Ex Parte Wensel

Board of Patent Appeals and Interferences

Dec 19, 2003

09756929 (B.P.A.I. Dec. 19, 2003)

- 1 -
The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 27

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte RICHARD W. WENSEL
______________

Appeal No. 2003-1501
Application 09/756,929
_______________

HEARD: November 5, 2003
_______________

Before KIMLIN, WARREN and OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally
rejecting claims 1 through 20 and 43 through 62. Appellant cancelled claims 1 through 20
subsequent to the final rejection, leaving claims 43 through 62 for our consideration on appeal.
Claims 43, 47 and 531 are illustrative of the claims on appeal:
43. An apparatus for removing contaminants from one or more component surfaces of an
encapsulated object, the apparatus comprising:
an encapsulated object:
an enclosure for housing an encapsulated object; and

1 We reproduce these claims as they stand of record, including the last clause of appealed claim
47 (“of gas” and “and an electric field”). See the amendment of April 12, 2002 (Paper No. 9).
Appeal No. 2003-1501
Application 09/756,929
- 2 -
a source of plasma gas, coupled to said enclosure, for exposing the encapsulated object in
said enclosure to plasma gas;
wherein a reaction of the plasma gas at a component surface of the encapsulated object
causes any contaminates thereon to be removed from the component surface of the encapsulated
object.
47. A plasma cleaner comprising:
an encapsulated electronic component:
a reaction chamber;
a gas source coupled to said reaction chamber;
an electric field source coupled to said reaction chamber; and
a vacuum pump coupled to said reaction chamber, wherein said vacuum pump maintains
vacuum pressure in said reaction chamber and removes by-products produced from reaction on a
surface of the encapsulated electronic component of gas, which is supplied to said reaction
chamber by said gas source, and an electric field, which is supplied to said reaction chamber by
said source of electric field.
53. A manufacturing apparatus for treating and curing electronic packages, the apparatus
comprising:
a plurality of electronic packages;
a process unit in which the electronic packages are disposed for treatment and curing;
a gas source, coupled to said process unit, for introducing gas into said process unit;
an energy field generator supplying an energy field inside said process unit, to cause
within said process unit the gas to produce a plasma which reacts on conductive surfaces of the
electronic packages to remove encasing material and contaminants therefrom; and
a heat source providing heat inside said process unit to cure the electronic packages.
The appealed claims, as represented by the above claims, are drawn to apparatus for
plasma cleaning and can include curing a workpiece, which can be an encapsulated object or an
electronic package, by exposing the workpiece to plasma gas in a reaction chamber, that is also
termed an enclosure or a processing unit.
The references relied on by the examiner are:
Ito et al. (Ito) 4,486,461 Dec. 4, 1984
Rigali et al. (Rigali) 5,766,404 Jun. 16, 1998
The examiner has rejected appealed claims 43, 44, 46 through 52, 58 and 59 under
35 U.S.C. § 102(e) as being anticipated by Rigali (answer, page 5), and appealed claims 45,
Appeal No. 2003-1501
Application 09/756,929
- 3 -
53 through 57 and 60 through 62 under 35 U.S.C. § 103(a) as being unpatentable over Rigali in
view of Ito (answer, page 6).
Appellant groups the claims into four groups for purposes of appeal, wherein the claims
in each group stand or fall together, with the four groups represented by claims 43, 47, 53 and 56,
respectively (brief, page 5). With respect to appealed claim 56, appellant relies on the same
arguments made with respect to the same and similar claim language that appears in appealed
claim 53 and other claims (brief, pages 16 and 19-20; reply brief, pages 11 and 14-15). Thus, we
decide this appeal based on appealed claims 43 and 47 with respect to the first ground of
rejection, and on appealed claim 53 with respect to the second ground of rejection. 37 CFR
§ 1.192(c)(7) (2002).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the examiner’s answer and to appellant’s brief and reply brief for a complete exposition
thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported finding advanced by the examiner that as a matter of fact, prima
facie, appealed claims 43 and 47 are anticipated by Rigali (answer, page 5). Based on our
review, we further are in agreement with the supported conclusion advanced by the examiner that
as a matter of law, prima facie, one of ordinary skill in this art would have found in the combined
teachings of Rigali and Ito the reasonable suggestion to modify the apparatus of Rigali by adding
thereto a heat source in a plasma processing apparatus as required by appealed claim 53 in the
reasonable expectation of controlling the temperature of a workpiece (answer, page 6).
