Reporter
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`2004 Pat. App. LEXIS 537
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`2004 Pat. App. LEXIS 537
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`Board of Patent Appeals and Interferences
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`September 30, 2004, Decided
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`Appeal No. 2004-2192; Application 09/414,520
`
`Ex parte KAZUE TAKAHASHI, TOSHIO MASUDA, TETSUNORI KAJI, and
`KEN'ETSU YOKOGAWA
`
`
`Notice:
` [*1]
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`ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion below has
`been designated a routine opinion.10:
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`Core Terms
`
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`plasma, apparatus, fluorine, carbon, patent, vacuum, rejected claim, species, temperature, chamber, etch, set forth,
`unpatentable, gases
`
`Counsel
`
`ANTONELLI, TERRY, STOUT & KRAUS, LLP
`1300 North Seventeenth Street
`Suite 1800
`Arlington, VA 22209-9889
`
`Panel: ON BRIEF Before TIMM, JEFFREY T. SMITH, and PAWLIKOWSKI, Administrative Patent Judges.
`
`Opinion By: BEVERLY A. PAWLIKOWSKI
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`Opinion
`
`
`PAWLIKOWSKI, Administrative Patent Judge.
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`DECISION ON APPEAL
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`This is a decision on appeal from the examiner's final rejection of claims 1, 2, 4-7, 9, and 10.
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`A copy of each of these claims is set forth in the attached appendix.
`
`On page 6 of the brief, appellants state that the claims do not stand or fall together. To the extent any one claim is argued
`separately for patentability, we will consider such claim in this appeal.
`
`The examiner relies upon the following references as evidence of unpatentability:
`
`
`Ovshinsky et al. (Ovshinsky)
`Satou et al. (Satou)
`
`5,324,553
`5,961,850
`
`Jun. 28, 1994
`Oct. 5, 1999
`
`
`
`Sierra Wireless America, Inc., Sierra Wireless, Inc. and RPX Corp. Exh. 1112 p. 1
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`

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`2004 Pat. App. LEXIS 537
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`Page 2 of 4
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`Akahori et al. (Akahori)
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`6,215,087
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`Apr. 10, 2001
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`Claims 1, 2, and 5 stand rejected under 35 U.S.C. § 103 [*2] as being unpatentable over Satou in view of Ovshinsky.
`
`Claims 4, 6, 7, 9, and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over Satou and Ovshinsky and further in
`view of Akahori.
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`OPINION
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`I. The rejection of claims 1, 2, and 5 under 35 U.S.C. § 103 as being obvious over Satou in view of Ovshinsky
`
`On page 3 of the answer, the examiner refers to Paper No. 18 regarding his position for this rejection. In Paper No. 18, the
`examiner's position is set forth on pages 2-4.
`
`Beginning on page 6 of the brief, appellants rebut the examiner's position. Appellants submit that the rejection is in error, inter
`alia, because the subject matter regarding the gas species, i.e., carbon and fluorine, is not set forth in the combination of
`references.
`
`We agree with appellants that neither Satou nor Ovshinsky teach a gas species that contains carbon and fluorine. However,
`claim 1 is an apparatus claim (as well as claims 2, 4, and 5). As such, we note that a claim recitation with respect to the
`material [*3] intended to be worked upon by the claimed apparatus, does not impose structural limitations upon the claimed
`apparatus, which differentiates it from a prior art apparatus satisfying the structural limitations of that claimed. See Ex parte
`Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987). Also see In re Rishoi, 197 F.2d 342, 344, 94 USPQ 71, 72
`(CCPA 1952); and In re Young, 75 F.2d 996, 997, 25 USPQ 69, 70 (CCPA 1935). Similarly, a recitation with respect to the
`manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art
`apparatus satisfying the structural limitations of that claimed. See Ex parte Masham, 2 USPQ 1647, 1648 (Bd. Pat. App. &
`Int. 1987). Also see In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028,
`1032, 168 USPQ 530, 534 (CCPA 1971); In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967); [*4] and In re
`Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963).
`
`In the instant case, as pointed out by the examiner at the bottom of page 4 of the answer, the prior art structure meets the
`claims because the prior art apparatus is capable of performing the intended use. Appellants do not provide arguments showing
`that it is not capable of such.
`
`In view of the above, we affirm the rejection of claims 1, 2, and 5 under 35 U.S.C. § 103 as being unpatentable over Satou in
`view of Ovshinsky.
`
`II. The 35 U.S.C. § 103 rejection of claims 4, 6, 7, 9, and 10 as being unpatentable over Satou and Ovshinsky and further in
`view of Akahori
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`We refer to page 4 of Paper No. 18 regarding the examiner's position in this rejection.
`
`On page 8 of the brief, appellants argue that Ovshinsky relates to a method for the improved microwave deposition of thin
`films. The method does not relate to a plasma etching apparatus. The examiner rebuts and states that a recitation of
`intended use [*5] must result in a structural difference. Answer, page 6. We agree with the examiner, with regard to apparatus
`claim 4, and refer to our above comments in this regard. However, with regard to process claims 6, 7, 9, and 10, we do not
`agree with the examiner's position.
`
`The issue is whether one skilled in the art would have been motivated to incorporate the teachings of Ovshinsky (directed to an
`improved chemical vapor deposition method) to modify the method for etching as set forth in Satou. We find that the
`examiner's position fails to explain why one of ordinary skill in the art would have selected the frequency used in the PECVD
`method of Ovshinsky, involving different precursor gases than Satou, in the etching method of Satou, which involves
`different precursor gases than Ovshinsky. Satou is directed to etching, and uses gases such as BCl1 and Cl2, whereas
`Ovshinsky is directed to depositing materials using gases as set forth in claim 17, in column 20, of Ovshinksy.
`
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`Sierra Wireless America, Inc., Sierra Wireless, Inc. and RPX Corp. Exh. 1112 p. 2
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`

