UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
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`
`
`LAM RESEARCH CORP.,
`
`Petitioner
`
`v.
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`DANIEL L. FLAMM,
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`Patent Owner
`___________
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`U.S. Patent No. RE40,264 E
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`Issued: April 29, 2008
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`Named Inventor: Daniel L. Flamm
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`Title: MULTI-TEMPERATURE PROCESSING
`___________
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`Case IPR2015-01768
`Patent RE40,264 E
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`PETITIONER’S REPLY
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`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`
`
`LAM RESEARCH CORP.,
`
`Petitioner
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`___________
`
`U.S. Patent No. RE40,264 E
`
`Issued: April 29, 2008
`
`Named Inventor: Daniel L. Flamm
`
`Title: MULTI-TEMPERATURE PROCESSING
`___________
`
`Case IPR2015-01768
`Patent RE40,264 E
`
`PETITIONER’S REPLY
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`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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` Case IPR2015-01768
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` U.S. Patent No. RE40,264
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................ 1
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`THE CHALLENGED CLAIMS ARE UNPATENTABLE ......................... 6
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`A. Ground 1 and Ground 4: Claim 56 is Obvious Under §
`103(a) .................................................................................................. 6
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`1.
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`2.
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`3.
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`4.
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`The Petition Shows that the Prior Art Teaches All of
`the Limitations of Independent Claim 56 ................................ 7
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`The Petition Did Not Impermissibly Split the Wherein
`Clause Limitation ................................................................... 12
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`Both Ground 1 and Ground 4 Combinations Utilize
`Matsumura’s Controller in the Tegal System to Etch
`Using the Process Taught by Thomas and Wang ‘485. ......... 16
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`The Petition Showed a POSA Would Have Reasons
`for Combinability for Claim 56 ............................................. 21
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`B.
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`Ground 2 and 3: Independent Claim 60 Is Obvious Over
`Tegal, Matsumura, Narita, Thomas and Fischl and
`Independent Claim 51 Is Obvious Over Tegal, Matsumura,
`Narita and Thomas ........................................................................... 22
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`C.
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`Flamm Has Waived Arguments for Dependent Claims ................... 24
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`I.
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`II.
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Allied Erecting and Dismantling Co., v. Genesis Attachments, LLC,
`Slip Op. No. 15-1533 ............................................................................................ 3
`
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333, 1342 (Fed. Cir. 2003) and KSR, 550 U.S. at 418 ...... 3, 15, 16, 21
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`Graham v. John Deere Co. of Kansas City,
`383 U. S. 1, 17-18 (1966) ................................................................................... 16
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`In re Keller,
`642 F.2d 413 (C.C.P.A, 1981) ........................................................................ 3, 19
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`MCM PORTFOLIO LLC v. Hewlett-Packard Co.,
`812 F. 3d 1294 (Fed. Cir. 2015) ......................................................................... 15
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`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) ...................................................................... 3, 20
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`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ............................................................................ 15
`
`Sakraida v. Ag. Pro., Inc.,
`425 U.S. 273, 282 reh’g denied, 426 U.S. 955 (1976) ..................................... 3, 4
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`Rules and Regulations
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`37 C.F.R. § 42.104(b)(4) .......................................................................................... 13
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`35 U.S.C. § 103(a) ........................................................................................... 1, 6, 16
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`EXHIBIT LIST
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`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
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`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
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`1016
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`1017
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`1018
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`Description
`U.S. Patent No. RE40,264 (the ‘264 patent)
`European Patent Application Number 90304724.9 (Tegal)
`U.S. Patent No. 5,151,871 (Matsumura)
`U.S. Patent No. 4,913,790 (Narita)
`U.S. Patent No. 4,680,086 (Thomas)
`U.S. Patent No. 5,219,485 (‘485 Wang)
`D. S. Fischl, G. W. Rodrigues, and D. W. Hess, Etching of
`Tungsten and Tungsten Silicide Films by Chlorine Atoms
`published in August 1998 by The Journal of Electrochemical
`Society in Vol. 135, No. 8 (Fischl)
`U.S. Patent No. 4,992,391 (‘391 Wang)
`U.S. Patent No. 5,174,856 (Hwang)
`Declaration of Joseph L. Cecchi, Ph.D.
