Yoichiro Tabata et al.

Patent Trials and Appeals Board

Apr 8, 2021

2020002772 (P.T.A.B. Apr. 8, 2021)

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.
14/234,560 01/23/2014 Yoichiro Tabata 13793US01 3089
154930 7590 04/08/2021
XSENSUS LLP
200 Daingerfield Road
Suite 201
Alexandria, VA 22314
EXAMINER
CROWELL, ANNA M
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
04/08/2021 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):
Faith.Baggett@xsensus.com
Sandy.Miles@Xsensus.com
anaquadocketing@Xsensus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOICHIRO TABATA and KENSUKE WATANABE
Appeal 2020-002772
Application 14/234,560
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 6–12. See Final Act. 1–13.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “TOSHIBA
MITSUBISHI-ELECTRIC INDUSTRIAL SYSTEMS CORPORATION.”
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a plasma generator and CVD (chemical
vapor deposition) device. Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A plasma generation apparatus, comprising:
an auto pressure controller; and
an electrode cell comprising
a first electrode,
a second electrode facing said first electrode so as to
form a discharge space,
a dielectric arranged on at least either one of a main
surface of said first electrode facing said discharge space and a
main surface of said second electrode facing said discharge
space, and
a pass-through formed in a central portion of said
electrode cell in a plan view and penetrating said electrode cell
with respect to a facing direction in which said first electrode
and said second electrode face each other;
a power source part configured to apply an AC voltage to
said electrode cell;
a housing that encloses said electrode cell;
a source gas supply part configured to supply a source gas
from the outside of said housing into said housing;
a cylindrical insulating tube arranged throughout in said
pass-through, having a hollow portion with nothing therein or
with only a metal catalyst filament arranged therein or with
only a metal catalyst filament and an ultraviolet lamp arranged
therein, and comprising an ejection hole that is formed on a side
surface of said insulating tube; and
a precursor supply part connected from the outside of
said housing to said hollow portion of said insulating tube and
configured to supply a metal precursor.
wherein
an outer surface of said insulating tube is spaced apart
from an inside surface of said pass-through so that a pipe
passage is formed between the inside surface of said pass-
through and the outer surface of said insulating tube,
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said pipe passage is connected to said discharge space, and
said auto pressure controller is configured to keep a pressure of
said discharge space to a constant value via said pipe passage.
(Appeal Br. Claims Appendix 19–20).
Independent claim 11 is directed to a CVD device comprising a
plasma generator containing similar limitations as recited in claim 1 (Appeal
Br. Claims Appendix 22–24). Appellant relies on the same arguments for the
rejections of claims 1 and 11 (Appeal Br. 17).
At the outset we note that the Examiner’s nonstatutory double
patenting rejection (Final Act. 15) is moot as Appellant provided an
appropriate terminal disclaimer (filed July 17, 2019).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Saiki US 5,376,212 Dec. 27, 1994
Niira US 2003/0176011 A1 Sept. 18, 2003
Asai US 2004/0009678 A1 Jan. 15, 2004
Kondo US 2005/0106094 A1 May 19, 2005
Kawano US 2009/0159432 A1 June 25, 2009
Takasawa US 2010/0130024 A1 May 27, 2010
Tabata US 2010/0193129 A1 Aug. 5, 2010
Reichen US 2011/0039036 A1 Feb. 17, 2011
Inoue JP 09-055372 Feb. 25, 1997

REJECTIONS
Claims 1 and 7–9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reichen with either one of Asai or Takasawa, with Inoue
(as translated). Final Act. 3.
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Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Reichen, Asai or Takasawa, and Inoue as applied to claims 1, and 7–9
above, and Niira. Final Act. 6–7.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Reichen, Asai or Takasawa, and Inoue as applied to claims 1, and 7–9
above, and Tabata. Final Act. 7.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Reichen, Asai or Takasawa, and Inoue as applied to claims 1, and 7–9
above, and Saiki. Final Act. 8.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tabata, Asai or Takasawa, Reichen and Inoue. Final Act. 9.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tabata, Asai or Takasawa, Reichen, Inoue and Niira. Final Act. 13.
OPINION
After considering the evidence presented in this Appeal and each of
Appellant’s arguments, we are not persuaded that Appellant identifies
reversible error. We review the appealed rejections for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”). We sustain the
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Examiner’s rejections for essentially the reasons expressed in the Final
Office Action and the Answer.2 We add the following 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).
The Examiner finds that Reichen discloses many of the limitations of
claim 1, and relies upon Inoue to exemplify the obviousness of including a
cylindrical insulating tube arranged throughout a pass-through in a plasma
generation apparatus such that the outer surface of the insulating tube spaced
apart from the inside surface of said pass-through forms a pipe passage

