Ex Parte Mitrovic et al

Board of Patent Appeals and Interferences

May 3, 2007

10359557 (B.P.A.I. May. 3, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREJ S. MITROVIC, ERIC J. STRANG, MURRAY D.
SIRKIS, BILL H. QUON, RICHARD PARSONS, and YUJI
TSUKAMOTO
____________

Appeal 2007-0030
Application 10/359,557
Technology Center 2100
____________

Decided: May 3, 2007
____________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and
JEAN R. HOMERE, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-11, 27, and 28. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2007-0030
Application 10/359,557

Appellants’ disclosed invention relates to a device and system for
generating and controlling a plasma formed in a capacitively coupled plasma
system having a plasma electrode and a bias electrode formed by a
workpiece support member. The plasma electrode has a unitary structure
with multiple regions defined by a plurality of RF power feed lines and the
RF power delivered to the feed lines.
We affirm.
Claim 1 is illustrative of the invention and it reads as follows:
1. An electrode apparatus for use in plasma processing, comprising:
a) a unitary electrode arranged within a plasma chamber;
b) a radio frequency (RF) power supply; and
c) a RF multiplexer electrically connected to said RF power
supply and to a plurality of locations on said unitary electrode
via a corresponding plurality of RF feed lines to establish a
plurality of electrode regions corresponding to said plurality of
RF feed lines, wherein power is capacitively coupled to the
plasma within the plasma chamber.

The Examiner relies on the following prior art references to show
unpatentability:
Ishii US 6,024,827 Feb. 15, 2000
Denholm US 6,101,971 Aug. 15, 2000
(filed Dec. 22, 1998)
Murata US 6,363,881 B2 Apr. 2, 2002
(filed Jan. 19, 1999)

Claims 1, 2, 4, 6, 7, 27, and 28 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Murata. Claims 3, 5, and 8-11 stand
rejected under 35 U.S.C. § 103(a). As evidence of obviousness, the
2
Appeal 2007-0030
Application 10/359,557

Examiner offers Murata in view of Denholm with respect to claims 3, 5, and
11, and Murata in view of Ishii with respect to claims 8-10.1
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Final Office action, Briefs, and Answer for the
respective details.
ISSUES
(i) Under 35 U.S.C § 102(e), does Murata have a disclosure which
anticipates the invention set forth in claims 1, 2, 4, 6, 7, 27, and 28?
Specifically, does Murata disclose a plasma processing apparatus including
an RF multiplexer, an RF power supply, and the capacitive coupling of
power to the plasma within a plasma chamber?
(ii) Under 35 U.S.C § 103(a), with respect to appealed claims 3, 5, and 8-
11, has the Examiner established a prima facie case of obviousness based on
Murata taken in separate combinations with the secondary references to
Denholm and Ishii?

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).

1 As indicated at page 3 of the Answer, the Examiner has withdrawn the 35
U.S.C. § 112, first paragraph, rejection of claims 1-11, 27, and 28.
3
Appeal 2007-0030
Application 10/359,557

In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation
of a patent claim requires a finding that the claim at issue “reads on” a prior
art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346,
51 USPQ2d 1943, 1945 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See
also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The Examiner can satisfy this burden by showing that some
objective teaching in the prior art or knowledge generally available to one of
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial
burden is met does the burden of coming forward with evidence or argument
shift to the Appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See
also Piasecki, 745 F.2d at 1472, 223 USPQ at 788. Thus, the Examiner
4
Appeal 2007-0030
Application 10/359,557

must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are
deemed to support the Examiner’s conclusion.

ANALYSIS
35 U.S.C. § 102(e) REJECTION
With respect to the 35 U.S.C. § 102(e) rejection of independent claims
1 and 4 based on the teachings of Murata, the Examiner indicates (Final
Office action 4-5) how the various limitations are read on the disclosure of
Murata. In particular, the Examiner directs attention to the portions of the
disclosure at columns 7-9 of Murata as well as the illustration in Murata’s
Figure 8.
In our view, the Examiner’s analysis is sufficiently reasonable that we
find that the Examiner has as least satisfied the burden of presenting a prima
facie case of anticipation. The burden is, therefore, upon Appellants to come
forward with evidence and/or arguments which persuasively rebut the
Examiner’s prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived [see 37 C.F.R.
§ 41.37(c)(1)(vii)].
Appellants’ response asserts that the Examiner has not shown how
each of the claimed features is present in the disclosure of Murata so as to
establish a prima facie case of anticipation. Appellants’ arguments focus on
the contention that, in contrast to the claimed invention, Murata has no
5
Appeal 2007-0030
Application 10/359,557

disclosure of the capacitive coupling of power to the plasma within the
plasma chamber. According to Appellants (Br. 7-8; Reply Br. 1-3), the
plasma apparatus described by Murata, instead of capacitive coupling,
utilizes inductive coupling of RF power to the plasma chamber with the
rungs of the ladder-shaped electrodes 32 being inductors.
After careful review of the Murata reference in light of the arguments
of record, however, we are in general agreement with the Examiner’s
position as stated in the Answer. Initially, we note that both the Examiner
(Answer 3) and Appellants (Br. 5) agree that the ordinarily skilled artisan
would recognize that a plasma reactor having two electrodes in parallel
would involve the capacitive coupling of power to the plasma within the
reactor. Such a prior art plasma reactor structure is discussed at column 2,
lines 8-49 of Murata and illustrated in Murata’s Figure 12. As described,
such a parallel plate arrangement includes a high frequency electrode 22 and
a parallel electrode in the form of a heater 23.
Our review of the disclosed invention of Murata, which includes the
use of a power distributor to uniformly distribute power to the plasma
electrodes, reveals that Murata in fact discloses exactly such a parallel
electrode arrangement as illustrated, for example, in Figure 8. While
Appellants are correct that the Murata reference discloses the power
distribution feature in the context of a plasma reactor system which uses a
ladder-shaped electrode 32, we do not find any support for Appellants’
conclusion that this necessarily means that power is inductively coupled,
rather than capacitively coupled, to the plasma within the reactor.
Appellants direct attention to column 1, line 20 of Murata which, in
their view (Br. 5; Reply Br. 2), establishes that a ladder electrode means a
6
Appeal 2007-0030
Application 10/359,557

