostatic chuck 102 comprising
surface 108 and electrode 104. Spec. 5. Electrostatic clamping system 100
further includes one or more fluid passages 112 and a plurality of fluid
Appeal 2018-008972
Application 14/178,681

5
sources 114A–114n, each having a respective plurality of fluids 116A–116n.
Id. at 5. Valve assembly 118 comprises one or more automated valves 120.
Id. at 6. Controller 124 is configured to open or close automated valves 120
and control thermal unit 122. Id. at 6, 7.
The Examiner rejected claim 1 as unpatentable over the combination
of Dawson and Norrbakhsh. Answer 4.
Dawson’s Figure 2, which illustrates a substrate support portion
having an electrostatic chuck, is reproduced below.

Figure 2 is a side sectional view of a substrate
support section, which includes an electrostatic
chuck. Dawson ¶¶ 11, 27.
Figure 2 illustrates features of substrate support 40, including an
electrostatic chuck, comprising electrically conductive electrode 60
embedded in dielectric layer 55, which includes exposed surface 57 on
which substrate 13 is supported. Id. ¶ 27. Substrate support 40 preferably
includes a plurality of liquid flow passages 80, 82, and 84 for circulating
liquid through the liquid flow passages to control the temperature
distribution at exposed surface 57. Id. ¶ 29.
Appeal 2018-008972
Application 14/178,681

6
Dawson’s Figure 5, which illustrates a substrate support, which
includes a liquid supply system and a heat transfer gas supply system, is
reproduced below.

Figure 5 schematically illustrates a substrate
support, including a liquid supply system and a
heat transfer gas supply system. Dawson ¶ 14.
Figure 5 illustrates features of substrate support 40, including liquid
supply system 100, and controller 300. Id. ¶ 46. Liquid supply system 100
includes a plurality of liquid sources 110, 120, and 130 to supply liquid, at a
selected temperature, to liquid flow passages 80, 82, and 84. Id.; see id. at
Fig. 2.
Appeal 2018-008972
Application 14/178,681

7
Appellants assert that Dawson teaches or suggests that only liquids are
provided to the liquid flow passages described therein. Appeal Br. 4; see
also id. at 7. Thus, according to Appellants, Dawson cannot teach or suggest
that any fluids provided to the liquid flow passages are in a gaseous state in
the viable fluid temperature range, as required by claim 1. Id. at 4, 7.
Appellants argue that the structural “relationship of the elements of claim 1
require[s] at least one of the plurality of fluids to be in a liquid state and at
least another one of the plurality of fluids is in a gaseous state in the
respective viable fluid temperature range.” Reply Br. 9.5
Appellants’ arguments are unpersuasive because, inter alia, they fail
to address the substance of the rejection. Claim 1 is an apparatus claim.
Structural claims, such as claims directed to an article or apparatus, must be
distinguished from the prior art in terms of structure. See In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997) and cases cited therein; see also In re
Danly, 263 F.2d 844, 848 (CCPA 1959) (“Claims drawn to an apparatus
must distinguish from the prior art in terms of structure rather than
function.” (citation omitted)); In re Gardiner, 171 F.2d 313, 315–16 (CCPA
1948) (“It is trite to state that the patentability of apparatus claims must be
shown in the structure claimed and not merely upon a use, function, or result
thereof.”).

5 Appellants’ reliance on MPEP § 2114 for the proposition that “the prior
art cannot anticipate the claim if there is any structural difference” is not
dispositive. Reply Br. 9. In this case, the Examiner has not found that the
combination of Dawson and Norrbakhsh anticipates claim 1. Rather, the
Examiner determined that the combination of Dawson and Norrbakhsh
renders claim 1 obvious.
Appeal 2018-008972
Application 14/178,681

8
As the Examiner found, Dawson discloses or suggests that fluid
sources 110, 120, 130, 140 have
[a] respective plurality of fluids associated therewith, . . .
wherein at least one of the plurality of fluids (i.e.[,] ethylene
glycol) is in a liquid state in the respective workable fluid
temperature range . . . , and wherein at least another one of the
plurality of fluids is in a gaseous state (i.e.[,] water) in the
respective viable fluid temperature range (each fluid implicitly
has a workable fluid temperature range, e.g.[,] 140–150 °C,
water will be steam, ethylene glycol will be liquid).
Answer 21–22 (citing Dawson ¶¶ 8, 41, 46–47, 49–51, 63, 72; Abstract;
Figs. 5, 7). There is no dispute that the claim term “viable” may be
interpreted as “capable of working.” Answer 19; Appeal Br. 7. Thus, we
agree with the Examiner that Dawson’s water, which is capable of working
at a fluid temperature range in the form of steam, discloses or suggests that
“at least another one of the plurality of fluids is in a gaseous state,” as
required by claim 1.
In response, Appellants argue that the Examiner’s finding should have
been designated as a new ground of rejection. See Reply Br. 2–3.
Appellants, however, have not followed proper procedure and filed a
petition to seek redress for the alleged new ground of rejection. We note
moreover, that Appellants availed themselves of their opportunity to respond
to the alleged new ground of rejection in their 19 page Reply Brief.
For example, Appellants argue that the Examiner’s alleged new
ground of rejection is reversibly erroneous because “Dawson teaches only a
single liquid being provided to any of the liquid passages disclosed
therein.” Id. at 4; see generally id. at 4–7. Specifically, Appellants argue
that because “the ‘liquid sources’ 110, 120, 130, 140 are merely
conditioning units for a single liquid, one of ordinary skill would [have]
Appeal 2018-008972
Application 14/178,681

9
appreciate[d] that Dawson fails to teach or suggest the claimed provision of
a plurality of chemically distinct fluids from a plurality of fluid sources to a
single liquid flow passage.” Id. at 6 (citing Dawson ¶ 55) (emphasis added).
Dawson’s Figure 7, which illustrates a liquid supply system, is
reproduced below.

Figure 7 schematically illustrates an embodiment
of a liquid supply system. Dawson ¶ 16.
Figure 7 illustrates features of liquid supply system 500, including
liquid source 140 and coolant flow passages 80, 82, and 84.
Appellants’ arguments are not persuasive because Dawson explicitly
discloses that “liquid source 140 can comprise a single chiller, heat
exchanger, or the like, or it can[] comprise a plurality of liquid sources.”
Id. ¶ 63 (emphasis added); see also id. ¶ 46 (disclosing that the liquid supply
Appeal 2018-008972
Application 14/178,681

10
system depicted in Figure 5 “preferably includes a plurality of liquid
sources, such as . . . 110, 120 and 130”) (emphasis added). Dawson,
furthermore, discloses suitable chemically distinct fluids for flowing through
the described liquid passages, such as “water, ethylene glycol, silicon oil,
water/ethylene glycol mixtures and the like.” Dawson ¶ 29; see also
Answer 5.
Appellants argue that “the particular fluid passage recited in claim 1
is clearly selectively coupled to each of the plurality of fluid sources via the
valve assembly and controller.” Reply Br. 10; see also Appeal Br. 4–6.
Appellants contend that because claim 1 refers “to ‘a’ fluid passage, and
subsequently refer[s] back to ‘the’ fluid passage, . . . the same fluid passage
is being referred to in the claim.” Reply Br. 10. In other words, Appellants
assert that claim 1 is distinguished from Dawson’s electrostatic chuck
having multiple liquid flow passages.
Appellants’ argument regarding an alleged singular or particular
liquid flow passage is not persuasive because the transitional phrase
“comprising” recited in the preamble of claim 1 is open-ended. Thus,
additional fluid passages, such as those taught by Dawson’s liquid flow
passages 80, 82, and 84, are not excluded from the claim. We note,
moreover, that Appellants’ Specification provides that the electrostatic
chuck “102 of the present disclosure comprises one or more fluid passages
112 . . . therethrough.” Spec. 5 (emphasis added).
Appellants argue that the Examiner’s proposed combination of
Dawson and Norrbakhsh fails to provide the claimed fluid passage of the
electrostatic chuck that is selectively coupled to each of the plurality of fluid
sources. Appeal Br. 7. Appellants further argue that the ordinarily skilled
Appeal 2018-008972
Application 14/178,681

11
artisan at the time of the invention would not have been motivated to
combine the references to arrive at the present invention.6 Id. According to
Appellants “one of ordinary skill in the art would not have been motivated
to combine the references as cited in the Final Office Action, as doing so
would deleteriously expose the wafer to liquids in an undesirable manner.”
Id. at 8.
We are not persuaded by these arguments. As set forth above, the
Examiner has persuasively found that Dawson explicitly discloses the
claimed fluid passage of the electrostatic chuck that is selectively coupled to
each of the plurality of fluid sources. See also Answer 19–28. Therefore,
Appellants’ arguments have not persuaded us that the Examiner reversibly
erred by finding that the combination of Dawson and Norrbakhsh describes
or suggests each structural limitation recited in claim 1.

6 Appellants argue that Norrbakhsh’s coolant pump 125 fails to teach or
suggest the claimed thermal unit. See generally Reply Br. 11–13.
Appellants raise these arguments for the first time in the Reply Brief because
“the Examiner has again significantly modified the rejection of claim 1 in
the present rejection regarding the teachings of Norrbak[h]sh,” which “is
apparently cited for merely teaching the claimed thermal unit.” Id. at 11–12
(citing Answer 23). Contrary to Appellants’ position, however, the Final
Office Action included the Examiner’s findings that Norrbakhsh teaches or
suggests the claimed thermal unit. Compare Final Act. 7 with Answer 23.
Consequently, Appellants’ arguments are untimely. We, therefore, refuse to
consider them. Nakashima, 93 USPQ2d 1834. Even assuming these
untimely arguments might be persuasive, there is no dispute that Dawson’s
“chillers, heat exchangers, and the like,” which are “configured to
respectively heat and/or cool each of the plurality of liquid fluids,” teach or
suggest the claimed thermal unit. Answer 6 (citing Dawson ¶¶ 41, 46–51,
63, 72; Abstract); Reply Br. 6.
Appeal 2018-008972
Application 14/178,681

12
As the Examiner determined, furthermore,
it would have been obvious to include the thermal unit
comprising a coolant pump 125 and data bases to control
coolant pressure, wherein a cooling rate is proportional to the
pressure at which the coolant is supplied to the coolant passages
in the wafer support, so that the wafer temperature is directly
affected by the coolant pressure and setting the coolant pressure
to a constant value corresponding to a desired wafer
temperature during processing in the system of Dawson,
because Norrbakhsh teaches the use of the thermal unit
comprising a coolant pump and data bases to control coolant
pressure, wherein a cooling rate is proportional to the pressure
at which the coolant is supplied to the coolant passages in the
wafer support, so that the wafer temperature is directly affected
by the coolant pressure and setting the coolant pressure to a
constant value corresponding to a desired wafer temperature
during processing to control coolant pressure in such a manner
as to minimize wafer temperature deviation from the desired
temperature.
Answer 7 (citing Norrbakhsh 2:57–60; Abstract) (emphasis added). We note
that Dawson explicitly discloses that liquid supply systems 100 and 400 “can
also comprise a suitable fluid pump arrangement.” Dawson ¶¶ 46, 52. In
our view, the ordinarily skilled artisan would have gleaned from
Norrbakhsh’s teachings that helium7 pump 125 suggests such a suitable fluid
pump arrangement. Therefore, Appellants’ arguments fail to identify
reversible error in the Examiner’s conclusion that the ordinarily skilled
artisan would have been motivated to combine the teachings of Dawson and
Norrbakhsh.

7 When read in view of the Specification, the claimed plurality of fluids
encompasses “gases that each have differing boiling point[s] and/or freezing
points from the remaining of the plurality of fluids.” Spec. 5 (emphasis
added).
Appeal 2018-008972
Application 14/178,681

13
We have considered Appellants’ other arguments and find them to be
similarly unpersuasive.
DECISION
For the reasons set forth above and in the Answer, we affirm the
§ 103 rejection of claims 1–13, 15, 21, and 22 of the ’681 Application.

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)(iv).
AFFIRMED