Ex Parte Ohmi et al

Board of Patent Appeals and Interferences

Nov 21, 2008

10861388 (B.P.A.I. Nov. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TADAHIRO OHMI
And MASAKI HIRAYAMA
____________

Appeal 2008-4174
Application 10/861,388
Technology Center 1700
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Decided: November 21, 2008
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
16-23. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.1

1 An oral hearing was held in this appeal on October 22, 2008.
Appeal 2008-4174
Application 10/861,388

INTRODUCTION
Appellants claim a plasma processing apparatus comprising, in
relevant part, “a substantially flat shower head [111] provided between the
dielectric material shower plate [103] and the substrate [114] to be processed
in which the second gas has a different composition than a composition of
the first gas, said shower head having a plurality of openings [206] which
cause the first gas discharged from the dielectric material shower plate [103]
to pass therethrough and flow to the side of the substrate [114]” (claim 16,
Figures 1 and 2).
Claim 16, the only independent claim on appeal, is illustrative:
16. A plasma processing apparatus for applying a process to a
substrate to be processed, the plasma processing apparatus comprising:

a chamber of which interior can be depressurized;

a gas supply system constructed and arranged to supply a first gas to
the chamber;

an exhaust gas system configured and arranged to exhaust the first gas
supplied to the chamber and to depressurize the chamber;

a part of a wall constituting the chamber being a flat plate dielectric
material plate formed of a material which passes a microwave therethrough
substantially without a loss;

a flat plate dielectric material shower plate provided between the
dielectric material plate and plasma excited in the chamber, said dielectric
shower plate being formed of a material which passes a microwave
therethrough substantially without a loss;

a plurality of gas discharge holes being formed in the dielectric
material shower plate so that at least a part of the first gas supplied by the
gas supply system is discharged through the plurality of gas discharge holes
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Application 10/861,388

through a gap between the dielectric material plate and the dielectric
material shower plate;

a flat plate slot antenna provided on an outer side of the chamber with
the dielectric material plate interposed therebetween so as to supply a
microwave for exciting plasma through the dielectric material plate;

a stage provided on an inner side of the chamber so as to hold the
substrate to be processed; and

a substantially flat shower head provided between the dielectric
material shower plate and the substrate to be processed so as to discharge a
second gas to a side of the substrate to be processed in which the second gas
has a different composition than a composition of the first gas, said shower
head having a plurality of openings which cause the first gas discharged
from the dielectric material shower plate to pass therethrough and flow to
the side of the substrate,

wherein said dielectric material shower plate and said shower head are
arranged substantially parallel to each other with a distance therebetween
that is substantially equal to a multiple of a quarter of a wavelength of said
microwave in a vacuum.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Besen US 5,556,475 Sep. 17, 1996
Ohmi US 6,357,385 B1 Mar. 19, 2002
Kawakami US 6,399,520 B1 Jun. 4, 2002
Collins US 6,545,420 B1 Apr. 8, 2003

The rejections provided by the Examiner are as follows:
1. Claims 16-23 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 16-23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ohmi in view of Kawakami and Besen.
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3. Claims 18 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ohmi in view of Kawakami, Besen, and Collins.

Appellants only argue claim 16 with regard to rejection 1 above.
Accordingly, we focus on claim 16 in the Decision with regard to rejection
1. With regard to rejections 2 and 3, Appellants separately argue all the
claims. For reasons evident below we focus on claim 16, the only
independent claim on appeal, with regard to rejections 2 and 3.

35 U.S.C. § 112, FIRST PARAGRAPH, REJECTION: LACK OF
WRITTEN DESCRIPTION2

The Examiner contends that claim 16 recites “shower head” and
Appellants’ Specification is devoid of any reference to a “shower head”
(Ans. 3). The Examiner further explains that there is “no specific reference
in Applicant’s specification to the explicit term “shower head””, which the
Examiner determines creates “immediate and pronounced ambiguity as to
what Applicant perceives as the claimed invention and that Applicants had
possession of the claimed invention” (Ans. 12).
Appellants argue that the Specification describes a shower head 111
and the originally filed claims recite a shower head, which demonstrates that
they had possession of the claimed invention (App. Br. 6).

