Ex Parte Jerez et al

Patent Trial and Appeal Board

Jul 28, 2017

14222953 (P.T.A.B. Jul. 28, 2017)

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.
14/222,953 03/24/2014 Manuel A. Jerez 339760.73 1426
27162 7590 07/31/2017
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
EXAMINER
SMYTH, ANDREW P
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
07/31/2017 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 MANUEL A. JEREZ and CARLOS F.M. BORGES
____________

Appeal 2016-007452
Application 14/222,953
Technology Center 2800
____________

Before PETER F. KRATZ, JULIA HEANEY, and BRIAN D. RANGE,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–3 and 6–8. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to an extraction electrode
for an ion implanter.
Claim 1 is illustrative and reproduced below:
1. An extraction electrode for an ion implanter comprising
a pair of sub-assemblies defining a gap therebetween;
each said sub-assembly including
a suppression plate of semi-circular shape having a
rectangular notch in a side thereof facing a suppression
plate of the other of said pair of sub-assemblies,
Appeal 2016-007452
Application 14/222,953

2
a cover disposed over said notch of said
suppression plate and spaced from a cover of the other of
said pair of subassemblies to define a slit therewith,
a ground plate spaced from said suppression plate
and having a notch in a side thereof in alignment with
said notch of said suppression plate,
a pair of insulating assemblies connected to said
suppression plate and passing through said ground plate,
said insulating assemblies spacing said suppression plate
from said ground plate,
a shield secured to said ground plate and disposed
within said notch of said suppression plate and within
said notch of said ground plate to define a path for an ion
beam thereby, and
a plate assembly extending perpendicularly from
said ground plate.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Burgin et al. US 5,920,076 July 6, 1999
Ryding et al. US 6,501,078 B1 Dec. 31, 2002
Satoh et al. US 2010/0072402 A1 Mar. 25, 2010

The Examiner maintains the following grounds of rejection:
Claims 1–3 and 6–8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burgin in view of Ryding and Satoh.
We reverse the stated rejection.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984). Here, the Examiner’s reliance on several
proposed modifications of Burgin based on the additional teachings of
Ryding and Satoh to underpin the stated obviousness rejection is premised
Appeal 2016-007452
Application 14/222,953

3
on apparent misinterpretations and/or faulty/incomplete characterizations of
the applied references’ teachings and their relationship to the extraction
electrode structure of independent claims 1 and/or 6 in several respects and
is not well founded for reasons exposed by Appellants’ arguments (App. Br.
5–17; Reply Br. 2–6).
For instance, the Examiner errs in the stated rejection by finding that
Burgin’s Figure 1 (labelled “PRIOR ART” by Burgin) shows “a plate
assembly (un-labeled portion extending down to 13) extending
perpendicularly from said ground plate (5)” (Final Act. 8; Ans. 13). In this
regard, the unlabeled portion of Burgin’s Figure 1 relied upon by the
Examiner as corresponding to the plate assembly of Appellants’ claim 1 (or
claim 6) is shown as generally extending in a direction substantially parallel
to the ground plate 5 of Burgin as depicted in Burgin’s Figure 1, not
extending perpendicular thereto (App. Br. 17).1 The Examiner does not rely
on either of the other applied references for this claimed feature.
Consequently, on this basis alone, the Examiner has not carried the burden
to establish a prima facie case of obviousness as to the claimed subject
matter.
In addition, and with respect to claim 1, the Examiner finds that
Burgin fails to disclose (Final Act. 8):
a pair of sub-assemblies defining a gap therebetween;
each said sub-assembly including a suppression plate of semi-
circular shape having a rectangular notch in a side thereof
facing a suppression plate of the other of said pair of sub-

1 The thickness of the unlabeled elements (plate assembly) is not the
direction of extension as seemingly found by the Examiner in referring to
the relied upon unlabeled element(s) as corresponding to the required plate
assembly as “extending down to 13” (Final Act. 8).
Appeal 2016-007452
Application 14/222,953

4
assemblies, a cover disposed over said notch of
said suppression plate and spaced from a cover of the other of
said pair of subassemblies to define a slit therewith, and a
ground plate spaced from said suppression plate and having an
a notch in a side thereof in alignment with said notch of said
suppression plate.

With the exception of the cover plate, the Examiner similarly finds
that Burgin lacks a description of the aforementioned features as required by
claim 6, the other rejected independent claim on appeal (Final Act. 11).
Upon consideration of the evidence on this record in light of the
arguments advanced by the Examiner and Appellants, we concur with
Appellants that the Examiner has not established a prima facie case of
obviousness, within the meaning of 35 U.S.C. § 103(a), regarding the
subject matter required by independent claims 1 or 6, which include all of
the aforementioned features found by the Examiner to be missing from the
description of Burgin based on the additionally applied teachings of Ryding
and Satoh.
In particular, the Examiner has not demonstrated that Ryding, Satoh,
or other knowledge in the art furnish sufficient teachings and/or direction
such that the applied references, as combined by the Examiner, would have
led one of ordinary skill in the art to arrive at an extraction electrode
corresponding to the claimed electrode, including the required pair of
subassemblies of claim 1 or claim 6, based on the Examiner’s proposed
modifications of Burgin’s Figure 1 apparatus to include a pair of such
subassemblies, substantially for reasons argued by Appellants (see, e.g.,
Reply Br. 3, 5; App. Br. 5–17; see Final Act. 7–10, 13–14; Burgin, Fig. 1;
col. 1, ll. 1–47).
Appeal 2016-007452
Application 14/222,953

5
After all, rejections based on § 103(a) must rest on a factual basis with
these facts being interpreted without hindsight reconstruction of the
invention from the prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
Accordingly, we reverse the Examiner’s § 103(a) rejection of the
appealed claims.
CONCLUSION
In view of the foregoing, the decision of the Examiner to reject the
appealed claims is reversed.

REVERSED