Ex Parte Grant

Patent Trial and Appeal Board

Dec 17, 2014

12892025 (P.T.A.B. Dec. 17, 2014)

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

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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

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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.)
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Application 12/892,025

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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

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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
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Application 12/892,025

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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
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Application 12/892,025

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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

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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).
AFFIRMED
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