Ex Parte Aloi et al

Board of Patent Appeals and Interferences

Mar 17, 2008

10256121 (B.P.A.I. Mar. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL J. ALOI and JAMES D. GRAFF

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Appeal 2007-2381
Application 10/256,121
Technology Center 3600
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Decided: March 17, 2008
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Before MURRIEL E. CRAWFORD, LINDA E. HORNER and
DAVID B. WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-5, 28-31, 40, and 41. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We affirm.
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Appellants disclose a vented cold ring system that is used during chemical
vapor deposition for semiconductor processing (Specification 1:6-8). Claim 28,
reproduced below, is representative of the subject matter on appeal.
28. A cold ring comprising:
a washer upper section including an upper surface
and a lower surface; and
an annular lower section including an inner surface
and an outer surface wherein the annular lower section
includes at least one through-hole.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Borgstrom US 6,155,574 Dec. 5, 2000

The following rejections are before us for review.
1. Claims 1-5, 28, 30, and 31 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Borgstrom.
2. Claims 29, 40, and 41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Borgstrom.
ISSUE
The issue before us is whether Appellants have shown that the Examiner
erred in rejecting: 1) claims 1-5, 28, 30, and 31 under 35 U.S.C. § 102(b) as
anticipated by Borgstrom; and 2) claims 29, 40, and 41 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Borgstrom. The dispositive issues are
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whether the preamble term “cold ring” should be given patentable weight and, if
so, how it should be construed.
Rather than repeat the arguments of Appellants and the Examiner, we make
reference to the Briefs and the Answer for their respective details. 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) (2007).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).

1. The “Technical Field” section of the Specification states:
Embodiments of the present invention relate to articles
and methods that are used in semiconductor processing.
More particularly, an embodiment relates to a vented
cold ring system that is used during chemical vapor
deposition for semiconductor processing.
(Specification 1:6-9).
2. There is no dispute that Borgstrom teaches all of the limitations in the
body of claims 1-5, 28, 30, and 31 (Answer 3-4).
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3. Borgstrom teaches a washer upper section may have a pitch that falls
from its inner circumference to its outer circumference of -90 to 90°
(Borgstrom, col. 5, ll. 55-67, Figure 2, defining an angle v which is
complementary to the angle displayed in Appellants’ Figure 2).

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications “not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)). We must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is broader
than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be
aided by explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) The challenge
is to interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
We remind appellants that it is their burden to precisely define the invention,
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not the burden of the Office. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Appellants always have the opportunity to amend the claims during prosecution,
and broad interpretation by the examiner reduces the possibility that the claim,
once issued, will be interpreted more broadly than is justified. In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969).
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987). A disclosure that anticipates
under 35 USC § 102 also renders the claim unpatentable under 35 USC § 103, for
anticipation is the epitome of obviousness. See In re Pearson, 494 F.2d 1399,
1402 (CCPA 1974); and In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).