2 The Reply Brief dated February 27, 2020, includes arguments presented for
the first time for this rejection about the auto pressure controller (Reply Br.
2–10). Any argument not presented in the Appeal Brief will not be
considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”); see also Optivus Tech., Inc. v. Ion
Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief is considered waived); 37 C.F.R.
§ 41.41(b)(2) (2013). Appellant has not shown good cause why the new
arguments could not have been presented in the Appeal Brief. Accordingly,
we decline to consider these arguments.
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between the inside surface of the pass-through and the outer surface of said
insulating tube (Final Act. 4–5; Ans. 5–6).
Appellant contends that Reichen does not teach the cylindrical
insulating tube as claimed because Reichen does not teach that the tube is
spaced apart from the pass through (Appeal Br. 13). Appellant further argues
that Inoue does not remedy the deficiencies of Reichen, as the structure of
Inoue does not provide a pass through as claimed and there is no cylindrical
insulating tube between Inoue’s reaction tube 2 and inside tube 3 (Appeal
Br. 14–15). According to Appellant, the Examiner failed to provide a prima
facie case of obviousness because the Examiner does not explain where in
Reichen and/or Inoue “such a spacing yielding” occurs between the inside
surface of the pass through and the outer surface of the insulating tube is
taught or suggested (Appeal Br. 16; Reply Br. 10–13).
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the applied prior art as a whole and the inferences that one of
ordinary skill would have made. It is well settled that “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of [those] references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981). See also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
As detailed by the Examiner in the annotated Figs. 1 and 2 of Inoue
(Ans. 6), it is the inner tube 3 of Inoue that is relied upon by the Examiner to
meet the claimed cylindrical insulating tube, and the outer surface of the
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insulating tube is spaced apart from an inner surface of the pass-through to
form the claimed pipe passage as indicated in the annotated drawings (Ans.
6). This feature, in combination with the device of Reichen (see Ans. 5 (the
Examiner’s annotated drawing of Reichen’s Fig. 1)), provides the cylindrical
insulating tube in the pass-through such that a pipe passage is formed. As
stated by the Examiner, Inoue exemplifies that an outer surface of a
cylindrical insulating tube may be spaced apart from the inside surface of the
pass-through (e.g., Ans. 6, 11). Reichen discloses the structural components
of a pass-through, a housing 2, and a cylindrical insulating tube 9 (Ans. 5).
Hence, the modified apparatus of Reichen in view of Inoue would yield an
outer surface of the cylindrical insulating tube 9 that is spaced apart from the
inside surface of the pass-through (i.e., inside of electrode cell 1, 19, 20)
(Ans. 7, 11).
Contrary to Appellant’s assertions (e.g., Reply Br. 12), one of
ordinary skill in the art would have readily inferred that such a spacing as
provided in Inoue would have contributed to uniform gas flow throughout
the apparatus. KSR Int’l Co. v. Teleflex Inc., 550 at 418; In re Fritch, 972
F.2d at 1264–65.
In light of these circumstances, Appellant has not sufficiently
explained why the claimed subject matter is “more than the predictable use
of prior art elements [arranged] according to their established functions.”
KSR, 550 U.S. at 417.
Appellant relies on the same arguments for independent claim 11
(Appeal Br. 17), and does not separately argue any of the dependent claims
or, even those separately rejected (generally Appeal Br.).
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Accordingly, Appellant has not shown reversible error in any of the
rejections and we sustain the § 103 rejections of all of the claims on appeal.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 7–9 103(a) Reichen, Asai,
Takasawa, Inoue
1,7–9
2 103(a) Reichen, Asai,
Takasawa, Inoue,
Niira
2
6 103(a) Reichen, Asai,
Takasawa, Inoue,
Tabata
6
10 103(a) Reichen, Asai,
Takasawa, Inoue,
Saiki
10
11 103(a) Tabata, Asai,
Takasawa,
Reichen, Inoue
11
12 103(a) Tabata, Asai,
Takasawa,
Reichen, Inoue,
Niira
12
Overall
Outcome
1, 2,
6–12

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED