Ex Parte Mahl et al

Board of Patent Appeals and Interferences

Sep 14, 2011

10874374 (B.P.A.I. Sep. 14, 2011)

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.
10/874,374 06/24/2004 Jerry Michael Mahl 21390 8179
27182 7590 09/14/2011
PRAXAIR, INC.
LAW DEPARTMENT - M1 557
39 OLD RIDGEBURY ROAD
DANBURY, CT 06810-5113
EXAMINER
CHEUNG, WILLIAM K
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
09/14/2011 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 JERRY MICHAEL MAHL,
KAREN ANNE CONNERY,
and THOMAS JOHN BERGMAN JR.
__________

Appeal 2010-004109
Application 10/874,374
Technology Center 1700
___________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHUNG K. PAK, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 1, 2, and 4-13.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection.

1 Claims 14-17 are also pending but have been withdrawn from consideration.
Appeal 2010-004109
Application 10/874,374

2

The subject matter on appeal is directed to a method of pre-treating a
polymeric material in a treatment chamber. Claims 1 and 2, reproduced below, are
illustrative.
1. A method of pre-treating a polymeric material in a treatment
chamber, comprising:
providing a polymeric material component into said treatment
chamber, wherein said polymeric material component is utilized in a
subsequent semiconductor fabrication process after treatment, and is
disposed upstream of the semiconductor tool;
introducing a dense phase carbon dioxide fluid into said
treatment chamber;
exposing said polymeric material component to said carbon
dioxide fluid to extract non-volatile organic residue contained in said
polymeric material component;
removing a contaminated carbon dioxide fluid containing said
extracted non-volatile organic residue from said treatment chamber
such that a portion of the non-volatile organic residue does not deposit
onto said polymeric material component by depressurization of said
treatment chamber;
removing the polymeric material component from said
treatment chamber; and
utilizing the pre-treated polymeric material component in a
process for delivering dense phase carbon dioxide to an application.
2. The method of claim 1, wherein said polymeric material
component is utilized in a semiconductor process after pre-treatment.
App. Br., Claims Appendix (emphasis added).2
The only rejection on appeal is the rejection of claims 1, 2, and 4-13 under
35 U.S.C. § 103(a) as unpatentable over Inoue.3

2 Appeal Brief dated August 4, 2008.
Appeal 2010-004109
Application 10/874,374

3

B. DISCUSSION
1. New ground of rejection
The Examiner contends that the limitation “utilizing the pre-treated
polymeric material component in a process for delivering dense phase carbon
dioxide to an application” is merely an intended use of “the pre-treated polymeric
material” recited in claim 1. The Examiner bases this position on the preamble in
claim 1. That is, the Examiner contends that claim 1 is directed to “[a] method of
pre-treating a polymeric material in a treatment chamber” not “a method of
utilizing the pre-treated polymeric material component.” Ans. 6.4
The Examiner contends that “[i]f the prior art structure is capable of
performing the intended use, then it meets the claim.” Ans. 6. The Examiner does
not find that Inoue discloses the “utilizing” limitation recited in claim 1 but rather
appears to be of the opinion that the pretreated workpiece disclosed in Inoue (e.g.,
a semiconductor wafer) is capable of being used in “a process for delivering dense
phase carbon dioxide to an application” as recited in claim 1.
The Appellants contend that the limitation “utilizing the pre-treated
polymeric material component in a process for delivering dense phase carbon
dioxide to an application” is not an intended step but is a required step. Br. 11.
The Appellants contend:

3 WO 03/049167 published June 12, 2003. An English translation of WO
03/049167 dated March 2009 is of record in this application. However, the
Examiner relies on US 6,962,161 B2 issued November 8, 2005, as evidence of the
disclosure of WO 03/049167. The Appellants do not object. Therefore, we will
also rely on US 6,962,161 B2 as evidence of the disclosure of WO 03/049167 in
this Decision on Appeal.
4 Examiner’s Answer dated October 28, 2008.
Appeal 2010-004109
Application 10/874,374

4

[T]he Examiner disregards the expressly recited step merely
because the preamble of the claim recites “A method of pre-
treating a polymeric material in a treatment chamber . . .” and
not a method of “utilizing a pre-treated polymeric component”.
Applicants maintain that if there is an inconsistency between
the preamble and a recited step, a more proper means of
resolving such issue is to reject the claim under 35 USC 112
and not ignore the step altogether merely to construct a prior art
based rejection.
Br. 12.
Based on the foregoing, a rejection under 35 U.S.C. § 112, second
paragraph, is appropriate. That is, in view of the preamble of claim 1 which recites
“[a] method of pre-treating a polymeric material in a treatment chamber,” it is
unclear whether the limitation of “utilizing the pre-treated polymeric material
component in a process for delivering dense phase carbon dioxide to an
application” is a step in the claimed method or is an intended use of the pre-treated
polymeric material subsequent to pretreatment.
Moreover, claim 1 recites the step of:
providing a polymeric material component into said
treatment chamber, wherein said polymeric material component
is utilized in a subsequent semiconductor fabrication process
after treatment, and is disposed upstream of the semiconductor
tool . . . .
Br., Claims Appendix (emphasis added). It is unclear on this record whether “an
application,” recited in the “utilizing” limitation discussed above, refers to “a
subsequent semiconductor fabrication process after treatment” or some other
unspecified application.
Appeal 2010-004109
Application 10/874,374

5

Adding to the confusion is the limitation in claim 2 that “said polymeric
material component is utilized in a semiconductor process after pre-treatment.”
Br., Claims Appendix. In the event that “an application” does refer to “a
subsequent semiconductor fabrication process after treatment,” it is unclear
whether this semiconductor fabrication process is the same as or different from the
“semiconductor process after pre-treatment” recited in claim 2. Moreover, as with
claim 1, it is unclear whether the limitation in claim 2 is a step in the claimed
method or is an intended use of the polymeric material component after
pretreatment.
In sum, claims 1 and 2 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject matter
which the Appellants regard as their invention.
Claims 4-13 depend from claim 1. Therefore, claims 4-13 are also rejected
under 35 U.S.C. § 112, second paragraph.
2. Rejection under 35 U.S.C. § 103(a)
The obviousness of claims 1, 2, and 4-13 cannot be assessed in view of the
indefiniteness of claim 1. Therefore, the § 103(a) rejection of claims 1, 2, and 4-13
is procedurally reversed.5 See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962)
(reversing obviousness rejection because it was based on speculation as to the
meaning of claim terms and assumptions as to claim scope).
C. DECISION
Based on the foregoing, it is hereby

5 The reversal is merely pro forma and is not based on the merits of the Examiner’s
§ 103(a) rejection.
Appeal 2010-004109
Application 10/874,374

6

ORDERED that the rejection of claims 1, 2, and 4-13 under 35 U.S.C.
§ 103(a) as unpatentable over Inoue is reversed; and it is
FURTHER ORDERED that a new ground of rejection of claims 1, 2,
and 4-13 under 35 U.S.C. § 112, second paragraph, is entered; and it is
FURTHER ORDERED that the Appellants may either reopen
prosecution or request rehearing pursuant to 37 C.F.R. § 41.50(b) (2010) in
response to this Decision on Appeal; and it is
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)
(2010).
REVERSED; 37 C.F.R. § 41.50(b)

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