Ex Parte Kwok et al

Board of Patent Appeals and Interferences

Jun 8, 2010

10374550 (B.P.A.I. Jun. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte R.W.M. KWOK and W.M. LAU
____________

Appeal 2009-005107
Application 10/374,550
Technology Center 1700
____________

Decided: June 8, 2010
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 2, 5-9, 11, 12, 15-17, 19, 20, 22, 28-32, and 37-41. We
have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claims 1, 16, 38, and 41 representative of the subject matter on appeal
and are set forth below:
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1. A method comprising:

(a) depositing hydrocarbon molecules comprising
hydrogen atoms and other atoms on a substrate to form a
hydrocarbon layer;

(b) bombarding the deposited molecules with only
hydrogen projectile particles which have kinetic energies
between about 5 eV and about 100 eV; and

(c) preferentially breaking C-H bonds to the hydrogen
atoms in the molecules in the hydrocarbon layer using the
hydrogen projectile particles without breaking C-C bonds in
the hydrocarbon layer using the hydrogen projectile particles.

16. The method of claim 1 wherein (c) comprises
removing hydrogen atoms to form hydrogen-deficient and
activated molecules, and wherein the method further
comprises cross-linking the hydrogen-deficient and activated
molecules on the substrate.

38. The method of claim 37 wherein the hydrogen
projectile particles are ionized hydrogen particles generated
using an electron cyclotron plasma reactor.

41. The method of claim 1 wherein the hydrocarbon
layer comprises polyethylene.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yamasaki 6,156,394 Dec. 5, 2000
Grobe, III. 6,200,626 B1 Mar. 13, 2001
Auten 6,217,171 B1 Apr. 17, 2001
Hiraoka 6,472,299 B2 Oct. 29, 2002
Kato1 JP 63020073 A Jan. 27, 1988

1 We use the English translation of Kato as translated by the USPTO
Translation Branch on January 20, 2006.
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CRC Handbook of Chemistry and Physics, 56th edition, Robert C. Weast,
Ph.D., CRC press, pp. F-224-225.

THE REJECTION(S)
1. Claims 38-41 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 1-2, 5-9, 11-12, and 15-17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hiraoka.
3. Claims 1-2, 5-9, 11-12, 15-17, 19-20, 22, 28, 30-32, and 37-41 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Kato (as
evidenced by the CRC Handbook of Chemistry and Physics, 56th ed.), and
further in view of Grobe, III.
4. Claims 1-2, 5, 7-9, 11-12, 15-17, 19-20, 22, 28-32, 37-38, and 41 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Kato (as
evidenced by the CRC Handbook of Chemistry and Physics, 56th ed.) and/or
Schultz Yamazaki in view of Auten.

To the extent that Appellant has presented substantive arguments for
the separate patentability of any individual claims on appeal, we address
them separately consistent with 37 C.F.R. § 41.37(c)(1)(vii) (2007).

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1. The Rejection under 35 U.S.C. § 112, first paragraph
Claim 38
a. Issue
Did the Examiner err in determining that the claimed phrase "an
electron cyclotron plasma reactor" is not supported by the original
Specification?
We answer this question in the negative.
b. Findings of Fact, Principles of Law, and Analysis
On page 4 of the Answer, the Examiner states that Appellants have
added the new limitation of using "an electron cyclotron plasma reactor" to
claim 38. The Examiner states the closest original support in the
Specification, such as original claim 7 or paragraph [36], refers to "an
electron cyclotron resonance plasma reactor [emphasis added]”. The
Examiner states that this disclosure is a narrower limitation than the claimed
“electron cyclotron plasma reactor” recited in claim 38.
Appellants essentially argue that the description in the Specification
need not be ipsis verbis and submit that paragraph [36] provides an adequate
written description. Br. 6.
We are not convinced by Appellants’ argument. The question is
whether the recitation introduces a new concept into the written description.
See In re Anderson, 471 F.2d 1237, 1244 (CCPA 1973) (“The question, as
we view it, is not whether ‘carrying’ was a word used in the Specification as
filed but whether there is support in the Specification for employment of the
term in a claim; is the concept of carrying present in the original
disclosure?”). In the instant case, Appellants have not adequately explained
how the concept of “an electron cyclotron plasma reactor” is supported by
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the description in paragraph [36] of “an electron cyclotron resonance (ECR)
plasma reactor [emphasis added]".
We therefore affirm the rejection of claim 38.