`American Heritage Dictionary, Third Edition, 1993
`Merriam-Webster’s Collegiate Dictionary, Tenth Edition, 1993
`U.S. Patent No. 4,645,218 (Ooshio)
`Curriculum Vitae of Joseph L. Cecchi, Ph.D.
`Daniel L. Flamm and G. Kenneth Herb, “Plasma Etching
`Technology – An Overview” in Plasma Etching, An
`Introduction, Dennis M. Manos and Daniel L. Flamm, eds.
`(Academic Press, San Diego, 1988)
`Declaration of Morgan Chu In Support of LAM’s Unopposed
`Motion for Pro Hac Vice Admission
`Declaration of Talin Gordnia In Support of LAM’s Unopposed
`Motion for Pro Hac Vice Admission
`Declaration of Joseph L. Cecchi, Ph.D. in support of Reply
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`I.
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`INTRODUCTION
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`On February 24, 2016, the Board ordered an IPR with respect to the
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`following grounds of unpatentability:
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`(1) Whether claims 56-58 are unpatentable under § 103(a) as having been
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`obvious over the combined disclosures of Tegal, Matsumura, Narita, Thomas and
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`Wang ‘485;
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`(2) Whether claims 60, 62, 63 and 71 are unpatentable under § 103(a) as
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`having been obvious over the combined disclosures of Tegal, Matsumura, Narita,
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`Thomas and Fischl;
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`(3) Whether claims 51, 55 and 68 are unpatentable under § 103(a) as having
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`been obvious over the combined disclosures of Tegal, Matsumura, Narita and
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`Thomas;
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`(4) Whether claims 56 and 59 are unpatentable under § 103(a) as having
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`been obvious over the combined disclosures of Tegal, Matsumura, Narita, Wang
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`‘391, Thomas and Wang ‘485;
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`(5) Whether claim 61 is unpatentable under § 103(a) as having been obvious
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`over the combined disclosures of Tegal, Matsumura, Narita, Thomas, Fischl and
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`Ooshio; and
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`(6) Whether claim 70 is unpatentable under § 103(a) as having been obvious
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`over the combined disclosures of Tegal, Matsumura, Narita, Thomas, Fischl and
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`Flamm does not dispute that the petition shows that the combinations listed
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`above teach all of the limitations of the claims. Nor does Flamm dispute the
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`opinion of Dr. Cecchi that these combinations teach all of the limitations of the
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`claims and a person of ordinary skill in the art (POSA) would have reasons to
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`make these combinations.
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`Instead, for independent claims 51, 56 and 60, Flamm argues that neither
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`Tegal nor Matsumura individually teaches changing from a first temperature to a
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`second temperature within a preselected time period with a control circuit. But
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`Flamm ignores what is taught by the Tegal, Matsumura, Narita, Thomas and Wang
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`‘485 references. And Flamm fails to address the evidence that these teachings
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`would have led a POSA to use the teachings of these prior art references to practice
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`the methods of the challenged claims.
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`Moreover, Flamm argues that the petition fails to explain how one could
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`incorporate Matsumura’s exemplar baking resist process (HMDS process) recipes
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`into Tegal’s etch process. But the disclosure of Matsumura is not directed towards
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`a specific chemical process. Instead, Matsumura “relates to a method and
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`apparatus for controlling temperatures of these semiconductor wafers . . . when
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`these are heated up and cooled down.” Ex. 1003, 1:10-13. Moreover, even if the
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`disclosure of Matsumura were limited to the exemplar HMDS process (which it is
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`not), contrary to Flamm’s argument, it is not necessary that Tegal, Matsumura,
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`Narita, Thomas and Wang ‘485 be physically combinable to render obvious the
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`Flamm ‘264 patent. Allied Erecting and Dismantling Co., v. Genesis Attachments,
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`LLC, Slip Op. No. 15-1533 (Fed. Cir. June 15, 2016) (“[I]t is not necessary that
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`[Caterpillar and Ogawa] be physically combinable to render obvious the [‘489
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`patent].”). “The test for obviousness is not whether the features of a secondary
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`reference may be bodily incorporated into the structure of the primary reference
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`. . . .” In re Keller, 642 F.2d 413, 425 (C.C.P.A., 1981). Rather, “obviousness
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`focuses on what the combined teachings would have suggested.” In re Mouttet,
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`686 F.3d 1322, 1330 (Fed. Cir. 2012) (citations omitted). And it is undisputed that
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`Matsumura explicitly teaches that the apparatus and method of controlling
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`temperatures disclosed therein can be used with etch processes, such as the process
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`disclosed in Tegal.
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`As set forth in the petition, the claims of the ‘264 patent are obvious because
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`they are nothing more than the result of Flamm combining “familiar elements
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`according to known methods” to “yield predictable results.” KSR Int’l. Co. v.
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`Teleflex Inc., 550 U.S. 398, 416 (2007). As the Supreme Court has held, “when a
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`patent ‘simply arranges old elements with each performing the same function it
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`had been known to perform’ and yields no more than one would expect from such
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`an arrangement, the combination is obvious.” Id. at 417 (quoting Sakraida v. Ag.
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`Pro., Inc., 425 U.S. 273, 282 reh’g denied, 426 U.S. 955 (1976)).
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`The key question here is whether the alleged improvement “is more than the
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`predictable use of prior art elements according to their established functions.” Id.
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`As set forth below, the answer to this question is “no” for the ‘264 patent because,
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`well before the purported invention, processing a substrate in a chamber at a first
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`temperature and then at a second temperature was well known. Patents and printed
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`publications predating the purported invention also disclosed chambers having
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`elements such as temperature sensors for substrate holders and substrates as well as
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`control systems for accurately and quickly controlling the temperature of a
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`substrate holder or a substrate during processing.
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`Other than arguing for independent claim 56 that there is no individual
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`reference that teaches the entirety of the claim limitation, the “substrate
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`temperature is changed from the first substrate temperature to the second substrate
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`temperature with a control circuit operable to effectuate the changing within a
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`preselected time period,” Flamm does not dispute that the petition has established
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`that the combination of Tegal, Matsumura, Narita, Thomas, and Wang ‘485
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`teaches all of the other claim limitations for claims 56-58. Nor does Flamm
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`dispute that the petition has established that the combination of Tegal, Matsumura,
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`Narita, Wang ‘391, Thomas and Wang ‘485 teaches all of the other claim
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`limitations for claims 56 and 59. As a result, Flamm has waived these arguments
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`for these other limitations recited in claims 56-59.
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`Other than arguing for independent claims 51 and 60 that there is no
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`individual prior art reference that teaches the entirety of the claim limitation, “the
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`substrate temperature control circuit effectuates the change from the first substrate
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`temperature to the second substrate temperature within a preselected time period”
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`(or its equivalent in claim 60), Flamm does not dispute that the petition has
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`established that the combination of Tegal, Matsumura, Narita and Thomas teaches
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`all of the other limitations for claims 51, 55 and 68. Nor does Flamm dispute that
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`the petition established that the combination of Tegal, Matsumura, Narita, Thomas
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`and Fischl teaches all of the other limitations for claims 60, 62, 63 and 71. As a
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`result, Flamm has waived these arguments for these other limitations recited in
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`claims 51, 55, 60, 62, 63, 68 and 71.
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`Finally, Flamm does not dispute that claim 61 is rendered obvious by Tegal,
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`Matsumura, Narita, Thomas, Fischl and Ooshio, nor does Flamm dispute that claim
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`70 is rendered obvious by Tegal, Matsumura, Narita, Thomas, Fischl and Hwang.
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`As a result, Flamm has waived all arguments for dependent claims 61 and 70.
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`II. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Ground 1 and Ground 4: Claim 56 is Obvious Under § 103(a)
`Tegal teaches that the throughput of a plasma etching process can be
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`increased by etching a substrate at a selected first temperature and then etching the
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`substrate at a selected second temperature in the same reactor. Ex. 1002, 1:43-45,
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`¶ 57 and 6:18-35. Matsumura teaches a method of processing a substrate by
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`changing from a first temperature to a second temperature within a preselected
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`time interval, also in the same reactor. See, e.g., Inst. Dec., 23 (“Therefore, the
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`control system of Matsumura effects temperature change to a second substrate
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`temperature with a substrate temperature control circuit within a preselected time .
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`. . and in accordance with a ‘predetermined recipe’ that has a ‘time-temperature
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`relationship.’”). Furthermore, Matsumura explicitly teaches a POSA that the
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`Matsumura invention can be applied to etching processes. Ex. 1003, 10:5-7. (The
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`present invention “can also be applied to any of the ion implantation, CVD, etching
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`and ashing processes.”).
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`Thomas, which discloses a stack of layers to be plasma etched in two
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`different chambers at two different temperatures, is substitutable with the Tegal
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`process as it can benefit from the increased throughput of Tegal. Ex. 1005, 3:57-68
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`and Ex. 1010, ¶ 65. Thomas’ stack of layers includes two silicon-containing
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`layers, specifically a silicide layer and a polysilicon layer, as required by claim 56.
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`Ex. 1005, 3:33-47. Wang ‘485 increases processing temperatures to above 49°C
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`during plasma etching of silicides and polysilicon structures, as further required by
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`claim 56, in order to increase etch rate or throughput. Ex. 1006, 5:7-15, 6:1-5, Fig.
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`21. In order to better control temperature during process temperature changes,
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`Narita provides two temperature sensors used in a control system for plasma
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`etching. Ex. 1004, 4:4-10, 5:30-31, Figs. 1, 4.
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`1.
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`The Petition Shows that the Prior Art Teaches All of the
`Limitations of Independent Claim 56
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`The petition shows that the Ground 1 combination of Tegal, Matsumura,
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`Narita, Thomas and Wang ‘485 teaches all of the limitations of claim 56. See Pet.,
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`12-23. The petition also shows that the Ground 4 combination of Tegal,
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`Matsumura, Narita, Wang ‘391, Thomas and Wang ‘485 teaches all of the
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`limitations of claim 56. See Pet., 48-54. Flamm does not dispute this. Flamm also
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`does not dispute the opinion of Dr. Cecchi that the Ground 1 and Ground 4
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`combinations teach all of the limitations of claim 56.
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`Instead, Flamm argues that the petition has cited no single prior art reference
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`that teaches the entirety of the following limitation in claim 56:
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`wherein the substrate holder is heated to a temperature operable to
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`maintain at least one of the selected first and the selected second
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`substrate temperatures above 49°C., and the substrate temperature is
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`changed from the first substrate temperature to the second substrate
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`temperature with a control circuit operable to effectuate the changing
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`within a preselected time period that is less than the overall process time
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`associated with the etching the first silicon-containing layer and the
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`second silicon-containing layer. POR, 2.
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`But Flamm ignores that the combination of Tegal, Matsumura, Narita, Thomas-
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`and Wang ‘485 teaches the entirety of these limitations. See Pet., 19-23 and 48-
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`51. Indeed, Matsumura, standing on its own, teaches the entirety of these
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`limitations. See Pet., 19-23 and 51.