Accordingly, since a prima facie case of anticipation has been established over Rigali
with respect to appealed claims 43 and 47, and a prima facie case of obviousness has been
established over the combined teachings of Rigali and Ito with respect to appealed claim 53, we
have again evaluated all of the evidence of anticipation and non-anticipation and all of the
evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellant’s arguments in the brief and reply brief. See generally,
Appeal No. 2003-1501
Application 09/756,929
- 4 -
In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir. 1990); In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
With respect to several issues raised by appellant, we interpret appealed claims 43, 47 and
53 mindful that we must give the language thereof the broadest reasonable interpretation in light
of the written description in appellant’s specification as it would be interpreted by one of
ordinary skill in this art. See, e.g., In re Thrift, 298 F.3d 1357, 1364, 63 USPQ2d 2002, 2006
(Fed. Cir. 2002); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In doing so,
we will not read any limitations of the specification, or any preferred embodiment or example
therein, into the claim unless there is basis in the claim or specification to do so. See generally,
Morris, supra; Zletz, supra; In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978);
In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). When the
specification does not contain an express definition, a reasonable, supported interpretation of the
appealed claims that differs from that urged by appellant can be used to determine the
patentability of the claims. Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1028-30 (“Absent an
express definition in their specification, the fact that appellants can point to definitions or usages
that conform to their interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.”). Thus, “[i]t is the applicants’
burden to precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute
omitted].” Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029.
Appellant submits several arguments on the basis that Rigali does not disclose plasma
treating “an encapsulated object” workpiece by a plasma treating apparatus which has a structure
that satisfies the claim limitations with respect to “an enclosure” as required by appealed claim
43 (brief, e.g., pages 6, 7 and 11; reply brief, e.g., pages 2, 5 and 6). The involved limitations are
“an encapsulated object,” “an enclosure for housing an encapsulated object” and “a source of
plasma gas, coupled to said enclosure, for exposing the encapsulated object in said enclosure to
plasma gas.”
We find that the term “encapsulated object” can be reasonably interpreted in light of the
Appeal No. 2003-1501
Application 09/756,929
- 5 -
written description in the specification to include any object that is encapsulated by a material
such as a plastic. Thus, in giving the term the broadest reasonable interpretation, it encompasses
at least molded plastic casing 30 on integrated chip 20 on lead frame 10 as seen in specification
prior art Figs. 1 and 2 (specification, page 3, lines 5-17). Such constructs can be referred to as a
“package,” “plastic package” or “encapsulated package” as known in the prior art as
acknowledged by appellant:
Semiconductor integrated circuits (ICs) (or “chips”) are typically housed in an
encasing referred to as a “package.” The package typically includes a “lead frame” that
is electrically connected to the IC within the package, and extends outward to allow
electrical connection of the IC to a circuit board or other product. One of the most
popular package types used in the art is known as the “epoxy molding” or “plastic”
package. With this type of package, the IC and lead frame are enclosed or encapsulated
by a plastic resin material that serves to protect the chip from moisture, contamination,
and other physical or environmental conditions. [Specification, page 1, line 10, to page
2, line 2.
See also specification, e.g., page 2, line 3, to page 4, line 9; page 5, line 18, to page 6, line 2;
page 8, line 13, to page 9, line 3; and page 12, lines 9-10.
Appellant agrees with the examiner (see answer, pages 6-7) that the other claim
limitations do not require magazine 50 as described in Fig. 5a and page 11 of the specification as
contended in the brief (page 6), but argues that “[t]he claims . . . require an enclosure (e.g.,
magazine or other housing structure) that both ‘hous[es] an encapsulated object’ and also permits
‘exposing the encapsulated object in said enclosure to plasma gas’ as recited” (reply brief, page
3; emphasis in original deleted).
