11008413 (B.P.A.I. Aug. 4, 2010)

Ex Parte Burger et al

Board of Patent Appeals and InterferencesAug 4, 2010

11008413 (B.P.A.I. Aug. 4, 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. 11/008,413 12/09/2004 Kurt Burger 10191/1264B 1511 7590 08/05/2010 Richard L. Mayer, Esq. Kenyon & Kenyon One Broadway New York, NY 10004 EXAMINER KACKAR, RAM N ART UNIT PAPER NUMBER 1716 MAIL DATE DELIVERY MODE 08/05/2010 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 KURT BURGER, THOMAS WEBER, JOHANNES VOIGT, and SUSANNE LUCAS ____________ Appeal 2009-012569 Application 11/008,413 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, BRADLEY R. GARRIS, and BEVERLY A. FRANKLIN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-3. We have jurisdiction under 35 U.S.C. § 6. 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 2009-012569 Application 11/008,413 2 We REVERSE. Appellants claim a plasma CVD device for vacuum coating a substrate comprising an arrangement for producing a plasma (claim 1). Further details regarding this device are set forth in representative claim 1, the sole independent claim on appeal, which reads as follows: 1. A plasma CVD device for vacuum coating a substrate, comprising: a vacuum recipient; a bearing device for receiving the substrate to be coated; an arrangement for producing a plasma in an interior of the vacuum recipient and including one of a microwave source, a sputter cathode, a system for producing a high-current arc, and a hollow cathode; and a device, capable of being controlled separately from the arrangement for producing the plasma, for producing a substrate voltage that is applied to the substrate to be coated, wherein the device for producing the substrate voltage includes a direct voltage power supply unit that can be pulsed in bipolar fashion so that at least one of a length and a height of a positive pulse and a negative pulse of the substrate voltage can be adjusted independently of one another. The Examiner rejects claim 1 under 35 U.S.C. § 102 (b) as being anticipated by Nomura (JP 63-093861, published Apr. 25, 1988 (as translated)). The Examiner rejects claims 2 and 3 under 35 U.S.C. § 103 (a) as being unpatentable over Nomura in view of Fritsche (US 5,300,205, issued Apr. 5, 1994). The dispositive issue in this appeal is whether the Examiner's § 102 rejection of claim 1 is proper. In making this § 102 rejection, the Examiner gives the claim 1 preamble recitation "plasma CVD device" no patentable weight (Ans. 5). Alternatively, the Examiner finds that the apparatus of Nomura "could be Appeal 2009-012569 Application 11/008,413 3 used for reactive sputtering or plasma CVD by proper choice of reactive gas and power to cathode (2) with or without substrate heater" (id. at 6). As for the claim 1 "arrangement for producing a plasma," the Examiner acknowledges that "Nomura does not disclose the term 'plasma'" but finds that "plasma is inherent in the disclosed apparatus" (id. at 4). Appellants argue that Nomura merely describes a bias sputtering device for depositing a thin-stress film rather than a plasma CVD device comprising an arrangement for producing a plasma as required by claim 1 (App. Br. 3). Further, Appellants challenge the Examiner's finding that the apparatus of Nomura is capable of functioning as a plasma CVD device and that Nomura's apparatus necessarily and inherently produces a plasma as required by claim 1 (Reply Br. 1-2). The Appellants' position is well taken. The Examiner erred in failing to give patentable weight to the claim 1 preamble recitation "plasma CVD device." If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is necessary to give life, meaning, and vitality to the claim, then the claim preamble should be construed as if in the balance of the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). We find that "plasma CVD device" is a limitation deserving of patentable weight for it gives life, meaning, and vitality to the claim. On this record, the Examiner offers no support whatsoever for a contrary view. The Examiner also erred in finding that the apparatus of Nomura is inherently capable of functioning as a plasma CVD device and inherently produces a plasma. In relying upon the theory of inherency, an examiner Appeal 2009-012569 Application 11/008,413 4 must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). The Examiner has provided no such basis in the record before us. On this record, the Examiner's inherency finding is entirely conclusory. For the above stated reasons, we do not sustain the Examiner's § 102 rejection of claim 1 as being anticipated by Nomura. Because the Examiner does not rely on Fritsche to cure the deficiencies of Nomura, we also do not sustain the § 103 rejection of claims 2 and 3 as being unpatentable over Nomura in view of Fritsche. The decision of the Examiner is reversed. REVERSED cam RICHARD L. MAYER, ESQ. KENYON & KENYON ONE BROADWAY NEW YORK, NY 10004 Appeal 2009-012569 Application 11/008,413 5