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`2004 Pat. App. LEXIS 537
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`Page 3 of 4
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`Also, the examiner relies upon Akahori for teaching plasma generation by ECR, including carbon and fluorine species,
`and for the use of intermittent microwave application. However, the examiner does not explain why [*6] one of ordinary skill
`in the art would have used the precursor gases of Akahori in the process of Satou.
`
`Because the examiner has not provided an explanation as discussed above, we determine that the examiner has not met his
`burden of setting forth a prima facie case of obviousness with regard to the process claims.
`
`In view of the above, we reverse the 35 U.S.C. § 103 rejection of claims 6, 7, 9 and 10.
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`III. Other Issues
`
`Upon return of this application to the jurisdiction of the examiner, consider whether claim 10 complies with the requirements
`of 35 U.S.C. § 112, second paragraph.
`
`Also, consider Japanese application patent laid-open publication No. Hei 8-300039, discussed on page 9 of appellants'
`specification, with regard to the patentability of the claimed invention.
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`IV. Conclusion
`
`The rejection of claims 1, 2, 4, and 5 is affirmed.
`
`The rejection of claims 6, 7, 9, and 10 is reversed.
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`No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR §
`1.136(a)(1)(iv) [*7] (effective Sept. 13, 2003; 69 Fed. Reg. 49960 (Aug. 12, 2004); 1286 Off. Gaz. Pat., Office 21 (Sept. 7,
`2004)).
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`AIFFRMED-IN-PART
`
`Catherine Timm
`
`Administrative Patent Judge
`
`Jeffrey T. Smith
`
`Administrative Patent Judge
`
`Beverly A. Pawlikowski
`
`Administrative Patent Judge
`
`BOARD OF PATENT APPEALS AND INTERFERENCES
`
`ANTONELLI, TERRY, STOUT & KRAUS, LLP
`
`1300 North Seventeenth Street
`
`Suite 1800
`
`Arlington, VA 22209-9889
`
`APPENDIX
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`1. In a plasma processing apparatus for etching an electrically insulating film, the plasma processing apparatus having a
`vacuum processing chamber, a sample table for mounting a sample which is processed in said vacuum processing
`chamber, and a plasma generation means, wherein a plasma processing is carried out by generating a plasma in response
`to introduction of a gas which contains at least carbon and fluorine, and a gas species is generated which contains carbon and
`fluorine according to a plasma dissociation, the plasma processing apparatus comprising:
`
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`Sierra Wireless America, Inc., Sierra Wireless, Inc. and RPX Corp. Exh. 1112 p. 3
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`

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`2004 Pat. App. LEXIS 537
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`Page 4 of 4
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`plasma generation means comprising an electron cyclotron resonance system in which a microwave [*8] is provided having
`a frequency of from 300 MHz to 1 GHz and which generates a plasma in which the degree of plasma dissociation is an
`intermediate degree and said gas species containing carbon and fluorine is generated fully in the plasma, and a temperature
`of a region which forms a side wall of said vacuum processing chamber is controlled to have a range of 10[degree]C to
`120[degree]C and wherein the sample for etching by the plasma is an insulating film.
`
`2. A plasma processing apparatus according to Claim 1, wherein
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`said plasma generation means is a source of plasma in which an electron energy is in a range of from 0.25 eV to 1 eV.
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`4. A plasma processing apparatus according to claim 1, wherein in said plasma generation means, a drive of a plasma
`exciting power supply is carried out intermittently.
`
`5. A plasma processing apparatus according to any one of Claim 1, Claim 2 or Claim 4, wherein as a means for adjusting a
`temperature of said vacuum wall, a temperature adjusted coolant medium is used.
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`6. In a plasma processing method using a vacuum processing chamber, a sample table for mounting a sample which is
`processed in said vacuum processing chamber wherein the sample is [*9] an electrically insulting film, and a plasma
`generation means, wherein a plasma processing is carried out by generating a plasma in response to introduction of a gas
`which contains at least carbon and fluorine, and a gas species is generated which contains a carbon and fluorine according to
`a plasma dissociation, the plasma processing method comprising the steps of:
`
`generating a plasma, wherein said plasma generation is effected using an electron cyclotron resonance system in which a
`microwave having a frequency of from 300 MHz to 1 GHz is employed and wherein a degree of plasma dissociation is an
`intermediate degree and said gas species containing carbon and fluorine is generated fully in the plasma, and controlling a
`temperature of a region which forms a side wall of said vacuum processing chamber to have a range of 10[degree]C to
`120[degree]C.
`
`7. A plasma processing method according to claim 6, wherein said plasma generation produces a plasma in which an
`electron energy is a range of from 0.25 eV to 1 eV.
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`9. A plasma processing method according to claim 6, wherein in said plasma generation, a drive of a plasma exiting power
`supply is carried out intermittently.
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`10. A plasma [*10] processing apparatus according to Claim 6, Claim 7 or Claim 9 wherein as a means for adjusting a
`temperature of said vacuum wall, a temperature adjusted coolant medium is used.
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`End of Document
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`Sierra Wireless America, Inc., Sierra Wireless, Inc. and RPX Corp. Exh. 1112 p. 4