By: Christopher Frerking (chris@ntknet.com)
`
`Reg. No. 42,557
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTEL CORPORATION, GLOBALFOUNDRIES U.S., INC.,
`
`MICRON TECHNOLOGY, INC., AND
`
`SAMSUNG ELECTRONICS COMPANY, LTD.,
`
`Petitioners
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`
`CASE IPR2017-02791
`U.S. Patent No. RE40,264 E
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.107
`Claims 13-26 & 64-65
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Samsung Electronics Company, Ltd. Was joined as a party to this proceeding via
`a Motion for Joinder in IPR2017-01749
`
`
`
`Reg. No. 42,557
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTEL CORPORATION, GLOBALFOUNDRIES U.S., INC.,
`
`MICRON TECHNOLOGY, INC., AND
`
`SAMSUNG ELECTRONICS COMPANY, LTD.,
`
`Petitioners
`
`v.
`
`DANIEL L. FLAMM,
`
`Patent Owner
`
`CASE IPR2017-02791
`U.S. Patent No. RE40,264 E
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.107
`Claims 13-26 & 64-65
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Samsung Electronics Company, Ltd. Was joined as a party to this proceeding via
`a Motion for Joinder in IPR2017-01749
`
`
`
`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00279
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`
`TABLE OF CONTENTS ...................................................................................... ii
`
`TABLE OF AUTHORITIES ................................................................................ iii
`I.
`Introduction ........................................................................................... 1
`
`II. Muller, Matsumura, Anderson, and Hinman Fail to Teach the Elements
`of Claim 13 in the Invention .................................................................. 2
`
`a. Anderson Fails to Teach the “thermal mass” of the substrate holder is
`“selected” .............................................................................................. 4
`
`b. Neither Anderson Nor Hinman teach the “thermal mass”… is selected
`for “a predetermined temperature change with a specific interval of time
`during process” ..................................................................................... 5
`
`c. Rebuttal to Board’s Analysis ................................................................ 8
`
`
`d. Anderson and Hinman Lack Key Elements ......................................... 11
`
`
`e. Hinman Not Analogous Art ................................................................. 11
`
`
`f. Non-Obvious to Combine Hinman and Anderson ............................... 15
`
`(a) Hinman is not the “Same Field of Endeavor” as Claim 13 ....... 16
`
`(b) Hinman is not “reasonably pertinent to the problem faced by the
`inventor” ..................................................................................... 17
`
`g. Non-Obvious to Combine Hinman and Anderson ............................... 19
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`Inter Partes Review of U.S. Patent No. RE40,264
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`III. Muller, Matsumura, Anderson, Hinman and Wright Fail to Teach Claims
`19 and 20 ............................................................................................... 20
`
`
`IV. Muller, Matsumura, Anderson, Hinman, and Kikuchi Fail to Tach Claim
`17 ........................................................................................................... 23
`
`
`V. Muller, Matsumura, Anderson, Hinman, and Moslehi Fail to Teach
`Claims 24-26 ......................................................................................... 24
`
`
`VI. Kadomura, Matsumura, Anderson, and Hinman Fail to Teach Claims 14-
`16, 18-23, 64 and 65 .............................................................................. 24
`
`
`VII. Kadomura, Matsumura, Anderson, Hinman, and Kikuchi Fail to Teach
`Claim 17 ................................................................................................ 25
`
`
`VIII. Kadomura, Matsumura, Anderson, Hinman, and Moslehi Fail to Teach
`Claim 24-26 ........................................................................................... 25
`
`
`IX. Kadomura, Matsumura, Anderson, Hinman, and Muller Fail to Teach
`Claim 15 ................................................................................................ 26
`
`
`X. Claim 33 is Not Invalid ......................................................................... 27
`
`XI. The Dependent Claims are Not Invalid ................................................. 27
`
`XII. Conclusion ............................................................................................. 28
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`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00279
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`TABLE OF AUTHORITIES
`Cases Page(s)
`
`Hartness Int’l Inc. v. Simplimatic Eng. Co., 819 F.2d 1100
`(Fed. Cir. 1987) ................................................................................................. 27
`
`In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004) ...................................... 17
`
`In re Clay, 966 F.2d 656 (Fed. Cir. 1992) ........................................................ 17
`
`In Re Fine 837 F.2d 1071 (Fed. Cir. 1988) ....................................................... 28
`
`In re Icon Health and Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007) ............... 17
`
`Kimberly Clark Corp. v. Johnson & Johnson, 745 F.2d 1437
`(Fed. Cir. 1984) ................................................................................................. 27
`
`Lam Research Corp. v. Daniel L. Flamm, IPR2015-01759 Patent
`Re 40,264 E ...................................................................................................... 1,4
`
`Samsung Elecs. Co., Ltd. v. Daniel L. Flamm, IPR2016-01510 .................... 1,11
`
`Statutes Page(s)
`
`37 C.F.R. § 42.107 .............................................................................................. 1
`
`37 C.F.R. § 42.108 .............................................................................................. 1
`
`35 U.S.C. § 314(a) .............................................................................................. 1
`
`MPEP § 2141.01(a) ........................................................................................... 16
`
`MPEP § 2143.03 ............................................................................................... 28
`
`
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`iii
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`Inter Partes Review of U.S. Patent No. RE40,264
`IPR2017-00279
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`Daniel L. Flamm, Sc.D., the sole inventor and owner of the U.S. Patent No.