Claim 41
a. Issue
Did the Examiner err in determining that claim 41 lacks support for
the specific species of polyethylene being a hydrocarbon layer deposited on
a substrate?
We answer this question in the negative.
b. Findings of Fact, Principles of Law, and Analysis
On pages 4-5 of the Answer, the Examiner’s position is that the
Specification does not support claim 41, i.e., that claim 41 lacks support for
the specific species of polyethylene being a hydrocarbon layer deposited on
a substrate. The Examiner states that the Specification only provides
support for polyethylene employed as a substrate, not as a deposited
hydrocarbon layer on a substrate. The Examiner refers to paragraphs [47],
[54], and [62] in this regard. Paragraph [47] specifically discloses an
example where a flexible polymeric film (e.g. a polyethylene sheet) is
bombarded with hydrogen projectiles to selectively remove H atoms, after
which an additional substance can be deposited thereon to react with active
sites. Polyethylene is used as a substrate in this example, and is not
deposited onto the substrate. Paragraph [54] discusses prior art literature
articles about ion bombarding polyethylene films (i.e. sheets), which is not
supportive of coating with the material, i.e. the claimed forming/depositing
of a polyethylene layer on a substrate. Paragraph [62] describes spin-coating
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docosanoic acid onto a polyethylene substrate, and hence, also does not
support coating with polyethylene.
Appellants submit that paragraph [54] of the Specification and “other
portions” (unidentified) of the Specification support the concept of providing
polyethylene on a substrate. Br. 6. We are not convinced by such argument.
As stated by the Examiner, supra, paragraph [54] reflects the concept of
using a polyethylene sheet as a substrate, but not as a deposited layer.
Hence, we agree with the Examiner’s assessment of Appellants’
Specification in this regard. See Anderson, 471 F.2d at 1244.
In view of the above, we affirm the rejection of claim 41.

2. The Rejection of Claims 1-2, 5-9, 11-12, and 15-17 under 35 U.S.C.
§ 103(a) as being unpatentable over Hiraoka
a. Issue
Did the Examiner err in determining the claimed step of “depositing
hydrocarbon molecules comprising hydrogen atoms and other atoms on a
substrate to form a hydrogen layer” encompasses depositing the kind of
layer taught by Hiraoka?
We answer this question in the affirmative.
b. Findings of Fact, Principles of Law, and Analysis
It is the Examiner’s position that the hydrogen layer formed in step (a)
of Appellants’ claim encompasses organometallic & organosilicon
compounds, sometimes referred to as hybrid compounds, as included by the
class of hydrocarbons. The Examiner refers to paragraphs [16] and [27] of
Appellants’ Specification to support this position. The Examiner states that
paragraph [16] discloses that "hydrocarbons as well as many inorganic
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compounds contain hydrogen atoms...", and paragraph [27] discloses that
"examples of such molecules include hydrocarbons which can be saturated
or unsaturated . . . Further, molecules can also be any polymer containing
hydrogen atoms. In addition, the molecules can be those containing silicon
and hydrogen (e.g., silane units).” Ans. 21.
Appellants argue that Hiroaka forms deposited layers of ZnS or ZnSe,
and therefore carbon or hydrocarbon is not deposited in Hiroaka. Br. 10.
As the name implies, hydrocarbons are compounds containing
hydrogen and carbon atoms. We do not agree with the Examiner that the
claimed phrase “depositing hydrocarbon molecules comprising hydrogen
atoms and other atoms on a substrate to form a hydrogen layer”
encompasses the types of layers deposited in Hiraoka. The Examiner’s
reliance upon paragraphs [16] and [27] of Appellants’ Specification is
inaccurate. Neither paragraph enlarges the meaning of “hydrocarbons”
beyond its normally understood genus of compounds. The statement in
paragraph [16] that “[h]ydrocarbons as well as many inorganic compounds
contain hydrogen atoms” merely points out that “hydrocarbons” include
hydrogen atoms. Paragraph [27] merely discloses various types of
hydrogen-containing compounds that can be bombarded and discloses
hydrocarbons as an example. It remains that the claim only encompasses
depositing compounds containing hydrogen and carbon atoms, i.e.,
compounds ordinarily referred to as hydrocarbons. The claim does not
encompass depositing inorganic compounds such as those taught by
Hiroaka.
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Hence, Hiroaka does not suggest an element of the claim, and we
therefore reverse the rejection of claims 1-2, 5-9, 11-12, and 15-17 under 35
U.S.C. § 103(a) as being unpatentable over Hiraoka.

3. The Rejection of Claims 1-2, 5-9, 11-12, 15-17, 19-20, 22, 28, 30-32,
and 37-41 under 35 U.S.C. § 103(a) as being unpatentable over Kato (as
previously evidenced by the CRC Handbook of Chemistry and Physics, 56th
ed.), and further in view of Grobe, III.

Claim 1 and 19
a. Issue
Did the Examiner err in determining that Kato in view of Grobe, III
suggests the aspect of the claims directed to:
(b) bombarding the deposited molecules with only hydrogen projectile
particles which have kinetic energies between about 5 eV and about 100 eV;
and
(c) preferentially breaking C-H bonds to the hydrogen atoms in the
molecules in the hydrocarbon layer using the hydrogen projectile particles
without breaking C-C bonds in the hydrocarbon layer using the hydrogen
projectile particles.
We answer this question in the negative.

b. Findings of Fact, Principles of Law, and Analysis
Beginning on page 14 of the Brief, Appellants argue that Kato fails to
teach the aspect of the claims directed to steps (b) and (c) reproduced, supra.
It is the Examiner’s position that Kato teaches hydrogen extraction
without breaking C-C bonds because Kato only discusses removal of
hydrogen and contaminants such as water or oil, and thus makes no mention
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of breaking other bonds, such as C-C bonds. Ans. 9. As such, with respect
to the particular kinetic energies, the Examiner states that the energies
supplied by the plasma would reasonably have expected to have been within
the claimed range since hydrogen is removed in Kato. Ans. 9.
Alternatively, the Examiner states that “one of ordinary skill in the art would
have been reasonably expected to optimize energy parameters in order to
only perform the taught extraction, & to not extract further atoms &
functional groups than suggested, to not waste energy & do not potentially
damage the surface.” Ans. 24. In other words, the Examiner’s position is
that the claimed energies are result effective variables. In this regard, the
Examiner makes reference to the CRC Handbook that discloses that bond
strengths are known. Ans. 25.
Appellants argue that the Examiner has not established that the
teachings in Kato would “necessarily” result in the claimed limitations such
as step (b) and step (c). Br. 15.
Appellants then state that Kato fails to teach or suggest step (b). Br.
15-16. Appellants assert that Kato’s teaching, on page 3 of the English
translation, of surface hydrogen extraction using hydrogen atoms does not
teach or suggest that “C-H bonds are preferentially broken” as recited in the
claims. Appellants state that many hydrogen abstraction processes are
known in the art, and there are conventional hydrogen abstraction processes
that remove non-hydrogen atoms in the process. Appellants assert that Kato
is cumulative to the references already identified in the Background of the
Invention section of their Specification. Br. 16.
Appellants do not address the Examiner’s position that the claimed
energy range is considered a result effective variable. In other words, this
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position has not been disputed on the record since it has not been addressed
by Appellants. As such, we agree with the Examiner’s conclusion of
obviousness. A particular parameter must first be recognized as a result-
effective variable, i.e., a variable which achieves a recognized result, before
the determination of the optimum or workable ranges of said variable might
be characterized as routine experimentation. In re Boesch, 617 F.2d 272,
276 (CCPA 1980)(“[D]iscovery of an optimum value of a result effective
variable…is ordinarily within the skill of the art.”); see also In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003) (“The normal desire of scientists or
artisans to improve upon what is already generally known provides the
motivation to determine where in a disclosed set of percentage ranges is the
optimum combination of percentages.”).
In view of the above, we affirm the rejection of claims 1 and 19.

Claim 16
a. Issue
Did the Examiner err in determining that Kato in view of Grobe, III.
suggests the aspect of claim 16 "wherein (c) comprises removing hydrogen
atoms to form hydrogen-deficient and activated molecules, and wherein the
method further comprises cross-linking the hydrogen-deficient and activated
molecules on the substrate"?
We answer this question in the negative.