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`Matsumura teaches heating to and maintaining at “a first substrate
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`temperature,” as recited by claim 56. For example, Figure 9 shows a first substrate
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`temperature of 90°C, which is above 49°C. Ex. 1003, Fig. 9. Matsumura teaches
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`that the “substrate temperature is changed from the selected first substrate
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`temperature to the selected second substrate temperature,” as recited by claim 56.
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`Figure 9 shows heating to and maintaining at a second substrate temperature of
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`140°C, which is also above 49°C. Id. And Matsumura teaches that the control
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`system of Matsumura effects temperature changes during the process as required
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`by claim 56 and in accordance with a “predetermined recipe” that has a “time-
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`temperature relationship.” See, e.g., Ex.1003, 3:1-7, 6:36-37. See Inst. Dec., 20.
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`Finally, Flamm does not dispute that the petition shows that Matsumura teaches a
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`preselected time period that is less than the overall process time. See Pet., 20-21
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`(“Figure 8 shows a 120 second long recipe with a temperature change from 20°C
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`to 120°C within the first 60 seconds of the process.”). See also Pet., 23 ([56.g]
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`relying on Figures 8 and 9). Flamm also does not dispute the opinion of Dr. Cecchi
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`that Matsumura teaches this limitation. See Ex. 1010, ¶¶ 74-75.
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`These teachings are confirmed by the Board’s finding that:
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`Figure 9 depicts a “recipe” with a “thermal history curve” showing
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`temperature as a function of time. Id. at 4:42–43. At a given time (or
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`pulse), the control system measures the substrate holder temperature
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`with thermal sensor 25, compares thermal sensor 25’s measurement to
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`that of the recipe shown in Figure 9, and either (1) sends a signal (SM)
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`to power supply circuit 19 to heat the substrate (wafer W), (2) sends a
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`signal (SC) to cooling system 23 to cool the substrate (jacket 22 under
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`stage 12 exchanges heat with thin film 14), or (3) sends no signal and
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`waits for the next measurement time. Id. at 5:52–6:32, Figs. 5A and
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`5B.
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`Inst. Dec., 15.
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`And as disclosed in Matsumura, this temperature change takes place within a
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`preselected time period. Matsumura expressly teaches that the heating speed at a
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`second step between P13 and P15 in Figure 9 is 150° C per minute. Ex. 1003,
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`8:64-65. Moreover, Matsumura expressly teaches that the second step between
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`P13 and P15, where the temperature change from 90°C to 140°C, is a preselected
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`time interval of 20 seconds. Ex. 1003, Fig. 9 (showing 20 second time interval
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`between P13 and P15). Finally, Matsumura teaches that it can “be applied to any .
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`. . etching . . . processes.” Ex. 1003, 10:3-7.
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`Matsumura may also be combined with Tegal, which expressly discloses
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`etching at a selected first temperature and then etching at a selected second
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`temperature. Specifically, Tegal teaches that the “substrate temperature is changed
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`from the selected first substrate temperature to the selected second substrate
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`temperature with a control circuit,” as recited by claim 56. Tegal teaches that “[a]
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`tapered profile is obtained in a plasma glow discharge by varying the temperature
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`of the wafer during the etch.” Ex. 1002, ¶ 57. Tegal teaches that “[a] reactive ion
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`etch (RIE) of the oxide was obtained by switching [from a fluid temperature of
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`80°C ] to a fluid temperature of 10°C-40°C.” Ex. 1002, 5:39-41. “The
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`temperature is varied by valves (23-26) which switch temperature controlled fluids
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`through the electrode (13) upon which the wafer (15) rests. . . .” Id. at ¶ 57. “At
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`some predetermined time, valves 23-26 are actuated, reducing the temperature of
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`the wafer to the temperature of the fluid in reservoir 21 . . . .” Id. at 5:12-14. In
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`sum, Tegal teaches the process of first etching at a selected first temperature and
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`then etching at a selected second temperature. Ex. 1010, ¶¶ 61-65.
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`Matsumura supplies what is arguably missing from Tegal: making a
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`temperature change “within a preselected time interval” and the details of the
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`electronic “control circuit.” With respect to the former, as shown above,
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`Matsumura teaches the “within a preselected time interval” as recited in claim 56.
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`With respect to the latter, Matsumura teaches an electronic control system 20,
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`including a central processing unit CPU 201. See, e.g., Ex. 1003, 5:58-60.
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`Matsumura teaches that control system 20 is responsive to a “temperature detecting
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`signal.” Id. at 5:60-63 (“The control system 20 serves to apply signals SM and SC
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`to the SSR 18 and a cooling system 23 responsive to inputted recipes and
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`temperature detecting signal.”); Ex. 1010, ¶ 69.
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`Finally, the petition shows that Wang ‘485 specifically teaches etching (and
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`not just processing) at a temperature above 49° C, wherein the substrate holder is
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`heated to a temperature operable to maintain at least one of the selected first and
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`the selected second substrate temperatures above 49° C. Pet., 16-17, 22. Wang
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`‘485 teaches that “FIGS. 20 and 21 illustrate the effect of hexode temperature on
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`polysilicon etch rate and on molybdenum silicide etch rate for etching gases which
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`are devoid of and contain a small volume percentage of additive gas, respectively
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`. . . .” Ex. 1006, 6:1-5. Figure 21 of Wang ‘485 shows that the etch rate of
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`molybdenum silicide increases from 750 to 1250 angstroms/minute over a
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`temperature range from 45°C to 80°C. See, e.g., Ex. 1006, 6:1-5 (“FIGS. 20 and
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`21 illustrate the effect of hexode temperature on polysilicon etch rate and on
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`molybdenum silicide etch rate . . . .”); Ex. 1006, Fig. 21.
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`The teachings described above are all confirmed by the testimony of Dr.
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`Cecchi. Dr. Cecchi opines that the combined teaching of Tegal and Matsumura
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`teaches changing the substrate temperature from the selected first substrate
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`temperature to the selected second substrate temperature with a control circuit
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`operable to effectuate the changing within a preselected time. Ex. 1010, ¶¶ 61-75.
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`Dr. Cecchi also opines that Wang ‘485 teaches etching at a temperature above 49°
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`C. Ex. 1006, 5:7-15, 6:1-5, Fig. 21. Thus, Dr. Cecchi opines that the combination
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`of Tegal, Matsumura, Narita, Thomas and Wang ‘485 teaches all of the claimed
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`method steps as recited in the ‘264 patent claim 56. Ex. 1010, ¶¶ 58-75. And Dr.
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`Cecchi opines that the combination of Tegal, Matsumura, Narita, Wang ‘391,
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`Thomas and Wang ‘485 teaches all of the limitations of claim 56. Ex. 1010,
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`¶¶ 127-133. Flamm does not dispute Dr. Cecchi’s opinion, or provide a
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`declaration from an expert to contradict Dr. Cecchi’s opinion.
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`2.
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`The Petition Did Not Impermissibly Split the Wherein
`Clause Limitation
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`Flamm argues that the petition impermissibly splits certain limitations into
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`three phrases as follows: 56.e (“wherein the substrate holder is heated to a
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`temperature operable to maintain at least one of the selected first and the selected
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`second substrate temperatures above 49° C”), 56.f (“the substrate temperature is
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`changed from the first substrate temperature to the second substrate temperature
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`with a control circuit”) and 56.g (“operable to effectuate the changing within a
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`preselected time period that is less than the overall process time associated with the
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`etching the first silicon-containing layer and the second silicon-containing layer”).
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`POR, 2. Although Flamm concedes that claim element 56.e fairly stands alone, he
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`argues that there is no justifiable basis to separate claim element 56.f from 56.g
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`because those two clauses are interdependent. Id. In particular, Flamm argues that
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`the petition fails to “specify where each element of the claim is found in the prior
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`art,” as required under 37 C.F.R. § 42.104(b)(4) because the petition is relying on
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`the combination of Tegal, Matsumura and Wang ‘485 to teach these limitations
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`rather than a single, individual reference. POR, 3.
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`Flamm’s argument should be rejected because it is contrary to the facts and
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`contrary to the law. First, as discussed above, the petition clearly shows that the
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`combination of Tegal, Matsumura, Narita, Thomas and Wang ‘485 as well as the
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`combination of Tegal, Matsumura, Narita, Wang ‘391, Thomas and Wang ‘485,
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`each teaches all the claim limitations of claim 56, including elements 56.f and 56.g.
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`This is supported by the declaration of Dr. Cecchi. And Flamm does not submit
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`any expert testimony to contradict the opinions of Dr. Cecchi.
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`Second, Flamm’s argument impermissibly treats the teachings of Tegal,
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`Matsumura and Wang ‘485, individually and fails to address the combined general
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`teachings and inferences of the references that would have been drawn by a POSA.
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`POR, 4. The Board correctly rejected Flamm’s argument that the petition
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`improperly segments the elements of claim 56. Inst. Dec., 21-22. “[T]he Petition
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`does not rely upon the text of lines 1 to 5 in column 6 of Wang ‘485 alone, and
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`Patent Owner does not dispute that Figure 21 indicates increased etch rate over a
`
`temperature range of 45°C to 80°C.” Inst. Dec., 21. “Regarding Matsumura, the
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`predetermined recipes that depend upon a time and temperature relationship for the
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`heat-processing of semiconductor devices consequently preselect the time and
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`temperature conditions during which processing is conducted.” Id. at 21-22 (citing
`
`Pet. 20 (citing Ex. 1003, 1-7, 6:36-37, Ex. 1010 ¶ 73); Ex. 1010 ¶ 74). The Board
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`correctly found that the Petition sufficiently shows how independent claim 56
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`would have been obvious in view of the combination of Tegal, Matsumura, Narita,
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`Thomas and Wang ‘485. Inst. Dec., 22.
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`
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`Third, Flamm now argues that the Board has promulgated a new legal rule
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`that prohibits splitting the claim limitations. See POR, 2-3 (“The word “within”
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`renders claim elements [56.f] and [56,g] ‘interdependent,’ resulting in another
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`violation of the Board’s rule.”). The new Flamm rule would narrowly require that
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`either Wang ‘485, Tegal, or Matsumura, standing alone, teach claim limitations
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`56.f and 56.g. Such a rule would result in a failure to consider the collective
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`teachings of Wang ‘485, Tegal and Matsumura from the perspective of one of
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`ordinary skill in the art and would be contrary to case law.
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`Petitioner respectfully points out that the Board did not promulgate any such
`
`a rule. Rather the Board follows Supreme Court and Federal Circuit precedent in
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`determining obviousness. See KSR, 550 U.S. at 420 (“[F]amiliar items may have
`
`obvious uses beyond their primary purposes, and in many cases a person of
`
`ordinary skill will be able to fit the teachings of multiple patents together like
`
`pieces of a puzzle.”) (emphasis added); MCM PORTFOLIO LLC v. Hewlett-
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`Packard Co., 812 F. 3d 1294 (Fed. Cir. 2015) (“[T]he test is what the combined
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`teachings of the references would have suggested to those of ordinary skill in the
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`art.”) (citations omitted).