We find that while “an enclosure” must function as specified in appealed claim 43 as
appellant argues, we do not adopt the connotation of the term “housing” with respect to “an
enclosure” implied in appellant’s argument. Indeed, it is not at all apparent from the written
description in the specification that the term “an enclosure” is limited to a structure that “houses”
the encapsulated object and resides inside a reaction chamber, as required by appellant’s
argument, and we find no basis in the claim language or in the written description to read such a
limitation into the claim. The specification does state that “[a]s shown in Fig. 5a, a plurality of
encapsulated packages 52 may be arrayed into a plurality of storage units 54 (e.g., shelves), all
housed in a magazine 50” which contains vent holes 56 to permit plasma gas to react with the
Appeal No. 2003-1501
Application 09/756,929
- 6 -
encapsulated object (page 12, lines 9-12; emphasis supplied). However, it further states in this
respect, that “the reaction chamber 58 may house a plurality of magazines 50” (id., lines 16-19;
emphasis supplied). The term “house” is further used in the written description in connection
with a “reaction chamber:” “[i]n a preferred embodiment, a plasma cleaner is provided with a
reaction chamber used to house the devices during a deflashing procedure” (page 6, lines 2-5;
emphasis supplied); and, “[t]he plasma chamber includes a process chamber 44 (also referred to
as a ‘reaction chamber’) used to temporarily house one or more semiconductor packages,
represented in Fig. 4 as lead frame 10 and casing 30, during the deflashing procedure” (page 9,
lines 13-17; emphasis supplied). It is apparent that in disclosure accompanying these passages, a
plasma gas source is “coupled” to the reaction chamber or “enclosure” as specified in appealed
claim 43 (e.g., page 6, lines 5-7, and page 9, lines 17-20).
We further find that while the claim language “an enclosure for housing an encapsulated
object” does not limit the manner in which the encapsulated object is housed in the enclosure, the
language in the preamble and the last clause of appealed claim 43 specify that at least one
component surface of the encapsulated object is subjected to the plasma gas such that any
contaminants contained thereon are removed. Thus, the “enclosure” of the claimed apparatus
must be capable of housing an encapsulated object in such manner that at least one component
surface of the encapsulated object is exposed to the plasma gas. We find here that on this record,
the preambular language does not otherwise limit the claimed apparatus. See In re Stencel,
828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987), and cases cited therein (“Whether
a [statement] . . . of intended purpose constitutes a limitation to the claims is, as has long been
established, a matter to be determined on the facts of each case in view of the claimed invention
as a whole.”).
Thus, the broadest reasonable interpretation of the claim language involving “an
enclosure” in light of the specification, encompasses within its scope a reaction chamber which
houses an encapsulated object in any manner such that at least one of its surfaces is exposed to
plasma gas from a source coupled to the enclosure.2

2 We note here with respect to several of the examiner’s arguments regarding alleged process
language and intended use language in the appealed claims (answer, e.g., pages 5 and 7-8), that it
Appeal No. 2003-1501
Application 09/756,929
- 7 -
The examiner finds that Rigali meets the limitations of, inter alia, appealed claim 43,
because it shows, inter alia, “an enclosure chamber 16” and a “gas source 30,” and that “the
apparatus of Rigali comprises an enclosure capable of housing an encapsulated object” (answer,
pages 5 and 8). We find that Rigali discloses to one skilled in the art in the first embodiment, the
plasma treatment apparatus 10 in Figs. 1 and 3 which includes as one major component,
“reaction chamber assembly 12 comprised of an outer shell or housing 18 which contains a
reaction chamber shell 20” that along with door 22, provide reaction chamber 16 (col. 6, lines 26-
48). Rigali further discloses “gas source 30 from which suitable processing gas may be injected
into reaction chamber 16” (col. 6, lines 58-60; see also col. 10, lines 61-67), and one skilled in
the art would have recognized from Fig. 1 that conduit 30’ couples gas source 30 with plasma
treatment apparatus 10 and thus with reaction chamber 16 (col. 6, lines 58-60, and col. 10, lines
61-67). As seen in Rigali Fig. 3, the workpieces 100 are exposed to plasma gas in processing
gap 140 between magazines 92 and 94 in reaction chamber 16 (e.g., col. 8, lines 36-56, col.
10, lines 29-38 and col. 11, lines 1-26).
We find that Rigali discloses “workpieces 100, e.g., leadframes” (col. 10, lines 37-38;
emphasis supplied), but other than thus citing “leadframes” as an example, merely refers to
“workpiece magazines 92 and 94” and to “workpieces 100” (e.g., col. 8, line 37) in disclosing the
first embodiment. With respect to workpiece magazines 92 and 94, Rigali describes the same as
“standard workpiece magazines . . . very widely used and well known in the integrated circuit
industry” (col. 8, lines 11-15). Indeed, Rigali generically describes the workpieces and
magazines therefor used in the apparatus (cols. 2-4). In this respect, Rigali describes plasma
treatment apparatus 10 in the first embodiment as containing many parts and subsystems that “are
substantially identical to the corresponding parts and subsystems of the PX series Plasma

is well settled that “[t]here is nothing intrinsically wrong in defining something by what it does
rather than by what it is.” See generally, In re Echerd, 471 F.2d 632, 634-35, 176 USPQ 321,
322 (CCPA 1973); In re Ludtke, 441 F.2d 660, 663-64, 169 USPQ 563, 565-67 (CCPA 1971);
In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971). In this respect, it
is appropriate to determine whether the functional, “what it does” claim language confers a
structural limitation, as in Echerd, Ludtke and Swinehart, or conveys a method or intended use
concept. See, e.g., In re Yanish, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re
Appeal No. 2003-1501
Application 09/756,929
- 8 -
Cleaning Systems” (col. 6, lines 14-20; see also col. 7, lines 53-58). Rigali discloses that the
“PX series Plasma Cleaning Systems are batch processing apparatuses the reaction chambers of
which are adapted to contain plural workpiece magazines, each . . . containing a plurality of
workpieces or integrally joined workpiece sets, e.g., leadframes” (col. 2, lines 20-29), and
acknowledges that
[t]ypical workpieces which are treated by these PX series Plasma Cleaning Systems
are hybrid integrated circuits, leadframes, multi-chip modules, medical and electronic
devices, optical devices, plastic parts where bonding is required, flat panel image
displays, and parts, components, and substrates thereof. [Col. 1, lines 25-30.]
