PlasmaNano Corporation

Patent Trials and Appeals Board

Feb 10, 2022

2021000849 (P.T.A.B. Feb. 10, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/648,198 07/12/2017 Jaeyoung Park 383654-991102 3217 26379 7590 02/10/2022 DLA PIPER LLP (US ) 2000 UNIVERSITY AVENUE EAST PALO ALTO, CA 94303-2248 EXAMINER LU, JIONG-PING ART UNIT PAPER NUMBER 1713 NOTIFICATION DATE DELIVERY MODE 02/10/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): paloaltopatentdocket@us.dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAEYOUNG PARK ____________ Appeal 2021-000849 Application 15/648,198 Technology Center 1700 ____________ Before KAREN M. HASTINGS, GEORGE C. BEST, and SHELDON M. McGEE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-16. See Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies PlasmaNano Corporation as the real party in interest (Appeal Br. 1). Appeal 2021-000849 Application 15/648,198 2 CLAIMED SUBJECT MATTER Claim 1 illustrates the subject matter on appeal (emphasis added to highlight key disputed limitations): 1. A method for generating plasma in a reactor chamber that contains a carrier gas and one or more reactive precursors with a pressure of between 1 torr and 2,000 torr, the method comprising: generating, by a pulsed radio frequency source that is driven with a pulse duration that is less than 10 ms, a pulsed radio frequency signal having a radio frequency of less than 10 MHz; delivering the pulsed radio frequency signal to an inductive antenna coupled to the pulsed radio frequency source and surrounding the reactor chamber; initiating, by the pulsed radio frequency signal delivered to the inductive antenna, a breakdown of the carrier gas and one or more reactive precursors in the reactor chamber to generate a plasma; and generating a plasma in the reactor chamber by the breakdown of the carrier gas and one or more reactive precursors in the reactor chamber. Independent claim 13 is directed to a method of generating plasma similar to that of claim 1 and further includes a step of exhausting the material flow out of the reaction chamber (Appeal Br. Claims App. 9). REFERENCES The Examiner relied upon the following prior art: Name Reference Date Collins US 6,589,437 B1 July 8, 2003 Lee US 2012/0285481 A1 Nov. 15, 2012 Appeal 2021-000849 Application 15/648,198 3 REJECTION ON APPEAL Claims 1-16 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Lee in view of Collins (Final Act. 5). OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and the Reply Brief,2 we determine that Appellant has not identified reversible error in the Examiner’s rejection (see generally Ans.). In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). 2 To the extent Appellant makes new arguments in the Reply Brief regarding combining Collins’ test reactor and its variables with a plasma generating method as taught in Collins (Reply Br. 2), they are not considered because they are untimely. 37 C.F.R. § 41.41(b)(2). Appeal 2021-000849 Application 15/648,198 4 Appellant’s main argument with respect to the rejection of each independent claim focuses on the assertion that neither Lee nor Collins teaches generating a pulsed radio frequency signal as recited in each independent claim (Appeal Br. 5), mainly because Collins has a low power off-time and a predetermined short off-time that the claimed pulsed RF signal does not have (id.). Appellant also argues that Lee does not teach an inductive antenna surrounding the reactor chamber (Appeal Br. 6). Appellant’s arguments are not persuasive of reversible error as they fail to consider the breadth of the claim language, the applied prior art as a whole, and the inferences that one of ordinary skill would have made, as aptly explained by the Examiner (Ans. 3-6). With respect to Appellant’s first argument, the Examiner de facto counters that there is nothing in the claim precluding a low power off-time or a short off-time of the method recited (Ans. 5). Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). One of ordinary skill in the art would have readily appreciated that pulse time and radio frequency are result effective variables (as exemplified in Collins, e.g., col. 13, ll. 32-45) for a plasma generating method as exemplified in Lee. “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (where the difference between the claimed Appeal 2021-000849 Application 15/648,198 5 invention and the prior art is some range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range); see also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). One of ordinary skill would have readily inferred and appreciated from the applied prior art as a whole that determining workable pulse times and radio frequency levels would have been within the skill and creativity of one of ordinary skill in the art. Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). Appellant has not shown reversible error in the Examiner’s determination that one of ordinary skill would have expected the pulse time and frequency as taught in Collins to be useful for Lee’s method so as to result in the claimed method of each independent claim (e.g., Ans. 5 (pointing out that Collins teaches that time modulation in a pulsed radio frequency decouples the dissociation of the plasma from the plasma density and reduces time and cost of a plasma process)). Likewise, Appellant has not shown reversible error in the Examiner’s determination that one of ordinary skill would have readily appreciated that Lee’s antenna may surround the reaction chamber (Ans. 4; Final Act. 6). Notably, Appellant does not direct us to any special definition of the recited term “surrounding the reactor chamber”; rather, Appellant’s Specification Appeal 2021-000849 Application 15/648,198 6 states the antenna “may surround a portion of the reactor chamber” (Spec. 8:20-21). Appellant’s Specification also implies that “surrounding structures” include structures that are merely adjacent, or in close proximity to, the reactor (Spec. 9:19-23). This appears to be disclosed by Lee since the “antenna [is] disposed exterior to the chamber 100.” Lee ¶ 31. Appellant does not explain with specificity why the claim language does not encompass Lee’s arrangement. In any event, Appellant has not sufficiently disputed the Examiner’s finding that one of ordinary skill would have known that such an antenna may surround the reactor chamber.3 Any additional arguments made by the Appellant, but not explicitly discussed in this decision, have been fully addressed by the Examiner and are unpersuasive of reversible error for the reasons explained in the Final Office Action or the Answer. Appellant does not present any additional arguments for any of the dependent claims. Accordingly, we sustain the Examiner’s rejection on appeal. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-16 103(a) Lee, Collins 1-16 3 As stated in MPEP § 2144.03C, an adequate traversal of an officially noticed fact “must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.” (Emphasis added). Appeal 2021-000849 Application 15/648,198 7 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED