Ex Parte GrantDownload PDFPatent Trial and Appeal BoardDec 17, 201412892025 (P.T.A.B. Dec. 17, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/892,025 09/28/2010 Robert Bruce Grant M05B111-D1 (E223.12-0047) 1486 27367 7590 12/18/2014 WESTMAN CHAMPLIN & KOEHLER, P.A. SUITE 1400 900 SECOND AVENUE SOUTH MINNEAPOLIS, MN 55402 EXAMINER IQBAL, SYED TAHA ART UNIT PAPER NUMBER 1736 MAIL DATE DELIVERY MODE 12/18/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT BRUCE GRANT ____________ Appeal 2013-004019 Application 12/892,025 Technology Center 1700 ____________ Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and JEFFREY W. ABRAHAM, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 1 through 13, which are all of the claims pending in the above-identified application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter on appeal is directed to an apparatus for treating a gas, such as unconsumed fluorocarbon etchant, a known greenhouse gas, from a plasma etching reactor used in fabricating integrated circuits. (Spec. 1 Appeal Brief filed May 4, 2012 at 3. 2 Final Rejection mailed September 6, 2011 (“FR.”) at 2–4 and the Examiner’s Answer mailed October 26, 2012 (“Ans.”) at 4–6. Appeal 2013-004019 Application 12/892,025 2 1, ll. 3–15 and 2, ll. 5–6.) Figure 1, which illustrates such gas treating apparatus, is reproduced below: Figure 1 depicts gas treating apparatus 10 comprising housing 12 surrounding a plurality of cylindrical proton conducting membranes 26 defining bores 28, with one end of housing 12 connected to inlet manifold 14 having inlet 18 for receiving a gas stream to be treated, such as a fluorocarbon etchant stream, and a plurality of outlets 20 for directing the gas stream to be treated to bores 28, and another end of housing 20 connected to outlet manifold 16 having a plurality of inlets 22 for receiving the treated gas stream from bores 28 and outlet 24 for exhausting the treated gas stream. (Spec. 4, l. 31 to Spec. 5, l. 10.) Housing 12 also includes inlet 32 for receiving a hydrogen-containing gas and directing the same to the external surfaces of cylindrical membranes 26 and outlet 34 for exhausting the hydrogen-containing gas from the external surfaces of cylindrical membranes 26. (Spec. 5, ll. 25–31.) The plurality of cylindrical membranes 26 are made of “a mixed proton and electron conducting material” such as a ceramic material (e.g., CaZr0.91n0.1O3-x, BaZr0.9Y0.1O3-x, Appeal 2013-004019 Application 12/892,025 3 Ba3Cal.18Nbl.82O9-x, and SrCe0.95Yb0.05O2.975). (Spec. 5, ll. 11–16.) Heater 30 may be provided along the length of housing 12 for heating cylindrical membranes 26 to around 500 to 600oC. (Spec. 5, ll. 20–24.) The catalysts for treating the fluorocarbon etchant gas stream (not shown) are located within the internal surfaces (the surfaces of bores 28) of cylindrical membranes 26. (Spec. 6, ll. 10–25.) Details of the appealed subject matter are recited in illustrative independent claim 1 which is reproduced below from the Claims Appendix of the Appeal Brief: 1. Apparatus for treating a gas stream, the apparatus comprising: a plurality of cylindrical proton conducting membranes connected in parallel; means for supplying the gas stream to a bore of each of the cylindrical membranes; means for supplying a hydrogen-containing gas to an external surface of the cylindrical membrane constructed for conducting hydrogen protons decomposed from the hydrogen-containing gas from the external surface of the cylindrical membrane to an inner side thereof; and a catalyst provided on the inner side of each membrane for catalysing a reaction between a halogen-containing component of the gas stream and the hydrogen protons conducted through the cylindrical membrane in a manner that the hydrogen protons are added to the gas stream by replacing the halogen-containing component with the hydrogen protons. (App. Br. 12 (emphasis added).) Appellant seeks review of the following grounds of rejection maintained by the Examiner in the Answer: 3 3 The Examiner has withdrawn the rejection of claims 1 through 13 under 35 U.S.C. § 112, second paragraph, set forth in the Final Rejection. (Ans. 4.) Appeal 2013-004019 Application 12/892,025 4 1. Claims 1 through 8 and 10 through 13 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of White4 and Sugano5; and 2. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of White, Sugano, and Liu6; and 3. Claims 1 through 13 on the ground of non-statutory obviousness-type double patenting as unpatentable over claims 1 through 13 of U.S. Patent 7,824,637 B2 issued to Grant on Nov. 2, 2010. (App. Br. 5.) DISCUSSION OBVIOUSNESS UNDER 35 U.S.C. § 103(a) Upon consideration of the evidence presented on this record, we concur with Appellant that the Examiner has not carried the burden of establishing a prima facie case of obviousness regarding the subject matter recited in claims 1 through 13 within the meaning of 35 U.S.C. § 103(a). Accordingly, we reverse the Examiner’s § 103(a) rejections for the reasons set forth in the Appeal Brief and the Reply Brief. We add the following primarily for emphasis. 4 US 6,281,403 B1 issued to White et al. on August 28, 2001 (hereinafter referred to as “White”). 5 JP2001-232152 A published in the name of Sugano et al. in August 2001. Our reference to this Japanese Patent Application Publication is to the English translation of record, which was mailed with the Notice of Reference cited, PTO-892, on March 29, 2011 (hereinafter referred to as “Sugano”). 6 Liu et al, Preparation and characterisation of SrCe0.95Yb0.05O2.975 hollow fibre membranes, 193 JOURNAL OF MEMBRANE SCIENCE 249–260 (2001) (hereinafter referred to as “Liu”). Appeal 2013-004019 Application 12/892,025 5 The dispositive question raised by the Examiner and Appellant in this case is: Has the Examiner demonstrated that one of ordinary skill in the art would have been led to employ the catalysts capable for hydrolyzing fluorine compounds taught by Sugano in the membranes made of mixed electron-and proton-conducting materials of the catalytic membrane reactor taught by White in the manner claimed, with a reasonable expectation of successfully performing such hydrolyzing reaction in the catalytic membrane reactor taught by White? On this record, we answer this question in the negative. It is well settled that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). To show obviousness under § 103(a), the Examiner must demonstrate that the applied prior art would have provided an apparent reason or a suggestion to those of ordinary skill in the art to make the claimed invention and would have also revealed that in so making, those of ordinary skill would have a reasonable expectation of success. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir. 2006); KSR, 550 U.S. at 418. The Examiner has the burden of establishing a prima facie case of obviousness regarding the subject matter recited in the claims on appeal. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)(“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”) Here, as explained by Appellant at pages 6 through 9 of the Appeal Brief, White is directed to a catalytic membrane reactor, which is designed to mediate hydrogen away from the reaction surface to perform the reactions Appeal 2013-004019 Application 12/892,025 6 involving the loss of hydrogen from the hydrogen-containing gas. (See also White, col. 1, l. 65 to col. 2, l. 5.) Examples of such hydrogen removing reactions, according to White, are “the oligomerization of methane to produce ethylene, dehydrogenation of alkanes to form alkenes, dehydrogenation of alkenes to form alkynes, dehydrogenation of alcohols to form aldehydes or ketones, the decomposition of H2S to H2O and S, and the separation of hydrogen from a mixture of gases.” (See App. Br. 6–9 and White, col. 4, ll. 59–65.) As correctly identified by Appellant, White does not teach or suggest using a particular catalyst placed in its catalytic membrane reactor such that the catalyst is capable of “cataly[z]ing a reaction between a halogen-containing component of the gas stream and the hydrogen protons conducted through the cylindrical membrane in a manner that the hydrogen protons are added to the gas stream by replacing the halogen-containing component with the hydrogen protons” as recited in the claims on appeal. (Compare App. Br. 6–9 with Ans. 5 and 7–9; see also claim 1 on appeal.)7 7 Notwithstanding the Examiner’s alternative arguments to the contrary at page 8 of the Answer, the functional limitation in question limits the placement and types of catalysts employed in the catalytic membrane reactor recited in the claims on appeal. Although claims directed to an apparatus must be distinguished from the applied prior art in terms of structure rather than function, in order to satisfy the functional limitations in such apparatus claims, the Examiner has the burden of showing that the apparatus taught or suggested by the applied prior art is capable of performing the claimed function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997); Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011). Yet, on this record, the Examiner has not identified sufficient facts relating to structural and compositional similarities between the apparatus and catalysts involved to show that the particular catalyst and its Appeal 2013-004019 Application 12/892,025 7 Although the Examiner finds that Sugano teaches the recited catalyst, a catalyst capable of hydrolyzing the fluorine content (e.g., a fluorocarbon etchant) of a gas stream (a catalyst capable of catalyzing a hydrogen adding reaction), the Examiner has not proffered any evidence to show that White’s catalytic membrane reactor designed to mediate hydrogen away from the reaction surface is useful for the hydrolyzing (hydrogen adding) reaction of the type taught by Sugano. (Ans. 5 and 7–8.) Nor has the Examiner adequately explained or shown that one of ordinary skill in the art would have reasonably expected that White’s catalytic membrane reactor designed to mediate hydrogen away from the reaction surface would be useful for the hydrolyzing (hydrogen adding) reaction of the type taught by Sugano. (Ans. 6–8.) In other words, the Examiner, on the present record, has not demonstrated that there was an apparent reason or suggestion to employ such hydrolyzing catalyst taught by Sugano as the catalyst of the catalytic membrane reactor taught by White in the fashion claimed, with a reasonable expectation of successfully performing the hydrolyzing (hydrogen adding) reaction of the type taught by Sugano. Accordingly, we agree with Appellant that the Examiner has erred in determining that one of ordinary skill in the art would have been led to employ the catalyst capable for hydrolyzing fluorine compounds taught by Sugano in the membranes made of mixed electron-and proton-conducting materials of the catalytic membrane reactor taught by White in the manner claimed within the meaning of 35 U.S.C. § 103(a). placement taught by White are capable of performing the reaction recited in the claims on appeal. Appeal 2013-004019 Application 12/892,025 8 OBVIOUSNESS-TYPE DOUBLE PATENTING Appellant has not challenged the Examiner’s rejection of claims 1 through 13 on the ground of non-statutory obviousness-type double patenting as unpatentable over claims 1 through 13 of U.S. Patent 7,824,637 B2 issued to Grant on Nov. 2, 2010. Rather, Appellant only states that he “will submit a terminal disclaimer, if needed, in response to the double patenting rejections,” after the rejections under 35 U.S.C. § 103(a) are resolved. (App. Br. 9–10.) Accordingly, we summarily affirm the Examiner’s decision rejecting claims 1 through 13 on the ground of non-statutory obviousness-type double patenting as unpatentable over claims 1 through 13 of U.S. Patent 7,824,637 B2 issued to Grant on Nov. 2, 2010. ORDER Upon consideration of the record, and for the reasons given above, it is ORDERED that the decision of the Examiner to reject the claims on appeal under 35 U.S.C. §103(a) is REVERSED; FURTHER ORDERED that the decision of the Examiner to reject the claims on appeal on the ground of non-statutory obviousness-type double patenting is AFFIRMED; and FURTHER ORDERED that 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). 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