Thus, we find that one skilled in the art would have reasonably inferred from Rigali that
workpieces 100 which can be processed in plasma treatment apparatus 10 of the first
embodiment are the typical workpieces disclosed to be used with the PX series Plasma Cleaning
Systems. See In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n
considering the disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art would reasonably
be expected to draw therefrom. [Citation omitted.]”). We further find that one skilled in the art
would have known that such typical workpieces would include the typical, “most popular”
encapsulated integrated circuits combined with lead frames, termed as “package,” “plastic
package,” etc., as acknowledged by appellant in the specification, as we discuss above (see p. 5).
In view of these facts, we are of the opinion that the examiner’s finding that the claim
limitations at issue here are met in fact by the plasma treatment apparatus 10 of the first
embodiment of Rigali is supported by substantial evidence because the reference discloses that
reaction chamber 16 houses workpieces 100 and has a source of plasma gas 30 coupled thereto
through conduit 30’, to which workpieces 100 are exposed in processing gap 140 between
magazines 92 and 94 therein. In this respect, we are further of the opinion that the examiner’s
finding in the answer (page 8) that one skilled in the art would recognize that the plasma
treatment apparatus 10 of the first embodiment of Rigali is capable of housing and treating
encapsulated objects as workpieces 100 is supported by substantial evidence, because one skilled

Casey, 370 F.2d 576, 579-80, 152 USPQ 235, 237-39 (CCPA 1967); In re Otto, 312 F.2d 937,
939-40, 136 USPQ 458, 459-60 (CCPA 1963).
Appeal No. 2003-1501
Application 09/756,929
- 9 -
in this art armed with the knowledge in the art would have reasonably inferred from the
disclosure of Rigali that typical workpieces that can be processed in plasma treatment apparatus
10 include the typical, most popular encapsulated integrated circuits on a lead frame package
acknowledged by appellant. See In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed.
Cir. 1995), and cases cited therein (“[A] skilled artisan could take [the reference’s] teachings in
combination with his own knowledge and be in possession of the [claimed] device.”); Preda,
supra.
Therefore, on this record, we determine that contrary to appellant’s arguments (brief,
pages 7-14; reply brief, pages 3-8), Rigali in fact anticipates the claimed apparatus of appealed
claim 43 without ignoring or disregarding any claim limitations.
Even so, the knowledge of one skilled in the art of the typical, most popular encapsulated
integrated circuit on a lead frame package notwithstanding, the recitation in appealed claim 43 of
“an encapsulated object” in the preamble and as an element does not serve to patentably
distinguish the claimed plasma treating apparatus from the plasma treating apparatus disclosed by
Rigali because on this record, neither the intended use recited in the preamble, see generally,
Yanish, supra; Casey, supra; Otto, supra, nor the recited element per se in fact structurally limits
the claimed apparatus in this respect. See generally, Otto, supra; In re Young, 75 F.2d 996,
25 USPQ 69 (CCPA 1935); In re Rishoi, 197 F.2d 342, 344-45, 9 USPQ 71, 72-73 (CCPA
1935); cf. Ex parte Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987). Indeed, we
found above that in light of the written description in the specification, claim 43 requires that “an
encapsulated object” is housed in a reaction chamber enclosure in any manner that permits the
exposure of at least one surface thereof to plasma gas.
We are not persuaded otherwise in this case by appellant’s arguments with respect to
Rishoi, on which the examiner relies, Morgan Envelope Co. v. Albany Paper Co., 152 U.S. 425
(1894), and In re Hughes, 49 F.2d 478, 9 USPQ 223 (CCPA 1931), cited in Rishoi, and Ex parte
Muzquiz, Appeal 1998-3425, 1998 WL 1736229 (Bd. Pat. App. & Int. 1998) (brief, pages 11-12;
reply brief, pages 6-7). Appellant submits that neither Roshoi nor Morgan Envelope or Hughes
cited thereon, “ruled on the issue with respect to an invention in which an apparatus was
purposely limited to a combination of elements (i.e., including a work piece as an express
Appeal No. 2003-1501
Application 09/756,929
- 10 -
element of the claims)” (brief, page 11; emphasis in original deleted). We do not agree with
appellant’s position with respect to Roshoi.
In Roshoi, appealed claim 10 was drawn to “[a] device for use as a churn and
butterworker comprising” a drum having a roughened surface “and a film of liquid covering
exposed portions of said” surface “whereby a butter contacting surface is secured which surface
when moistened will not readily adhere to butter.” 197 F.2d at 342, 9 USPQ at 71. The
predecessor court to our reviewing court stated:
Counsel for appellants, in their contention that the involved claims define a new
and novel structure, include the film of liquid which covers the exposed portion of the
particles [of the roughened surface] and therefore argue that a new structure is formed
by reason of the presence of this liquid film as one of the elements of the structure.
We agree with the reasoning of the board that the liquid film is not a structural
limitation and therefore cannot impart patentability to those claims which are
otherwise unpatentable. In our opinion there is no patentable combination between a
device and the material on which upon which it works. [Citation of Morgan Envelope,
supra, and Hughes, supra, omitted.]
It is clear that when the structure is completed there is no liquid therein and also
after the operation of the butter working is over the film of liquid will evaporate and
disappear. . . . [197 F.2d at 344, 9 USPQ at 73.]
We are of the view that the precedential decision in Rishoi makes clear that the “liquid
covering the exposed” surface is derived from the material on which the apparatus was intended
to work and disappears when the processed material is removed from the apparatus, and thus,
serves as no structural limitation on and forms no patentable combination with the apparatus.
Therefore, contrary to appellant’s arguments, the court in Rishoi did consider a claim in which an
apparatus was purposely combined with the work piece. Binding precedent to the contrary is not
found in Morgan Envelope as appellant contends, because, as appellant admits, the Supreme
Court in that case did not rule on the issue. Appellant advances no separate argument in support
of the contention that Hughes, earlier decided by the Rishoi court, is improperly relied on by that
court in Rishoi.
The examiner did cite, inter alia, Young, supra (answer, page 9). In this precedential
decision, the predecessor court to our reviewing court squarely considered in appealed claim 6 “a
machine for making concrete beams” having in combination, “concrete reinforced structures with
Appeal No. 2003-1501
Application 09/756,929
- 11 -
longitudinal members connected by cross bars supported by suitable chairs on the said palette.”
75 F.2d at 997, 25 USPQ at 70. The court stated that “claim 6 . . . does include as an element the
material being worked upon,” holding that “its inclusion may not lend patentability since the
claim is not otherwise allowable.” 75 F.2d at 998, 25 USPQ at 71. We note here that in the
precedential decision in Otto, supra, the predecessor court to our reviewing court considered
appealed claim 1 drawn to an “article of manufacture, a core member for hair curlers comprising
a body of elastically resilient foam material, the hair being wound directly on said body and said
body carrying a hair weaving lotion,” noting that “[i]n use, the core member may have the tresses
of hair wound on it while the core and the hair are both dry” with lotion subsequently applied and
forced into the core. 312 F.2d at 938, 136 USPQ at 458. The court held that “[i]t seems
appellants are endeavoring to predicate patentability upon a certain procedure for curling hair
using this device . . . [and] [t]his process is irrelevant as is the recitation involving the hair being
wound around the core insofar as the determination of whether these particular claims should be
allowed or rejected,” citing in this respect, inter alia, Roshoi and Young for the proposition “that
the inclusion of the material or article worked upon by a structure being claimed does not impart
patentability to the claims.” 312 F.2d at 939, 136 USPQ at 459.
