Ex Parte Laermer

Board of Patent Appeals and Interferences

Aug 27, 2012

10519724 (B.P.A.I. Aug. 27, 2012)

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
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