ANALYSIS
A. Rejection of 1-5, 28, 30, and 31 under 35 U.S.C. § 102(b) as anticipated
by Borgstrom.
Appellants argue claims 1-5, 28, 30, and 31 as a group. We consider claim
28, the broadest claim on appeal, to be representative
The Appellants argue that the term “cold ring” is intended to mean “a vented
cold ring system that is used during chemical vapor deposition for semiconductor
processor” (Br. 11 citing Specification at 1). The Appellants quote this language
from the “Technical Field” section of the Specification, which states:
Embodiments of the present invention relate to articles
and methods that are used in semiconductor processing.
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More particularly, an embodiment relates to a vented
cold ring system that is used during chemical vapor
deposition for semiconductor processing.
(Finding of Fact 1). The Appellants also refer to a reference submitted with an
IDS entitled “EnduraB TxZ & HP TxZ Chamber Operation” (Applied Materials,
Santa Clara, California 95054) (Attached to ewf), Figure 2-2, which they argue
“teaches that a cold ring is part of a ‘system that is used during chemical vapor
deposition for semiconductor processing’ (specification, page 1). Such meaning is
clear, and cannot be mistaken to be the ‘sealing element (10)’ of Borgstrom, which
is part of a high-pressure, rotatable seal device.” (Br. 11). The Examiner found
that the Specification never establishes what a cold ring is and the Endura
document just gives an example of the ring in combination with a heater assembly,
not the meaning of the term (Answer 5). The Examiner is correct; neither the
Specification nor Endura provides a definition of cold ring.
The Examiner conducted a search for prior art using the terms “cold ring”,
“semiconductor”, and “chemical vapor deposition”, and found seven documents;
six to the same inventor (Collins) and dealing with a low-density high frequency
process for a parallel-plate electrode plasma reactor having an inductive antenna,
and the last the Appellants’ own publication. The Examiner found that none of the
six documents to Collins mentioned the production of semiconductors using a cold
ring in a chemical vapor deposition process (Answer 5). The Appellants correctly
pointed out that at least one of the Collins references described using a plasma
reactor for processing a semiconductor wafer (Br. 12). The Examiner also
provides six prior art patents using the term “cold ring” in different fields (Buttner
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- sewage processing, Aikens – cooled x-ray sensitive photoconductor, Hashemi –
glass tempering process, Brinker – controller for glass sheet processing system,
Christie – joining a branching fitting to a pipe, Aultman – low leakage capacitor)
(Answer 6). The Examiner found that the term cold ring is not limited to the
semiconductor processing art (Answer 5). Notwithstanding the Examiner’s
apparent misreading of the above Collins reference, the evidence of record
supports a finding that the term cold ring is used in disciplines other than
semiconductor processing. As discussed further below, this argument also is not
persuasive because it is not commensurate with the scope of the appealed claims.
The term “cold ring” appears only in the preamble of the appealed claims.
Neither the Appellants nor the Examiner directly address the issue of whether the
term in the preamble should be given patentable weight. We decline to give the
preamble term “[a] cold ring" any controlling weight, because the nature of the
structure is absolutely clear from the structural limitations in the body of the claim.
Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1373
(Fed. Cir. 2001) (if the body of the claim sets out the complete invention, and the
preamble is not necessary to give "life, meaning and vitality" to the claim, "then
the preamble is of no significance to claim construction because it cannot be said
to constitute or explain a claim limitation").
However, even if the preamble was considered a limitation, Borgstrom
discloses a complete structure that meets the physical limitations of claim 28
(Finding of Fact 2). There is also no language in the preamble to limit “cold ring”
to “a vented cold ring system that is used during chemical vapor deposition for
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semiconductor processor,” even if we were to give the preamble patentable
weight. The only reference the Appellants make to the Specification is to the
“Technical Field”, which by its own terms describes only embodiments of the
invention and provides no lexicographic limitation to the term “cold ring”. The
claim itself is very broad and the structural limitations in the body of the claim
define a cold ring without reading in additional limitations from specific
embodiments described in the specification. Without clear indication that the
Appellants intended to be their own lexicographers, we decline to import
limitations from particular embodiments in the Specification.
The Appellants have failed to show error in the Examiner’s rejection of
claim 28. Claims 1-5, 30, and 31 were not argued separately, and fall with claim
28. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590
(Fed. Cir. 1991).

B. Rejection of 29, 40, and 41 under 35 U.S.C. § 103(a) as unpatentable
over Borgstrom.
These claims add a limitation that the washer upper section has a pitch that
falls from its inner circumference to its outer circumference of about 7°. The
Examiner found that Borgstrom fails to disclose this limitation. However, since the
Specification does not provide any reason for having this pitch or slope greater or
lower than 7° or how this pitch or slope would affect the ring structure or function,
the Examiner treated the limitation as a change in shape. The Examiner found that
it would have been obvious to one having ordinary skill in the art to have a pitch
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that falls from its inner circumference to its outer circumference greater or less
than 7°, because it would be considered as a shape design that would not affect the
flow of the fluid (Answer 4).
The Appellants argue that there is no objective evidence of record for a
finding of a teaching, suggestion, or motivation to combine reference teachings—
apparently to apply Borgstom to articles and methods that are used in
semiconductor processing (Br. 13). As discussed above, there is no limitation in
the claims to use in semiconductor processing, so this argument is unpersuasive.
The Appellants make an equally unpersuasive argument that the Examiner is
improperly taking Official Notice of the missing limitation—the Examiner makes
no mention of Official notice in the final rejection or the Answer except to refute
the Appellants’ position (Br. 13; Answer 7).
Moreover, Borgstrom in fact teaches the desired pitch (Finding of Fact 3).
The Appellants have failed to show error in the Examiner’s rejection of claims 29,
40, and 41, because Borgstrom anticipates claims 29, 40, and 41 and a disclosure
that anticipates under 35 USC § 102 also renders the claim unpatentable under
35 USC § 103, for anticipation is the epitome of obviousness. See In re Pearson,
494 F.2d 1399, 1402 (CCPA 1974); and In re Fracalossi, 681 F.2d 792, 794
(CCPA 1982).

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CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred in
rejecting claims 1-5, 28, 30, and 31 under 35 U.S.C. § 102(b) and claims 29, 40,
and 41 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1-5, 28, 30, and 31 under
35 U.S.C. § 102(b) and claims 29, 40, and 41 under 35 U.S.C. § 103(a) 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED

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