Ex Parte Morrisroe

Patent Trial and Appeal Board

Jan 18, 2013

11372996 (P.T.A.B. Jan. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PETER J. MORRISROE
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Appeal 2010-009961
Application 11/372,996
Technology Center 3700
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Before STEFAN STAICOVICI, JAMES P. CALVE, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009961
Application 11/372,996

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STATEMENT OF THE CASE
Peter J. Morrisroe (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 15-18,
21, 22, 24, 26, 27, and 30-35 as unpatentable over Meyer (US 4,482,246, iss.
Nov. 13, 1984) and Ito (US 5,334,834, issued Aug. 2, 1994) and claims 15-
18, 20-24, 26, 27, and 29-37 over Meyer, Ito, and Quon (US 2004/0219737
A1, publ. Nov. 4, 2004) 1. Claims 1-14, 19, 25, and 28 have been canceled.
We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a method of generating a plasma using
both inductive and capacitive coupling. Spec. 19, para. [0061] and fig. 9A.
Claims 15 and 22 are representative of the claimed invention and read
as follows:
15. A method of generating a plasma in a torch, the method
comprising:
igniting a plasma using an argon gas flow at a first flow
rate and using coupling of both inductive and capacitive
coupled RF energies; and
introducing a non-argon barrier gas flow into the torch.

22. A method comprising providing inductive coupling and
capacitive coupling to a plasma to increase the ionization
potential of the plasma.

1 The Examiner’s omission of claims 20, 23, 29, 36, and 37 appears to
be a typographical error because the Examiner used the disclosure of Quon
to show a plasma ionization potential of at least about 25eV. Compare
Office Action Summary of Final Rejection, mailed May 1, 2009 and Ans. 3-
4; see also Ans. 2. For the purpose of this appeal we shall include claims 20,
23, 29, 36, and 37 as part of this rejection.
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SUMMARY OF DECISION
We REVERSE.
ANALYSIS
Claims 15-18, 20, 21, 23, 26, 27, and 29-35
Each of independent claims 15 and 26 requires, inter alia, “igniting a
plasma . . . using coupling of both inductive and capacitive coupled RF
energies.” App. Br., Claims App’x.
The Examiner found that Meyer discloses all the limitations of
independent claims 15 and 26, but “does not disclose the step of using
coupling of both inductive and capacitive coupled RF energies.” Ans. 3.
Rather, the Examiner found that “Ito discloses the step of using coupling of
both inductive and capacitive coupled RF energy.” Id. (citing to Ito, col. 3
ll. 55-63; col. 4, ll. 1-10; and figs. 1 and 3)
Appellant argues that because the shielding plate of Ito is turned OFF
when the plasma is ignited, capacitive coupling “is not provided during
ignition of the plasma.” App. Br. 15-16.
In response, the Examiner takes the position that the language of
independent claims 15 and 26 “does not require that capacitive coupling has
to be provided during ignition of the plasma.” Ans. 5. We disagree.
Claims are to be given their broadest reasonable interpretation
consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Furthermore, claims are construed with
an eye toward giving effect to all terms in the claim. Bicon Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). The Examiner’s
interpretation of “igniting a plasma . . . using coupling of both inductive and
capacitive coupled RF energies” as not including capacitive coupling for
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igniting plasma, in effect renders meaningless, or superfluous, the term
“both.” Appellant’s Specification describes generating a plasma by
“simultaneous coupling of both inductive and capacitive coupled RF
energies” and that “the capacitive coupling in combination with the
inductive coupling may provide for higher ionization and excitation energies
than are present when using only inductive coupling.” Spec. 19-20, para.
[0061] and fig. 9A. We thus conclude that the Examiner’s claim
construction is flawed and that the limitation of “igniting a plasma . . . using
coupling of both inductive and capacitive coupled RF energies” requires
capacitive coupling for igniting plasma. Furthermore, since shielding plate
10 of Ito is turned OFF when the plasma is ignited (see Ito, col. 3, ll. 44-48),
we agree with Appellant that Ito does not disclose the use of capacitive
coupling during ignition of plasma, as called for by independent claims 15
and 26. Reply Br. 6.
Accordingly, we cannot sustain the rejection of independent claims 15
and 26 and their respective dependent claims 16-18, 21, 27, and 30-35 under
35 U.S.C. § 103(a) as unpatentable over Meyer and Ito.
The addition of Quon does not remedy the deficiencies of Meyer and
Ito as described supra. Thus, the rejection of claims 15-18, 20, 21, 23, 26,
27, and 29-35 over the combined teachings of Meyer, Ito, and Quon likewise
cannot be sustained.

Claims 22, 24, 36, and 37
Independent claim 22 requires, inter alia, “providing inductive
coupling and capacitive coupling to a plasma to increase the ionization
potential of the plasma.” Somewhat similar, independent claim 36 requires
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“igniting a plasma in a torch . . . the torch comprises . . . a capacitive device .
. . that increases ionization potential of the plasma.” App. Br., Claims
App’x.
Pointing to column 3, lines 55-63; column 4, lines 1-10; and Figures 1
and 3 of Ito, the Examiner found that Ito discloses “the step of coupling of
both inductive and capacitive coupled RF energy.” Ans. 3. The Examiner
further points to capacitor 11 of Ito as evidence of a capacitive device that
provides capacitive coupling. Ans. 6.
We are not persuaded by the Examiner’s position because we could
not find in the Examiner’s cited portions of Ito any disclosure of capacitive
coupling that increases the “ionization potential of the plasma,” as called for
by each of independent claims 22 and 36. As noted above, Appellant’s
Specification describes the use of capacitive coupling in addition to
inductive coupling to “provide for higher ionization and excitation energies
than are present when using only inductive coupling.” Spec. 19-20, para.
[0061]. We agree with Appellant that because shielding plate 10 of Ito is
designed to shield the generated plasma from exposure to the inductive
coupling provided by induction coil 2, “the shielding effect from the
shielding plate of Ito[] does not add any RF energy to the plasma but instead
is designed to reduce the amount of RF energy provided to the plasma by the
induction coil.” App. Br. 15; see also Reply Br. 5. We further agree with
Appellant that the mere existence of a capacitor, i.e. variable capacitor 11, in
a plasma control system does not “necessarily and unavoidably provide[]
capacitive coupling to the inductively coupled plasma.” Reply Br. 6.
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Thus, for the foregoing reasons, we cannot sustain the rejection of
independent claim 22 and its dependent claim 24 under 35 U.S.C. § 103(a)
as unpatentable over Meyer and Ito.
The addition of Quon does not remedy the deficiencies of Meyer and
Ito as described supra. Thus, the rejection of claims 36 and 37 over the
combined teachings of Meyer, Ito, and Quon likewise cannot be sustained.

SUMMARY
The decision of the Examiner to reject claims 15-18, 20-24, 26, 27,
and 29-37 is reversed.

REVERSED

mls