2 Appellants also request the objection to the drawings under 37 C.F.R.
§ 1.83(a) be withdrawn. However, objections to the drawings are not
appealable matters. Rather, the proper recourse to such objections is by
petition to the Director.
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ISSUE
The issue presented in this Appeal is as follows: did Appellants
establish that their Specification provides written descriptive support for
the claimed “shower head” feature? We answer that question in the
affirmative.

PRINCIPLES OF LAW
The fundamental factual inquiry in determining whether a claimed
invention satisfies the written description requirement of 35 U.S.C. § 112,
first paragraph, is whether the specification conveys with reasonable clarity
to those skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The claimed subject matter need
not be described in haec verba in the specification in order for that
specification to satisfy the description requirement. In re Smith, 481 F.2d
910, 914 (CCPA 1973). The PTO has the initial burden of presenting
evidence or reasons why persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the claims. In re
Wertheim, 541 F.2d 257, 263 (CCPA 1976).
For applications filed on or after September 21, 2004 (the effective
date of 37 C.F.R. § 1.115(a)(1)), a preliminary amendment that is present on
the filing date of the application is part of the original disclosure of the
application. 37 C.F.R. § 1.115(a)(1) (2004); Manual of Patent Examining
Procedures (MPEP) § 714.01(e) (Rev. 6, Sept. 2007). For applications filed
before September 21, 2004, a preliminary amendment that is present on the
filing date of the application is part of the original disclosure of the
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application if the preliminary amendment was referred to in the first
executed oath or declaration under 37 C.F.R. § 1.63 filed in the application.
MPEP at § 714.01(e).
FACTUAL FINDINGS (FF)
1. The written description portion of the Specification does not use the
term “shower head.”
2. A Preliminary Amendment filed June 7, 2004, the filing date of the
present application, added new claim 16, which recited the term
“shower head.”
3. The Declaration filed June 7, 2004 does not refer to the Preliminary
Amendment.
4. The Specification describes a lattice-like shower plate 111
comprising main pipes 201 and branch pipes 202 (Spec. 13:13-33;
Figure 2).
5. Figure 1 of the Specification shows that the lattice-like shower plate
111 is flat.
6. The Examiner finds that the claim term “shower head” in the context
of the plasma device invention was adopted from the household term
“shower head”, which the Examiner defines as “a fixture for directing
the spray of water in a bathroom shower.” (Ans. 15).
7. Appellants do not dispute the Examiner's definition of “shower
head.”
8. The branch pipes 202 of the lattice-like shower plate are provided
with discharge holes 113 for distributing process gas to the surface of
the substrate. (Spec. 13:27-31).
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9. The lattice-like shower plate 111 is shown positioned above the
substrate for discharging process gas toward the substrate 114 (Figure
1).

ANALYSIS
The Examiner’s § 112, first paragraph, rejection is based on the
Specification being devoid of any reference to a “shower head.” However,
the claimed subject matter need not be described in haec verba in the
specification in order for that specification to satisfy the description
requirement. Smith, 481 F.2d at 914. The claimed subject matter may be
supported by express, implicit or inherent disclosure in the Specification.
Though Appellants argue that the claim term “shower head” is part of
the originally filed claims, the claim term only appears as part of a
Preliminary Amendment filed June 7, 2004 (FF 2). Because the filing date
of the application is before September 21, 2004, the effective date of
37 C.F.R. § 1.115(a)(1) that makes Preliminary Amendments present on the
filing date of the application part of the original disclosure, Appellants’
Preliminary Amendment is not considered part of the original disclosure
unless referred to in the originally filed declaration. Appellants have not
referred to the Preliminary Amendment in the originally filed Declaration
(FF 3). Accordingly, Appellants cannot rely on the Preliminary Amendment
for original written description support of the claimed “shower head”
feature.
However, Appellants’ Specification plainly discloses that the lattice-
like shower plate functions as a “shower head” as defined in the record; the
lattice-like shower plate discharges gas toward the surface of the substrate
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114 (FF 6-9). Accordingly, we determine that Appellants’ Specification
demonstrates that they had possession of the claimed “shower head” at the
time of filing the application so as to satisfy the written description
requirement of 35 USC § 112, first paragraph.
We reverse the Examiner’s § 112, first paragraph, rejection of claims
16-23 as failing to comply with the written description requirement.

