Ex Parte Hatano

Board of Patent Appeals and Interferences

May 17, 2010

10899030 (B.P.A.I. May. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AKITSUGU HATANO
____________

Appeal 2009-006447
Application 10/899,030
Technology Center 1700
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Decided: May 17, 2010
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 2, 9-11, 14, and 30 (Final Office Action,
mailed Jul. 12, 2007, 1). (Appeal Brief (“App. Br.”), filed Jun. 18, 2008, 5.)
We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-006447
Application 10/899,030

We AFFIRM.
The Examiner maintains (Examiner’s Answer (“Ans.”), mailed Sep. 3,
2008, 3), and Appellant requests review of (App. Br. 10), the sole ground of
rejection: claims 1, 2, 9-11, 14, and 30 under 35 U.S.C. § 103(a) as
unpatentable over Sakai (US 2002/0007793 A1, pub. Jan. 24, 2002) in view
of Sago (US 2003/0159779 A1, pub. Aug. 28, 2003).
We separately consider the patentability of dependent claim 30 based
on Appellant’s arguments directed to limitations in claim 30. (See App. Br.
15-16.) The remaining claims stand or fall with independent claim 1.
Claims 1 and 30 are reproduced below from the Claims Appendix to
the Appeal Brief:
1. A plasma processing system comprising:

a processing chamber;

a substrate holder provided within said processing chamber for
holding a target substrate;

a composite electrode provided within said processing chamber to
oppose said substrate holder and having a plurality of discharge electrodes
for generating plasma;

material gas supply means for supplying a material gas into said
processing chamber;

plasma region increasing/reducing means for increasing or reducing a
plasma region formed within said processing chamber;

cleaning means for plasma cleaning an inside of said processing
chamber by using plasma generated in said plasma region increased or
reduced by said plasma region increasing/reducing means;

wherein said substrate holder is constructed as an electrode; and
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Application 10/899,030

during plasma cleaning said plasma region increasing/reducing means
causes an interior of the processing chamber to be at a relatively high
pressure so that plasma is generated between said discharge electrodes and
causes the interior of the processing chamber to be at a relatively low
pressure so that plasma is generated between said composite electrode and
said substrate holder.

30. The plasma processing system of claim 1, wherein during
cleaning the plasma region increasing/reducing means causes an interior of
the processing chamber to be at a relatively high pressure for a first period of
time, and then reduces the pressure so as to cause the interior of the
processing chamber to be at a relatively low pressure for a period of time.

Appellant does not dispute the Examiner’s findings with respect to
Sakai’s disclosure. (See generally, App. Br. 12-16.) Nor does Appellant
present arguments directed toward the Examiner’s proposed motivation for
combining Sakai and Sago. (Id.)
We identify the following issue as dispositive of the Appeal:
Did the Examiner err in finding that the structure corresponding to
Appellant’s claimed “plasma region increasing/reducing means” reads on
Sago’s structure for controlling pressure of a plasma process?
We answer this question in the negative based on the facts and reasons
relied on by the Examiner in the Final and the Answer. Thus, we adopt the
Examiner’s findings and reasons (Final 2-7; Ans. 4-15) as our own, adding
the following discussion for the sake of completeness.
Claim 1 includes the following means-plus-function limitation:
“plasma region increasing/reducing means for increasing or reducing a
plasma region formed within said processing chamber.” The Examiner
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Application 10/899,030

found that the structure corresponding to this limitation is described on page
30, lines 4-9 of the Specification (cited in Ans. 8), which read as follows:
The plasma region increasing/reducing means of this
embodiment includes, as shown in FIG. 13, a pressure control
mechanism 40 for controlling the pressure within the
processing chamber 5 to which the reaction gas is supplied by
the gas supply unit 13. The pressure control mechanism 40
includes a detection unit 41 for detecting the pressure within the
processing chamber 5, and a control unit 42 for controlling the
gas supply unit 13 and the vacuum pump 10.

The Examiner also found that Sago describes structure “(control unit
8, pump 111, pump controller 112, gas supply unit 3)” (Ans. 4-5 (citing
Sago ¶¶ [0016], [0033], [0037], and [0040])) which controls the pressure of
the plasma process. The Examiner found, more specifically, that
the pressure control mechanism of Sago et al. includes a control
unit 8, 112 using a detection unit for detecting the pressure (i.e.
confirming pressure indicates a detection unit is used), and the
control unit 8 controls the gas supply unit 3 and the vacuum
pump 111 in order to control the pressure for the selected
plasma process.

(Ans. 13.) The Examiner concluded that Sakai’s apparatus, as modified to
include Sago’s structure (i.e., control unit 8, pump 111, pump controller 112,
and gas supply unit 3) includes the structural limitations of Appellant’s
claimed plasma region increasing/reducing means and, therefore, would be
capable of performing Appellant’s claimed function of “increasing or
reducing a plasma region formed within said processing chamber” (claim 1).
(Ans. 4-5; see also, Ans. 8-12 (Response to Argument).)
Appellant concedes that the structure described on page 30, lines 4-9
of the Specification corresponds to the recited “plasma region
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increasing/reducing means.” (App. Br. sentence bridging 12-13; Reply Brief
(“Rep. Br.”), filed Nov. 3, 2008, 5.) However, Appellant contends that the
corresponding function for the recited means extends to the functional
recitations in claim 1, last para., and in claim 30. (See, e.g., App. Br. 13
(first full para.), 14 (ll. 13-17) and 15 (as to claim 30); Rep. Br. 2 (last para.),
3 (first para.) and 4 (as to claim 30).) Thus, while Appellant concedes that
Sago discloses “a basic type of pressure control mechanism . . . structured []
to maintain the pressure in the process chamber at a particular value” (Rep.
Br. 6; see also, App. Br. 14 and 15, last paras.), Appellant argues that the
applied prior art fails to teach or suggest “changing pressures of the chamber
during cleaning” as required by claim 1, last para. and by claim 30. (Rep.
Br. 3-4; see also, App. Br. paras. bridging 14-15 and 15-16).
The Examiner maintains, and we agree, that the recitations in claim 1,
last para., and in claim 30 are merely statements of intended use for the
claimed “plasma region increasing/reducing means.” The Examiner found
that the proposed combination of Sakai and Sago would be “capable of”
performing the intended use recited in the last paragraph of claim 1. (Ans.
5; see also, Ans. 8-12.) The Examiner made similar findings with respect to
the limitations recited in claim 30. (Ans. 7-8; see also, Ans. 12-15.)
The Examiner’s findings are supported by the relied-upon disclosure
in the references, in particular, Sago ¶¶ [0016], [0033], [0037], and [0040].
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on.
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Appeal 2009-006447
Application 10/899,030

In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re
Swinehart, 439 F.2d 210, 213 (C.C.P.A. 1971)). See also, Intel Corp. v. U.S.
Int'l Trade Comm'n, 946 F.2d 821, 832 (Fed. Cir. 1991) (noting that courts
have interpreted functional language in an apparatus claim as requiring that
the apparatus possess the capability of performing the recited function).
Appellant has not attempted to refute the Examiner’s finding that an
apparatus resulting from the Examiner’s proposed combination of Sakai and
Sago would be capable of changing pressures as recited in claims 1 and 30.
Therefore, Appellant has not persuaded us that the Examiner erred in
concluding that the claimed invention would have been obvious within the
meaning of 35 U.S.C. § 103(a).
In view of the foregoing, we sustain the rejection of claims 1, 2, 9-11,
14, and 30 under 35 U.S.C. § 103(a) as unpatentable over Sakai in view of
Sago.
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).
AFFIRMED

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