`
`RE40,264 (“the ‘264 patent”), through his counsel, submits this response pursuant
`
`to 37 C.F.R. § 42.107 and asks that the Patent Trial and Appeals Board confirm the
`
`patentability of independent claims 13 and 64 and all their dependent claims
`
`I.
`
`Introduction
`
`Patent Owner has carefully reviewed the Decision to Institution of Inter
`
`Partes Review under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108 by the Petitioners
`
`(the Decision). As previously noted, this is not the first challenge to the validity of
`
`the ‘264 patent through inter partes review. Of the petitions, this one is the fourth
`
`petition directed toward claims 13-26, 64-65 of the ‘264 patent. The Board
`
`previously denied institution in the prior petitions. (Lam Research Corp. v. Flamm,
`
`IPR2015-01759, Paper No. 7 (Feb. 24, 2016); Lam Research Corp. v. Flamm,
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`IPR2016-00468, Paper No. 6 (June 30, 2016); and Samsung Electronics Co., Ltd. v.
`
`Flamm, IPR2016-01510, Paper No. 6 (Feb. 14, 2017).) Each was denied for failure
`
`to present prior art teaching the final element of claim 13. The Board, in ruling on
`
`the Samsung petition, stated:
`
`Putting aside that this is the third challenge to claims 13-26, 64, and 65 of
`
`the ’264 patent, albeit by a different petitioner, the instant Petition suffers from the
`
`same thematic problem present in the previous petitions filed by Lam, because the
`
`proffered combination does not account properly for “the thermal mass of the
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`substrate holder is selected for a predetermined temperature change within a specific
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`interval of time during processing,” as recited in independent claim 13.
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`(Samsung, IPR2016-01510, Paper No. 6 at 19.) The instant petition suffers
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`similar flaws and, for that reason, Patent Owner requests that the Board support the
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`validity of the claims, and consider Patent Owner’s arguments now directed to the
`
`dependent claims for their validity.
`
`II. Muller, Matsumura, Anderson, and Hinman Fail to Teach the Elements
`of Claim 13 in the Invention
`
`
`Patent Owner reviewed the Decision by the Board and arguments presented
`
`by Petitioners, and would like the Board to reconsider its Decision. Patent Owner
`
`has also supported the arguments below by the Declaration by Daniel L. Flamm. It
`
`would not have been obvious to combine Muller, Matsumura, Anderson, and
`
`Hinman to teach the claimed invention of the ‘264 patent.
`
`Claim 13 has been reproduced below.
`
`“13. A method of etching a substrate in the manufacture of a
`device, the method comprising:
`placing a substrate having a film thereon on a substrate holder in a
`chamber, the substrate holder having a selected thermal mass;
`setting the substrate holder to a selected first substrate holder
`temperature with a heat transfer device;
`etching a first portion of the film while the substrate holder is at
`the selected first substrate holder temperature;
`with the heat transfer device, changing the substrate holder
`temperature from the selected first substrate holder temperature to
`a selected second substrate holder temperature; and
`etching a second portion of the film while the substrate holder is at
`2
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`the selected second substrate holder temperature;
`wherein the thermal mass of the substrate holder is selected for a
`predetermined temperature change within a specific interval of
`time during processing; the predetermined temperature change
`comprises the change from the selected first substrate holder
`temperature to the selected second substrate holder temperature,
`and the specified time interval comprises the time for changing
`from the selected first substrate holder temperature to the selected
`second substrate holder temperature.”
`
`Ex. 1001, 20:50–21:10.
`
`A key element of the ‘264 patent that is not taught by the cited art is recited
`
`as follows:
`
`“wherein the thermal mass of the substrate holder is selected for a
`predetermined temperature change within a specific interval of
`time during processing; the predetermined temperature change
`comprises the change from the selected first substrate holder
`temperature to the selected second substrate holder temperature,
`and the specified time interval comprises the time for changing
`from the selected first substrate holder temperature to the selected
`second substrate holder temperature.”
`
`Having no art that teaches that element of claim 13, Petitioners employ a
`
`
`
`
`divide-and-conquer piecemeal approach impermissibly dividing that element into
`
`three separate sub-elements:
`
`“wherein the thermal mass of the substrate holder is selected
`for a predetermined temperature change within a specific interval
`of time during processing;
`the predetermined temperature change comprises the change from
`the selected first substrate holder temperature to the selected
`second substrate holder temperature, and the specified time
`interval comprises the time for changing from the selected first
`substrate holder temperature to the selected second substrate
`holder temperature.”
`
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`Petitioners’ strategy is transparent, and the Board should not be persuaded
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`
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`by this attempt to invalidate claim 13. Petitioners’ piecemeal approach patches
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`multiple prior art references together in an attempt to teach a single claim element
`
`of claim 13.
`
`a. It is Impermissible to Parse Interdependent Phrases in a Claim
`
`Element
`
`Petitioners’ parsing of “wherein the thermal mass of the substrate holder is
`
`selected” and “for a predetermined temperature change within a specific interval of
`
`time during processing” is impermissible. The exact same issue, on the exact same
`
`patent claim and some of the exact same claim language arose in an earlier IPR.
`
`Lam Research Corp. v. Daniel L. Flamm, IPR2015-01759 Patent Re 40,264 E
`
`There, the Board denied institution, beginning its “Analysis” by presenting Dr.
`
`Flamm’s position (Id.16, emphasis in the decision):
`
`“Flamm raises several arguments in response. First, Flamm argues
`that Lam improperly divides up the claim elements, reducing
`wherein the thermal mass of the substrate holder is selected for a
`predetermined temperature change within a specific interval of
`time during processing into three elements: 1) wherein the
`thermal mass of the substrate holder is selected; 2) for a
`predetermined temperature change; and 3) within a specific
`interval of time during processing. Prelim. Resp. 9–10. (p. 16)”
`
`
`The Board then ruled (Id. 17, emphasis added):
`
`
`At the outset, we agree with Flamm that Lam’s analysis
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`improperly breaks the elements of claim 13 into small phrases,
`and then attempts to match disclosures from the prior art to those
`phrases taken out of context. In particular, we note that claim 13
`requires that the thermal mass of the substrate holder is selected
`for a predetermined temperature change within a specific interval
`of time during processing. The claim language requires that these
`phrases are interdependent, and cannot be parsed into separate
`elements met individually. In other words, the thermal mass must
`be selected in order to undergo a predetermined temperature
`change within a specific interval of time (for example, a change of
`10°C per minute). Lam’s analysis is deficient, to the extent it
`separates predetermined temperature change from specific
`interval of time and analyzes each separately.
`
`Petitioners’ parsing the language “for a predetermined temperature
`
`
`
`
`change…” from the preceding language is precisely what the Lam Board found
`
`deficient.
`
`b. Anderson Fails to Teach the “thermal mass” of the substrate holder
`is “selected”
`
`Anderson fails to teach that “the thermal mass of the substrate holder is
`
`
`
`selected.” and does not even mention a thermal mass of any substrate holder (Ex.