35 U.S.C. § 103 REJECTIONS OVER OHMI IN VIEW OF KAWAKAMI
AND BESEN; AND OHMI IN VIEW OF KAWAKAMI IN VIEW OF
BESEN AND COLLINS

The Examiner contends that the “flat shower head” feature having a
plurality of openings for passage of a first discharged gas therethrough is
taught or suggested by Ohmi in view of Kawakami because the end of
Kawakami’s pipes 72 are the openings that permit gas to flow therethrough
and toward the substrate (Ans. 3-6, 16).
Appellants contend that the “flat shower head” feature of claim 16
having openings for passage of the first discharged gas therethrough is not
taught or suggested by Ohmi in view of Kawakami and Besen (App. Br. 10).
Appellants contend that the Examiner’s finding that the end of Kawakami’s
pipes 72 constitute the claimed “openings [which] cause the first gas
discharged from the dielectric material shower plate to pass therethrough” is
misguided because the first gas discharged by dielectric shower plate does
not pass through the ends of pipes 72, where a second gas is exiting (Reply
Br. 4-5).

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ISSUE
The issue presented in this appeal is: did Appellants show that the
Examiner erred in determining that Ohmi or Kawakami teaches or suggests
the “flat shower head” feature having a plurality of openings for passage of
gas therethrough as claim 16 requires? We answer that question in the
affirmative.

PRINCIPLES OF LAW
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). For a prima facie case of
obviousness all the claim features must be taught or suggested by the applied
prior art. In re Royka, 490 F.2d 981, 985 (CCPA 1974).

FACTUAL FINDINGS (FF)
10. The Examiner finds that Ohmi discloses the features of claim 16,
except the flat shower head feature having a plurality of openings
which cause the first gas discharged from the dielectric material
shower plate to pass therethrough and flow to the side of the substrate,
and the claimed distance between the dielectric shower plate and the
shower head (Ans. 3-6).
11. The Examiner finds that Kawakami’s pipes 72 constitute a flat,
shower head (Ans. 8, 16).
12. The Examiner finds the ends of pipes 72 constitute openings in
Kawakami’s shower head “to permit gas to pass through and flow to a
side of the substrate" (Ans. 16).
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13. Kawakami discloses using sixteen pipes 72 equally disposed along a
circumference of vacuum chamber 50 to uniformly supply gas
including a rare gas and N in the neighborhood of a plasma area P of
the vacuum chamber (Kawakami, col. 7, ll. 13-18; col. 11, ll. 61-67).
14. Kawakami discloses that SiH4 gas (i.e., a first gas) is supplied from
gas supply chamber 54 and, at the same time, Xe gas and N2 gas (i.e.,
a second gas mixture) are supplied from gas supply tubes 72
(Kawakami, col. 12, ll. 54-61).
15. Kawakami does not disclose passing SiH4 gas (i.e., the first gas)
through the ends of tubes or pipes 72, which supply a rare gas and N.

ANALYSIS
Based on the above Findings of Fact, we determine that the Examiner
has not established that the “flat shower head” having openings for passage
of a first gas discharged from a dielectric shower plate claim feature is
taught or suggested by the applied prior art. The Examiner finds that the
ends of Kawakami’s pipes 72 constitute the claimed “openings” of the “flat
shower head” (FF 12). However, as correctly pointed out by Appellants, the
ends of Kawakami’s pipes 72 cannot correspond to the claimed openings in
the shower head because the openings in the ends of pipes 72 are not capable
of permitting passage of the first gas discharged by the dielectric shower
plate toward the substrate. Rather, the ends of Kawakami’s pipes 72 are
structured to merely permit passage of the second gas toward the substrate.
Accordingly, the Examiner has not established that the “plurality of
openings” claim feature of the shower head is taught or suggested by the
prior art. Because all of the claim features are not taught or suggested by the
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prior art, we reverse the Examiner’s § 103 rejection of claims 16-23 over
Ohmi in view of Kawakami and Besen, and the Examiner’s § 103 rejection
of dependent claims 18 and 19 over Ohmi in view of Kawakami, Besen, and
Collins.

DECISION
The Examiner’s decision is reversed.
ORDER
REVERSED

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