Ex Parte Gates

Board of Patent Appeals and Interferences

Sep 30, 2010

09534814 (B.P.A.I. Sep. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DUANE CHARLES GATES
____________________

Appeal 2010-007116
Application 09/534,814
Patent 5,731,565
Technology Center 3700
____________________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
and LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent
Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-007116
Application 09/534,814
Patent 5,731,565

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Appeal 2010-007116
Application 09/534,814
Patent 5,731,565

STATEMENT OF THE CASE
Duane Charles Gates (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 39-58 in reissue application
09/534,814. The reissue application seeks to reissue U.S. Patent 5,731,565,
issued March 24, 1998, based on application 08/507,971, filed July 27, 1995.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellant’s claimed invention pertains to a segmented coil
configuration as a source for generating plasma for use in the processing of a
workpiece, such as a semiconductor wafer. See Spec., col. 1, ll. 6-11. Claim
45, reproduced below, is representative of the subject matter on appeal.
45. A coil for use with a low pressure plasma processor for
treating a workpiece with an RF plasma wherein the processor
includes a low pressure chamber including a workpiece holder
for carrying a workpiece that is adapted to be affected by the
plasma, the chamber having an inlet for introducing into the
chamber a gas which can be converted into the RF plasma for
treating the workpiece, the coil being adapted to be positioned
to couple an RF field to the gas for exciting the gas to the
plasma state, the coil comprising: interior, intermediate and
peripheral portions, the interior, intermediate and peripheral
portions having turns connected to each other and arranged so
the magnetic flux density coupled to the plasma by each of the
interior and peripheral coil portions exceeds the magnetic flux
density coupled to the plasma by the intermediate coil portion.

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Appeal 2010-007116
Application 09/534,814
Patent 5,731,565

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 39-58 are rejected under 35 U.S.C. § 251 as being based
upon new matter added to the patent for which reissue is sought;
2. Claims 39-58 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement; and
3. Claims 39 and 45 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bignell (US 3,586,905, issued Jun. 22, 1971).

PRINCIPLES OF LAW
In order to satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). One shows possession “by such descriptive means as
words, structures, figures, diagrams, formulas, etc., that fully set forth the
claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997).
The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
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Appeal 2010-007116
Application 09/534,814
Patent 5,731,565

ANALYSIS
The New Matter and Written Description Rejections
The Examiner found that the claims on appeal introduce new matter
into a patent for which reissue is being sought and fail to comply with the
written description requirement of § 112, first paragraph. Ans. 3-5. The
Examiner addressed the claims in several groups.
Appellant asserts that the Examiner’s Answer refers to non-existent
line numbers in the claims, refers to non-existent limitations in certain
claims, and includes an erroneous reference to claim 30 (which is not on
appeal) rather than claim 39. Reply Br. 1. Because we determine, based on
a review of the substance of the purported new matter, that we cannot
sustain the new matter and written description rejections, we need not
attempt to correlate the purported new matter to each rejected claim.
The Examiner found that claims 39, 45, 51, and 54 contain new
matter in the form of a description of the coil having three portions and a
description of different magnetic flux levels for these three portions. Ans. 3;
see also id. at 4 (written description rejection on the same bases). Similarly,
the Examiner rejected claims 40 and 46-50 on the basis that they refer to
a three-portion coil. Id. Claim 39, for example, calls for a coil including
interior, intermediate and peripheral portions, and the portions being
arranged such that the magnetic flux density of each of the interior and
peripheral portions exceeds that of the intermediate portion. The Examiner
maintains that the original disclosure was directed to a two segment coil and
that there is no discussion of magnetic flux in the original disclosure. Id.
Appellant argues, inter alia, that Figure 4 of the ‘565 patent shows a
coil with three portions: inner coil segment 52, outer coil segment 54, and
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Application 09/534,814
Patent 5,731,565