`
`2001 ¶8) At best, the term “thermal mass” in Anderson means something
`
`completely different from that in the ‘264 patent. (Id ¶8). Petitioners completely
`
`misrepresent facts and the literal reading of Anderson. (Id ¶8). Anderson’s abstract
`
`cited for thermal mass at [Ex. 1111, 25:1-6] teaches nothing about any thermal
`
`mass of a substrate holder as required by claim 13 (Ex. 2001 ¶8). The abstract
`
`does no more than mention the use of a hollow cavity to utilize phase change
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`(latent heat of vaporization) to extract heat from a wafer (Id ¶8). Latent heat is not
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`thermal mass (Id ¶8). The same is true of Anderson col. 2:60-65 that discloses
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`nothing about any thermal mass (Id ¶8). The only place Anderson even mentions
`
`the term “thermal mass” is in the single sentence concerning a heater that is placed
`
`in the chuck, where he states: “the preferred embodiment is capable of heating the
`
`chuck 11 from room temperature to an operating temperature of 100 to 500 C. in a
`
`matter of seconds [before the plasma is switched on], due to the low thermal mass
`
`heater employed.” (Id ¶8) The low thermal mass heater of Anderson is not the
`
`same as the claimed thermal mass of the substrate holder (Id ¶8).
`
`Patent Owner also notes Anderson’s objective is to maintain the operating
`
`temperature (not change any temperature) and it uses the latent heat of
`
`vaporization of the liquid [Ex. 1111 6:28-31] to achieve this objective. (Id ¶8)
`
`In other words, Anderson teaches a thermal mass heater can be useful to
`
`heat a wafer prior to any processing, but that it is not sufficient to maintain the
`
`wafer temperature when performing processing, never mind changing a wafer
`
`temperature during processing as required by the ‘264 patent. (Id ¶8)
`
`The underlying purpose of Anderson is to effectuate an extreme temperature
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`change before doing any processing, rather than providing tight control while
`
`changing wafer temperature during processing as is required by the ‘264 patent. (Id
`
`¶8) The purpose of low thermal mass for a heater in Anderson was to effectuate the
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`extreme temperature changes very rapidly at a time when tight control is
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`unnecessary. (Id ¶8) During processing, Anderson teaches to use a liquid spray for
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`controlling heat removal to maintain a single temperature.
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`In view of the above analysis, it was not known to select a thermal mass for
`
`a substrate holder in the manner claimed, and Anderson fails to teach this feature.
`
`(Id ¶8) A PHOSITA would not consider it known to select a thermal mass for a
`
`substrate holder, and Petitioners’ argument that the math used to calculate the
`
`thermal mass of an object was well known is meaningless in deciding what
`
`Anderson discloses. (Id ¶8)
`
`A PHOSITA would never have combined Anderson and Muller to realize all
`
`of the limitations of claim 13. (Id ¶8) In particular, a PHOSITA would not have put
`
`a substrate holder with the selected thermal mass [heater] of Anderson in the
`
`Muller device (Id ¶8) because Anderson has nothing to do with etching a substrate
`
`at two temperatures during processing, as taught by Muller, and because the Muller
`
`chuck requires cooling, not heating. Muller’s process depended essentially on
`
`having a cathode operable to receive heat from the plasma while being liquid
`
`cooled by a liquid at a predetermined temperature .[Ex. 1002 Col. 2, 2-41] (Id ¶8)
`To the contrary, the Anderson system used a 2-phase gas-liquid spray
`
`without any liquid temperature control (“ordinary water (preferably distilled water)
`
`is sprayed” [Ex. 1008 col. 7, 67-col. 8,1] because Anderson’s method of heat
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`transfer was to remove substrate heat through a phase change (the latent heat of
`
`vaporization) [Ex. 1008 col. 6, 32-34], which is inconsistent with Muller’s
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`methods of temperature control based on conducting heat to a cathode cooled by a
`
`predetermined liquid coolant temperature (Ex. 1002 col. 4, 45-46). What
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`Anderson addressed are the problems associated with quickly making large
`
`temperature changes in a chuck (by electrical heating or phase change cooling)
`
`before the start of a process performed while maintaining a single constant
`
`substrate temperature. (Id ¶8) (Ex. 1011 2:66-3:1-7, 3:30-33, also see 6:19-31) By
`
`reducing the “dead” time necessary to change temperature, overall throughput
`
`increased. (Id ¶8) Accordingly, a PHOSITA would not and could not combine
`
`Anderson with Muller’s methods based on a cathode temperature being maintained
`
`by a liquid at a predetermined temperature.(Id ¶8)
`
`c. Neither Anderson Nor Hinman Teach the “thermal mass”… is
`selected for “a predetermined temperature change with a specific
`interval of time during process”
`
`Claim 13 also requires that the thermal mass of the substrate holder be
`
`
`
`selected for “a predetermined temperature change with a specific interval of time
`
`during processing.” (Ex. 2001, at ¶9) Anderson fails to teach this element, and
`
`even suggests away from this element by only addressing the problems of initially
`
`heating or cooling a chuck before beginning a single constant temperature process,
`
`which stands in stark contrast to claim 13. (Id.9).
