Ex Parte Tabuchi et al

Patent Trial and Appeal BoardMar 20, 2015

11046273 (P.T.A.B. Mar. 20, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TOSHIHIRO TABUCHI, KOUICHI ISHIDA, HIROYUKI MIZUKAMI, and MASAYUKI TAKASHIRI ____________ Appeal 2013-000686 Application 11/046,273 Technology Center 1700 ____________ Before PETER F. KRATZ, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to a Request, filed March 2, 2015, for rehearing of our Decision mailed January 2, 2015. Appellants argue that the Board’s affirmance erroneously relies on the Examiner’s uncorroborated assertion that Sakuragi’s 1 structure is capable of hollow discharge at slower flow rates (Req. Reh’g 1–2). Appellants contend that the Examiner’s finding is without support and defies Sakuragi’s disclosure (Req. Reh’g 2). 1 Sakuragi et al., JP11-293469 A, published Oct. 26, 1999 (hereinafter “Sakuragi”). Appeal 2013-000686 Application 11/046,273 2 Contrary to Appellants’ arguments, the Examiner’s finding that Sakuragi’s structure is capable of hollow discharge at slower flow rates is based on the uncontested finding that Sakuragi’s structure is identical to that claimed by Appellants (Decision 5). As noted on page 5 of the Decision citing In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997) the claims are apparatus claims so we primarily focus on the structure required by the claimed invention. Because it is uncontested that Sakuragi’s nozzle structure is identical to the claimed structure, the Examiner has established a prima facie case that Sakuragi’s structure is capable of performing the recited function (i.e., hollow discharge). Id. Appellants argue that the Board’s Decision is erroneous because the Tabuchi Declaration filed March 15, 2013 explains, with precision, why hollow discharge would not occur in Sakuragi at any of its contemplated flow rates (Req. Reh’g 1, 2). Appellants contend that the evidence in the Tabuchi Declaration that Sakuragi is incapable of hollow discharge is supported by credible evidence including but not limited to the Tabuchi Declaration (Req. Reh’g 1, 2). We have reconsidered the evidence contained in the Tabuchi Declaration. We adhere to our findings and conclusions regarding the evidence as stated on page 6 of the Decision. As noted in the Decision, the evidence does not address whether hollow discharge occurs in Sakuragi’s apparatus by using a slower flow rate through the device as found by the Examiner (Dec. 6). The Examiner’s finding is based upon the uncontested finding that Sakuragi’s structure is identical to that claimed. The only difference found by the Examiner is the process variable related to the flow rate of the plasma gas through the opening, which the Examiner finds may Appeal 2013-000686 Application 11/046,273 3 be set to a slower flow rate (Ans. 15). Appellants have not shown in the Tabuchi Declaration that Sakuragi’s structure is incapable of producing hollow discharge at slower flow rates as is their burden to do. In re Schreiber, 128 F.3d at 1478. Appellants contend that the Tabuchi Declaration points out that the residence time is “‘remarkably short’” which is equivalent to saying that Sakuragi is dealing with high flow rates, not low ones (Req. Reh’g 2). Appellants contend that because Sakuragi uses such high flow rates, it is impossible to generate hollow discharge. Id. Appellants’ arguments in the Request underscore that they are arguing the process limitations (i.e., the rate of flow), not the structure of Sakuragi. For the reasons noted above, Appellants’ argument and evidence are insufficient to overcome the Examiner rejection. Appellants argue that the Board’s reliance on Rohm and Haas Co. v. Biotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1998) is erroneous because the evidence provided here is greater than what was proffered in Rohm (Req. Reh’g 2–3). Our citation to Rohm was meant to underscore that no evidence had been proffered to show that Sakuragi’s structure, which Appellants do not contest is identical to the claimed structure, is incapable of hollow discharge at lower flow rates through the apparatus. Appellants only refer to the expert witness statements that opine on the meaning of Sakuragi’s disclosure, but no evidence was proffered regarding the effect of lowering the flow rates and whether hollow discharge in Sakuragi’s nozzle structure would have resulted. As noted above, the Examiner has provided a reasonable basis for concluding that Sakuragi’s identical nozzle structure would have been capable of hollow discharge albeit at lower flow rates. Appeal 2013-000686 Application 11/046,273 4 Appellants’ have the burden of showing that that such functionality (i.e., hollow discharge at lower flow rates) would not exist with Sakuragi’s structure. Schreiber, 128 F.3d at 1478. No evidence has been proffered by Appellants on this particular point. For the above reasons, we adhere to our decision. Appellants request for rehearing is granted to the extent that we have considered the arguments, but the request is denied to the extent that the decision will not be modified. DENIED cdc