We are also not persuaded by appellant’s arguments based on Muzquiz (brief, pages 12-
13; reply brief, pages 7-8), a non-precedential decision of this Board. It is apparent that in the
passage cited by appellant (brief, page 13), the prior panel expressed the opinion that “the
claimed subject matter is a combination wherein a specific form of dispenser and a specific form
of polyethylene bags on a roll are set forth together as defining” the claimed invention (slip
opinion, page 7; underline emphasis in original; italics emphasis supplied). Indeed, it is apparent
from the opinion that the prior panel found that the appealed claims required that the bags must
be of a certain structure to conform to the structure of the dispenser (slip opinion, page 6). On
this basis, the prior panel did not agree with the examiner that Masham, supra, also a non-
precedential decision of this Board, pertained to the facts of the case without discussion (slip
opinion, pages 7-8).
The facts of record before us are more akin to the authority that we rely on above and to
which we compare Masham. Indeed, in the same manner as in Rishoi, Otto, and Young, as well
Appeal No. 2003-1501
Application 09/756,929
- 12 -
as in Masham, and contrary to the facts before the panel in Muzquiz, here appealed claim 43 does
not require any structural specificity with respect to either “an encapsulated object,” or the
manner in which it is housed in “an enclosure” such that at least one surface of thereof is exposed
to plasma gas. As the examiner argues, “there is no structural difference [between the claim
apparatus and that of Rigali] as a result of the encapsulated object being processed in the
apparatus” (answer, pages 9-10).
Therefore, in the same manner as in the authority on which we rely, the claimed apparatus
of appealed claim 43 is complete without “an encapsulated object,” and accordingly, upon
consideration of the claimed invention as a whole as encompassed by appealed claim 43 and in
light of the written description in the specification, the claimed apparatus does not patentably
distinguish over Rigali by reason of the presence of “an encapsulated object” upon which it
works.
Appellant relies on the same arguments with respect to the same and similar claim
language that appears in appealed claim 47 (brief, page 14; reply brief, page 8) that we
considered above. Of the additional claim language appearing in claim 47, appellant focuses on
“a vacuum pump coupled to said reaction chamber, wherein said vacuum pump maintains
vacuum pressure in said reaction chamber and removes by-products produced from reaction on a
surface of the encapsulated electronic component of gas,” and submits that Rigali only discloses
the use of a vacuum pump to maintain pressure in the reaction chamber, citing col. 10, lines
59-60, and there is “no ‘anticipatory’ disclosure of the claimed ‘removal’ limitations” (brief,
page 15).
The examiner contends that inherently, a vacuum pump removes by-products along with
other gases in maintaining the reaction chamber at a specific pressure, and because the vacuum
pump used by Rigali is capable of performing the uses intended for such pump in appealed claim
47, “there is no structural limitation in the vacuum pump that differentiates the claimed vacuum
pump from the vacuum pump used in the Rigali apparatus” (answer, pages 10-11).
Appellant responds that the examiner has not carried the burden of establishing by fact
and technical reasoning that the inherent removal of by-products naturally reasonably necessarily
flows from the description of the operation of vacuum pump 28 in Rigali, contending that “[i]f
Appeal No. 2003-1501
Application 09/756,929
- 13 -
the vacuum pump of Rigali was actually used to perform the missing ‘removing by-products’
limitation . . . it must necessarily be operating continually to maintain pressure of 50 to 80
mTORR, as described in Rigali” (reply brief, page 9; emphasis in original deleted). Appellant
alleges that Rigali uses gas source 30 to maintain reaction chamber 16 at a partial pressure
between 100mTORR and 1.2 TORR, citing col. 10, lines 61-67, and thus, “[i]f the vacuum pump
had been continually operating . . . the processing gas would never reach it’s operating pressure
(id., pages 9-10; emphasis in original deleted). Appellant further alleges that the venting of
injected gas to the atmosphere and purging the reaction chamber with nitrogen gas taught by
Rigali at col. 11, lines 27-33, would not be necessary if “the vacuum pump [had] been operating
to necessarily perform the ‘removing’ function” (id., page 10). Appellant argues that if such
discrepancies do not show that the pump does not function to remove by-products, “they
establish an ambiguity” which is not sufficient to establish inherency.
We find no requirement in the cited language of appealed claim 47 that the vacuum pump
must operate continuously to “removes by-products” and, indeed, in the specification Example
which illustrates a batch process, “[a] vacuum is applied to maintain the pressure between 300
mTORR – 1 TORR. The plasma gas and vacuum are applied between 5 and 20 minutes of the 4
hour period” in which the workpieces are in the reaction chamber (page 13, lines 2-15). It further
appears that the use of a vacuum pump to produce the vacuum is optional (col. 13, lines 29-30).
In similar manner, the written description in the specification further discloses “[a] vacuum pump
42, which maintains the pressure inside the process chamber 44 (usually run at pressures of 150
millitorr to 1500 millitorr), may be included in the plasma cleaner to remove the contaminant by-
products” (page 12, lines 1-4).
Thus, we interpret appealed claim 47 in light of the specification to specify that the
vacuum pump must be capable of removing at least some amount of by-products, however small,
within any TORR pressure range.
We find that Rigali discloses that vacuum pump 28 of the batch processing apparatus can
be a commercially available, two stage pump (col. 6, lines 12 and 54-56), which when operated
along with the rest of the apparatus as illustrated by Rigali (col. 10, line 45, to col. 11, line 40,
particularly col. 10, lines 58-60), evacuates the reaction chamber within a lower TORR pressure
Appeal No. 2003-1501
Application 09/756,929
- 14 -
range than unidentified vacuum pumps which perform within the TORR pressure ranges stated in
the passages in the written description in the specification we discuss above. Thus, the vacuum
pump described by Rigali would be capable of performing in the TORR pressure ranges
disclosed by appellant in the specification.
Therefore, we find that it reasonably appears from this evidence that the examiner
correctly found that the vacuum pump in the apparatus of Rigali would necessarily inherently be
capable of removing at least some amount, however small, of by-products from the reaction
chamber as required by appealed claim 47 as we interpreted this claim above, even though, as
appellant points out, this claimed function for the vacuum pump is not described by Rigali.
Accordingly, the burden has shifted to appellant to establish by effective argument or objective
evidence that the vacuum pump described by Rigali cannot perform the function of removing
some amount, however small, of by-products from the reaction chamber as specified in appealed
claim 47 in order to patentably distinguish the claimed apparatus over that disclosed in the first
embodiment of Rigali under § 102(e). Appellant’s mere arguments that Rigali does not describe
the function of removing by-product from the reaction chamber fails to convince us that, on the
facts discussed above, the vacuum pump described by Rigali is inherently incapable of the
function set forth in the claim. See generally, In re Glass, 474 F.2d 1015, 1019, 176 USPQ 529,
532 (CCPA 1973); Ludtke, 441 F.2d at 663, 169 USPQ at 566.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of anticipation found in Rigali with appellant’s countervailing evidence of
and argument for no anticipation in fact and find that the claimed invention encompassed by
appealed claims 43, 44, 46 through 52, 58 and 59 is anticipated as a matter of fact under 35
U.S.C. § 102(b).
Turning now to the grounds of rejection under § 103(a), appellant’s arguments focus on
the following limitation in appealed claim 53: “a heat source providing heat inside said process
unit to cure the electronic packages.” Appellant submits that “the examiner does not identify any
disclosure (or suggestion) in Ito that meets the ‘curing’ functional limitation claimed” (brief,
page 17; emphasis in original deleted). Appellant further argues that there is no motivation or
suggestion to combine Rigali and Ito because Rigali is drawn to a system of cleaning work
Appeal No. 2003-1501
Application 09/756,929
- 15 -
pieces, and Ito is directed to improving conventional wafer deposition processes by the addition
of radiators to heat the wafers to facilitate the deposition, citing col. 3, lines 8-53 (brief, pages
18-19).
The examiner contends that “there is no structural limitation that differentiates the
claimed heat source from the heat source used in the apparatus of Rigali modified by” Ito, and
the heater disclosed by the latter “reference is capable of curing substrates, including the claimed
electronic packages” (answer, pages 11-12). The examiner further contends that one of ordinary
skill in the art would have combined the references because Ito discloses that a source of heat “is
suitable for substrate temperature control in a plasma processing apparatus,” and “that through
the knowledge generally available to one of ordinary skill in the art, it is known that the
combination of a heating treatment in a plasma environment increases the process rate . . . and
provides a more uniform treatment of the substrates” (answer, pages 12-13).
Appellant maintains that one of ordinary skill in the art would not combine Rigali with
Ito, arguing that the examiner’s reliance on “knowledge generally available to one of ordinary
skill in the art” is not supported by evidence of record (reply brief, pages 11-14).
We find that the written description in the specification with respect to the claim language
at issue here, is set forth at page 16:
[I]n another preferred embodiment, the plasma clean step 76 and cure step 78 are
implemented simultaneously using the same chamber. As shown in Fig. 5b, the plasma
cleaner can be modified to add a source of heat 59 to provide the heat necessary to
cure the molded package directly in the reaction chamber 58. The heat output from the
source 59 may be supplied to reaction chamber 58 in any manner known in the art.
[Lines 11-19; see also page 19, lines 8-11.]
We note again here that according to the specification, an “electronic package” as used in
appealed claim 53 is another name for “encapsulated package” or “encapsulated object” such as a
plastic encapsulated object or package (see above p. 5).