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`To overcome the failure of Anderson, Petitioners attempt to rely on the
`
`remote art of Hinman to disclose this element. (Id.9) They argue that Hinman
`
`describes “how to preselect the thermal mass of a material in a chemical analyzer’s
`
`‘temperature control system’ to effectuate predetermined temperature changes
`
`within a specific interval.” Pet. 33, 40–41. (Id.9)
`
`Hinman, however, is irrelevant. (Id.9) It fails to teach that the “thermal mass
`
`of the substrate holder is selected for a predetermined temperature change within a
`
`specific interval of time during processing.” (Id.9) It would not have been obvious
`
`in view of Anderson and Hinman to select the precise thermal mass of the substrate
`
`holder used in Muller, to achieve a predetermined temperature change of a specific
`
`interval of time. (Id.9) A PHOSITA would not have had reason to use Hinman’s
`
`teachings to calculate the precise thermal mass of the substrate holder taught by
`
`Anderson, or to address the goal of throughput in semiconductor wafer processing
`
`as respectively done by Muller and Anderson. (Id.9)
`
`Not only is Hinman non-analogous art having nothing to do with
`
`semiconductor processing, but it is devoid of any relevance. (Id.9) A PHOSITA
`
`would find that Hinman has nothing at all in common with the ‘264 patent. (Id.9).
`
`Respondent is at a loss to know where even to begin to enumerate the differences
`
`and highlight its remoteness. (Id.9)
`
`Hinman concerns heating a small cuvette of liquid in a wet-chemical
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`analysis instrument. (Id.9) Hinman mentions (uses the term) “thermal mass” for a
`
`preheated (e.g. a temperature reservoir) ring that is used to raise the temperature of
`
`liquid in the small cuvette using heat energy already stored in the ring (e.g. the
`
`thermal mass is selected for the ring to act as a thermal reservoir). (Id.9) The
`
`objective in Hinman is for the ring to be able to heat the cuvette while its own
`
`temperature stays sufficiently constant. (Id.9) Hinman accomplishes this by having
`
`the thermal mass be about 20 times that of the liquid in the cuvette (stated in
`
`another way: bringing about a 1degree temperature change in the liquid only
`
`changes the ring temperature by about 1/20 degree). (Id.9) Hinman selects a
`
`thermal mass of the ring that can prevent its own temperature from changing
`
`significantly, yet be able to change the temperature of the liquid before processing.
`
`(Id.9) The thermal mass of the ring is different from the thermal mass of the
`
`substrate holder in the ‘264 patent. (Id.9) Hinman also fails to teach the objective
`
`of changing the temperature of anything during processing. (Id.9)
`
`The ‘264 patent teaches to select a thermal mass for the opposite purpose,
`
`“the thermal mass of the substrate holder is selected for a predetermined
`
`temperature change within a specific interval of time during processing.” (Id.9)
`
`This is completely inconsistent with the Hinman ring that is to indirectly heat and
`
`maintain a small amount of liquid sample at a single constant temperature for
`
`processing (the reaction temperature). (Id.9) Accordingly, Hinman utterly fails to
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`teach the aforementioned element of claim 13. (Id.9)
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`Based upon the arguments associated with claim 13, dependent claims 14–
`
`16, 18–19, 21–23, and 64–65 are patentable and non-obvious over the combined
`
`disclosures of Muller, Matsumura, Anderson, and Hinman.
`
`d.
`
`Rebuttal to Board’s Analysis
`
`Patent Owner would like the Board to reconsider its Decision, and support
`
`the validity of claim 13 in the ‘264 patent.
`
`Patent Owner would like to comment on the Board’s Decision to support the
`
`validity of the ‘264 patent claims.
`
`e.