ladder inductance electrode. We find, however that the cited passage from
Murata merely indicates that an example of a plasma system which uses a
ladder electrode includes a ladder antenna electrode and a ladder inductance
electrode. We find it particularly noteworthy that the description of the
power distribution feature in the “DETAILED DESCRIPTION OF THE
INVENTION” section of the Murata reference never mentions inductive
coupling, never identifies the ladder-shaped electrode 32 as an antenna or
inductance electrode, and never illustrates (e.g., Figure 8) the plasma device
structure as anything other than a parallel electrode arrangement.
With the above discussion in mind, we find no error in the Examiner’s
conclusion (Answer 3-5) that Murata discloses a plasma processing system
which includes the sectioned unitary electrode (adjacent a chamber upper
wall with a workpiece support adjacent a chamber lower wall), RF
multiplexer, and capacitive coupling as claimed. Our review of the language
of appealed independent claims 1 and 4 supports the Examiner’s position
since we simply find no language which defines any capacitive coupling
structure which would distinguish over that disclosed by Murata. In our
view, it is particularly relevant that the only portion of Appellants’
disclosure (Specification 4) which describes any capacitive coupling
arrangement discloses that such capacitive coupling structure includes two
electrodes, i.e., a plasma electrode and a bias electrode. The structure set
forth in independent claims 1 and 4, however, recites only a single electrode.
Further, we do not necessarily disagree with Appellants’ contention
(Reply Br. 2-3) that the mere presence of capacitors in the Figures 4 and 5
illustrations in Murata indicates that capacitive coupling is present, just as
the presence of coils in these same figures does not indicate that inductive
7
Appeal 2007-0030
Application 10/359,557

coupling is present. We find no evidence forthcoming from Appellants,
however, that supports the conclusion based on the discussion of electrode
aspect ratio (id. 2) that the rungs of the ladder in the ladder shaped electrode
in Murata are inductors or that inductive coupling, not capacitive coupling,
is taking place. The arguments of counsel cannot take the place of evidence
in the record. See In re Geisler, 116 F.3d 1465, 1471, 43 USPQ2d 1362,
1366 (Fed. Cir. 1997).
In view of the above discussion, since all of the claimed limitations
are present in the disclosure of Murata, the Examiner’s 35 U.S.C. § 102(e)
rejection of independent claims 1 and 4, as well as dependent claims 2, 6, 7,
27, and 28 not separately argued by Appellants, is sustained.

35 U.S.C. § 103(a) REJECTIONS
Appellants’ arguments (Br. 10; Reply Br. 3-4) in response to the
Examiner’s obviousness rejection of dependent claims 3, 5, and 11 based on
the combination of Murata and Denholm contend that the Examiner has not
established proper motivation for the proposed combination of references.
For all of the reasons articulated by the Examiner (Answer 5-6), however,
we find that the ordinarily skilled artisan would have recognized and
appreciated that the plasma system computer control with database access
teachings of Denholm would have been an obvious enhancement to the
system of Murata.
To whatever extent Appellants are suggesting that the Examiner’s
proposed addition of Denholm to Murata must fail since, in Appellants’
view, Denholm does not provide a disclosure of controlling a RF
multiplexer, we find such contention to be without merit since the Examiner
8
Appeal 2007-0030
Application 10/359,557

has relied upon Murata for a teaching of power distribution using RF
multiplexing. It is apparent from the Examiner’s line of reasoning in the
Answer that the basis for the obviousness rejection is the combination of
Murata and Denholm. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. In re Keller, 642 F. 2d 413, 425, 208 USPQ 871, 881(CCPA
1981); In re Merck & Co., Inc., 800 F. 2d 1091, 1097, 231 USPQ 375, 380
(Fed. Cir. 1986).
Accordingly, since the Examiner’s prima facie case of obviousness
has not been overcome by any convincing arguments from Appellants, we
sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims 3, 5, and 11
based on the combination of Murata and Denholm.
Turning to a consideration of the Examiner’s obviousness rejection of
dependent claims 8-10 based on the combination of Murata and Ishii, we
sustain this rejection as well. Appellants’ arguments (Br. 10-11; Reply Br.
4) contend that Ishii does not make up for the deficiencies of Murata since
Ishii, like Murata, discloses a plasma reactor system with inductive, not
capacitive, power coupling. We find these arguments to be without merit
since, for all of the reasons discussed supra, we find that Murata discloses a
plasma reactor system with capacitive coupling, at least in the manner
broadly set forth by Appellants’ claims on appeal.

9
Appeal 2007-0030
Application 10/359,557

CONCLUSION
In summary, we have sustained the Examiner’s rejections of all the
claims on appeal. Therefore, the decision of the Examiner rejecting claims
1-11, 27, and 28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(effective
September 13, 2004).

AFFIRMED

tdl/ce

PILLSBURY WINTHROP SHAW PITTMAN, LLP
P.O. BOX 10500
MCLEAN VA 22102
10