the portion connecting those two segments. See App. Br. 13; see also Spec.,
col. 3, ll. 61-62 (identifying the inner and outer segments). Appellant also
argues that the claimed relative flux density is inherent in the disclosure, and
has submitted the Declaration of Roger Patrick in support of that position.
Dr. Patrick explains that one of ordinary skill would have known that, when
the switch S1 in Figure 4 is open, the inner and outer segments produce
magnetic flux of greater density than that of the intermediate segment.
Patrick Decl. ¶ 3.
In light of Appellant’s arguments and Dr. Patrick’s testimony, we
conclude that the Examiner has not adequately shown that the disclosure of
the issued patent fails to reasonably convey to those skilled in the art that
the inventor had possession of a three portion coil where the magnetic flux
density of each of the interior and peripheral portions exceeds that of the
intermediate portion. Likewise, we cannot find that the rejected claims
introduce new matter into the issued patent by the recitation of these
features.
The Examiner also found that claims 40, 46, 51, and 54 introduce
new matter by reciting three requirements for the intermediate portion
configuration. Ans. 3-4; see also id. at 4-5 (written description rejection
on the same basis). Claim 40, for example, recites: “the intermediate
portion being configured so it (a) does not include a complete turn, (b) is
substantially less than a complete turn, and (c) includes a lead connected to
ends of the turns of the interior and exterior portions.” The Examiner further
found that claims 51 and 56 include the new matter: “the lead having at
least a portion that is straight.” Ans. 3. The Examiner appears to maintain
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Application 09/534,814
Patent 5,731,565

that the original disclosure specifically refers to the outer and inner segments
having “arcuate conductor portion[s]” and a conductor having at least one
turn, but does not mention a straight section or a partial turn. See Ans. 4-6
(citing Spec., col. 3, l. 57 and claim 8). However, at least Appellant’s
Figure 4 depicts a portion between the inner and outer coil segments having
the recited features. See also Patrick Decl. ¶ 3, (9). The Examiner has not
adequately explained why one of ordinary skill would fail to recognize that
Appellant had possession of the claimed intermediate portion having the
recited configuration.
On the record before us, we cannot find that the rejected claims lack
written description support or introduce new matter into the issued ‘565
patent. As such, we reverse the rejection of claims 39-58 under section 251
and section 112, first paragraph.

The Rejection of Claims 39 and 45 as being unpatentable over Bignell
Claim 39 recites a plasma processor having a low pressure chamber, a
workpiece holder for carrying the workpiece to be affected by the plasma,
and “a coil positioned to couple an RF field to the gas for exciting the gas to
the plasma state.” The chamber has an inlet for introducing into the
chamber the gas to be converted to plasma. Initially, the Examiner found
that Bignell did not teach a workpiece holder, but, in the Response to
Argument section of the Answer, found that Bignell teaches a work holder
12 “that holds the work gas.” Ans. 5, 9. The Examiner maintains that the
claims do not specify the type of work processed, and that it could be solid
or gas. Ans. 10.
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Appeal 2010-007116
Application 09/534,814
Patent 5,731,565

Because the claim describes the gas as being converted to plasma for
treating the workpiece, we cannot agree with the Examiner’s conclusion
that that gas could also be the workpiece. Further, it is not clear from the
Examiner’s findings as to what structure was found to correspond to the
recited chamber where the gas is held by the workpiece holder. We cannot
sustain the rejection of claim 39 as obvious in light of Bignell.
Claim 45 recites a coil for use with a low pressure plasma processor
having a chamber with a workpiece holder, and calls for “the coil being
adapted to be positioned to couple an RF field to the gas for exciting the gas
to the plasma state.” Although the Examiner found that Bignell discloses
a coil, the Examiner does not appear to make any finding that Bignell
explicitly or inherently discloses a coil that is adapted to be positioned for
exciting the gas to plasma by an RF field. See Ans. 5, 9-10. As such, we
cannot sustain the rejection of claim 45 as obvious in light of Bignell.

DECISION
The decision of the Examiner to reject claims 39-58 is reversed.

REVERSED

JRG

Allan M. Lowe
Lowe Hauptman Gopstein Gilman & Berner, LLP
1700 Diagonal Road, Suite 310
Alexandria ,VA 22314
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