`
`Anderson and Hinman Lack Key Elements
`
`Patent Owner agrees that Anderson does not teach at least “thermal mass
`
`selected for a predetermined temperature change with a specific interval of time…”
`
`limitation. (Ex. 2001, ¶10) See Samsung Elecs. Co., Ltd. v. Daniel L. Flamm,
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`IPR2016-01510, slip. op. at 17–20 (PTAB Feb, 14, 2017) (Paper 6). Patent
`
`Owner also acknowledges that Hinman was cited in an attempt to overcome the
`
`failure of Anderson’s disclosure. Hinman suffers from other shortcomings, as
`
`discussed, and further emphasized below. (Id. ¶10)
`
`Patent Owner asserts that Anderson does not disclose selecting a thermal
`
`mass of a substrate holder, contending that Anderson merely discloses that its
`
`heater has a low thermal mass, as discussed. (Id.¶10) See also, Prelim. Resp. 3–4.
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`It is also not reasonable to conclude, as Petitioners suggest, that heating layer 15 is
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`part of the substrate holder of Anderson such that modifying the thermal mass of
`
`the heater substantially affects the overall thermal mass of the substrate holder.
`
`(Id.¶10)
`
`As previously noted, and further emphasized again, Petitioners simply
`
`misrepresent the facts. (Id.¶10) Anderson’s abstract cited for thermal mass at [p.25
`
`1-6] teaches nothing about any thermal mass of the substrate holder. (Id.¶10) It
`
`does no more than mention a hollow cavity to in which to use phase change (latent
`
`heat of vaporization) to remove heat from a wafer. (Id.¶10) Latent heat is not
`
`thermal mass. (Id.¶10) Likewise, Anderson col. 2:60-65 discloses nothing about
`
`any thermal mass. (Id.¶10) Only once, in the single sentence concerning a heater
`
`that is placed in the chuck, does Anderson mention the term “thermal mass” in
`
`stating “the preferred embodiment is capable of heating the chuck 11 from room
`
`temperature to an operating temperature of 100 to 500 C. in a matter of seconds
`
`[before the plasma is switched on], due to the low thermal mass heater
`
`employed.” (Id.¶10) Furthermore, what Anderson relies on to maintain the
`
`operating temperature (not change any temperature) is the latent heat of
`
`vaporization of the liquid [Col. 6, 28-31]. (Id.¶10) In other words, Anderson
`
`teaches a low thermal mass heater can be useful to bring a wafer to its operating
`
`temperature as quickly as possible prior to any processing [Col. 2, 60-65], but that
`12
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`IPR2017-00279
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`it is not sufficient to maintain the wafer temperature in controlled manner while
`
`processing, never mind changing a wafer temperature during processing as
`
`claimed by the ‘264. (Id.¶10) The objective of Anderson was to effectuate an
`
`extreme temperature change before any processing. (Id.¶10) Anderson discloses
`
`nothing about tight control while changing wafer temperature to improve
`
`selectively during processing. (Id.¶10) Furthermore, the purpose of the low thermal
`
`mass heater in Anderson was to effectuate extreme temperature changes very
`
`rapidly before processing. (Id.¶10) Anderson teaches to use a liquid spray for
`
`controlling heat removal to maintain a single constant processing temperature.
`
`(Id.¶10)
`
`Patent Owner also disagrees with the Board that the ’264 patent specification
`
`only describes selecting the thermal mass of a portion of the substrate holder,
`
`namely the upper surface of the substrate holder. (Id.¶10) See Ex. 1001, 15:40–48
`
`(“the upper surface [of the substrate holder] is made using a low thermal mass,
`
`high conductivity material”). To the contrary, the ‘264 patent specifically teaches
`
`“the use of a workpiece support which has a low thermal mass in comparison to the
`
`heat transfer means” (Id. 2:37-41) and “the selected thermal mass of the substrate
`
`holder allows for a change for a first temperature to a second temperature within a
`
`characteristic time period to process a film.” (Id. 2:51-56) (Id.¶10) The passage in
`
`the ‘264 specification noted by the Board, is a teaching about providing the upper
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`surface of the substrate holder with “desirable heat transfer characteristics.”
`
`(Id.¶10) It discloses a specific embodiment where the upper surface is made using
`
`a material having a combination of low thermal mass and high [thermal]
`
`conductivity, such a diamond-like or diamond film (overlying a copper or copper
`like substrate). (Id.¶10) This teaching does not qualify or negate the selection of a
`
`thermal mass of the substrate holder “for a predetermined temperature change …
`
`during processing,” and the noted embodiment is no evidence to the contrary.
`
`(Id.¶10)
`
`Again, Anderson teaches nothing about this element. (Id.¶10) Anderson’s
`
`teaching is incompatible with the cited ‘264 passage because copper has a
`
`coefficient of thermal expansion (~16.5 µm/m-K) which is about 15-16 times
`
`greater than that of diamond (~1.1 µm/m-K), and therefore would be excluded by
`
`his requirement that the surface of the chuck 14 match the coefficient of expansion
`
`of the heater material (Id. 6:12-14). (Id.¶10) Accordingly, Anderson fails to teach
`
`that “the thermal mass of the substrate holder is selected….”(Id.¶10)
`
`Turning to Hinman, a PHOSHITA in the field of semiconductor processing
`
`would not have even considered Hinman. (Ex. 2001, ¶11) Furthermore, even
`
`assuming arguendo that he/she had, Hinman discloses nothing about the “thermal
`
`mass of the substrate holder is selected for a predetermined temperature change
`
`within a specific interval of time during processing.” (Id.¶11) Patent Owner also
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`disagrees with the Board that Hinman provides a more definite example of
`
`selecting a specific thermal mass, for example a 1 kg aluminum ring for the
`reasons already discussed and further emphasized below. (Id.¶11)
`
`As discussed, Hinman concerns heating a small cuvette of liquid in a wet-
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`chemical analysis instrument and mentions “thermal mass” for a preheated ring
`
`that is used to raise the temperature of liquid in the small cuvette using heat energy
`
`already in the ring. (Id.¶11) The objective in Hinman is for the ring to be able to
`
`heat the cuvette while its own temperature stays sufficiently constant. (Id.¶11)
`
`Hinman accomplishes this by having the thermal mass be about 20 times that of
`
`the liquid in the cuvette. Hinman selects a thermal mass of the ring that can
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`prevent its own temperature from changing, yet change the temperature of the
`
`liquid prior to any processing. (Id.¶11) The ring is no substrate holder and
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`thermal mass of the ring is different from the thermal mass of the substrate holder
`
`that changes temperature during processing in the ‘264 patent. (Id.¶11) In fact
`
`Hinman is also deficient because it fails to disclose changing the temperature of
`
`anything during processing, as required by the ‘264 patent. (Id.¶11)
`
`f.
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`
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`Hinman Not Analogous Art
`The courts and the Patent and Trademark Office apply a two-part test:
`[A] reference is analogous art to the claimed invention if: (1) the
`reference is from the same field of endeavor as the claimed invention
`(even if it addresses a different problem); or (2) the reference is
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`reasonably pertinent to the problem faced by the inventor (even if it is
`not in the same field of endeavor as the claimed invention).
`MPEP § 2141.01(a).
`(a) Hinman is not in the “Same Field of Endeavor” as
`Claim 13.
`The ‘264 patent, and specifically claim 13 thereof, pertain to semiconductor
`fabrication. The claim begins: “A method of etching a substrate in the manufacture
`of a device . . . .” (Ex. 1001 at 20:51-52.) Hinman, by contrast, pertains to, as it is
`entitled, a “Temperature Control Apparatus For A Centrifugal-Type Chemistry
`Analyzer.” (Ex. 1010 at 1.) The first paragraph of its specification further explains:
`More particularly, the present invention is directed to a temperature
`control system for controlling the temperature of small volumes of
`liquid undergoing analysis in a centrifugal-type chemistry analyzer.
`(Id. at 1:5-9.)
`Petitioners contend, without citing any pertinent law, that Hinman is
`“analogous art relating to the field of multi-temperature control in chemical
`processes.” (Pet. at 36) It is doubtful that anyone heard of this field prior to
`Petitioners’ conjuring of it. The law, which Petitioners studiously avoid, provides
`guidelines for determining what is and what is not analogous art. The Federal Circuit
`has held:
`This [field of endeavor] test for analogous art requires the PTO to
`determine
`the appropriate field of endeavor by reference
`to
`explanations of the invention's subject matter in the patent application,
`includ
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