Ex Parte LaermerDownload PDFBoard of Patent Appeals and InterferencesAug 27, 201210519724 (B.P.A.I. Aug. 27, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/519,724 12/28/2004 Franz Laermer 10191/3980 5180 26646 7590 08/27/2012 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER DHINGRA, RAKESH KUMAR ART UNIT PAPER NUMBER 1716 MAIL DATE DELIVERY MODE 08/27/2012 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 FRANZ LAERMER ______________ Appeal 2011-008363 Application 10/519,724 Technology Center 1700 _______________ Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI and JAMES C. HOUSEL, Administrative Patent Judges. SMITH, Administrative Patent Judge DECISION ON APPEAL Appeal 2011-008363 Application 10/519,724 2 This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 14 through 31. We have jurisdiction under 35 U.S.C. § 6. Appellant’s claimed invention generally relates to generation of chlorine trifluoride. App. Br. 3. Independent apparatus claim 14 is directed to a device for generating chlorine trifluoride requiring plasma generating means to generate a high density plasma. Independent method claims 20, 27 and 29 are directed to processes of generating chlorine trifluoride using high density plasma. The Examiner relied on the following references in rejecting the appealed subject matter: Maya (Walter)1 US 3,354,646 November 28, 1967 Yamazaki US 5,641,380 June 24, 1997 Ye US 5,756,400 May 26, 1998 Mori US 6,136,214 October 24, 2000 Yanagisawa US 2001/0007275 A1 July 12, 2001 Ikeda US 6,953,557 B1 October 11, 2005 S. Suto et al., Highly Selective Etching of Si3N4 to Si02 Employing Fluorine and Chlorine Atoms Generated by Microwave Discharge, 136 J. ELECTROCHEMICAL SOC’Y 2032 (1989). 1 The Examiner and Appellant referred to the Maya reference as Walter throughout the prosecution of this application. We continue this practice to minimize confusion in our discussion. Appeal 2011-008363 Application 10/519,724 3 Appellant requests review of the following rejections (App. Br. 5) from the Examiner’s final office action: 1. Claims 14, 16-22, 27, 29 and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the admitted prior art2, Walter, Suto and Yanagisawa. 2. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the admitted prior art, Walter, Suto, Yanagisawa and Ye. 3. Claims 23 and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the admitted prior art, Walter, Suto, Yanagisawa and Mori. 4. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the admitted prior art, Walter, Suto, Yanagisawa and Ikeda. 5. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the admitted prior art, Walter, Suto, Yanagisawa and Ye. 6. Claims 28 and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the admitted prior art, Walter, Suto, Yanagisawa and Yamazaki.3 2 The Examiner relies on Appellant’s Specification page 1, ll. 10-20 as admitted prior art. 3 Appellant’s appealed ground of rejection for claims 28 and 31 erroneously excluded the reference to Yanagisawa. App. Br. 5. Our listing of the ground of rejection for review for these claims reflects the rejection of the Examiner as presented in the Answer (Ans. 16), which is consistent with the Examiner’s Final Action of June 3, 2010 (Final Action 20). Appeal 2011-008363 Application 10/519,724 4 OPINION After thorough review of the respective positions provided by Appellant and the Examiner, we REVERSE for the reasons presented by the Appellant and add the following for emphasis. We refer to the Examiner’s Answer for a statement of the Examiner’s rejection. Ans. 4-12. The Examiner found that Walter discloses a device and method that generates ClF3 as a byproduct to the production of ClF5 using glow discharge. Id. at 5. The Examiner found that Walter does not teach plasma generating means to generate high density plasma in a plasma reactor. Id. To remedy this, the Examiner turns to Suto as disclosing a microwave plasma generating means to react a first and second gas by generating a high density plasma. Id. at 6. The Examiner concluded that it would have been obvious to one skilled in the art to use Suto’s microwave plasma generating means in the device of Walter to generate ClF3. under high density plasma. Id. We find that Walter and Suto are completely different systems for reacting a fluorine containing gas and a chlorine containing gas. Walter uses plasma glow discharge having spaced electrodes to produce ClF5. Suto discloses a process for selective etching Si3N4 over SiO2 using fluorine and chlorine atoms generated by the microwave discharge of gas mixture of NF3 and Cl2. Suto 2032 (Abstract). The Examiner has not adequately explained why a person skilled in the art would use the microwave plasma generating means of Suto in Walter’s device. The Examiner has not established that the microwave plasma generating means of Suto is functionally equivalent to Walter’s plasma glow discharge having spaced electrodes. Moreover, Appeal 2011-008363 Application 10/519,724 5 Appellant argued, and we agree, that Walter is directed to the production of ClF5. App. Br. 6; Walter col. 1, ll. 7-10. For the reasons stated above and those presented by Appellant, the rejection of claims 14, 16-22, 27, 29 and 30 under 35 U.S.C. § 103(a) over the admitted art, Walter, Suto and Yanagisawa is reversed. In addressing separately rejected dependent claims 15, 23-26, 28 and 31, the Examiner relied on additional secondary references to Ye, Mori, Ikeda, and Yamazaki to meet respective limitations of these claims. Ans. 12-17. We agree with Appellant that Ye, Mori, Ikeda, and Yamazaki do not cure the deficiencies of the combination of the admitted art, Walter, Suto and Yanagisawa. App. Br. 9-12. Therefore, we also reverse the rejections of claims 15, 23-26, 28 and 31 for the reasons given above and by the Appellant. ORDER The rejections of claims 14-31 under 35 U.S.C. § 103(a) are reversed. REVERSED bar Copy with citationCopy as parenthetical citation