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b. Findings of Fact, Principles of Law, and Analysis
Appellants argue that that the Examiner alleges that it would have
been obvious to polymerize a film after removal of hydrogen to form a
network film, without providing any citation from the prior art which
supports this allegation. Appellants assert the Examiner used Appellants’
own disclosure in making the rejection rather than based upon the applied art
of record. Br. 13.
It is the Examiner’s position that Kato in view of Grobe, III would
have included cross-linking mechanisms occurring on the substrate. The
Examiner states on page 13 of the Answer:
with respect to crosslinking occurring to atoms of the substrate, it is
noted that for thicknesses of hydrocarbons employed, especially those
at the lower range of thicknesses, such as 25 Angstroms, that the
activated surface sites would also have been within effective distance
for cross-linking with the substrate surface, where in this combination
the substrate surface is a silicon surface, which has optionally been
activated for improved adhesion, as well as having been treated to
plasma hydrocarbon coating deposition, hence any potentially reactive
functionalities or activated sites remaining on the surface would have
recently been expected to have reacted by further crosslinking given
the stimulation from the taught hydrocarbon surface plasma
activation, especially considering the energetic state of the plasma
environment, as described on col. 7, lines 5-19 of Grobe, which
produces UV radiation as well as the required hydrogen species.

We are not convinced by Appellants’ arguments. Appellants do not
dispute the Examiner’s explanation, above, of how crosslinking would occur
in the combination of Kato in view of Grobe. Contrary to Appellants’
assertion, the Examiner does provide citation to the applied art, as shown
above. Patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of
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argument. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). As such, we
agree with the Examiner’s position.

Claim 38
a. Issue
Did the Examiner err in determining that Kato in view of Grobe, III
suggests the use of an ECR reactor as recited in claim 38?
We answer this question in the negative.
b. Findings of Fact, Principles of Law, and Analysis
On page 18 of the Brief, Appellants argue that the Examiner admits
that neither Kato nor Grobe, III. teaches the use of an ECR plasma reactor.
Also, Appellants point out that the Examiner (at the bottom of page 9
of the final Office Action) stated that it is "further noted that applicant's
teachings were not found to provide any particular significance to ECR
plasma use over any other plasma use." Appellants assert that the Examiner
is using Appellants' own Specification to reject the claims and is improper.
Br. 18.
We are not convinced by the above-mentioned arguments because
paragraph [36] of Appellants’ Specification discloses:
The hydrogen projectile particles can be generated using
any suitable apparatus or process. For example, high-speed
projectile particles can be formed using an adiabatic expansion
process (described in the Background section above). Also, as
described above, in some embodiments, the velocities of the
particles can be increased by ionizing them and then
accelerating them in an electrostatic ionization process. In this
regard, the ionized particles may form an ion beam. Generating
ionized projectile particles and ion beams are well known. An
exemplary apparatus that can be used to generate a beam of
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ionized projectile particles may be an electron cyclotron
resonance (ECR) plasma reactor. Electron cyclotron resonance
plasma reactors are widely used for reactive ion etching in the
semiconductor industry because they can generate intense
beams of energetic particles. Such reactors are commercially
available.

The above disclosure indicates that electron cyclotron resonance
reactors are known for reactive ion etching and are commercially available.
Also, Appellants do not dispute that such reactors are known for hydrogen
projectile particle generation. Appellants simply argue that the Examiner
relied upon their own disclosure, and for the reason expressed above, we are
not convinced of error.
In view of the above, we affirm the rejection of claim 38.

4. The Rejection of Claims 1-2, 5, 7-9, 11-12, 15-17, 19-20, 22, 28-32,
37-38, and 41 under 35 U.S.C. § 103(a) as being unpatentable over Kato (as
previously evidenced by the CRC Handbook of Chemistry and Physics, 56th
ed.) and/or Schultz Yamazaki in view of Auten

As an initial matter, Appellants focus on the reference of Schultz
Yamazaki, and hence our analysis focuses on this reference in this rejection2.
Br. 18.
Claims 1 and 19
a. Issue

2 Appellants state that their position regarding Kato is the same as
discussed, supra, and that Auten is cited for its teaching of ophthalmic
lenses and does not remedy the deficiencies of Kato, and state that their
discussion analyzes the rejection based on Schultz Yamazaki and Auten.
Also, with regard to Auten, Appellants submit that Auten does not cure the
deficiencies of Shultz Yamazaki. Br. 19.
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Did the Examiner err in determining that Schultz Yamazaki treats a
substrate to increase the C:O ratio, and therefore carbon atoms remain and
are not removed?
We answer this question in the negative.

b. Findings of Fact, Principles of Law, and Analysis
On pages 20-21 of the Brief, Appellants submit that Schultz
Yamazaki teaches away from the modification proposed by the Examiner
because if one were to modify Schultz Yamazaki to remove only hydrogen
and not carbon atoms (in other words, preferentially breaking C-H bonds
without breaking C-C bonds), one would not remove carbon from Schultz
Yamasaki's film, and Appellants assert that Schult Yamazaki wants to
remove carbon to alter the ratio of carbon to oxygen.
In response, the Examiner disagrees with Appellants’ interpretation
that Schultz Yamazaki wants to remove carbon. The Examiner’s position is
that it is evident that because Schultz Yamazaki treats a substrate to increase
the C:O ratio, then carbon atoms remain and are not removed.
As pointed out by the Examiner, because the C:O ratio does increase
after substrate treatment (Schultz Yamazaki, col. 4, ll. 45-59), the evidence
supports the Examiner’s position (carbon not removed) versus Appellants’
position (carbon removed). Patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
persuasiveness of argument. Oetiker, 977 F.2d at 1445. As such, we agree
with the Examiner’s position. Hence, we are not convinced that Shultz
Yamazaki “teaches away”, as asserted by Appellants. A reference "teaches
away" when it suggests that the developments flowing from its disclosures
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are unlikely to produce the objective of Appellants' invention; the degree of
teaching away will of course depend on the particular facts. See In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
We therefore affirm the rejection of claims 1 and 19.

Claim 16
a. Issue
Did the Examiner err in determining that Kato (as previously
evidenced by the CRC Handbook of Chemistry and Physics, 56th ed.) and/or
Schultz Yamazaki in view of Auten suggest the aspect of claim 16 "wherein
(c) comprises removing hydrogen atoms to form hydrogen-deficient and
activated molecules, and wherein the method further comprises cross-linking
the hydrogen-deficient and activated molecules on the substrate"?
We answer this question in the negative.

b. Findings of Fact, Principles of Law, and Analysis
On page 21 of the Brief, Appellants argue that the feature of "cross-
linking the hydrogen-deficient and activated molecules on the substrate" is
not mentioned in the prior art, but is mentioned at paragraph [38] of the
Specification.
It is the Examiner’s position that the conditions of the applied art
combination would induce crosslinking, and we refer to the Examiner’s
explanation as set forth on page 17 of the Answer. Therein, the Examiner
sets forth an adequate foundation that crosslinking would be affected and
Appellants do not specifically dispute this foundation. We therefore agree
with the Examiner’s position.
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Therefore, we affirm the rejection of claim 16.

Claim 38
We affirm the rejection of claim 38 for the same reason discussed,
supra, on pages 12-13 of this decision, with respect to this claim.

5. Declaration under 37 C.F.R. §1.132
On page 21 of the Brief, Appellants request consideration of a
Declaration of W.M. Lau. We have reviewed this Declaration and agree
with the Examiner’s assessment of it as set forth on page 20 of the Answer.

CONCLUSION and ORDER
1. The rejection of claims 38-41 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement is affirmed.
2. The rejection of claims 1-2, 5-9, 11-12, and 15-17 under 35 U.S.C.
§ 103(a) as being unpatentable over Hiraoka is reversed.
3. The rejection of claims 1-2, 5-9, 11-12, 15-17, 19-20, 22, 28, 30-32,
and 37-41 under 35 U.S.C. § 103(a) as being unpatentable over Kato (as
previously evidenced by the CRC Handbook of Chemistry and Physics, 56th
ed.), and further in view of Grobe, III. is affirmed.
4. The rejection of claims 1-2, 5, 7-9, 11-12, 15-17, 19-20, 22, 28-32,
37-38, and 41 under 35 U.S.C. § 103(a) as being unpatentable over Kato (as
previously evidenced by the CRC Handbook of Chemistry and Physics, 56th
ed.) and/or Schultz Yamazaki in view of Auten is affirmed.

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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)(v).

AFFIRMED

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