Ex Parte Kishimoto et al

Board of Patent Appeals and Interferences

Nov 8, 2010

11252885 (B.P.A.I. Nov. 8, 2010)

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.
11/252,885 10/19/2005 Katsushi Kishimoto 900-534 7955
23117 7590 11/09/2010
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DHINGRA, RAKESH KUMAR
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
11/09/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KATSUSHI KISHIMOTO
and YUHSUKE HUKUOKA
____________

Appeal 2010-000935
Application 11/252,885
Technology Center 1700
____________

Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, 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 2010-000935
Application 11/252,885

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 5-8 and 11-14, which are the only claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Representative claim 1 reads as follows:
1. A plasma processing apparatus comprising:
a sealable chamber that is sealable;
a gas supply section that supplies a reactive material gas
into the chamber; and
a plurality of cathode and anode electrode pairs provided
within the chamber, the electrode pairs being connected to an
external power supply and configured to produce plasma
discharges through the material gas, respectively, wherein
the plurality of cathode and anode electrode pairs are
provided at a distance from one another at which the plasma
discharges are prevented from interfering with one another, and
have an empty space between the adjacent cathode and anode
electrode pairs;
a processing target is disposed between a cathode
electrode and an anode electrode in each cathode and anode
electrode pair, and subjected to a plasma discharge processing;
a distance between the cathode electrode and the anode
electrode in the each anode and cathode electrode pair is a
predetermined distance, and a distance between a cathode
electrode of one of the anode and cathode electrode pairs and an
anode electrode of an anode and cathode electrode pair adjacent
to the one of the anode and cathode electrode pairs is at least
twice as large as the predetermined distance.
Appeal 2010-000935
Application 11/252,885

3
Claims 1-3, 5-8 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maher (US 4,381,965, issued May 3, 1983) in view of
Iwamura (US 5,753,886, issued May 19, 1998).2
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combined prior art of Maher, Iwamura, and Kinoshita
(US 5,795,452, Aug. 18, 1998).
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combined prior art of Maher, Iwamura, and Gorin (US 4,264,393,
Apr. 28, 1981).
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combined prior art of Maher, Iwamura, Gorin, and Fazlin
(US 4,623,441, Nov. 18, 1986).
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

2 While the Examiner indicates that she has modified the rejection after final
to address the limitation from claim 3 that was added to claim 1 (Ans. 3), she
inadvertently did not actually modify the rejection in the Answer (see, Ans.
5, 6). We deem this to be harmless error and address the rejection based on
the combination of Maher and Iwamura. We also deem the inadvertent
omission of claim 13 from the statement of the rejection as harmless error
(see Final Rej. 8; Ans. 6, which address claim 13 in the body of the rejection
of claims 1 and 2).
Appeal 2010-000935
Application 11/252,885

4
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere Co.,
383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior
art the teachings of the invention in issue”)).
Applying the preceding legal principles with respect to obviousness to
the factual findings in this record, we determine that the Examiner has not
properly identified factual findings and reasoning for establishing a prima
facie case of obviousness based on Maher in view of Iwamura.
The deficiency of the Examiner’s obviousness conclusion is that
1) the Examiner has not provided any evidentiary support for the
conclusion that “the dielectric layers 19c-25c of Maher are equivalent to
empty space” (Ans. 5);
2) the Examiner’s claim interpretation that the electrode pairs are
formed via 19b, 20a is in contradiction with Maher’s description of “paired-
electrode units 19 through 25” (Maher, col. 4, ll. 32-33; see also claim 1 of
Maher) and does not persuasively address Appellants’ position that
removing the dielectric would create plasma discharge between Maher’s
described electrode pairs (19a, 19b) and thus defeat the explicit purpose of
Maher to provide plasma discharge in regions 13a, 13b, etc. (see, Br. 6; Ans.
12, 13); and
3) even assuming the Examiner’s substitution of Maher’s dielectric
with empty space would have been obvious to the artisan, the Examiner has
not articulated any persuasive reason why the artisan would have
reconfigured the spacing of Maher’s components such that the spaces where
the empty spaces (as modified) would have been are at least twice as large as
Appeal 2010-000935
Application 11/252,885

5
the predetermined distance between the Examiner’s stated “electrode pairs”
(e.g., 19b, 20a; see Ans. 14).
In this last regard, Maher’s spacing depicted in Fig. 4 is such that the
plasma generation space is several orders of magnitude larger than the space
between adjacent pairs, which is the exact opposite of what is required by
claim 1.
We accordingly agree with Appellants that the Examiner’s position is
a “reconfiguring of the Maher structure based on hindsight and in a manner
inimical to Maher’s stated purpose” (Br. 6). We also agree with Appellants
that Iwamura fails to cure the deficiencies of Maher for the reasons
articulated by Appellants in the Brief (Br. 7, 8).
Under these circumstances, it is apparent that the only teaching or
suggestion for combining the applied references in such a manner as to
achieve the here claimed invention derives from the Appellants’ own
Specification rather than the applied prior art. Therefore we conclude that
the Examiner’s rejection is improperly based upon improper hindsight
reasoning. See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553,
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“To imbue one of
ordinary skill in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest that knowledge,
is to fall victim to the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher.”).
None of the references applied in the remaining rejections have been
relied upon by the Examiner to cure the deficiencies noted above.
On this record, we cannot say the Examiner has established a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103(a) for the
Appeal 2010-000935
Application 11/252,885

6
claims on appeal. For these reasons and those set out in the Appeal Brief,
we reverse all of the Examiner’s § 103 rejections on appeal.
CONCLUSION
In summary, the rejections before us on appeal are reversed.

REVERSED

bar

NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203