Thus, we interpret appealed claim 53 in light of the specification to include within its
scope, an apparatus which comprises at least a process unit of any design in which a plurality of
plastic encapsulated electronic packages or objects are disposed for treatment by plasma gas and
curing, that has therein a heat source of any design which provides sufficient heat to cure the
plurality of plastic encapsulated electronic packages or objects.
Appeal No. 2003-1501
Application 09/756,929
- 16 -
We find that Ito is directed to an “apparatus for gas phase treating substrates, in
particular, . . . a large number of substrates in a single operation” (col. 1, lines 7-10, and col. 1,
line 67, to col. 2, line 2). Ito acknowledges that in the prior art, resistance heaters or the like heat
the substrates to a reaction temperature and then plasma gas entering at one end of the reactor
treats the heated substrate, and thus finds that substrates located at different distances from the
plasma gas inlet “makes it difficult to supply active reaction seeds uniformly to all substrates,”
such that “a large number of substrates cannot be treated in a single operation” (col. 1, lines 20-
35; see also col. 1, lines 42-50). Ito’s solution is to form the plasma gas in the batch reactor and
to heat a radiator surrounding the substrate by high frequency power supply means, such that the
plasma gas is formed near each of the substrates, which can be arranged in parallel and very close
to each other, thus resulting in uniformly treating a large number of substrates in a single batch
operation (col. 2, lines 3-31). In an embodiment, “heat is radiated to heat silicon wafers 101 to a
temperature of about 1000°C. at their centers,” which is “as uniform as when heated by a
conventional electrical resistance heater” (col. 3, lines 35-41). Ito states that the methods and
apparatuses can be used for different plasma treatments, wherein the “radiators heated by a high
frequency power supply means and for heating wafers may be provided either outside the
reaction tube or inside a reaction tube,” with either arrangement providing “uniform treatment of
a large number of wafers in a single operation” (col. 5, lines 3-35).
We determine that contrary to appellant’s arguments, the disclosure of Ito taken with the
disclosure of Rigali provides substantial evidence supporting the examiner’s position that one of
ordinary skill in this art would have modified the apparatus of Rigali by adding radiators heated
by high frequency power supply means, such as an energy field generator, inside the process unit
as suggested by Ito, in the reasonable expectation of providing temperature control in order to
treat a large number of substrates in a batch operation, the heat generated being sufficient to cure
plastic encapsulated electronic packages when used as the substrate. Indeed, in view of the
disclosure in Ito that the apparatus and methods disclosed therein are applicable to plasma
processing generally as the examiner points out, we also cannot agree with appellant’s argument
that the references are not combinable because of differences in the plasma treatment described
in the preferred embodiments. Furthermore, we agree with the examiner that the apparatus of
Appeal No. 2003-1501
Application 09/756,929
- 17 -
Rigali modified by the teachings of Ito would have been capable of curing plastic encapsulated
electronic packages because Ito does disclose an embodiment in which the substrate is heated to
a temperature of 1000°C. We find no evidence of record, including the passage from the
specification we set forth above, that plastic encapsulated electronics packages would not be
cured when heated to processing temperatures in the temperature ranges of plasma gas treatment
methods disclosed in Ito. See generally, Glass, supra; Ludtke, supra. Moreover, we find
adequate support for the examiner’s statement of the knowledge generally available to one of
ordinary skill in this art in col. 1 of Ito.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Rigali and Ito with
appellant’s countervailing evidence of and argument for nonobviousness and conclude that the
claimed invention encompassed by appealed claims 45, 53 through 57 and 60 through 62
would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
Other Issues
While we have affirmed the decision of the examiner based on the disclosure in Rigali,
we suggest that the examiner consider the following in the event of further prosecution of the
appealed claims.
We referred above to the disclosure in Rigali of the “PX series Plasma Cleaning Systems”
at, e.g., col. 6, lines 14-20 (see pp. 7-8). In this respect, Rigali states that “certain documents
regularly supplied to purchasers of the PX series Plasma Cleaning Systems” are in the patent file
as Appendices A through E of the specification (col. 6, lines 22-25). Upon review of these
documents in the Rigali file, it appears to us that the disclosure therein reasonably pertains to the
appealed claims.

Appeal No. 2003-1501
Application 09/756,929
- 18 -
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )

Appeal No. 2003-1501
Application 09/756,929
- 19 -
Dickstein Shapiro Morin & Oshinsky LLP
2101 L Street NW
Washington, DC 20037-1526