Ex Parte Ohmi et alDownload PDFBoard of Patent Appeals and InterferencesNov 21, 200810861388 (B.P.A.I. Nov. 21, 2008) Copy Citation 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 ____________ 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 2 Appeal 2008-4174 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. 3 Appeal 2008-4174 Application 10/861,388 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. 4 Appeal 2008-4174 Application 10/861,388 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 5 Appeal 2008-4174 Application 10/861,388 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). 6 Appeal 2008-4174 Application 10/861,388 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 7 Appeal 2008-4174 Application 10/861,388 114 (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). 8 Appeal 2008-4174 Application 10/861,388 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). 9 Appeal 2008-4174 Application 10/861,388 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 10 Appeal 2008-4174 Application 10/861,388 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 cam PILLSBURY WINTHROP SHAW PITTMAN, LLP P.O. BOX 10500 MCLEAN, VA 22102 11 Copy with citationCopy as parenthetical citation