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`
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`Flamm argues that the petition fails to meet its burden of proof because it
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`purportedly violates the “all elements rule.” Flamm’s interpretation of this rule
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`would seem to require that that a single prior art reference either disclose or
`
`suggest all the limitations in a claim. Specifically, Flamm argues that the “fact is
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`that neither Matsumura (on which Lam relies for element [56.f]) and [56.g] nor
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`Tegal (on which Lam relies for element [56.f]) teaches the changing of substrate
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`temperature ‘within a preselected time period.’” See POR, 4. Flamm further
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`argues that Tegal has no preselected time for changing the temperature between the
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`two etches and Matsumura does not have two etches.
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`Flamm cites a number of cases that purportedly support his reading of the
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`“all elements rule”: In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995), CFMT, Inc.
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`v. Yieldup Int’l. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003), and KSR, 550 U.S. at
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`418. Id. But none of the cases cited by Flamm stand for the proposition that all
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`the claim limitations recited in a “wherein” clause are to be found in a single
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`reference. To the contrary, the Supreme Court reaffirmed that “[t]he analysis is
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`objective: ‘Under § 103, the scope and content of the prior art are to be
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`determined; differences between the prior art and the claims at issue are to be
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`ascertained; and the level of ordinary skill in the pertinent art resolved.’” KSR, 550
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`U.S. at 406 (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18
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`(1966)). The Court further pointed out “Graham provided an expansive and
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`flexible approach to the obviousness question . . . .” KSR, 550 U.S. at 401.
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`Flamm’s proposed rigid rule flies in the face of the KSR ruling and is unsupported
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`by the case law.
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`3.
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`Both Ground 1 and Ground 4 Combinations Utilize
`Matsumura’s Controller in the Tegal System to Etch Using
`the Process Taught by Thomas and Wang ‘485
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`Flamm next criticizes the Board’s decision to institute because the decision
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`relies on the teaching of Matsumura. See POR, 5-8. Flamm argues that
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`Matsumura is directed towards a process other than etching. See POR, 5.
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`However, Flamm ignores that the petition is relying on Matsumura’s explicit
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`suggestion to use the temperature control method and system disclosed therein
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`with etching processes, which would include the Tegal etching system and the
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`etching process taught by Thomas and Wang ‘485. Thus, the Board correctly
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`found:
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`Tegal further includes a control system for plasma etching
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`temperatures, but without details. Ex. 1002, 4:28-31. Matsumura
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`provides in detail a temperature control system for use in a plasma
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`etching process, where the control system has the flexibility of being
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`responsive to “inputted recipes and temperature detecting signal.”
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`Ex. 1003, 5:60-63. Therefore, the control system of Matsumura
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`effects temperature changes during the process as required by claim
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`56 and in accordance with a “predetermined recipe” that has a “time-
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`temperature relationship.” Id. at 3:1-7, 6:36-37. In order to better
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`control temperature during process temperature changes, Narita
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`provides two temperature sensors used in a control system for plasma
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`etching. Ex. 1004, 4:4-10, 5:30-31, Figs. 1, 4.
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`Inst. Dec at 20.
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`Dr. Cecchi’s testimony confirms these findings. In particular, Dr. Cecchi
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`opines that a POSA would use Matsumura’s controller to control the change from
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`the first temperature to a second temperature within a preselected time interval for
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`the etch process. See Ex. 1010, ¶¶ 66-75, 81-88. Dr. Cecchi opines that it is well
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`within the skill of a POSA using Matsumura’s teachings to determine a
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`“predetermined recipe” that has a “time-temperature relationship” for the etch
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`process. Ex. 1018, ¶ 54. Flamm has not submitted any expert testimony (as
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`opposed to attorney argument) to the contrary.
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`Instead, Flamm in response argues that the petition has not provided any
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`explanation of how one could use the Matsumura recipes in an etching process.
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`POR, 7. Flamm thus attempts to limit Matsumura solely to the exemplar HMDS
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`baking process recipe. But the disclosure of Matsumura is much broader than this
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`exemplar process. Neither the title of the invention, nor the abstract, nor the field
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`of the invention, nor the summary of the invention, nor the claims mention H
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